Dear readers, in the previous articles throughout this year we have seen how to know if your invention is patentable and finally how to apply for an Indian patent. However, the process does not really end with the application, there are further activities to do. This article briefly explains these activities assuming you have filed an ordinary patent application (provisional specification) with the Indian Patent Office.
Submitting a compete specification
A complete specification must follow the provisional specification within the next 12 months [Ref. 1]. If you do not submit the complete specification within that time period then the application automatically lapses [Ref. 1]. Of course this step does not apply if you have submitted a complete specification in the first place. However, there is a provision to convert a complete specification into a provisional specification if a request is made within 12 months [Ref. 1]. One benefit of doing so is that the applicant can re-write the claims, as claims are not part of a provisional specification. It may help you when your invention has matured since the initial filing and you think there is a scope to improve the specification.
Tips: The Patents Act permits conversion of a complete specification into a provisional specification.
international Patent Application
Chronologically this optional step comes before the remaining steps as an international application must be filed within 12 months from the Indian application. Remember an Indian patent protects your rights only in India. Hence an international application is important if you wish to protect your invention in other countries too. Additionally, an international application costs a lot more than its Indian counterpart. Thus you need to plan early for an international application. Notable here is at least 6 weeks must have lapsed after the Indian application to proceed with the international application [Ref. 2]. The applicant also needs to get permission for such application [Ref. 2] through Form 25.
The ways to file such an application are:
- To apply in different countries of your choice provided these countries are members of the Paris Convention.
- To apply under the Patent Corporation Treaty (PCT) to the International Bureau (IB) of World Intellectual Property Organisation (WIPO) directly or through the Indian Patent office as the receiving office. Based on WIPO’s examination of the application you can then apply to the member countries of your choice. This route is simpler than the previous one.
Presently 177 and 152 countries are signatories to the Paris convention and PCT respectively. So, if you wish, you could protect your invention almost all over the world! The Patent Office Manual is a good place to find the applicable procedures for PCT application by an Indian applicant (see section 07.02.01). Furthermore, the WIPO patent drafting manual provides guidelines to write a specification for a PCT application.
Tips: Obtain permission form the Indian patent office before applying to foreign countries. Application is possible through the Paris convention route or PCT route.
The first important thing that happens in the process of patent granting is the publication of the patent application. After 18 months from the filing date the patent application is published [Ref. 3] in the Official Journal of the Patent office. However, if an applicant wishes to publish the application early then he may request so through Form 9 and paying the necessary fee, along with the patent application or separately later. However, the patent applications that are subjected to secrecy are not published until the secrecy direction lapses [Ref. 3].
Tips: Automatic publication happens after 18 months from the application. Early publication is possible through appropriate applications.
The next and perhaps most important step towards the grant of patent is the examination of patent. As we have seen in the previous article, patent examination is not an automatic step. Either the applicant or an interested person must request [Ref. 4] through Form 18 within 48 months from the filing date [Ref. 5]. In reality the examination may take a few years.
After the examination the patent office issues a first statement of objections, along with any relevant documents [Ref. 5]. The applicant must make the necessary changes within 6 months [Ref. 5, 6]. However, there is a provision to extend it for a further 3 months on request through Form 4 along with the prescribed fee [Ref. 5].
The applicant also needs to address any pre-grant opposition filed by any person after publication of the application [Ref. 7]. The Controller of Patents gives opportunity to both the parties before deciding in favour of or against granting a patent [Ref. 8].
After this process has been done satisfactorily a patent is granted and included in the Register of Patents. Congratulations, you have obtained a patent for your invention!
Tips: Remember to file a request through Form 18 along with the initial application or within the next 48 months to queue it for examination.
Expedited Patent Examination
The patent examination may take years because there are many applications in queue! To reduce the waiting time the Indian Patent Office, since 2016, provides a fast track option for certain cases called Expedited Patent Examination [Ref. 9].
