in India: Laws , Procedures, Registering and Challenging
Intellectual Property Laws in India
The Patent system in India is governed by the Patents
Act, 1970 (No 39 of 1970) & The Patents Rules 1972, effective from April
20,1972. Subsequently The Patents Act, 1970 is amended effective from January
1, 1995 & The Patents Rules, 1972 is amended effective from June 2,
India Simplifies Patent Norms
India notified the Patents (Amendment) Rules 2006, bringing in changes to provide transparency,
decentralization of the functioning of patent offices and simplify the procedures making them user-friendly.
As per the changes notified under the Patents (Amendment) Rules, 2006, patent applications are now to be
mandatory published within one month after expiry of the statutory period of 18 months.
In case of request for an early publication, the application is to be published within one month from the date of request. This step will introduce an element of certainty regarding the date of publication, which was hitherto not available.
Further, with a view to enforcing transparency and ensuring time bound disposal of patent applications, definitive time frames have been prescribed for various activities by the patent offices.
A patent application now has to be referred to an examiner within one month of a request for its examination and the controller will be required to take a decision within one month of its submission, it said, adding that the first examination report must be issued in six months of the date of request for examination of a patent.
The Patent Office, under the Ministry of Commerce & Industry, Department
of Industrial Policy & Promotion, has been established to administer
the various provisions of the Patents Law relating to the grant of Patents
& The Designs Law, relating to the registration of Industrial Designs.
MEMBERSHIP OF INTERNATIONAL TREATIES
India is member of the following treaties governing patents:
Convention establishing World Intellectual Property Organization (WIPO)
Trips Agreement under the World Trade Organization.
Paris Convention for the protection of Industrial Property with effect from
Dec. 7, 1998.
Patent Cooperation Treaty (PCT) with effective from Dec. 7, 1998.
TYPES OF PATENTS
Patents of addition
WHO CAN APPLY
Application may be made, either alone or jointly with another, by the inventor,
assignee, legal representative of deceased inventor or assignee. The inventor
is entitled to be mentioned in the patent if he applies to do so.
Application may be made jointly by two or more corporations as assignees.
An invention means any new and useful art, process, method or manner
of manufacture; machine, apparatus or other article; or substance
produced by manufacture, and includes any new and useful improvement
of any of them, and an alleged invention.
invention means any new and useful art, process, method or manner of
manufacture; machine, apparatus or other article; or substance produced by
manufacture, and includes any new and useful improvement of any of them, and
an alleged invention.
WHAT IS NOT PATENTABLE
(1) An invention that is frivolous or that claims anything obviously contrary
to well-established natural laws;
(2) An invention the primary or intended use of which would be contrary to
law or morality or injurious to public health;
(3) The mere discovery of a scientific principle or the formulation of an
(4) 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;
(5) 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
(6) The mere arrangement or rearrangement or duplication of known devices,
each functioning independently of one another in a known way;
(7) A method or process of testing applicable during the process of manufacture
for rendering the machine, apparatus or other equipment more efficient, or
for the improvement or restoration of the existing machine, apparatus or
other equipment, or for the improvement or control of manufacture;
(8) A method of agriculture or horticulture;
(9) Inventions relating to atomic energy.
In the case of inventions relating to substances prepared or produced by
chemical processes (including alloys, optical glass, semiconductors and
inter-metallic compounds) & substances intended for use or capable of
being used as food. No patent will be granted in respect of claims for the
substances themselves, but claims for the methods or processes of manufacture
will be patented.
DOCUMENTS REQUIRED FOR FILING AN APPLICATION
Application form in triplicate.
Provisional or complete specification in triplicate. If the provisional
specification is filed it must be followed by complete specification within
12 months (15 months with extension).
Drawing in triplicate (if necessary).
Abstract of the invention (in triplicate).
Information and undertaking listing the number, filing date and current status
of each foreign patent application in duplicate.
Priority document (if priority date is claimed).
Declaration of inventorship where provisional specification is followed by
complete specification or in case of convention application.
Power of attorney (if filed through Patent Agent).
Fee in cash/by local cheque/by demand draft.
APPROPRIATE OFFICE FOR FILING AN APPLICATION
Application is required to be filed according to the territorial limits where
the applicant or the first mentioned applicant in case of joint applicants
for a patent normally resides or has domicile or has a place of business
or the place from where the invention actually originated .If the applicant
for the patent or party in a proceeding having no business, place or domicile
in India., the appropriate office will be according to the address of service
in India given by the applicant or party in a proceeding.
