RESEARCH METHODOLOGY & INTELLECTUAL PROPERTY RIGHTS [22RIP]

MODULE – 3

Contents: Introduction To Intellectual Property: Role of IP in the Economic and Cultural

Development of the Society, IP Governance, IP as a Global Indicator of Innovation, Origin of IP,
Major Amendments in IP Laws and Acts in India. Patents: Conditions for Obtaining a Patent
Protection, To Patent or Not to Patent an Invention. Rights Associated with Patents. Enforcement
of Patent Rights. Inventions Eligible for Patenting. Non-Patentable Matters. Patent
Infringements. Process of Patenting: Prior Art Search. Choice of Application to be Filed. Patent
Application Forms. Jurisdiction of Filing Patent Application. Publication. Pre-grant Opposition.
Examination. Grant of a Patent. Validity of Patent Protection. Post-grant Opposition. Do I Need
First to File a Patent in India. Patent Related Forms. Fee Structure. Types of Patent
Applications.

1. INTRODUCTION TO INTELLECTUAL PROPERTY

What is Intellectual Property (IP)?
➢ Intellectual Property refers to creations of the mind, such as inventions, artistic works,
designs, symbols, and names used in commerce.
➢ Unlike physical property (like land, cars, or gold), IP is intangible, meaning it cannot be
physically touched or seen. However, it holds significant value and can be owned and
traded.

What are Intellectual Property Rights (IPR)?

➢ Intellectual Property Rights are legal rights granted to creators and inventors, giving them
exclusive control over the use of their creations.
➢ These rights allow the creator to use, sell, or distribute their work, and prevent others
from using it without permission.
➢ In return for these rights, the inventor must publicly disclose the process or details of
their creation.

Types of Intellectual Property IP can be broadly categorized into two main branches:
➢ Copyrights and Related Rights: This category includes the protection of creative works in
literature, art, and music.
➢ Examples: Books, films, music, sculptures, architecture, and software.

➢ Industrial Property Rights: This category focuses on innovations and branding in industry
and commerce.
➢ Examples: Patents (for inventions), Trademarks (for brand names and logos), Industrial
Designs (for product design), and Geographical Indications (for products linked to a
specific location).

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Why is IP Important?
➢ Intellectual Property fosters innovation by ensuring creators are rewarded for their
efforts.
➢ It promotes economic growth by allowing creators to monetize their ideas.
➢ It also protects consumers by ensuring they are buying genuine, original products.

1.1. Role of IP in the Economic and Cultural Development of the Society

Creativity and Progress
➢ Creativity is the foundation of progress in any society. Economic and social development
heavily depends on encouraging and protecting creativity.
➢ Intellectual Property Rights (IPR) play a key role by protecting the work of creators and
innovators. This protection acts as an incentive, motivating them to continue creating and
inspiring others to come up with new ideas.

Impact of Rigid IPR

➢ While IPR is essential for encouraging innovation, if applied too rigidly, it can sometimes
hinder societal progress.
➢ Example: The Trade-Related Aspects of Intellectual Property Rights (TRIPS) Agreement
has negatively impacted farmers. Under TRIPS, they are often unable to store seeds for
the next crop season. Multinational companies set high prices for seeds, making them
unaffordable for many farmers.

Balancing Creator and Community Interests

➢ To counterbalance the potential negative impacts of IPR, laws, exceptions, and
limitations have been enacted. These measures ensure that the interests of both creators
and the community are protected.
➢ Example: The Protection of Plant Varieties and Farmers' Rights (PVP&FR) Act, 2001
grants farmers the right to save, use, share, and sell seeds. It also protects them from legal
accusations due to unintentional infringement of IPR.
➢ Example: Educational and religious uses of copyrighted materials are exempt from
restrictions under the Copyright Act.
➢ Example: In emergencies, the government can revoke patents and issue compulsory
licenses to ensure public access to essential inventions.

Restrictions on Harmful Innovations

➢ Not all creations are granted IP protection. If an invention or creation is deemed harmful
to society, it may not be registered for IP rights.
➢ Example: Cloning of human embryos and the creation of harmful microbial pathogens
are banned from IP protection due to their potential risks to human life.