This is done by filing Form 18A along with the applicable fee [Ref. 9]. As of now the facility is only available for startups and PCT applicants who have chosen India as the International Searching Authority (ISA) or International Preliminary Examining Authority (IPEA).
Tips: A startup can request for an expedited patent examination.
Getting a patent does not end your journey. You need to renew it every year for continual protection of your invention [Ref 10]. The patent renewal fees start from the expiration of the second year [Ref. 11], and for a natural person and startup it amounts to Rs. 800, which increases in later years. A patent owner may pay every year or for more years in advance. There is no specific form for this purpose.
A lapsed patent, due to non-payment of renewal fees, can be restored within 18 months from the date of lapse by providing evidence that the delay in payment was not intentional [Ref. 12, 13]. Such an application is made through Form 15 [Ref. 13].
It is noteworthy that the renewal fee is not applicable until a patent is granted and in case a patent is granted later than two years from the date of application, the accumulated renewal fee can be paid within 3 months [Ref. 14].
Tips: Patent renewal fees are applicable until the 20th year to maintain the rights. An applicant need not start paying until the grant of patent.
Although this may be undesirable from an inventor’s point of view, the Patent Office makes it fair to other interested parties by keeping a mechanism called post-grant opposition [Ref. 15]. Through this mechanism interested parties can oppose a patent within one year after the grant [Ref. 15]. The patent holder has to address such opposition within the framework of the Patents Act, 1970 and the Patents Rules, 2003.
Tips: Remember that your patent may face post-grant opposition, which interested parties can file until one year since the grant of patent.
Commercialisation of a patent
A patent holder can either market the product himself or transfer his rights to other natural or legal person(s). Transfer of rights can be done through assignment, licence, mortgage or other ways through formal agreement [Ref. 16]. The new person with transferred rights must ensure to register with the Patent Office through Form 16 [Ref. 17].
Commericalisation of an invention needs dedicated discussion and in most aspects have nothing to do with the regulatory framework. This article does not get into such details apart from touching the relevant regulatory points. There may be a separate article later.
Tips: Remember to transfer your rights through formal agreements and get the assignee or licencee registered with the Patent Office.
Other Continued Activity for a Patent
The patent owner or licencee is required to provide a periodic statement to the Patent Office about the commercial use of the patented invention in India [Ref. 18]. This statement is to be prepared for every calendar year and submitted through Form 27 within 3 months from the subject year end [Ref. 19]. This compliance is likely to help the Office maintain statistics about the degree of commercialisation of all the granted patents.
This article provides an outline of the activities after a patent application that an Indian patent applicant must be aware of. This one along with the other articles published earlier this year covers the entire life cycle of a patent. In summary, the relevant articles are:
- Idea, Invention and Patent
- What are not patentable (Part 1 & Part 2)
- Inventions subject to security and secrecy
- Patent application
Obviously, there are many other aspects of a patent. However, these articles along with the applicable regulations and guidance materials should provide fair amount of clarity regarding invention and patents.
- 9 – Provisional and complete specifications
- 39 – Residents not to apply for patents outside India without prior permission
- 11A – Publication of application
- 11B – Request for examination
- Rule 24B – Examination of application
- 21 – Time for putting application in order for grant
- 25(1) – Opposition to the patent
- Rule 55 – Opposition to the patent
- Rule 24C – Expedited examination of applications
- 53- Term of patent
- Rule 80 – Renewal fees under section 53
- 60 – Applications for restoration of lapsed parents
- Rule 84 – Restoration of patents
- 142(4) – Fees
- 25(2) – Opposition to the patent
- 68 – Assignments, etc., not valid unless in writing and duly executed
- Rule 90 – Registration of title and interest in patents
- 146(2) – Power of Controller to call for information from patentees
- Rule 131 – Form and manner for statements required under section 146(2)
Next Article: The next article, likely to be available early next year, would look into other aspects of an invention.