Patent procedure in India

India is a country with many advantages to develop inventions in many fields. India is one of the world’s largest producers of generic drugs. Indian pharmaceutical companies have strong research and development capabilities, especially in the preparation of complex drugs and biologics. India’s information technology industry has grown tremendously in recent years. Indian tech companies have high expertise in areas such as software development, information technology services, artificial intelligence, and machine learning. India is a large agricultural country with abundant natural resources. Indian inventors are developing new technological solutions to improve agricultural productivity, manage water resources, and mitigate the impacts of climate change. Overall, the combination of abundant human resources, low R&D costs, along with supportive government policies has facilitated India’s invention development in these areas. Viet An Law would like to guide clients through the preliminary patent procedure in India through the article below.

Legal Basis

• Inventions Act, 1970 (Act No. 39 of 1970, amended to Act No. 15 of 2005)

Definition of Invention in India

In India, a patent is a statutory right granted by the government to an inventor for their invention. This right provides the inventor with exclusive rights to their invention for a limited time, usually 20 years from the date of filing the patent application. During this time, the patent owner can prevent others from producing, using, selling, or importing the patented invention without permission.

Conditions for registering a patent in India

• Subject matter of patent: An invention must fall within the category of subject matter to be patented as defined in the Indian Patents Act, 1970. This includes inventions relating to a new product or process, which has an innovative step and has the potential for industrial application below.
• Novelty: The invention must be new and not published or used publicly in India or any other part of the world prior to the date of filing the patent application.
• Innovation step (Not obvious): The invention must not be obvious to a person with expertise in this field. It must involve an innovative step that is not easily deduced from existing knowledge or technology.
• Industrial applicability: The invention must have the ability to be created or used in an industry. This means that it must have an actual application or use.
• Not Excluded: Patents must not fall within the categories of inventions that are specifically excluded from patentability under the Indian Patents Act. These exclusions include inventions that are frivolous, contrary to public order or morality, or involve the discovery of only a scientific principle or formula of an abstract theory.

Types of Patents can be registered in India

• Ordinary or non-provisional patents: This is the most common type of patent application and involves filing a full description that discloses all the details of the invention. It is usually filed after a provisional application (see below), but can also be filed directly if the invention has been fully developed.
• Provisional Patent Application: This is a preliminary application filed when the invention is still in the conceptual or experimental stage. It allows the applicant to secure an early filing date and a 12-month deadline to further develop the invention before filing a full description.
• Supplemental Patent: This type of patent is granted for an improvement or modification of an existing patented invention. It depends on the original (primary) patent and expires along with the common patent.

Patent Search in India

Use the Indian Patent Office’s online search engine

• Indian Intellectual Property Public Search Tool: This is a free online database provided by the Indian Patent Office. It allows users to search for published patent applications, granted patents, and information on the legal status of Indian patents.
• InPASS (Indian Patent Advanced Search System): This is another free online search tool that allows a full-text search of published patent applications and granted patents. The system also provides additional information about legal status.

Use a third-party patent search database

Some commercial patent search databases provide information about Indian patents such as:

• PatSeer: A comprehensive patent search and analysis platform that includes Indian patents along with patents from other countries.
• Questel Orbit: A global patent database with a strong focus on Asian patent information.
• Thomson Innovation: A leading IP research platform that provides access to a wide range of patent data and analytics tools.

Manual Search by Patent Office Magazine

The Patent Office Journal is an official publication of the Indian Patent Office that lists all published patent applications and granted patents. Users can manually search through magazines to find patents of interest.

Patent Registration Dossier in India

• Patent Application: This form includes information such as the name of the invention, the name and address of the inventor(s) and the applicant(s), and the filing date.
• Description: This is a detailed description of the applicant’s invention, including the context, the technical field, the problems it solves, and how it works. The applicant must provide sufficient detail so that a person with expertise in the field can understand and reconstruct the invention. The information typically includes the following sections:
  • Name of the invention
  • Technical Field
  • Background art
  • Patent Summary
  • Brief description of the drawings (if applicable)
  • Detailed description of the invention
  • Industrial applicability
• Protection Claims: This is a numbered list of claims to determine the scope of protection for one’s invention. Claims for protection are the most important part of a patent application, as they define the scope of the applicant’s exclusive rights.
• Drawings (if any): If the applicant’s invention can be illustrated, drawings should be provided to help clarify the description.
• Summary: A brief summary of the invention, usually about 150 words or less.
• Priority documents (if any): If the applicant has applied for a patent for the same invention in another country within the last 12 months, the applicant can claim priority.
• Power of attorney (if any): If the applicant files through the patent representative, it is necessary to provide them with a power of attorney on behalf of the applicant.
• Other documents (if applicable): Depending on the applicant’s case, the applicant may need to file other documents, such as a transfer agreement if the applicant is not the inventor, or a copyright statement.

Patent procedure in India through the PCT System

What is the PCT System?

The PCT system stands for  Patent  Cooperation Treaty – an international treaty that aims to create a uniform process for filing international patent applications. The system is managed by the World Intellectual Property Organization (WIPO) and has more than 150 countries participating, including India.

Benefits of the PCT system:

• Save time and money: The PCT system allows the applicant to file a single patent application for patent protection in multiple countries participating in the Treaty, rather than having to file a separate application in each country. This saves time, costs and administrative procedures.
• Postponement of the national filing deadline: When filing a PCT application, the applicant has an additional 30 months to decide which country the applicant wants to protect the invention. This is a valuable time for the applicant to evaluate the commercial potential of the patent and prepare for the filing of the national application.
• Simple Process: The PCT System uses a common set of rules and procedures for all participating countries, which simplifies the filing process and saves time for both the applicant and the national patent office.
• Early Search Information: The International Search Report and Written Opinion of the International Patent Search Agency will provide the applicant with information about the novelty and patentability of the patent, helping the applicant to make an informed decision about filing a national application.
• Enhanced international cooperation: The PCT system encourages international cooperation in the field of patents by creating a common platform for the exchange of information and the sharing of experiences between countries.
• Support innovation: The PCT system helps promote innovation by reducing the procedural burden on inventors and making it easier for them to protect their patents worldwide.

Patent registration dossier through the PCT system

To file an invention registration through the PCT system, you need to prepare a set of documents including the following documents:

• PCT Application: The application can be filed in Vietnamese or English, however, it is recommended that it be filed in English to facilitate the processing. You can download the PCT application form from the WIPO website: https://www.wipo.int/pct/en/forms/
• Description of the invention: The description of the invention should present the invention in detail and clearly, including:
  • Patent Name Technical Field
  • Patent Summary
  • Detailed explanation of the invention
  • Drawings (if any)
  • Request for protection
• Claim for protection: The claim for protection should clearly define the scope of protection that the applicant wants to give the invention.
• Patent Claims: Patent claims need to clearly identify the inventor (or inventors).
• Letter of Authorization (if applicable): If the applicant uses an intellectual property representative to file the application, the applicant needs to provide a Letter of Authorization that authorizes the representative to represent the applicant during the filing process and process the procedure.

Additional documents (may be required):

• Priority documents (if any): If the applicant filed an application for the same patent in another country before filing the PCT application, the applicant may claim priority based on the date of filing that application.
• Translation (if applicable): If any of the documents on file are not in English or French, the applicant needs to provide a translation into either of these languages.
• Application fee: The applicant needs to pay the PCT filing fee to the International Receiving Office (IB).

If you want to file an application for patent registration, please contact Viet An Law, hotline (+84) 9 61 67 55 66 (WhatsApp, Viber, Zalo, Wechat) for the most effective support.

Update: 9/2024