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Protecting Traditional Knowledge (TK) and Biodiversity

➢ India is rich in biodiversity and Traditional Knowledge (TK), which refers to the local
practices and wisdom passed down through generations. However, these valuable
resources are increasingly coming under IPR regulations, sometimes conflicting with
traditional practices.
➢ To protect TK and genetic resources, it's important to establish strong legal frameworks
and enforcement measures.

Initiatives for Economic Growth

➢ Government initiatives like ‘Make in India’ and ‘Atmanirbhar Bharat’ aim to boost local
innovation and manufacturing. By making it easier for creators to register patents and
trademarks, these programs help society benefit from its resources.

1.2. IP Governance
IP Governance in India
➢ Intellectual Property (IP) is crucial for societal progress, so every nation has dedicated
agencies to manage IP-related matters.
➢ In India, the Department for Promotion of Industry & Internal Trade (DPIIT), under the
Ministry of Commerce and Industry, Government of India, is responsible for governing
most categories of IP, except the Plant Variety and Farmers' Rights Act.
➢ Several other organizations work to promote a strong patent ecosystem in India. These
include:
o Technology Information Forecasting and Assessment Council (TIFAC): Focuses
on forecasting and assessing technology trends.
o National Research Development Corporation (NRDC): Aims to promote, develop,
and commercialize technologies.
o Cell for IPR Promotion and Management (CIPAM): Works to spread awareness
about IP and help with IP filing and commercialization.

Global IP Governance
➢ Since IP is a global concern, it’s important to have consistent rules and standards across
countries to ensure smooth international cooperation.
➢ The World Intellectual Property Organization (WIPO), a specialized agency of the United
Nations (UN), is responsible for governing international IP matters.
➢ WIPO sets global standards and facilitates international filing and registration of IP
through various conventions and treaties, including:
o Paris Convention: Provides a framework for the protection of industrial property.
o Patent Cooperation Treaty (PCT): Simplifies the process of applying for patents in
multiple countries.
o Berne Convention: Focuses on the protection of literary and artistic works.

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o Rome Convention: Protects the rights of performers, producers of phonograms,

and broadcasting organizations.

Why is IP Governance Important?

➢ Effective IP governance ensures that creators and inventors can protect and profit from
their innovations while also maintaining a fair balance with the interests of society.
➢ Strong IP governance at both national and international levels helps prevent IP theft,
promotes innovation, and supports economic growth.

1.3. IP as a Global Indicator of Innovation

IP and Innovation
➢ Intellectual Property (IP), especially patents, is a key measure of a nation's innovation
capacity.
➢ Global ranking organizations use IP as a critical factor when assessing a country’s
Science, Technology, and Innovation (STI) ecosystem.

Global Rankings and IP

➢ For instance, in the Scimago 2020 report (an online platform that ranks journals and
countries based on Scopus data):
➢ India ranked 4th in terms of the number of research publications.
➢ However, India ranked 50th in Intellectual Property Rights (IPR), indicating room for
improvement in IP-related activities.

Improving Global Rankings

➢ To improve global rankings and foster innovation, it’s essential to:
➢ Raise awareness about the importance of IP among educators and researchers.
➢ Develop infrastructure in higher education institutions to support IP creation, protection,
and commercialization.

A strong focus on IP helps a nation protect its innovations, attract investments, and enhance its
competitive edge globally. By improving IP awareness and infrastructure, a country can boost its
overall innovation performance.

1.4. Origin of IP
Early Beginnings
➢ The exact origin of Intellectual Property (IP) is not well-documented, but early forms of
IP protection are believed to date back to around 500 BCE in Sybaris, an ancient Greek
state.
➢ In Sybaris, people were granted one year of protection for using their intellect to create
new luxury improvements. This can be considered an early example of IP protection.

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Medieval Europe and the Birth of IP Governance

➢ The modern concept of IP governance began to take shape in medieval Europe.
➢ In 1623, Britain passed an Intellectual Property Legislation that allowed guilds
(associations of artisans or merchants) to innovate and bring their creations to market.
However, this legislation faced public backlash and was replaced by the Statute of
Monopolies.

