What is a Patent?
A Patent is an exclusive right granted to a person who has invented a new and useful article
or an improvement of an existing article or a new process of making an article. The exclusive
right is to manufacture the new process of making an article invented or manufacture an article according
to invented process for a limited period. During the term of the patent the owner of the patent, i.e. the
patentee can prevent any other person from using the patented invention. After the expiry of the duration of
the patent anybody can make use of the invention. The invention then becomes part of the public domain.
A Patent is creation of statute and is therefore territorial in extent. Thus a patent granted in
one country cannot be enforced in another country unless the invention concerned is patented in that country
What is patentable?
Invention means any new and useful:
- Process, method or manner of manufacture
- Machines, apparatus or a product
- Substances produced by manufacture and include any new and useful improvements
of any of them and an alleged invention.
Inventions claiming substances intended for use, or capable of being used,
as food or as medicine or drug or relating to substances prepared or produced
by chemical processes (including alloys, optical glass, semi conductors and
inter-metallic compounds) are now patentable under the patent ordinance 2004.
Who can apply for a patent?
A patent application can be filed either by true and first inventor or his assignee, either alone
or jointly with any other person. However, legal representative of any deceased person can also
make an application for patent.
What can be patented?
An invention relating either to a product or process that is new, involving inventive step and capable
of industrial application can be patented. However, it must not fall into the categories of inventions
that are non- patentable under section 3 and 4 of the Act.
Where can I patent it?
The decision of where to patent is a commercial decision based upon the importance of the patented
invention, the potential scope of protection provided by the Claims of the Patent, and the likely
costs involved in securing and maintaining patent protection in any given country.
Patent protection is available in most countries so you have to decide where to file your applications.
In India, Patent application can be filed at the Patent office of Delhi or Kolkata or Mumbai.
Does Indian Patent give protection worldwide?
Patent protection is territorial right and therefore it is effective only within the territory of India.
However, filing an application in India enables the applicant to file a corresponding application for same
invention in convention countries, within or before expiry of twelve months from the filing date in India.
Therefore, separate patents should be obtained in each country where the applicant requires protection of his
invention in those countries. There is no patent valid worldwide.
When an application for patent is published?
Every application for patent is published after 18 months from the date of its filing or priority date
whichever is earlier. However, following applications are not published.
Is there any provision in the law for early publication?
Yes, the applicant can make a request for early publication in Form 9 along with the prescribed fee.
After receiving such request the Patent Office publishes such application within a period of one month
provided the invention contained thereon does not relate to atomic energy or defense purpose.
Can any invention be patented after publication or display in the public exhibition?
Generally, a patent application for the invention which has been either published or publicly displayed
cannot be filed. However the Patents Act provides a grace period of 12 months for filing of patent
application from the date of its publication in a journal or its public display in a exhibition
organized by the Government or disclosure before any learned society or published by applicant.
The details conditions are provided under Chapter VI of the Act (Section 29-34).
Should application for patent be filed before or after, publication of the details of the invention?
The application for patent should be filed before the publication of the invention and till then it should not
be disclosed or published. Disclosure of invention by publication before filing of the patent application may be
detrimental to novelty of the invention as it may no longer be considered novel due to such publication. However,
under certain conditions, there is grace period of 12 months for filing application even after publication.
Why should one patent his invention?
A1: To enjoy exclusive rights over the invention. If the inventor does not obtain patent rights for his
invention and introduces his product/process based on his invention in the market, any body can copy his
invention and exploit it commercially. To debar others from using, selling, offering for sale or manufacturing
the inventor must obtain a patent. The inventor can use it himself/herself, sell or licence it to profit commercially.
- Patents are useful in preventing your competitors from exploiting your invention.
- You can force your competitors to design around your invention (if that is possible)
which can cost them time and money.
- It may put you in a stronger position with other companies who have Patents in which you are interested.
- Customers are often impressed by 'Patented Technology' so patenting can
have a positive role to play in your marketing strategy.
- Patents are often a good 'keep off the grass' warning to other businesses. Many
competitors are now more aware of Patents and the consequences of being found to be
infringing a Patent.
How can one find out that an invention is already patented?
