Patents Lawyers India | De Penning & De Penning

What can be patented in India?

An invention which is a novel product or process involves an inventive step, or it must be non-obvious, is capable of industrial application and does not fall under the excluded subject matter under sections 3 and 4 of the Patents Act, 1970.

What is non-patentable in India?

Patents will not be granted for the following types of inventions.
● Frivolous or obvious inventions● Inventions which are contrary to law or morality or injurious to human, animal or plant life and health or the environment● The Mere discovery of the scientific principle or the formulation of an abstract theory or discovery of any living thing or non-living substances occurring in nature● The mere discovery of any new property or mere new use for the known substance or the mere use of a known process, machine or apparatus- unless it results in new products or employs one new reactant● Producing a new substance by mere admixtures of substances● Mere arrangement/rearrangement or duplication of known devices functioning independently● Method of agriculture and horticulture● Any process for the medicinal or surgical, curative prophylactic, diagnostic, therapeutic or other treatment of human beings or animals to render them free of disease or to increase their or their products' economic value● The biological processes for the production or propagation of plants and animals in whole or any part thereof other than micro-organisms but including seeds, varieties and species● A mathematical or business method, algorithm or software per se● Aesthetic creations, including cinematography and television production● Mental methods or teaching or games and sports techniques● Presentation of information● Topography of Integrated Circuits● Invention, which in effect, is traditional knowledge or which is an aggregation or duplication of known properties of traditionally known components● Inventions relating to Atomic Energy

Can I apply for a patent?

An application can be made, solely or jointly, by:
● the inventor(s)● an assignee(s)● the legal representatives(s) of the deceased inventor(s)

When to file a patent application?

In India, the patent system follows the First-to-File principle. This means the right to obtain a patent lies with the first person to apply. It is advisable, therefore, to:
● Apply as early as possible● File before making any non-confidential disclosures

Filing a patent application

Our breadth of knowledge and expertise means we are highly in tune with the ongoing developments in India's patent system.
Our skilled patent lawyers and attorneys in India can advise on what type of patent application best aligns with your corporate IP strategy and will take the necessary steps to secure it.

Provisional Application

A temporary application filed when the invention is not completed and is still under experimentation

Provides 12 months to complete the invention

Must be followed by a complete specification within 12 months for a patent to be granted

Establishes priority

Ability to market products with the tag "patent pending".

Ordinary Application

A first application protects an invention before it enters the public domain.

Make an ordinary application when you are not claiming priority from any other application.

Invention must be described to illustrate the functionality of the invention.

File with complete specifications and claims.

PCT International Applications

International application governed by the Patent Cooperation Treaty

Can be validated in up to 142 countries.

Simplifies the process of filing patent applications

Delays the expenses associated with applying for patent protection in various countries

Allows the inventor more time to assess the commercial viability of their invention

Provides an International Search Report citing the relevant prior art that may have to be taken into account in deciding whether the invention is novel and inventive

Provides an option of an International Preliminary Examination Report that is forwarded to the elected Offices and the applicant, the report containing an opinion as to whether the claimed invention meets specific international criteria for patentability

These reports give the applicant a fair idea about the patentability of the invention before incurring charges for filing and prosecution in each individual country

PCT National Phase Applications

Globalise your patent protection with a National Phase application

Follow the Patent Cooperation Treaty (PCT) route

International application made according to the Patent Cooperation Treaty being the first application or claiming earlier priority can enter the national phase in India within 31 months from the international filing date or priority date (whichever is earlier)

Application filed before the Controller in the Indian Patent Office claiming the priority and international filing date is called PCT National Phase application

The filing date of the application shall be the international filing date accorded under the Patent Cooperation Treaty

Convention Applications

A convention application allows an individual to extend the reach of their patent

Claim a priority date based on the same or similar applications filed in one of the convention countries

File within 12 months of the date of first filing in a convention country

Apply in more than 170 convention countries, including India, the USA and the UK

Divisional application

Where more than one invention is claimed, the parent application can be divided into two or more applications

Priority date for the divisional application is the same as that claimed in the parent application

Patent of addition

Used when an applicant has an invention which is a slight modification of an invention they have already applied for/have a patent in India

Low examination threshold

Can be used where invention does not involve a substantial inventive step

No separate renewal feels during the term of the main patent

Expires with the main patent

Other Requirements

To check that a similar patent does not already exist

To maintain confidentiality of the invention prior to filing your application

A specification including description, abstracts, claims and drawings

01.

Publication
Patent applications are published automatically 18 months from the filing date or the priority date, whichever is earlier. In India, you can also request early publication.

02.

Opposition (pre-grant)
Third parties can request that a patent application be refused between publication and grant. Opposition must be substantiated with appropriate grounds for opposing a patent.

03.

Request for examination
You must submit a request for examination of your invention within prescribed time limits. In India, this must be done within 48 months of the date of priority or filing, whichever is earlier.

04.

Examination
Examiners check that your invention:
● is new, and has never previously been made public;● involves an inventive step, and would not appear obvious to someone with substantial knowledge and experience of the field;● is capable of industrial application.
If your invention does not pass the first examination, you will have the opportunity to amend it.

05.

Grant
Once your invention has passed examination, your application will be granted. Your patent will receive a grant number and a ‘Letters Patent Document’, and be entered on the e-register.

06.

Terms of patent
The patent will last for 20 years, provided you pay the renewal fee.

07.

Opposition (post-grant)
The grant of your patent will be published. Any interested party can file post-grant opposition up to 12 months following the date of publication of the grant.

08.

Renewal
You must pay a yearly renewal fee to maintain your patent beyond the first two years. If the fee is not paid, your patent will lapse.

09.

Statement of working
Filing a statement of commercial working is part of the maintenance of your patent. It is a compulsory activity not only for the patentee but also for a licensee (if the patent is licensed) and regardless of whether the patented invention is commercialised in India or not.
The statement must be filed for a financial year exempting the year within which the patent has been granted by the anniversary of 30 September (e.g. a patent granted between 01 April 2020 to 31 March 2021 is due to be filed by 30 September 2022). Non-filing of a statement may attract the penal provision of the Patents Act.