What does Patent Registration mean?
The inventor of the invention is required to obtain the patent registration in order to secure his/her invention from use by others. Such registration represents the exclusive right which is granted to the inventor / patentee over his/her invention for a specified period of time. Patentee has the right to control, make, use, sell, franchise or import his / her patented product or process. There are various factors which decides whether the particular invention is patentable or not requiring that such invention must be innovative, unique and must be distinctive in nature and which can be used in industry.
There are two laws relating to patent i.e. Patent Act 1970 & Patent Rules 1972.
Such patent of an invention is treated as an intellectual property right over an invention. Individual / firm is required to file application in order to obtain the Patent Registration. The Indian government has established the Intellectual Property Department which provides the exclusive right for invention invented by the inventor. All the evidence are required to generate to prove that invention is unique only after that the patent registration shall be granted.
“The Patent Office, Controller General of Patents, Designs & Trade Marks” regulates the Patent Registration applications. With the concerned government authority, the application for Patent registration is required to be filed through electronic mode along with the provisional or complete specification.
What things requires patent registration in India?
Followings items are covered for which patent registration can be sought:
The invention can be related to:
- The machine related,
- Computer software or
- Any other kind of invention which has never been invented to the general public.
What things are excluded from patent registration?
According to The Patent Act, 1970, below mentioned items cannot be treated as inventions:
- Where the invention does not conform to the prescribed natural laws;
- Human, animal or life of a plant or health or to the environment are prejudiced with any invention;
- Where only scientific principle are discovered or there only a abstract theory is formulated.
- Discovery of any living or non-living substance from the nature;
- Where the invention is a known process/ machine unless such process results in a new product.
- Invention resulting in the collection of the properties of the components by adding the mixtures;
- Arrangement or re-arrangement of devices are excluded which are very common in nature;
- Where any inventions are excluded by the Patents (Amendment) Act, 2002;
- Any process / methods used for agriculture or horticulture purpose;
- Any process for the treatment of human being in relation to medicinal, surgical, curative, prophylactic diagnostic, therapeutic.
- Process discovered for making the disease free animal.
- Where any invention is related to plants and animals including seeds, varieties, and species, the essentially biological process for the production of plants and animals other than microorganisms;
- Mathematical methods or the computer programs’ invention;
- Where any creation is related to the literary, dramatic, musical or artistic work including cinematographic works as well as television productions;
- Methods discovered for playing the game;
- Presentation of information
- Integrated circuits’ topography;
- Aggregation or duplication of known properties of components are not allowed to be patented which are traditionally known.
- Invention relating to atomic energy
What are the benefits of Patent Registration?
- Protection to Invention Legally: Where there is any infringement of the invention for which the patent registration has been obtained, then in such case the patentee has the right to take action and can sue the person for damages incurred. Legal protection right is not enforceable where the invention is not registered. As a result such patent registration provides the legal protection to the patentee for his / her invention.
- Rights are transferable: In order to generate the revenue, patentee can sell or transfer a patent as per Patent Registration Act.
- Validation: The invention of the inventor is protected for a period of 20 years after obtaining the patent registration.
- Competitive Advantage: As after obtaining the patent registration, competitors will not be able to use the patented invention for the similar products and as a result it provides the competitive advantage to the business.
- Enables the creation of asset: Such registration is an intellectual asset for a business which can be sold, transferred or commercially contracted to generate the revenue.
What Criteria are set by the government for submitting the application of Patent Registration?
- Novelty: There should be a new development of something while inventing and such invention has not been published anywhere in India before applying for patent registration.
- Non-Obviousness: Such invention must not be obvious in nature and such invention turned out to be an unexpected or surprising development.
- Industrial Applicability: Such invention should be capable to use in an industry.
Which documents are required to be submitted to obtain the patent registration?
Below mentioned documents are required to be submitted:
- Form-1 for filing the patent registration application.
- Form-2 for the complete specification otherwise Provisional Specification where complete specification is not available.
- Form-3 for Statement and Undertaking
- Form-5 for filing the declaration related to the inventorship from the inventor;
- Inventor is required to file the proof regarding the right to file a Patent Registration application
- Form-26 for the power of authority where the patent agent/patent attorney has filed the application for patent registration;
- Where the application is filed related to biological material obtained from India, then it is compulsory to submit the permission obtained from National Biodiversity Authority.
- It is mandatory while filing the application for patent registration that the source of origin of any biological material which is used in the specification should be clearly mentioned.
- Applicant/ Patent attorney are required to sign the application filed for patent registration along with their name & date. Specification (Complete or Provisional) must be also be signed on the last page along with the date.
Which forms are to be filled and submitted Patent Registration?
|Forms to be filed||Explanation|
|Form 1||Patent registration Application|
|Form 2||Provisional or Complete Specification|
|Form 3||Statement and Undertaking under Section 8 of The Patents Act, 1970|
|Form 5||Inventor ship Declaration|
|Form 9||Publication Request|
|Form 18||Examination Request|
|Form 26||Patent Agent Authorization|
|Form 28||For Small Entity|
What are the steps for Patent Registration?
Following are the points which must be kept in mind while obtaining the registration of the patent:
- Patent Search– Patent Search is conducted to get to know about the no obviousness of an invention which is necessary before filing the patent registration application. The patent registration shall not be granted where there is already registered patent on the basis of your idea and in this case you are not required to follow the further steps.
- Patent Domicile– In order to protect your invention from infringement in the countries other than the country in which the patent registration is sought then separate registration in each country is required to be obtained. As registration of Patent in India shall remain valid in India only.
- Application filing for Patent Registration– With the intellectual property department, application in Form 1 shall be filed along with the necessary details regarding invention.
