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Patent Laws in India: Favourable New Rules for Innovators

Indian Government recently amended the patent rules in order to align the patent prosecution & procedure in India with international practice of submitting priority applications and their translations.

Recently, the Indian Government amended the patent rules which in order to fasten and significantly reduce the cost of patent filing for applicants claiming priority over international applications. The aim of these amendments is to align the patent prosecution and procedure in India with international practice of submitting priority applications and their translations.

Under the new rules, applicants are now allowed to submit digital versions of priority documents using the Digital Access Service (DAS) which is administered by World Intellectual Property Organization (WIPO). Though this method was already in use unofficially, the practice is now formally accepted. Requirements for submitting the English translated version of priority documents has also been modified. These amendments which came into effect on 19th October, 2020 were meant to streamline the process of patent filing and to lead to greater ‘ease of doing business’ for the innovators.

Key highlights of the New Amended Rules:

1. Statement of Working of Patent (Form 27) - Under the Indian Patent Law, filing a working statement by a patentee and licensee to grant a patent is an important legal requirement. According to the newly amended rules, the statement of working of a patent should be filed once every financial year by the patentee or licensee, within the period of six months from expiry of such financial meaning before 31st September of each year.

Earlier the said statement was to be submitted every calendar year but considering that financial statements (Balance Sheet and Profit & Loss) in India are generally prepared for a financial year (1st April to 31st March), the new rules will significantly ease the filing of statement of commercial working of a patented invention for every financial year.

Further, the format of prescribed Form 27 to file statement of working has also been simplified whereby only one form can be submitted for related patents with the following information:
  • Patented invention has been worked – Approximate revenue or value accrued in India to the patentee by means of manufacturing and/or importing along with a brief write-up on the same has to be provided.
  • Patented invention has not been worked – List of the reasons due for not working the patented invention and steps that are being taken to work the patented invention has to be provided.

Though patentees are allowed to jointly file a commercial working statement but each licensee will have to file the said statement individually.

2. Filing of Priority documents (Rule 21)
– Generally to claim priority in a national phase application in India, the applicant has to submit the priority documents with WIPO or the Indian Patent Office (IPO). Managed by WIPO, Digital Access Service (DAS) serves as a digital library which allows applicants making multi-jurisdictional applications to request the first filing office to make priority documents available to DAS. Once the documents are available digitally, the applicant makes a request to other patent offices to obtain those documents through DAS. This is an electronic exchange of documents between patent offices.
Such practice has commonly been approved by IPO but now the same has been officially coded through the new 2020 rules. Rule 21 Sub-rule (1) has clarified that priority claim will be allowed even if it has been made available using DAS.
The amended Sub-rule (2) of Rule 21 provides that verified English Translations of priority documents will have to be submitted with IPO only under following two circumstances:
  • where the validity of the priority claim is relevant to the determination of whether the invention concerned is patentable or not; or
  • when the international application filed was incomplete but the applicant has claimed that the missing information was fully provided in the priority document
The timeline to submit the priority documents and their translations have not been changed. As per Rule 21 Sub-rule (3) if the applicant has not submitted the priority documents or their translations within 31 months of the priority date, the Controller can invite the applicant to cure this defect. The applicant should submit the priority documents or their translations within 3 months of the date of request by the Controller.
These amendments are hoped to streamline the requirement related to submitting statement of working of a patented invention on a commercial scale in India as well as submission of verified English translation of priority documents.

What is a Patent?

A patent is an exclusive privilege which is given to the creator by the State to prohibit anyone from using, creating and selling an invention for a prescribed period of time. However, not all inventions could be patented and neither is it necessary that the invention could be protected solely by patent. There are other forms of intellectual property rights to protect the final result of an invention. The primary goal to implement the patent law is to encourage people to make greater contributions in their respective fields by granting them exclusive rights on their inventions.

Rights of Patentee:

Patentee is the person who has been registered in the patent registry as the proprietor of the patent/invention for a specified time period. Section 48 of the Patents Act, 1970 provides following rights to a patentee:
  • Exclusive rights to the patentee to make, use, exercise, sell or distribute the patented article or substance in India. This right can be exercised by the patentee himself or by his agent or licensees only during the term of the patent.
  • A patentee can transfer the rights or grant licenses or enter into an arrangement for a consideration. The said license or arrangement should be in writing and registered with the Controller of Patents to be considered legitimate and valid.
  • Right to surrender the patent but prior to accepting the offer of surrender it is required to give a notice of surrender to the person whose name is entered in the register as having an interest in the patent and their objections, if any, considered. The application for surrender will also be published in the Official Gazette so that any interested persons can oppose.
  • A patentee can initiate proceedings for infringement of the patent in a District Court that has the jurisdiction.