Statute of Monopolies (1624)

➢ The Statute of Monopolies granted inventors exclusive rights to their creations for 14
years. This marked a significant shift towards protecting the rights of individual creators
rather than guilds.

Statute of Anne (1710)

➢ In 1710, the British Parliament passed the Statute of Anne, which focused on copyright
protection. This law granted authors exclusive rights to reproduce and distribute their
work, with the option to renew these rights for another 14 years.

Global Spread of IP Legislation

➢ By the late 18th and early 19th centuries, countries around the world began to establish
their own IP laws to protect new inventions and creative works. This global trend helped
shape the modern IP system we use today.

1.5. Major Amendments in IP Laws and Acts in India

Over the years, Indian Intellectual Property (IP) laws have undergone several amendments to
address gaps and adapt to new social and political conditions. Here’s a summary of key historical
developments in Indian IP laws:
Table 1. History of Laws and Acts pertaining to intellectual property in India
[[Link]
Sl. No. Year Historical Proceedings
Patents
A legal right granted to an inventor, giving them exclusive control over the use, production, and sale of
their invention for a specific period, usually 20 years.
1. 1856 The first patent law in India, based on British law, introduced to protect inventions.
Patent rights renamed as 'Exclusive Privileges' with an extended priority period of 12
2. 1859
months.
The Patents and Designs Protection Act introduced the concept of novelty in
3. 1883
inventions and a 6-month grace period for disclosure.
Renamed as the 'Indian Patent and Design Act,' under the control of the Controller of
4. 1911
Patents.
5. 1930 Introduction of 'Patent of Addition,' government use rights, and extension of patent

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protection to 16 years.
Provisional specifications could be filed to secure a priority date, with a 9-month
6. 1945
period to submit complete specifications.
A committee led by Justice Bakshi Tek Chand was formed to review the patent
7. 1949
system.
Introduction of a 'working statement' and endorsement of patents with 'License of
8. 1950
Right' by the government.
Compulsory licensing introduced for food, medicine, and insecticides; inclusion of
9. 1952
surgical or curative inventions.
10. 1965 A new patent bill introduced in Lok Sabha but not cleared.
Resubmitted to the Parliamentary Committee; 1911 Act remained applicable for
11. 1967
designs.
12. 1970 The Patent Act, 1970, passed by the Parliament, modernizing India's patent laws.
13. 1972 The Patent Act, 1970, came into force with the introduction of new patent rules.
India signed the TRIPS Agreement and received a transition period (1995-2005) to
14. 1995
align domestic laws with TRIPS.
Introduced provisions for product patents in pharmaceuticals and agrochemicals,
15. 1999
including EMRs (Exclusive Marketing Rights).
Uniform 20-year patent term for all inventions; compulsory disclosure of the source
16. 2002 and origin of biological material; establishment of the Appellate Board; strengthened
compulsory licensing provisions.
17. 2003 Introduction of the Patents Rules, 2003.
Product patents expanded to all fields of technology, including food, drugs, chemicals,
18. 2005 and microorganisms. Measures to prevent 'evergreening' of patents, along with pre-
grant and post-grant opposition provisions, were introduced.
Copyrights and Related Rights
A legal protection given to creators of original works (like books, music, art) that gives them exclusive
rights to use, distribute, and reproduce their work.
The concept of Copyrights in India was introduced; validity was Lifetime+7 years but
19. 1847
not more than 42 years in total.
Copyright Act, 1914, introduced based on the Imperial Copyright Act, 1911, of the
20. 1914
UK.
21. 1957 Copyright Act, 1914, replaced with Copyright Act, 1957, with minor modifications.
22. 1984 Penalty introduced on second and subsequent conviction for copyright infringement.
23. 1994 Registration of Copyright Society made mandatory.
Amendments to comply with international treaties for digital copyright protection;
24. 2012 royalties for authors and composers ensured; exceptions made for physically disabled
persons.
25. 2013 Copyrights Rules, 2013, introduced.
Trademarks
A symbol, name, or logo legally registered or established by use as representing a company or product,
protecting it from being used by others.

