Do’s and Don’ts of Patent Filing Procedure in India

Dos and donts before and after filing a patent application - Intellect Vidhya Solutions

Patent is a type of Intellectual Property Rights (IPR) granted to protect inventions for a certain period of time i.e. for twenty years. The procedure of patent filing in India entails multiple steps primarily starting with assessment of the invention’s patentability criteria and responding to patent office concerns. Patent protection is granted only when inventions satisfies the criteria of Novelty (New), Inventive Step (not evident to persons in the same field of work) and Utility (can be used in an industrial setting). 

Key Aspects to Identify about Patents

  • Any person/individual or company or institution (both public / private) having an invention can file for a patent protection by approaching the patent office in their respective country. Anyone filing for patent protection is considered as an applicant. The invention can also be assigned by individual inventors to their institutions or companies who can file for a patent protection in their respective name. 
  • There are two types of patents product and process patents. Product patents will cover the product including the process of making the product whereas process patents will cover only the method or process of making the product. 
  • The law governing grant of patent protection in India is Indian Patents Act, 1970.
  • Since patent laws varies from country to country and are territorial in nature, applicant seeking for patent protection will have to apply in each country of interest.
  • Once patent protection is granted it will allow the patent holder or Patentee to exclude others from manufacturing, using or selling their patented invention or process for a period of twenty years (twenty years is considered from date of filing of the application).
  • Seeking patent right protection involves financial expenses including filing fees, prosecution fees and payment of maintenance fees after the grant of patent.
  • Not all inventions are automatically granted patent as certain inventions under the ambit of Section 3 and 4 of the Indian Patents Act, 1970 are excluded from patent protection.

The Do’s BEFORE filing a Patent Application in India

Assessment of the Invention

An applicant seeking to file a patent application for their invention (product or process or apparatus etc) should ideally undertake patentability criteria assessment of their invention. This assessment will help in understanding key features of the invention, inventions which are non-patentable, informs about existing knowledge and technical advance in the field of invention. 

Types of Patent Applications

The next step is to decide on the type of patent application to be filed by the applicant. There are primarily 3 types of patent application Ordinary, Convention and Patent Cooperation Treaty (PCT) International Application.  

  • The ordinary application pertains to filing a patent application only in India which includes either filing a provisional or a complete specification. 
  • The convention application is filed by foreign inventors to obtain patent protection in India for a same invention after filing in their respective country. The convention application should be filed within 12 months from the date of filing in their respective country for same invention in other jurisdictions. The filing of convention application is allowed only for countries that are signatory to Paris Convention Treaty. 
  • The Patent Cooperation Treaty (PCT) International Application is provided under PCT and acts as a single entry point for an applicant to file for patents for same invention in multiple countries which are signatory to PCT.  This system simplifies the filing procedure and provides a period of 30 months for applicants to file for patent in India through PCT national phase application. The PCT application provides extended period of time to file for a patent in multiple countries and provides assessment of patentability criteria of the invention.

Patent Application Drafting

After the assessment of the invention is conducted and the type of application is decided by applicant, the invention should be converted to a specified document. This involves drafting of a specification – a techno legal document which will explain the concept of the invention and the type of patent protection being claimed for the invention.

If the invention is still under experimentation and the product development requires time a provisional specification can be filed. The applicant will have a year (12 months) to complete the experimentation of their invention and file a complete specification. If a complete specification is not filed by the applicant after the filing of provisional specification within the stipulated time of 12 months, the provisional specification will be considered as abandoned. 

Filing of Patent Application in India

Application submission at Indian Patent Office

The specification either provisional or complete with other required forms is submitted to the patent office along with stipulated fee. After the completion of filing of patent application, the date of filing is recorded and an application number is generated by the patent office. 

Publication of application

If the applicant has filed a complete specification the application will be published after 18 months, computed from the date of filing or earliest priority date (applicable for convention / PCT applications) of the application. There is an option of seeking early publication under certain provisions of Indian Patents Act, 1970 by submitting a request and paying stipulated fees.

The Don’ts AFTER filing Patent application in India

The timeline involved in obtaining patent protection is of prime importance, any delay by the applicant in following up with the patent office will result in abandonment or rejection of their patent application.

Request for examination

The application is not automatically taken up for examination by the patent office. The applicant has to file a request for examination of their patent application after the publication of the application in patent journal. There is an option of seeking early examination under certain provisions of Indian Patents Act, 1970 by submitting a request and paying stipulated fees. Don’t fail to submit request for application examination within stipulated timeline.