- Patent Registration Application Review process– Patent office of the India Government shall commence the scrutiny process to check is there any existing patent on the similar idea after the successful submission of patent application. Patent will be granted where no such existing patent is found and the invention is unique and falls under the criteria of the patentable invention.
- Patent Grant– Application status shall be updated and shown on the website of the Department of Industrial Policy & Promotion, Ministry of Commerce & Industry, and Government of India after the successful verification of the application filed for patent registration. It generally takes around 1 year for the grant of Patent Certificate.
How long the patent registration remains valid in India?
Patent registration shall remain valid for a period of 20 years from the date provisional or complete patent registration application is filed. After that such invention would fall under the public domain.
What does Patent Renewal mean and what is the procedure for patent renewal?
There is a requirement of patent renewal every year in order to keep the patent alive failing to do so may result in cessation of the patent and would fall under the public domain. Patentee is required to file the application for the renewal of the patent along with the prescribed fees and the patent shall be renewed for a period of 1 year. Such prescribed fees for the renewal of the patent shall be payable at the end of the 2nd year from the date of patent registration.
Restoration application is required to be filed in the prescribed Form-15 in case renewal fees is not paid by the patentee within the above mentioned period and due to this non-payment the patent shall be ceased to exist. Such Form-15 is to be filed within a period of 18 months from the date patent got ceased to effect. Renewal fees can be paid yearly or in a lump sum as well. However, in the initial two years, there is no renewal fee
What to do in case the objection status has been received from the examiner?
The application filed must conform the Patent Act and Rules as after the Request for Examination, such application shall be examined by the examiner to check the relevant technical background, to check is there any similar patent already registered and whether such invention is capable of being patented.
Examination Report in which the reasons for the objections would be mentioned shall be issued by an examiner to the applicant after the examination process. Such examination report is also called “First Examination Report (FER)”.
Applicant is required to respond to the objections raised on the First Examination Report. Appearing for hearing may be involved as an objection. The patent shall be granted to the applicant within a period of 6 months from the date of issuance of First Examination Report (FER) to an applicant, whereas the period of 6 months can be extended by further 3 months after filing the extension request in Form 4.
Is it possible to revoke the patent in India?
In case of infringement, a petition with the High Court by any person/ central government/ is required to be filed for the revocation of the patent. Such revocation of the patent can be granted where the high court believes that the government’s reasonable terms and conditions have not been complied with by the patentee and can be revoked in public interest or when it is non-working.
What does Patent Assignment mean?
There is an exclusive right of the patentee over his invention after obtaining the patent registration and due to this exclusive right, he can sell or distribute his invention in order to generate revenue. According to the terms of the patentee, assignment of the patent can also be done in order to bring the patented product to the market. Only the owner of the patent has the right to assign the patent to the other person in case where the co-owners or joint owners are assigning the patent, prior consent is required from the owner.
What is the procedure for the rejection of the application of Patent registration?
There are two types of an opposition proceeding under The Patents Act 1970,
- Pre-grant opposition under Section 25(1) and
- Post-grant opposition under Section 25(2).
An appeal within a period of 3 months from the date of the decision as per the section 117A of the Patents Act, 1970 with the Intellectual Property Appellate Board (IPAB) along with the requisite fees may be filed by the applicant where the application for patent registration has been rejected by the authority on the basis of opposition. Such appeal must indicate the reasons for filing the appeal and must be signed by the applicant. IPAB has its headquarters in major cities of the country such as Mumbai, Chennai, Delhi, Kolkata, and Ahmadabad. However, an extension period may also be sought by requesting.
Is it necessary to obtain the patent registration outside the India in case the Patent Registration is already obtained in India?
Patent registration obtained in India shall remain valid in India only. In order to protect your invention from the infringement by others in other countries then patent registration in other country is also required to be obtained. If a patent is registered in India then it is valid in India only and rights in connection with a patent cannot be exercised by the patent owner outside India. However, if the patent owner wants patent protection in other countries as well then they have to file an application other countries within the period of 12 months of patent registration in India.
What is the procedure to apply for International Patent Registration in India?
Applicant can file the application for international patent registration for protecting their inventions in other countries which is enabled by The Patent Cooperation Treaty (PCT). There is only one filing of international application due to which it saves time & effort of the applicant. A decision regarding the prosecution of the application can also be taken by the applicant before the various national patent offices and the time limit for entering into the national phase in several countries is 30/31 months from the priority date. PCT application can be filed by the resident of any of the PCT contracting states. For international Patent Registration in India, the application can be electronically filed on the website of WIPO.
Frequently Asked Questions about Patent Registration
Patent Cooperation Treaty (PCT) application can be filed by the applicant in the patent office located in India after obtaining the registration of patent in India.
It means that the invention for which the patent registration is sought must be feasible and applicable to the industry so that the industry can make use of such invention.
An invention must be novel, involves the innovative step and non-obvious in nature and must be capable to use in industries.
Invention is not required to be disclosed before obtaining the patent registration therefore application for patent is required to be filed.
The Patent Act grants the 12 months grace period from the date of publishing the invention to file the application for patent registration.
There is no such compulsion, but it is always favorable to file a provisional application first due to which applicant would be eligible to evaluate market potential for his/her invention.
After the expiry of 18 months from the date of patent registration filing or priority date whichever is earlier, the application for patent Registration is published.
Request for the examination is required to be submitted with the concerned department, there is no such system of an automatically examination process.
Within a period of 48 months from the priority date or from the date of filing patent registration application whichever is earlier, an examination request can be filed by the applicant
Only at the time of interview with the examiner regarding Patent registration application, your presence would be required.
In order to modify or improve the application of patent registration, an additional patent application is required to be filed by an applicant.
Where there are more than 1 invention for which patent is being sought, then divisional application is required to be filed.
Priority date is the date on which the patent registration application whether provisional or complete is filed.