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26. 1940 Trademarks Registry established in India.

27. 1958 The Trade and Merchandise Marks Act, 1958, enacted as per TRIPS Agreement.
28. 1999 Amended to avoid duplicity and ensure securing proprietors' trade and goodwill.
29. 2002 Trademarks Rules introduced.
Amended to comply with Madrid Protocol for international filing; provision for filing
30. 2010
opposition within 4 months.
31. 2013 Trademarks Rules, 2013, introduced.
Geographical Indications
A label used on products that have a specific geographical origin and possess qualities or a reputation due
to that origin (e.g., Darjeeling tea).
Being a member of the World Trade Organization (TRIPS), GI of Goods (Registration
32. 1999
and Protection) Act was introduced.
The Geographical Indications of Goods (Registration and Protection) Rules, 2002,
33. 2002
introduced.
The Geographical Indications of Goods (Registration & Protection) Act came into
34. 2003
force.
Designs
The legal protection given to the visual appearance of a product, including its shape, pattern, or
ornamentation.
Patterns and Designs Protection Act introduced for the protection of new patterns and
35. 1872
designs.
Amended as Invention and Design Act, 1888, for the protection of new inventions and
36. 1888
designs.
37. 1911 Renamed as The Indian Patent and Design Act.
38. 2000 Design Act, 2000, introduced; separated from the Indian Patent and Design Act.
39. 2001 Design Rules, 2001, introduced.
Semiconductor Integrated Circuits Layout Design (SICLD)
Legal protection for the layout design of semiconductor chips, ensuring that the specific arrangement of
circuits cannot be copied without permission.
Semiconductor Integrated Circuits Layout Design (SICLD) Act 2000 introduced as a
40. 2000
signatory of WTO.
41. 2001 SICLD Rules introduced.
Protection of Plant Varieties and Farmers' Rights (PPV&FR)
A law that protects new plant varieties and grants rights to farmers to save, use, exchange, and sell seeds
of these varieties.
The Patent Act, 1970, excluded plants and animals in whole or in any part from
42. 1970
patentability (in 1999 amendments).
Enactment of protection of new varieties of plants on sui generis basis on the lines of
43. 1991
UPOV.
44. 2001 In line with TRIPS Agreement, enactment of PPV&FR Act was introduced.
Biological Diversity
A legal framework to protect the variety of life forms on Earth, ensuring the conservation and sustainable

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use of biodiversity and sharing the benefits derived from genetic resources.
The Biological Diversity Act, 2002, introduced on the lines of the Convention on
45. 2002
Biological Diversity (CBD, 1992).
Establishment of National Biodiversity Authority and designation of repositories
46. 2003
under the Biological Diversity Act.
47. 2004 Biological Diversity Rules introduced.

2. Patents
A patent is a legal right granted to an inventor for a new and useful invention, which could be a
new way of doing something or a solution to a technical problem. Invention refers to the creation
of a new idea or concept. Innovation, on the other hand, is the process of turning that invention
into a commercial product or something that is widely used. A patent protects the invention from
being copied or reproduced by others. In return, the inventor must provide a detailed description
of the invention, allowing others with the necessary skills to understand and replicate it.

2.1. Conditions for Obtaining a Patent Protection

To qualify for patent protection under the Patents Act, 1970, a product or process must meet the
following criteria:
1. Novelty: The invention must be completely new and not previously known to anyone. It
should not be:
o In the public’s knowledge,
o Published anywhere by any means,
o Claimed in any other patent application.

2. Inventive Step: The invention must show a significant technical improvement over
existing knowledge. It should:
o Be a technical advancement,
o Have economic significance,
o Not be obvious to someone skilled in the relevant field.

3. Industrial Application: The invention must be useful in industry, meaning it can be made
or used for the benefit of society.

2.2. To Patent or Not to Patent an Invention

After developing an invention, the inventor must decide whether to protect it for personal gain or
make it publicly available. Most inventors prefer to protect their inventions to benefit financially.
If an invention is placed in the public domain, anyone can use it without paying the inventor.