What Qualifies as Invention?

For a substance or product to qualify as invention, it needs to meet following requirements:
  • It should be a new invention i.e. novelty of the invention.
  • It must be a significant improvement over the previous one. Just a slight change in technology will not be considered for patent.
  • Invention must be useful to the world in a bonafide manner.
  • An Invention must involve an inventive step.
  • It could be used for industrial application or utility.
  • It should not be covered u/s 3 & 4 of the Patent Act, 1970 (list of non-patentable items).

Therefore, patent can be qualified if it meets all three criteria i.e. Novelty, Inventive Step and ability of industrial application. Failure of any of these three would result in the patent as unqualified and thus, the application would be rejected.

Term of Patent:

Prescribed time period of each patent in India is of 20 years from the date of filing the patent application, irrespective of the fact whether it is filed with provisional or full specification. In case of a request submitted under the Patent Cooperative Treaty (PCT), the period of 20 years begins from the international filing day.

What cannot be patented in India?

Section 3 provides deals with the inventions that cannot be patented:
  • Inventions against the natural laws i.e. Frivolous Inventions. For example, an invention that runs purely on blood of a human being and nothing else would be considered contrary to natural laws. 
  • Inventions that are against public order or morality or which can cause harm to the environment.
  • Mere discovery of scientific principles such as Newton’s theories and other universal principles etc. If these theories are patented then they won’t be available to students freely in public domain
  • Just a discovery of an already known substance is not patentable.

Where to File Patent Application?

Application for Patent shall be filed with the Patent Office having the appropriate jurisdiction. Territorial jurisdiction of a patent office is decided based on the following:
  • Place of residence, domicile or business of the applicant (first mentioned applicant in the case of joint applicants).
  • Place from where the invention actually originated.
  • Address for service in India given by the applicant, when the Applicant has no place of business or domicile in India (Foreign applicants).

For the purpose of facilitating the registration of patents, Indian Patent Office functions from four locations viz. Kolkata, Delhi, Chennai and Mumbai.

Process for Registration:

  • Documents can be filed online or in the patent office having Jurisdiction.
  • An application for Grant of Patent is to be filed with complete specification comprising description, claims, drawings (if any), abstract, Declaration of inventorship, along with requisite statutory fees.
  • A patent application is published automatically in the official journal after expiry of 18 months from date of filing or date of priority of the application containing title, abstract, application no. and name of applicant(s) and inventor(s).
  • To expedite the process of grant of patent, a request for publication can be made any time after filing of the application. Upon such request, the application is published in one month from the date of such request.
  • Upon publication but before the grant of patent, any person may file a pre grant opposition, in writing. However, the opposition will be taken by the patent office only after filing of Request for examination. After considering the representation of the opponent and the response of the applicant and their supporting evidence (if any) and after hearing both the parties (if hearing is requested), the Controller shall proceed further simultaneously either rejecting the representation and granting the patent or accepting the representation and refusing to grant the patent. An applicant can go for an appeal against the decision of the Controller.
  • Upon grant of patent, any interested person may file a post grant opposition to the Controller against the grant of patent.
  • After hearing a party or parties desirous of being heard or if neither party desires to be heard, then without a hearing, and after taking into consideration the recommendation of the opposition board, the controller decides and notifies his decision to the parties giving reasons. An applicant can go for an appeal against the decision of the controller.
  • Application is examined on request. Request for examination can be made either by the applicant or by a third party.
  • After proper examination of patent application on the criteria of novelty, inventiveness and industrial application, the patent examiner will issue a First Examination Report (FER) and will send along the application and specification to the applicant or authorized agent.
  • The issued FER gives an opportunity to the applicant to file a response and overcome the objections raised by the Examiner.

The controller will grant the application upon overcoming all the objections raised in the FER. On the grant of a patent, the application will be accorded a number, called serial number in the series of numbers accorded to patents. To keep a patent in force, renewal fees are payable every year.

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