Procedure for grant of patents in India

Procedure for grant of patents in India

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A patent is an exclusive right which is granted by the Government for an invention, for a limited time period. This exclusive right of a patentee allows him to prevent a third party from using, selling or claiming the invention for which patent has been granted, in an unauthorised and illegal manner, while the term of the patent subsists. An invention which was granted patent can be used freely by the public after the term of the patent has expired or has ceased to have an effect. 

The Third Schedule of the Patents Rules prescribes the Form that is issued on the grant of patents. Section 43 of the Patents Act, 1970 deals with the Grant of patents. Where a patent application has not been refused by the Controller or the patent application does not contravene any provisions of the Act and is deemed to be in order for grant of the patent, the applicant shall be granted the patent immediately.1 The patent must bear the seal of the patent office and an entry should be made in the register mentioning the date of grant of patent. 

Once the patent has been granted, the fact that the patent has been granted must be published by the Controller, following which the patent application, specification and other documents related to the patent are open for public inspection.2 The Third Schedule of the Patents Rules specifies the Form for grant of the patent, which may be modified based on the circumstances of the case and it should bear the application number.3 The patent certificate should be issued within 7 days from the date of the grant of patent. On a written request to the Controller, the patent application along with the complete and provisional specification, drawings, abstract and other documents can be inspected by paying the requisite fee.4

Conditions for Grant of Patents

The grant of a patent under the Patents Act, 1970 is not absolute. It is subject to certain conditions prescribed under Section 47 of the Act. Therefore, the grant of a patent is subject to the following conditions:5

  • the patent granted for any machine, apparatus, article or any article made by using a process, can be imported or made by the government or on its behalf solely for its own use;
  • a patent granted for any process can be used by the Government or on its behalf for its own use;
  • a patent granted for any machine, apparatus, article or any article made by using a process or where a patent is granted for any process, can be made or used by any person, for research or experiment purpose which also includes conveying instructions to students;
  • where a patent is granted for any medicine or drug, the Government can import such drug or medicine solely for its own use or distribution in Government-supported dispensaries, hospitals, and other medical institutions and also those rendering public service. 

Compliance of Conditions under the Act for Grant of Patent

A patent is granted promptly when:

  • the patent application has not been declined by the Controller in the exercise of the powers vested in him; or
  • the application is not in contravention of any provisions under the Act. 

This includes within its scope:

  • the objections raised by the examiner have been fulfilled and documents have been resubmitted that were returned with FER, within a period of 6 months or an extended period from the date of FER.
  • where the FER refers to a prior art published before the date of filing of complete specification but after the date of priority, the applicant must prove that the priority date of the complete specification claimed is prior to the date on which the document was published. In the absence of such proof, the application can be refused. 
  • where the FER refers to a prior art published after the date of filing of the complete specification, but an earlier priority date is being claimed, the applicant must prove that the priority date of the complete specification claimed is prior to the date of publication of such documents. In the absence of such proof, the other specification must be inserted which must be notified to the public in the applicant’s specification. 
  • when a pre-grant representation is not pending or has been disposed of in favour of the applicant before the grant of a patent, then the date of grant of patent is the date on which the patent is granted by the Controller in the file and the patent number is generated at the same time.  

Consequences of Grant of Patent

  • every patent is assigned a serial number electronically, on being granted a patent. A “Certificate of Patent” is produced in a given format and an entry is made in the e-register. The date of recording the Patent in the Register of Patent and the date of grant of a patent by the Controller is the same. 
  • the complete specification of the invention which has been granted a patent is available on the official website.
  • the public can inspect the patent application, specification, and other related documents by paying the requisite fee.
  • the official journal of the Patent Office publishes the fact that the patent has been granted.
  • the patentee must pay the requisite fee within 3 months on the grant of patent. This time period can be extended by 6 months. 
  • A post-grant opposition can be filed by any interested person within 12 months from the date of publication of the grant of patent. 
  • Every patentee must provide a statement with respect to the working of the invention to which a patent has been granted, commercially within a period of not less than 6 months, in a prescribed format. 

Obligations after the Grant of Patent

After the grant of a patent, the Patent Office has no further role. A patent is an exclusive private right and the responsibility of its commercialization lies on the patent owner. However, the information related to the grant of patent is published in the Patent Office Journal and also on the website of the Patent Office, which can be accessed by anyone worldwide. This enables the applicant to attract potential users and commercially popularize the patent.    

Furthermore, after a patent has been granted, the applicant in order to maintain the patent must do so by paying a renewal fee, as prescribed under Schedule One of the Patents Rules, every year. However, there is no requirement to pay the renewal fees for the first 2 years. Failure to pay the renewal fee results in the suspension of the patent.6

Conclusion 

From the above discussion it becomes amply clear that after a patent is granted to an applicant or the patentee, he acquires an exclusive right over the invention for which the patent is sought, for a limited time period. In India, the term of Patent commences from the date of filing the patent application and is granted for a period of 20 years in respect of all patents. However, the patentee must pay the renewal fees before the due date every year or within the extended period which can be granted for a maximum of 6 months.     

Once an invention is granted for the patent, the patentee can prevent third parties from using, selling, making or importing the patented product or process as long as the term of the patent subsists. However, the public becomes free to use the patented invention after the term of the patent expires or the Patent becomes ineffective due to the non-payment of the yearly renewal fee. Therefore, the grant of a patent to an invention is a crucial stage in the law of Patents which accords legal recognition to an invention, after going through a rigorous process of examination and scrutiny. 


Endnotes

1.  The Patents Act, 1970 (Act 39 of 1970), s. 43 (1). 

2.  The Patents Act, 1970 (Act 39 of 1970), s. 43 (2). 

3.  The Patents Rules, 2003, Rule 74 (1).

4.  The Patents Rules, 2003, Rule 74A.

5.  The Patents Act, 1970 (Act 39 of 1970), s. 47. 

6. http://www.ipindia.nic.in/writereaddata/Portal/Images/pdf/Final_FREQUENTLY_ASKED_QUESTIONS_-PATENT.pdf 


Anusuya Mukherjee-DU

Anasuya Mukherjee

Author

Anasuya hails from Delhi University and she spends most of her time in Reading, Practising Yoga and Working towards community animal welfare. Her Interest area lies in Intellectual Property Law. For any clarifications, feedback, and advice, you can reach her at anasuyamukherjee86@gmail.com

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