If the inventor wants to earn money from the invention, they can choose between patenting or
keeping it as a trade secret:

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➢ Trade Secret: If the inventor is confident they can keep the invention secret for a long
time (e.g., 100 years or more) and the risk of others reverse-engineering the invention is
low, they may choose to keep it as a trade secret.
➢ Patent: If the invention has a short lifespan, can only be kept secret for a few years, or the
risk of reverse-engineering is high once it's made public, applying for a patent is usually
the better option.

2.3. Rights Associated with Patents

➢ A patent owner has the legal right to control who can or cannot use their invention. This
means that no one else can make, use, distribute, import, or sell the invention without the
owner's permission.
➢ The patent owner can allow others to use the invention under agreed terms, but without
permission, others are prohibited from using it. These rights are known as negative rights
because they allow the patent owner to stop others from using the invention without
consent.
➢ If someone uses the patent without permission, the owner can take legal action to stop the
illegal use and seek compensation for any unauthorized use.

2.4. Enforcement of Patent Rights

➢ Enforcement means making sure that laws and rules are followed. Patent rights are
enforced through the judicial courts, which have the power to stop patent infringement.
➢ However, it is mainly the patent owner's responsibility to monitor, identify, and take
action against anyone who infringes on their patent.

2.5. Inventions Eligible for Patenting

➢ Patents can be granted for inventions in any field, from simple items like paper clips to
advanced technologies like nanotechnology chips or genetically modified organisms.
➢ It's a common misconception that patents are only awarded for major scientific
breakthroughs. In reality, most patents are granted for improvements to existing
inventions. For example, new versions of penicillin with improved properties can be
patented.
➢ In everyday life, we use many patented items like toothbrushes, shoes, mobile phones,
and cars. Often, a single product, like a laptop or car, includes multiple inventions, each
protected by its own patent.

2.6. Non-Patentable Matters

Under the Patent Act, 1970, certain inventions cannot be patented. These exclusions include:
➢ Invention Contrary to Public Morality: For example, methods for human cloning or
gambling.

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➢ Mere Discovery: Discovering something that already exists in nature, like a new micro-
organism or a natural law (e.g., gravity).
➢ Discovery of a New Form of a Known Substance: For example, using aspirin for heart
treatment when it was already known for reducing fever and pain.
➢ Frivolous Inventions: Minor changes without significant improvement, like adding herbs
to dough or creating a 100-year calendar.
➢ Arrangement or Rearrangement: Simple combinations like an umbrella with a fan or a
torch attached to a bucket.
➢ Inventions under Section 20(1) of the Atomic Energy Act, 1962: Inventions related to
specific nuclear materials, such as Uranium or Plutonium, as notified by the government.
➢ Literary, Dramatic, Musical, Artistic Works: These are protected under the Copyright Act,
1957, not patents (e.g., books, paintings, or computer programs).
➢ Topography of Integrated Circuits: The layout designs of integrated circuits are protected
under the Semiconductor Integrated Circuit Layout Designs Act, 2000.
➢ Plants and Animals: Whole or parts of plants and animals, including seeds and biological
processes, are excluded from patent protection.
➢ Traditional Knowledge: Inventions that are essentially traditional knowledge or just
duplicate known traditional properties are not patentable.

2.7. Patent Infringements

Once a patent is granted, the inventor owns the exclusive right to use or exploit the invention. If
someone uses the invention without permission, it is considered infringement. There are two
main types of infringement:
➢ Direct Infringement: Occurs when a product is very similar to a patented product, or
when the invention is used, marketed, or sold without the owner's consent.
➢ Indirect Infringement: Happens accidentally or without intention, often involving some
level of deceit.

If an infringement occurs, the patent owner can take legal action against the infringer. The
available legal remedies include:
➢ Interim Injunction: Temporarily stopping the infringing activity while the case is
ongoing.
➢ Damages or Accounts of Profits: Compensation for losses or profits made by the
infringer.
➢ Permanent Injunction: A court order to permanently stop the infringing activity.

Additionally, the Central Government holds the right to use any patented invention in cases of
national emergency or extreme urgency, after notifying the patent owner, as per Section 100 of
the Patent Act, 1970, and Rule 32 of the Patent Rules, 2003.