The person concerned can perform a preliminary search on Patent Office website in the
Indian patent data base of granted patent or Patent Office journal published every week
or by making search in the documents kept in the Patent Office Search and Reference Room,
which contains Indian patents arranged according to international patent classification
system as well in serial number. It is open to the general public from Monday to Friday,
except Gazetted holidays. The public can also conduct search free of charge on the website
of Patent Office. The person concerned can also make a request for such information under
section 153 of the Act.
Invention means a new product or process involving inventive step and capable of industrial
application. Not all inventions are patentable. For an invention to be patentable, it must be new,
useful and non-obvious. Invention means a new product or process involving inventive step and capable of
industrial application. Inventive step is defined as a feature of an invention that involves technical advance
as compared to the existing knowledge or having economic significance or both and that makes the invention not
obvious to the person skilled in the art. The national laws of a number of countries prescribe limitations on
the patentability of inventions. As for example, the Indian law declares that Inventions which are frivolous
or which claim anything obviously contrary to well established natural laws as not patentable. Inventions,
the commercial exploitation of which could be contrary to public order or morality or which cause serious
prejudice to human, animal or plant life or health or to the environment are also declared as non-patentable.
Similarly there are several other specific categories of inventions, which are declared as non-patentable in India.
Not Patentable Inventions:
The following are not invention within the meaning of this Act,-
- an invention which is frivolous or which claims anything obviously contrary to well established natural laws;
- an invention the primary or intended use or commercial exploitation of which could
be contrary public order or morality or which causes serious prejudice to human, animal
or plant life or health or to the environment;
- the mere discovery of a scientific principle or the formulation of an abstract theory
or discovery of any living thing or non-living substances occurring in nature;
- the mere discovery of a new form of a known substance which does not result in the
enhancement of the known efficacy of that substance or the mere discovery of any new property
or new use for a known substance or of the mere use of a known process, machine or apparatus unless
such known process results in a new product or employs at least one new reactant.
Explanation.- For the purposes of this clause, salts, esters ethers,
polymorphs, metabolites, pure form, particle size, isomer, mixtures of isomers,
complexes, combinations and other derivatives of known substance shall be
considered to be the same substance, unless thy differ significantly in
properties with regard to efficacy.
- a substance obtained by a mere admixture resulting only in the aggregation of
the properties ] of the components thereof or a process for producing such
- the mere arrangement or re-arrangement or duplication of known devices each
functioning independently of one another in a known way;
- a method of agriculture or horticulture;
- any process for the medicinal, surgical, curative, prophylactic diagnostic,
therapeutic or other treatment of human beings or any process for a similar
treatment of animals to render them free of disease or to increase their
economic value or that of their products.
- plants and animals in whole or any part thereof other than microorganisms but
including seeds, varieties and species and essentially biological processes for
production or propagation of plants and animals;
- a mathematical or business method or a computer program per se or algorithms;
- a literary, dramatic, musical or artistic work or any other aesthetic creation
whatsoever including cinematographic works and television production;
- a mere scheme or rule or method of performing mental act or method of playing
- a presentation of information;
- topography of integrated circuits;
- an invention which in effect, is traditional knowledge or which is an
aggregation or duplication of known properties of traditionally known component
What technology is protectable under a patent?
The invention must be new, useful, and non-obvious. Typically inventions are aesthetic designs,
functional items, functional methods, or asexually reproduced plants.
Can I keep some information about my invention a secret?
There is a requirement that the invention be completely disclosed. Failure to disclose will
invalidate the resulting patent. One cannot maintain information important to the patent as
trade secret if the information was known as of the filing date.
What rights does a patent provide?
The right to prohibit (see previous question) does not automatically include the
right for the inventor to make, use, sell, import and/or offer the invention for
sale. Anyone is free, however, to engage in such activities unless there is a law prohibiting it.
Up to what extent the inventor has to disclose his/her invention to get a patent?
A10: An inventor has to disclose his/her invention in such a manner that any person, other than
the inventor, skilled in the art should be able to work the invention.
How to prepare Patent Specification?
A patent specification can be prepared by the applicant himself or his registered and authorized agent.
The patent specification generally comprises of the title of the invention indicating its technical field,
prior art, draw backs in the prior art, the solution provided by the inventor to obviate the drawbacks of
the prior art, a concise but sufficient description of the invention and its usefulness, drawings (if Any)
and details of best method of its working. The complete specification must contain at least one claim or
statement of claims defining the scope of the invention for which protection is sought for.
