Process of Patent
From Advocatespedia, The Law Encyclopedia
|Process of Patent|
|Published on||26 May 2019|
Section 5 of the Patent Act 1970 had provided for grant of only process patents in certain categories of inventions. It may be pointed that under the Patent Act, 1970, in all other areas product and process patents could be issued and have been issued. The Paris Convention has left this issue to be dealt with in the States legislation in a manner of its own choice.
The TRIPs Agreement under Article 27.1 stipulates that patents shall be available for any inventions, whether products or processes in all fields of technology except for the exclusion stipulated under Article 27.2 and 27.3.
Pursuant to the TRIPs agreement, the Patent Act, 1970 was amended in 2002. Section 5 of the Patents Act, 1970 (as it stood after the 2002 amendments) provided that, in the case of inventions being claimed relating to food, medicine, drugs or chemical substances, only patents relating to the methods or processes of manufacture of such substances could be obtained.
An explanation appended to the Section 5 provided that “chemical process” includes biochemical, biotechnological and microbiological processes. Subsequently, Section 5 of the Patents Act, 1970 was deleted by the Patents (Amendment) Act, 2005 that came into force on 01.01.2005, thereby paving the way for product patents.
This deliberate strategy of denying product patent protection to pharmaceutical inventions is traceable to the Ayyangar Committee Report, a report that formed the very basis of the Patents Act, 1970. The Committee found that foreigners held between eighty and ninety percent of Indian patents and that more than ninety percent of these patents were not even worked in India. The Committee concluded that the system was being exploited by multinationals to achieve monopolistic control over the market, especially in relation to vital industries such as food, chemicals and pharmaceuticals .methods or processes of manufacture of such substances could be obtained.
Steps Involved In The Patent Process In India
Step 0 – Decision on doing it yourself or engaging a professional
Before we proceed with the patent application process, we need to decide if we will be using the assistance of a patent professional or undertaking the patent process urself. Considering the number of deadlines and the impact of these deadlines, it is highly recommended that we engage a patent professional / firm who has years of experience in the patent field. If we decide to use the services of a professional, then we have to make sure that we sign a Non-Disclosure Agreement (NDA) with the patent professional / firm before disclosing the invention to them. It is a good idea that all our disclosures with any third parties are done confidentially and we sign NDA’s with each party.
Step 1 – Check the Patentability of the invention by performing a search for similar technologies Before filing a patent application in India or in any other country, the first step (optional but recommended) in the patent registration process is to perform a detailed patentability search to determine the chances of getting a patent. The search should ideally be performed for both patent and non-patent references. The advantage of a search is it provides a good idea of the merit of the invention and helps in deciding if there are good chances of ultimately getting a patent granted. Furthermore, based on the references discovered during the search, we have the option of fine-tuning our patent application to ensure that we don’t end up filing a patent for something which already existed. Hence, a thorough patentability search is always advised but from a patenting process point of view is totally optional.
Step 2 – Drafting a patent application (Provisional or Complete) Once, you have decided to go forward with the patent application process, the next step is to prepare an Indian patent application (Form 1).
Step 3 – Filing the patent application in India  Patent filing in India can happen in the following scenarios: • . First filing in India – Once the patent application is drafted, the next step is to file the patent application in India and secure the filing date. In case you are filing a provisional application first, you need to file the complete application within 12 months from the provisional filing date.
• Foreign filing decision – Further, if you are interested in protecting your invention in foreign jurisdictions, the maximum time allowed is 12 months from your first filing date. Based on the countries you are interested in; you can opt for filing a convention application in Paris convention members individually in each of the countries you are interested in protecting your invention. Alternatively, you can use the Patent Corporation Treaty (PCT) System to reserve your right in 140 odd member countries. Both the systems have their pros and cons and the decision of choosing one over other changes based on your requirement and will be the basis of another post.
• Foreign applications entering India – In another scenario where the patent application was first filed in a foreign jurisdiction and the patent applicant is interested in filing a patent application in India under the Paris Convention route or the PCT route, the time limit to enter India is 12 months and 31 months respectively.
Step 4 – Publication of patent application Every patent application which is filed with the Indian patent office is kept as a secret until the time it is published in the official patent journal. Indian patent office will publish patent applications ordinarily after 18 months. This is an automatic event and you need not make any request. However, if you wish to get your application published earlier, you can make a request for early publication (Form 9) and your application will ordinarily be published within 1 month of the request.
The advantage of publication – The date of publication is important as your privileges and rights start from the date of publication, although you can’t enforce your rights by way of any infringement proceedings until your patent is granted.
When not published – It is also important to know that there are a few scenarios under which a patent application may not be published and kept as a secret
• Secrecy directions have been imposed under the patent act. Secrecy directions are imposed if the invention falls in a category publication of which could be against the interest of the nation. • A complete application was not filed within 12 months from the date of filing of the provisional application • A request for withdrawal was made. Such a request has to be made at least 3 months prior to publication. So, for practical purposes, it is 15 months from the date of priority in a standard patent application process.
Step 5 – Examination of the patent application Every patent application which is filed for protection has to be substantively examined before a patent is finally granted. The examination process is where your patent application will finally be examined on merits of the invention as described and claimed in the patent specification.
Request for Examination The examination process, unlike publication, doesn’t happen automatically by way of filing of the Indian patent application. The applicant has to specifically make a request for examining their patent application (Form 18). Only when a Request for Examination (RFE) is received, will the application be queued for examination. So, the earlier you make the RFE request, the earlier your application may be examined by the examiner. If you wish to fast track your patent application even further and jump the examination queue, you can file a request for expedited examination (Form 18A). However, an expedited examination is only available to the applicant if the applicant is either a startup; or the applicant chose the Indian Patent Office as the International Search Authority (ISA) or International Preliminary Examining Authority (IPEA) during their international application (PCT application). On the contrary, you may sometimes not want to get your application examined early for strategic reasons. Reasons for deferring the request could include extending the patent-pending life, waiting for funding, etc.
Examination process (Objections by examiner & responding to objections) Once , the Request for Examination has been filed, it will eventually land up on the desk of the examiner from the relevant technology background for examination. During the examination process, the examiner will scrutinize the application to ensure that the application is in accordance with the patent act and rules. The examiner also performs a search to understand similar technologies to ascertain if the invention would satisfy the patentability criteria.
Based on the review of the application, the examiner will issue an Examination Report to the applicant, stating the grounds for objections. The first such examination report is called the First Examination Report (FER).
Once, the FER is issued, the patent applicant needs to successfully overcome the objections to receive a patent grant. The whole process may involve responding to examination reports, appearing for hearing, etc. The total time needed to put an application in order for the grant is 6 months (earlier 12 months) from the date on which the FER is issued to the applicant. However, this 6 month period can be extended for a period of 3 months by the applicant by filing a request for an extension of time (Form 4).
Step 6 – Final decision on grant of patent Once, the patent application overcomes all the objections, the patent will be granted and published in the patent gazette.
After the patent has been granted, it has to be renewed every year by paying the renewal fee. A patent in India can be renewed for a maximum period of 20 years from the patent filing date.
Step 7 – Renewal