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3. Process of Patenting
The process of obtaining a patent in India is detailed and can take anywhere from 3 to 4 years or
more. The major steps involved in this process are listed in Figure 1. Below is an outline of the
major steps involved in the patent grant process:
➢ Filing of Application with the Indian Patent Office (IPO): The first step involves
submitting a patent application online through the IPO portal: IPO e-Patent Filing Portal.
➢ Publishing: After filing, the patent application is published, typically within 18 months,
unless an early publication request is made.
➢ Examination: The patent application is examined to ensure it meets all legal and technical
requirements. This includes checking for novelty, inventive step, and industrial
applicability.
➢ Grant of the Patent: If the examination is successful and no opposition is filed or
sustained, the patent is granted, giving the inventor exclusive rights to the invention.

Figure 1. Flow chart of major steps involved in the grant of a patent

3.1. Prior Art Search

Before filing a patent, an inventor must ensure that their invention is novel and not already
known to the public. This process is called a Prior Art Search, where the inventor checks if the
invention or similar inventions already exist. Prior Art refers to any information available to the
public before the patent application is filed or before its priority date.

Benefits of Prior Art Search:

➢ Avoids Infringement: Ensures the invention does not violate existing patents.
➢ Tracks R&D: Helps monitor research developments in the field.
➢ Provides Information: Offers detailed insights into the invention and related technologies.

Key Parameters for Prior Art Search:

➢ Novelty
➢ Patentability
➢ State of the Art
➢ Infringement

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➢ Validity
➢ Freedom to Operate

Databases for Prior Art Search:

Patent Databases:

Non-Patent Literature (NPL):

➢ Scholarly Publications: Handbooks, textbooks, journals (e.g., IEEE, Springer),
dissertations, conference proceedings, technical reports.
➢ Industry/Trade Publications: Industry reviews, public disclosures (e.g., social media,
magazines, datasheets).
➢ Other Sources: Newspapers, websites, technology blogs, researcher websites.
Some NPL sources may require subscriptions, and major patent offices like USPTO, EPO, and
JPO maintain in-house NPL databases for effective patent examination.

3.2. Choice of Application to be Filed

After deciding to patent an invention, the next step is to choose between filing a provisional
patent application or a complete (final) patent application. Usually, a provisional application is
preferred for the following reasons:
➢ Cost-Effective and Quick: It is cheaper, takes less time, and involves fewer formalities.
➢ Flexibility for Improvements: Any improvements made after filing the provisional
application can be included in the final application. This means the provisional
application doesn't need to include complete specifications, allowing you to file even if
some experimental data is still pending.
➢ Secures Priority Date: Filing a provisional application helps you secure an early priority
date for the patent.

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Important Note: The complete patent application must be filed within one year of the provisional
application. If not, the provisional application will be rejected.

3.3. Patent Application Forms

When filing for a patent in India, the application must be submitted using Form-1 and Form-2, as
outlined in the Patent Act, 1970 and the Patents Rules, 2003.
➢ Form-1: This form collects general information, such as:
o Title of the Application
o Names of Applicant(s) and Inventor(s)
o Type of Application (e.g., Ordinary, Convention, PCT-National Phase, Divisional,
Patent of Addition)
➢ Form-2: This form seeks technical details about the invention and determines whether it's
a Provisional or Complete application:
o Provisional Application: Requires only the Description of the Invention and an
Abstract.
o Complete Application: Requires the Description of the Invention, Abstract,
Claims, and how the invention is to be performed.

Claims are a crucial part of the patent application because they define the boundaries of the
invention-what is protected by the patent and what is not. Claims are written in legal terms and
can be classified as:
➢ Independent Claims: Stand-alone claims that do not rely on other claims.
➢ Dependent Claims: Rely on an independent claim and add further detail.

Precise drafting of Claims is essential to ensure robust patent protection and safeguard the
invention from potential infringers.

For more details, you can refer to the official forms at the IP India Portal.