Pre-grant Opposition

Once the application is published anyone can file a pre-grant opposition against the grant of patent for the claimed invention. In such case the patent office will intimate the applicant if a pre-grant opposition is filed against their application and the applicant will have to file and submit a response to the opposition in the patent office within stipulated timeline. Don’t fail to reply to pre-grant opposition within stipulated timeline.

Examination Reports by Patent Office

The patent office after scrutinizing the application will issue an examination report listing objections, this can include both procedural (forms, format and drawings) and substantial (lack of novelty, inventive step, under Section 3) objections. The applicant should ensure to reply to the examination reports within the stipulated time (6 months extendable up to 9 months. Don’t fail to respond to examination reports with stipulated timeline to avoid abandonment of the application by the patent office.

Hearing Notice

If the patent office finds the response and amendments made by the applicant to the examination report and pre-grant opposition (if opposed) satisfactory, a patent will be granted. If the response filed by applicant is unsatisfactory the patent office will conduct a hearing for further explanation by applicant and opponent (if opposed). If the applicant is successful in responding to all the objections of the patent office and opposition (if opposed) during the hearing the patent will be granted. In either case only when the applicant responds to hearing notice and addresses all objections raised in the examination report the patent will be granted by the patent office. Don’t fail to address all the objections during hearing. 

There is an increased awareness on importance and benefits of seeking patent protection and most of the inventors are interested in seeking patent protection in India. Patent on inventions will help in effective commercialization, licensing and exploiting one’s invention without any competition in the market over a certain period. Patents can also allow revenue generation which can be reinvested to boost research and development in their field of invention.

The upgrade and refinement in the functioning of the Indian patent office has resulted in drastic reduction in the average time required for grant of patent protection. The minimum time required to complete the entire process of patent filing is less than two years in India. 

To conclude, the current system with advancement in technology and online filing process encourages any inventor to file for a patent independently. However patent filing procedure involves a certain level of specialization for drafting complete specification and for successful prosecution of the application at the patent office.  Preferably, seeking assistance from a Patent Agent or Attorney will be useful to navigate the process of obtaining a patent protection for the claimed invention.

Share:

Share on facebook
Facebook
Share on twitter
Twitter
Share on linkedin
LinkedIn
Share on whatsapp
WhatsApp
Share on facebook
Share on twitter
Share on linkedin
Share on whatsapp

Leave a Reply

Categories

Search

    Categories

    Recent Posts

    • All Post
    • Copyright
    • Design Patents
    • Patent Filing
    • Patent Search
    • Trademark

    Related Posts

    Micro Copyright in India: Protecting Small-Scale Creative Works

    In the digital age, the creation and sharing of content have reached unprecedented heights. With the proliferation of user-generated content, short-form media, and the increasing significance of individual contributions to larger works, the concept of “micro copyright” has emerged. Micro copyright refers to the protection of smaller, often more granular, creative expressions. In the context of Indian copyright law, this concept presents unique challenges and opportunities. This article explores the intricacies of micro copyright and the conundrums surrounding its protection in India. Understanding Micro Copyright Micro copyright encompasses the rights associated with smaller creative works such as social media posts, memes, short videos, gifs, and even individual elements within larger works, like specific phrases or designs. These forms of content, while often brief and seemingly inconsequential, can hold significant value and can be the subject of copyright protection. The Legal Framework of Copyright in India The Indian Copyright Act, 1957, primarily governs copyright protection in India. The Act provides protection to original literary, dramatic, musical, and artistic works, cinematograph films, and sound recordings. For a work to be protected, it must be original and expressed in a tangible form. Challenges in Protecting Micro Copyright 1. Originality and Fixation One of the fundamental requirements for copyright protection is that the work must be original and fixed in a tangible medium. This can be challenging for micro content, where the line between original creation and common expression is often blurred. Determining the originality of a tweet, meme, or short video clip can be subjective and contentious. 2. De Minimis Doctrine The de minimis doctrine, which means “about minimal things,” can pose a significant challenge for micro copyright. This doctrine suggests that the law does not concern itself with trivial matters. Small snippets of content might be considered too insignificant to warrant protection, leaving creators without legal recourse for unauthorized use. 3. Fair Use The concept of fair use allows for limited use of copyrighted material without requiring permission from the rights holders. In the context of micro copyright, determining what constitutes fair use can be particularly tricky. For instance, sharing a meme or a short clip might be considered fair use, but if it goes viral and gains commercial value, the original creator might seek protection and compensation. 4. Enforcement and Attribution Even if micro content is eligible for copyright protection, enforcing these rights can be challenging. Monitoring the vast expanse of the internet for unauthorized use of small-scale content is a daunting task. Additionally, the ease with which digital content can be shared and altered complicates the process of ensuring proper attribution and compensation. The Way Forward 1. Clearer Guidelines and Definitions To address the challenges of micro copyright, clearer guidelines and definitions are needed within the Indian Copyright Act. Defining what constitutes a protectable micro work and setting standards for originality can provide better clarity for creators and users alike. 2. Digital Rights Management (DRM) and Technology Leveraging technology, such as digital rights management (DRM) systems and content recognition algorithms, can help creators monitor and enforce their copyright more effectively. These technologies can automate the process of identifying unauthorized uses and facilitate easier enforcement. 3. Education and Awareness Increasing awareness among creators about their rights and the mechanisms available for protecting their content is crucial. Educational campaigns and resources can empower creators to navigate the complexities of copyright law and safeguard their micro creations. 4. Legal Reform and International Cooperation Given the global nature of digital content, international cooperation and harmonization of copyright laws can play a significant role in addressing the challenges of micro copyright. Legal reforms that consider the unique nature of digital content and micro works can provide a more robust framework for protection. Conclusion The rise of micro copyright in the digital era presents a unique conundrum under Indian copyright law. While the current legal framework provides a foundation for protecting creative works, the nuances of micro content require more specific attention and adaptation. By addressing the challenges of originality, fair use, enforcement, and attribution, and by leveraging technology and education, India can better protect the rights of creators in the evolving landscape of digital content.

