Guidelines for Filing Patent Applications in India

In the field of patents, India implements the Patents Act, 1970, which is also the core law for handling patent applications in India. In India, patent examination is divided into two main stages: pre-grant examination and post-grant examination.

1. Pre-Grant Prosecution

1. Pre-grant examination is the most initial and comprehensive part of all patent application procedures. It involves all the steps that must be taken before the patent is granted. This stage is crucial because it determines whether the patent application will be granted or rejected. It includes the following procedures:

a. Submission and Patent Publication

• The first step in the patent examination process is to file a patent application. In India, applicants can file a patent application with the Indian Patent Office (IPO) in any of the four jurisdictions: Delhi, Mumbai, Chennai or Kolkata. A patent application must include a detailed description and claims that define the scope of protection sought by the applicant.
• Once a patent application is filed, it will be assigned an India filing date and an India application number. It will be published 18 months after the filing date or the priority date (whichever is earlier). An applicant can request for early publication, in which case the patent application will be published within one month of the request. Publication of a patent application means that the details of the invention are published, which is a crucial step that marks the beginning of patent protection, although patent rights can only be enforced after the patent is granted.

b. Request for substantive examination

• Patent applications in India do not proceed automatically. Applicants must formally file a request for substantive examination within 31 months from the filing date or priority date (whichever is earlier). Submitting a request for examination (RFE) is essential. The Indian Patent Office will start substantive examination after receiving the request for substantive examination. If the applicant fails to file a request for examination within the prescribed period, the patent application will be deemed withdrawn.
• The Indian Patent Office will examine the patent applications sequentially based on the date of submission of the RFE to assess the patentability of the invention, including determining whether the invention is novel, inventive, and industrially applicable, etc.

c. Search and substantive examination

• At this stage, the examiner conducts a thorough search of the prior art, including any existing patents, publications or public knowledge that may be relevant to the invention. The purpose is to determine whether the invention is novel under Section 2(1)(ja) of the Indian Patents Act, 1970 and whether the prior art involves an inventive step under Section 2(1)(j).
• Substantive examination also includes assessing whether the subject matter of the patent application falls within one of the unpatentable categories specified under Section 3 of the Act and examining whether the claims are clearly defined and within the scope of the invention in accordance with Section 10 of the Act.

d. Issue review opinions

• After the substantive examination, the examiner will issue an examination opinion, usually called the First Examination Report (FER), together with a search report, including the examination results of other countries submitted by the applicant to obtain the authorization of the application or the opposition request filed by a third party. The opposition request may involve the patentability of the invention, the clarity of the claims, the sufficiency and certainty of the disclosure, or formal issues such as improper format, incorrect submission or incomplete documents.

e. Response to review comments

• The applicant must respond to the examination opinion within the prescribed 6 months. The applicant may request an extension and extend the response period by 3 months after paying the corresponding official fees. The response to the examination opinion includes amendments to the claims or description, or statements of opinion to overcome the objections mentioned in the examination opinion.
• Applicants are required to carefully address each response to the examination opinion and provide sufficient reasons why the invention patent should be granted. Failure to respond within the prescribed time will result in the application being deemed abandoned.

f. Subsequent Review Report or Hearing

• After receiving the applicant's response, the Indian Patent Office will examine the patent application again. If the applicant has overcome the issues in the examination opinion, the patent application will be granted. If the examination opinion is not adequately addressed, the examiner will issue a subsequent examination opinion requiring further amendments. However, issuing a subsequent examination opinion is very rare.
• In most cases, if the examiner of the Indian Patent Office is not satisfied with the applicant's response to the FER, or the applicant has not resolved any objection, the examiner will issue a hearing notice. During the hearing, the applicant or his agent can directly present arguments to the hearing and clarify all unresolved issues. Based on the results of the hearing, the applicant is required to submit a written statement within 15 days after the hearing, and this period can be extended to one month by requesting an extension.

g. Pre-grant objection

• Before a patent is granted, any third party has the right to file a pre-grant opposition to a patent application. Anyone can file an opposition request after a patent application is published and before the patent is granted. The grounds for an opposition request vary, including lack of novelty, lack of inventiveness, insufficient disclosure, or prior public use of the invention.
• Pre-grant oppositions ensure that only inventions worthy of patent protection are granted patent protection. The Patent Office examines the opposition and the applicant’s response and makes a decision.

h. Grant/Rejection

• After considering the examination report, the response to the hearing, and any opposition proceedings, the Patent Office will make a final decision on whether to grant the patent. If the patent application has met all the requirements of the Indian Patent Act, the patent application will be granted and a patent certificate will be issued. Otherwise, the patent application will be rejected and the reasons for the rejection will be notified to the applicant.

2. Rights of Indian Patent Owners

• The exclusive rights granted to patent owners in India are listed below. These rights provide the patent owner with control over the use and commercialization of his invention for a limited period (20 years from the filing date) and include:
  • Proprietary rights to prevent unauthorized use
  • Patent licensing rights
  • Patent transfer rights
  • Right to sue for infringement
  • Patent use rights
  • The right to compensation for government use
  • Waiver of patent rights

3. Patent term and renewal period

• In India, the patent term for ordinary patents and standard patents is 20 years from the date of patent application. After the patent is granted, annual fees must be paid every year from the 3rd to the 20th year to maintain the patent rights, and the annual fees must be paid before the expiration of each year. If the annual fees are not paid within the time limit, the patent rights will automatically expire. The applicant can file a request for restoration of the rights of the expired patent, and the patent rights can be restored after paying the restoration fee. During the period from the revocation of the patent to the restoration, the patent owner shall not sue anyone for infringement of his patent.

2. Post-Grant Prosecution

• Once a patent is granted, the post-grant examination phase begins. This phase involves managing and protecting the granted patent and making necessary amendments to it.
• Post-Grant Opposition
  • Even if a patent is granted, it may still be challenged through post-grant opposition proceedings. Any interested party may file a post-grant opposition within 12 months from the date of the patent grant announcement. The grounds for a post-grant opposition request are the same as those for a pre-grant opposition request.
  • Opposition proceedings may involve several rounds of arguments and the submission of evidence. The final decision is made by the Patent Office: to maintain the patent, to amend the patent, or to revoke the patent.