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3.4. Jurisdiction of Filing Patent Application

In India, there are four offices where patent applications can be filed. The appropriate office for
filing is determined based on the applicant's residence, place of business, or the origin of the
invention. These are referred to as jurisdictions.
Table 2. Jurisdiction to File a Patent in India
Region States/UTs Covered Address
Haryana, Himachal Pradesh, Punjab, Intellectual Property Office, Plot
Northern
Rajasthan, Uttar Pradesh, Uttarakhand, No. 32, Sector 14, Dwarka, New
Delhi, Chandigarh, J&K, Ladakh Delhi-110078
Intellectual Property Office,
Southern Andhra Pradesh, Karnataka, Kerala, Tamil
G.S.T. Road, Guindy, Chennai-
Nadu, Telangana, Pondicherry, Lakshadweep
600032
Intellectual Property Office,
Maharashtra, Gujarat, Madhya Pradesh, Goa,
Western Boudhik Sampada Bhawan,
Chhattisgarh, Daman and Diu, Dadra and
Antop Hill, S.M. Road, Mumbai-
Nagar Haveli
400037
Intellectual Property Office, CP-2
Rest of India All remaining states and territories Sector V, Salt Lake City, Kolkata-
700091

For foreign applicants, the jurisdiction is determined by the address for service in India or the
place of business of their patent agent.

In the case of joint applications, all applicants have equal rights and consideration in the patent
process.

For more details, you can visit the official IP India Portal.

3.5. Publication
➢ After filing a patent application at the Regional Patent Office, the application is kept
confidential for 18 months. Once this period expires (from the filing date or the priority
date, whichever is earlier), the application is published in the Official Journal of the
Patent Office.
➢ The purpose of this publication is to inform the public about the invention. Publication is
a mandatory step in the patent process.
➢ You can access the published applications through the Official Journal of Patents.

3.6. Pre-grant Opposition

➢ If anyone has an objection to the invention claimed in a patent application, they can
challenge it by filing a Pre-grant Opposition. This must be done within 6 months from the
date of publication of the patent application by approaching the Controller of Patents.

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➢ Depending on the outcome of the opposition, the patent application may be rejected or
approved for the next step (patent examination).
➢ Although the patent application is generally kept secret for 18 months, this period can be
reduced under special circumstances, such as when the applicant plans to sell, license, or
seek investors for the patent. In such cases, the applicant must submit Form-9 to the
Controller General.

3.7. Examination
➢ Patent examination is a crucial step in the patent grant process. During this stage,
professionals carefully review the invention to ensure it meets important criteria, such as
novelty and inventive step.
➢ Typically, the examiner raises queries or doubts that the inventors must address. Once the
examiner is satisfied with the responses, the application is recommended for a patent
grant.
➢ It's important to note that a patent application is not automatically examined after
publication. The applicant or their representative must request an examination by filing
Form-18A. This request must be made within 48 months from the filing date of the
application.

3.8. Grant of a Patent

Once all the requirements for granting a patent are met, including addressing any objections or
queries raised by the Patent Examiner or the public, the patent is granted to the applicant.

The granted patent is then published in the Official Journal of the Patent Office, which is
released every Friday. This journal includes information on:
➢ Published patent applications (under Section 11A),
➢ Post-grant publications,
➢ Restoration of patents,
➢ Notifications,
➢ List of non-working patents,
➢ Public notices issued by the Patent Office.

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3.9. Validity of Patent Protection

➢ Patent protection in India is granted for a limited period, typically 20 years, starting from
the date the application is filed.
➢ After the patent is granted, the patent holder must renew the patent annually by paying
the Patent Renewal Fee as required by Section 53, Rule 80 of the Indian Patents Act.
Failure to pay this fee can lead to the cancellation of the patent.
➢ In some countries, patent protection may be extended beyond 20 years to compensate for
the time spent on administrative approval before the product can be marketed. This
extension allows the patent owner to fully benefit from their rights despite delays in
bringing the product to market.

3.10. Post-grant Opposition

Even after a patent has been granted, it can still be challenged by anyone within one year from
the date of the patent's publication. The challenge can be made either through the Patent Office
or in a Court of Law. If the challenge is successful, the patent may be invalidated or revoked.