What is a provisional specification?
Indian Patent Law follows first to file system. Provisional specification describes the nature of the
invention to have the priority date of filing of the application in which the inventive idea has been
disclosed. It must be followed by a complete specification describing the details of the invention along
with a statement of claims within 12 months after filing of the provisional application. If the complete
specification is not filed within the prescribed period, the application is treated as deemed to have been
Is it necessary to file a provisional application?
Generally, an application filed with provisional specification is known as provisional application which
is useful in establishing a priority date for your invention. Moreover, filing of a provisional application
is useful as it gives sufficient time to the applicant to assess and evaluate the market potential of his
invention before filing complete specification. However, it is not necessary to file an application with
provisional specification and one can file application directly with complete specification.
What is "Patent Pending" and "Patent Applied for"?
The terms "Patent Pending" and "Patent Applied For" are used to inform the public that an
application for a patent has been filed. Patent protection does not start until the actual grant of a
patent. Marking of an article as patented, when it is not, is illegal and subject to penalty.
How useful is the marking of a product with "patent pending" or "patent applied for" before the grant?
Marking of a product with the words “patent pending” or “Patent applied for” after filing of
the application for patent serve as a notice to the public that an application for patent is
pending with the Patent Office but there is no legal significance of these words. The infringement
action can be initiated only after the patent is granted.
Is it possible to file International Patent Application under Patent Cooperation Treaty (PCT) in India?
Yes, It is possible to file an international application known as PCT application in India in the Patent Offices
located at Kolkata, Chennai, Mumbai and Delhi. All these offices act as Receiving Office (RO) for International
What is the Patent Cooperation Treaty (PCT)?
The PCT is an international treaty, administered by the World Intellectual Property Organization (WIPO), between
more than 125 Paris Convention countries. The PCT makes it possible to seek patent protection for an invention
simultaneously in each of a large number of countries by filing a single “international” patent application
instead of filing several separate national or regional patent applications. The granting of patents remains
under the control of the national or regional patent Offices in what is called the “national phase”.
Briefly, an outline of the PCT procedure includes the following steps:
You file an international application, complying with the PCT formality requirements, in one language,
and you pay one set of fees.
an “International Searching Authority (ISA)” (one of the world’s major patent Offices) identifies the
published documents which may have an influence on whether your invention is patentable and establishes
an opinion on your invention’s potential patentability.
as soon as possible after the expiration of 18 months from the earliest filing
date, the content of your international application is disclosed to the world.
International Preliminary Examination:
an “International Preliminary Examining Authority (IPEA)” (one of the world’s major patent
Offices), at your request, carries out an additional patentability analysis, usually on an
amended version of your application.
After the end of the PCT procedure, you start to pursue the grant of your patents directly
before the national (or regional) patent Offices of the countries in which you want to obtain them.
What can be patent in India? Which are Patentable Inventions?
An invention relating either to a product or process that is new, involving inventive step
and capable of industrial application can be patented. However, it must not fall into the
categories of inventions that are non- patentable under section 3 and 4 of the Act.
Definition of invention:
According to Indian Patent Law:
Section 2(1) (j): ‘Invention’ means a new product or process involving an
inventive step and capable of industrial application.
Section 2(1)(ja) : ‘Inventive step’ means a feature of an invention that involves technical
advance as compared to the existing knowledge or having economic significance or both and that
makes the invention not obvious to a person skilled in the art.
Section 2(1)(jl): ‘New invention’ means any invention or technology which has not been anticipated
by publication in any document or used in the country or elsewhere in the world before the date of
filing of patent application with complete specification, i.e. the subject-matter has not fallen in
public domain or that it does not form part of the state of the art.
The word ‘invention’ is an abstract concept defining a situation which cannot be explained in terms of known things.
It derives its meaning from the context or circumstances in which it is used.
According to Indian Patent Law:
Definition of invention: Section 2(1) (j): ‘Invention’ means
a new product or process involving an inventive step and capable of industrial
Section 2(1)(ja) : ‘Inventive step’ means a feature of an invention that involves technical advance
as compared to the existing knowledge or having economic significance or both and that makes the invention
not obvious to a person skilled in the art.
Section 2(1)(jl): ‘New invention’ means any invention or technology which has not been anticipated by
publication in any document or used in the country or elsewhere in the world before the date of filing
of patent application with complete specification, i.e. the subject-matter has not fallen in public
domain or that it does not form part of the state of the art.
