INTRODUCTION (Why Patents?)

The Indian law governing and safeguarding inventions is enshrined in the Patents Act, 1970. A patent provides a right to an inventor(s) to exclude others from exploiting the patented invention. Therefore, anyone other than the inventor cannot use, make or sell the patented invention without permission from the inventor. The exclusive right obtained via patenting the said invention will give the right to commercialize the same exclusively and hence higher returns in the market by virtue of having the monopoly.     

Patentability Criteria

The Act under its legal provisions, perceives the invention in somewhat this manner: For an invention to be protected under the Act it must be

• Novel [Section 2 (l)]
• Inventive including the inventive step [Section 2 (j) and Section 2 (ja)]
• Industrially applicable [Section 2 (ac)]

Along with the above patentability criteria, the Act also maintains a balance between monopolistic rights and rights of society. That is the subject matter of the invention must be an acceptable subject matter for being patentable under the Act (Section 3). Inventions which are frivolous or claim anything contrary to well established natural laws are not patentable.

In order to establish a balance between the monopolistic rights and societal obligations, the Indian Patent Law also lists out certain inventions which won’t be acceptable as inventions as per the provisions of section 3 of the Act. Therefore an invention shall, in order to obtain patent, not only be fulfilling the patentability criteria but also make sure that the subject matter shall not be falling under section 3 of the Act.  

PATENT FILING PROCEDURE AND REQUIREMENTS

Who may file?

As per section 6 of the Patent Act, 1970 the patent application can be filed either alone or jointly by true and first inventor or his assignee. Moreover, the inventors are also acknowledged in the patent application form and can be in any number.

How to File?

Patent Search: While talking about the patent prosecution, the first and the foremost thing advisable is to ascertain the patent feasibility of the invention. The process typically begins (and should generally) with searching for the similar/substantially related inventions to distinguish the invention form already existing ones. Once a clear technical advancement and comparison is established it really soothes the way forward.

Patent Specification: The next step is to file patent specifications which involves disclosing the technicalities of the invention to the patent office along with filing of a Power of Attorney (form 26), if filing through a patent agent. It can be either Provisional specification or Complete Specification depending on the sufficiency of description. Along with technical aspects all legal requirements of the Act are also to be taken into consideration. By legal requirements it is mandatory to consider sufficiency of disclosure while drafting the specification. The best method of working should be explained along with keeping in mind the aspect of unity of invention.

• Provisional Specification (Form 1) is often the first application filed in respect of an invention, and usually contains only a brief description of the invention. Generally, the provisional specification is filed to procure the priority date as the patent rights starts from priority date of the application until 20 years from it.
• Complete specification (Form 2) is to be filed within 12 months from the date of filing of the provisional specification (Section 7 of the Act). It comprises of a title, field of invention, the background of the invention, the description of the related art, drawbacks of the prior art, the summary of the invention, the brief description of the figures, the detailed description of the preferred embodiments, claims and abstract. The description and the appended drawings may be used to interpret the claims. (Section 9 and 10). Claims are the most significant element in the patent specification as it is the legal operative part which define and determine the legal protection sought for. The extent of patent protection for an invention shall be determined by the terms of the claims.

Publication: After the filing of the patent application, the patent is published in an official patent journal after 18 months of filing of the first application (provisional specifications). Once published the application is open for third party opposition if any.

Examination: A request for examination of the patent application is to be filed in Form 18. The applications are examined substantively and a first examination report stating the objections is communicated to the Applicant. Application may be amended (Form 13) in order to meet the objections within six months’ time (extendable max three months).

Order: After examining the patent application, if the examiner finds no objections with the original patent application or amended claims, patent is granted. The patent is then published in the official patent gazette. And after getting the grant of patent a patentee can exercise an exclusive right over the said patent for 20 years from the date of filing the patent application and hence become the exclusive owner in order to earn the monetary gains via commercializing the same.