Common grounds for challenging a granted patent include:

➢ The patent applicant wrongfully obtained the invention or a part of it.
➢ The invention was published before the priority date.

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➢ The invention was publicly known or used before the priority date.
➢ The invention is obvious and does not involve an inventive step.
➢ The invention is not patentable according to Chapter II of the Patent Act, 1970.
➢ The specifications of the invention do not clearly describe it.

3.11. Do I Need First to File a Patent in India

Yes, generally, Indian residents are required to first file their patent application in India.
Afterward, they can seek patent protection in other countries, but this requires prior approval
from the Indian Patent Office.

However, this approval can be waived under the following circumstances:

➢ The applicant is not an Indian resident.
➢ Six weeks have passed since the patent application was filed in India by an Indian
resident.
➢ If two or more inventors are working on the invention in a foreign country, and one of
them is an Indian resident, but the invention does not have a potential market in India,
they can seek Foreign Filing Permission (FFP) from the Indian Patent Office.
➢ In cases of international collaboration, if part of the invention originated in India, the
Indian resident inventor must seek permission to file the patent outside India.
➢ If the invention is related to defense, atomic energy, or utility models, special permission
is required from the Indian Patent Office, as these domains are not typically patentable in
India.

3.12. Patent Related Forms

There are over 30 forms related to patent applications in India. Below is a list of some important
patent application forms:
Table 3. List of Important Patent Application Forms
Form No. Title of Form
1 Application for a grant of a patent
2 Provisional/Complete specifications
7 Notice of opposition on grant of a patent
7A Filing a representation opposing the grant of a patent
17 Application for a compulsory license
18 Request for examination of the application for a patent
21 Request for termination of a compulsory license
22 Application for registration of a patent agent
Statement regarding the working of the patented invention on a commercial scale
27
in India
30 Miscellaneous form to be used when no other form is prescribed
*Source: [Link]
[Link]

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3.13. Fee Structure

According to the Patent Act, 1970, and The Patents Rules, 1972, the fees required for patent
applications vary based on the type of applicant and the forms submitted. Electronically filed
applications are generally 10% cheaper than physical filings.
Table 4. Fee for obtaining a patent via electronic filing
[Source: [Link] 1_11_1/[Link]]
Others alone or with
Small entity alone or
Natural natural
Item with natural
person/startup (₹) person/startup/small
person/startup (₹)
entity (₹)
Provisional/Complete
1,600 4,000 8,000
Specifications
Request for Early
2,500 6,250 12,500
Publication
Request for
4,000 10,000 20,000
Examination
Express Request for
5,600 14,000 28,000
Examination
Renewal Fees (Annually)
rd th
3 to 6 Year 800 2,000 4,000
6th to 10th Year 2,400 6,000 12,000
11th to 15th Year 4,800 12,000 24,000
th th
16 to 20 Year 8,000 20,000 40,000

3.14. Types of Patent Applications

➢ Provisional Application: Filed when the invention is not yet fully finalized and still under
experimentation. This type of application helps secure a priority date for the invention.
➢ Ordinary Application: A patent application filed with complete specifications and claims,
but without claiming any priority date.
➢ PCT Application: An international application filed under the Patent Cooperation Treaty
(PCT). This allows a single application to seek patent protection and claim priority in all
PCT member countries.
➢ Divisional Application: Filed when an application contains more than one invention. The
applicant can divide the application into two or more applications, each with the same
priority date as the original (parent) application.
➢ Patent of Addition Application: Filed when an invention is a slight modification of an
earlier invention for which the applicant has already applied for or obtained a patent. No
separate renewal fee is required for this patent, and it expires with the main patent.
➢ Convention Application: Filed in a Convention country (e.g., under the Paris Convention)
after an application has been filed in India. To claim the same priority date, the
Convention Application must be filed within 12 months of the Indian filing date.

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References:
1. Tewari, R., & Bhardwaj, M. (2021). Intellectual Property.
2. Jawale, K. V. (2023). Indian Intellectual Property Rights. Academic Guru Publishing
House.
3. [Link]

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