The word ‘invention’ is an abstract concept defining a situation which cannot be explained in terms of known things.
It derives its meaning from the context or circumstances in which it is used.
When should an application for a patent be filed?
Filing of an application for a patent should be completed at the earliest possible date
and should not be delayed until the invention is fully developed for commercial working.
A provisional application can be filed with a brief synopsis disclosing the essence or the
nature of the invention.
What is the term for patent?
In India, generally the term for patent is twenty years.
Is it mandatory to obtain prior permission from the Patent Office to file application
for patent outside India or abroad?
Generally speaking, it is not necessary to obtain prior permission from the Patent Office to
file patent application abroad under following circumstances.
- Applicant is not Indian resident and invention is originated abroad about.
- If the applicant is Indian resident, a patent application has been filed in
India and six weeks period is over from that date.
- The invention does not belong to Atomic Energy or defense purpose.
In other circumstances, the prior permission is required. For further details kindly refer to
section 39 of the Patents Act, 1970.
Under what circumstances, it is necessary to obtain a prior permission from the Patent Office?
The person is required to take prior permission from the Patent Office under following circumstances.
- The applicant is Indian resident and invention is originated in India,
- Applicant does not wish to file patent application in India prior to filing abroad.
- If the applicant is Indian resident, a patent application has been filed in India and six weeks
period is not yet over from that date
- The invention relates to atomic energy or defense purpose.
Is it essential to deposit biological material in the international depository authority?
If the invention uses a biological material which is new, it is essential to deposit the same in the
International Depository Authority (IDA) prior to the filing of the application in India in order to
supplement the description. The description in the specification should contain the name and address
of the International Depository Authority and, date and number of deposition of Biological material.
If such biological material is already known, in such case it is not essential to deposit the same.
Is there any International Depository Authority in India?
Yes, there is an International Depository Authority in India located at
Chandigarh which is known as Institute of Microbial Technology (IMTECH).
Can patent rights be transferred?
The proprietor of a patent or its registered grantee can assign, license or mortgage the patent
for any consideration. This power is wide enough to include transfer of patent rights in whole or
in part, or a licensing of patent whether exclusively to one person or several persons. The creation of
any interest in a patent, including assignment, license or mortgage is not valid unless it satisfies the
following requirements: 1. The assignment, mortgage or license is reduced to writing in a document and
embodies all the terms and conditions between the parties. 2. The application for the registration of
the document is filed within six months of its execution.
What is considered as the date of patent?
The date of patent is the priority date, which is the date on which first application (provisional / Complete
/ PCT) filed disclosing the invention. However, the date of publication is also important because it is from
this date that the legal protection of an invention disclosed in the patent takes effect. The term of the patent
is counted from this date of application.
What is the nature of information needed while consulting a patent attorney?
- An explanation of the history of the invention, where you got the idea from, how you
developed it, any early failures and possibly prototypes, with all your laboratory note
books, etc., if possible. This will help the patent agent to explain the inventive step
which is necessary for obtaining the patent. It also increases his or her understanding
of the invention so as to maximize the skill with which he or she can draft claims and
specifications for it.
- What you think is the most inventive element or most useful aspect, together with
what other similar prior inventions you know of or have developed the idea from or improved upon.
If you have developed an improved version of your competitor's products, admit it; be totally honest.
It is vital to be such so that the patent agent can describe your invention properly while drafting the
application and avoid excessive claims which might be struck down.
- Drawings if any, which may illustrate the invention, should be attached.
What are advantages of Patent to Inventor and/or Applicant?
To the inventor a patent system confers certain definite advantages. The incentive for technological
innovations is monetary reward. It is not compulsory for an invention to be patented. An inventor may
use his invention secretly for as long as he can keep it secret. But the chances of keeping the formula
secret are meager especially when he has to engage workmen to carry out the invention. In the case of
machines or apparatus it is well-night impossible to keep the invention secret since knowledge of the
invention may be obtained by dismantling the machine. If other people start manufacturing the article
by independent discovery or by pilferage of the secret, the original inventor has no effective legal
remedy. There is also the danger of a competitor taking out a patent for the article and suing the secret
user for infringement. On the other hand, if a patent is obtained for the invention the patentee gets the
exclusive right to use the invention for a definite period, which right can be lawfully enforced against
infringers. If he has not the financial resources to work the patent, he can get monetary reward by granting
licences to others or by assigning the patent.