EXAMINATION & PUBLICATION
All the applications for patent accompanied by complete specification are
examined substantively. A first examination report stating the objection(s)
is communicated to the applicant or his agents. Application or complete
specification may be amended in order to meet the objection(s). Normally
all the objections must be met within 15 months from the date of first
examination report. Extension of time for three months is available, but
application for extension therefore must be made before the expiry of normal
period of 15 months. If all the objections are not complied with within the
normal period or within the extended period the application will be deemed
to have been abandoned. When the application is found to be suitable for
acceptance it is published in the gazette of India (Part III, Section2).
It is deemed laid open to the public on the date of publication in the gazette
Notice of opposition must be filed within four months of notification in
the Gazette. Extension of one month is available, but must be applied for
before expiry of initial four month period.
GRANT OR SEALING OF PATENT
If the application is not opposed or the opposition is decided in favour
of the applicant or is not refused the patent is granted or sealed on payment
of sealing fee within 6 months from the date of advertisement. However, it
is extendable by three months.
REGISTER OF PATENTS
The Register of Patents will be kept in the Patent Office and its branch
offices. Register of Patents can be inspected or extract from it can be obtained
on payment of prescribed fee. Register of Patents contains full details of
the Patent which include Patent number, the names and addresses of the patentee;
notification of assignment etc.; renewals, particulars in respect of
proprietorship of patent etc.
RIGHTS OF PATENTEE
A patent grant gives the patentee the exclusive right to make or use the
patented article or use the patented process. He can prevent all others from
making or using the patented process. A patentee has also the right to assign
the patent, grant licenses under, or otherwise deal with it for any
consideration. These rights created by statute are circumscribed by various
conditions and limitations.
Renewal fees are payable every year. The first renewal fee is payable for
third year of the patents life, and must be paid before the patents
second anniversary. If the patent has not been issued within that period,
renewal fees may be accumulated and paid immediately after the patent is
sealed, or within three months of its recordal in the Register of the Patents.
Date of payment of Renewal fees is measured from the date of the patent.
Six months grace is available with Extension fee. No renewal fees are
payable on patents of addition, unless the original patent is revoked and
the patent of addition is converted into an independent patent; renewal fees
then become payable for the remainder of the term of the main patent.
No renewal fees are payable during the pendency of the application for a
patent; renewal fees that become overdue during pendency are payable upon
sealing within three months of recordal in the Patent Register.
Annual reports as to the extent of working, by every patentee and licensee,
are a statutory requirement and must be submitted by March, 31 each year
for the previous year ending December, 31.
COMPULSORY LICENSE AND LICENSE OF RIGHT
On failure to work a patent within three years from the date of its sealing,
an interested party may file petition for grant of a compulsory license.
Every patent for an invention relating to a method or process for manufacture
of substances intended for use, or capable of being used, as food, medicines,
or drugs, or relating to substances prepared or produced by chemical process
(including alloys, optical glass, semi-conductors and inter-metallic compounds)
shall be deemed to be endorsed "Licenses of Right" from the date of expiry
of three years from the date of sealing the patent.
Applications must be filed on the prescribed form with the Controller for
the registration of assignments and any other documents creating an interest
in a patent in order for them to be valid. In order to be valid, an assignment
must be recorded within six months from the date of the document. A six-months
extension may be obtained.
Applications must be filed on the prescribed form with the Controller for
the registration of licenses and any other documents creating an interest
in a patent in order for them to be valid. A license must be recorded within
six months from the date of the document.
A patent lasts for 14 years from the date of filing the complete specification
(if an application is filed with provisional specification on January 1,
1989, and a complete specification is filed on January 1, 1990, the duration
is counted from January 1, 1990). However, for food, drug and insecticide
patents, the life is seven years from the date of complete specification,
or five years from date of sealing, whichever is shorter.
Application for restoration of a patent that lapses due to nonpayment of
renewal fees must be made within one year of lapse. If an overdue annuity
is not paid within the extension period, the one-year period for seeking
restoration commences from the date of recordal.
Infringement can consist of taking away essential features of the patented
invention; utilizing claimed features; copying patented substances; mechanical
equivalence; taking part of the invention. while the patent is in force.
Use by the government or for government purposes is not infringement. Such
use must be paid for on terms to be agreed upon before or after use. Accidental
or temporary use, use for research, use on foreign vessels, do not constitute
Appeal lies in the High Court. Appeal must be lodged within three months
from the decision of the Controller.
Intellectual Property Attorneys
Our lawyers include those admitted to bar in in India, and the
United States of America. They understand the multi-cultural and
the multi-jurisdictional aspects of international business in
this age of globalization. They those educated at Harvard Law
School, Harvard University in the USA and premier universities
For filing Trademarks and Patents in India contact us