Is patent application once filed is examined automatically?
The patent application is not examined automatically after its filing. The examination is
done only after receipt of the request of examination either from the applicant or from third party.
When the request for examination can be filed?
The request for examination can be filed within a period of 48 months from the date of priority or
date of filing of the application whichever is earlier. For more details kindly refer to rule 24B of the
Patents Rules 2003 as amended up to 2006.
What happens to a patent application once it is examined?
After examination, the Patent office issues an examination report to the applicant which is generally
known as First Examination Report (FER). Thereafter the applicant is required to comply with the
requirements within a period of twelve months from the date of FER. In case, the application is
found to be in order for grant, the patent is granted, provided there is no pre-grant opposition
is filed or pending. A letter patent is issued to the applicant. However, in case a pre-grant
opposition is pending, the further action is taken after disposition of the pre-grant opposition.
What happens when applicant is not able to meet the requirement within the prescribed time?
If the applicant is not able to comply with or meet the requirement within 12 months, or does not submit
the documents which were sent to him for compliance within the said period, the application is deemed to
have been abandoned.
Is there provision for extension beyond time limit of 12 months?
There is no provision for extension of time beyond the period of 12 months.
Does applicant get an opportunity of being heard before his application is refused?
If applicant has not complied with the requirements within the prescribed time, and no request
for hearing has been made by the applicant, the controller may not provide the opportunity of
being heard. However the Controller shall provide an opportunity of being heard to the applicant
before refusing his application if a request for such hearing has been made by the applicant at
least 10 days in advance before expiry of the statutory period.
What are the various stages involved in the grant of patent?
After filing the application for the grant of patent, a request for examination is required to be made by the applicant or by third
party and thereafter it is taken up for examination by the Patent office. Usually, the First Examination Report is issued and the applicant is
given an opportunity to correct the deficiencies in order to meet the objections raised in the said report. The applicant must comply with
the requirements within the prescribed time otherwise his application would be treated as deemed to have been abandoned. When all the
requirements are met, the patent is granted and notified in the Patent office Journal. However before the grant of patent and after
the publication of application, any person can make a representation for pre-grant opposition.
What is time limit for filing the representation for pre-grant opposition?
A representation for pre-grant opposition can be filed within six months from the date of publication of
the application u/s 11A or before the grant of patent. The grounds on which the representation can be filed
are provided u/s 25(1) of the Patents Act 1970.
Is there any fee for filing such representation for pre-grant opposition?
There is no fee for filing representation for pre-grant opposition? This can be filed by any person.
What are the grounds for filing representation for pre-grant opposition?
The grounds for filing post-grant opposition are contained in section 25(1) of the Patents Act 1970.
Is it possible to file pre-grant opposition even though there is no request for examination filed?
Yes, it is possible to file representation for pre-grant opposition even though there is no request
for examination has been filed. However, the representation will be considered only when a request
for examination is received within the prescribed period.
What is the time limit for filing post-grant opposition in the patent office?
The time for filing post-grant opposition is 12 months from the date of publication of the
grant of patent in the official journal of the patent office.
Is there any fee for filing post-grant opposition?
The post grant opposition has to be filed in the prescribed form 7 along with prescribed
fees of Rs.1500 for natural person and Rs.6000 for person other than natural person. The post
grant opposition has to be filed by the person interested and not by any other person.
What are the grounds for filing the post grant opposition?
The grounds for filing post-grant opposition are contained in section 25(2) of the Patents Act 1970.
What are obligations of the patentee after the grant of patent?
After the grant of patent, every patentee has to maintain the patent by paying renewal fee
every year as prescribed in the schedule I. For first two years, there is no renewal fee.
The renewal fee is payable from 3rd year onwards. In case the renewal fee is not paid the
patent will be ceased.
Can the patentee pay renewal fee at a time or has to pay every year?
The patentee has choice to pay the renewal fees every year or he can pay in lump sum as well.
When a patent can be restored after its cessation?
A request for restoration of patent can be filed within 18 months from the date of cessation of
patent along with the prescribed fee. After receipt of the request the matter is notified in the
official journal for further processing of the request.