    Read More »
    July 20, 2024 No Comments
    Importance of Trademarking your Restaurant Name - Intellect Vidhya

    Importance of Trademarking your Restaurant Name

    Have you ever walked into a restaurant, drawn by its catchy name or eye-catching logo, only to discover that it’s not the establishment you thought it was? In the bustling food and hospitality industry of India, this scenario is becoming increasingly common. As more and more eateries pop up, it’s crucial for restaurant owners to protect their brand’s identity through trademark registration. A trademark is like a unique fingerprint that sets your goods or services apart from the competition. It’s a legal stamp that says, “This is ours, and no one else can use it.” And in the world of restaurants, where first impressions can make or break your business, a strong trademark can be a game-changer. Why Trademarks Matter for Restaurateurs? Success Stories of Trademarked Restaurant Brands The Consequences of Neglecting Trademark Protection In the vibrant culinary landscape of India, trademarking your restaurant brand is more than just a formality – it’s a strategic move that can safeguard your business identity, maintain brand recognition, and provide legal recourse against infringement. By understanding the importance of trademarks and understanding the appropriate registration process under Indian trademark law, you can protect your valuable intellectual property and pave the way for a future as bright as a perfectly cooked dish, fresh out of the kitchen.

    Read More »
    July 13, 2024 No Comments
    The Significance Of Prior Use In The Trademark Law Vans V Ivans - Intellect Vidhya

    The Significance of Prior Use in the Trademark Law: Vans v. Ivans

    In the complex realm of intellectual property rights, few principles hold as much significance as the concept of “prior use” in Indian trademark law. The recent ruling by the Delhi High Court in the Vans v. Ivans case has brought attention to the fundamental concept of giving precedence to the first user of a trademark in the market. The Vans v. Ivans Case: The case centred on a disagreement between Vans Inc., a well-known American footwear and apparel company, and FCB Garment Tex, an Indian company that used the “IVANS” trademark. Vans Inc. filed a request to invalidate FCB Garment Tex’s trademark registration in India, claiming that their “VANS” mark had recently gained recognition as a well-known trademark in the country. Nevertheless, the Delhi High Court ruled in favour of FCB Garment Tex, citing the prior use principle. Important Factors in the Court’s Decision The court’s ruling was influenced by several crucial elements. Firstly, it emphasised that FCB Garment Tex had been using the “IVANS” mark in India for years before Vans Inc. entered the market, applying the “first in the market” principle. Furthermore, the court made it clear that simply declaring a trademark as well-known does not automatically give the owner the authority to cancel other marks that were used earlier in India. Finally, the court determined that FCB Garment’s utilisation of the marks was both sincere and simultaneous, granting them protection under Section 12 of the Trade Marks Act. Supporting the Principle of Prior Use This landmark ruling is a strong affirmation of the prior use principle in Indian trademark law. This principle emphasises that the initial user of a trademark in the market holds greater rights compared to later users, regardless of their registration status. This concept is deeply embedded in the Indian Trade Marks Act, 1999, and aims to safeguard businesses that have dedicated significant time and resources to establish their brand identity in the market. The Reasoning Behind Prior Use There are several reasons behind the prior use principle. It strives to recognise and safeguard businesses that have proactively built their brands in the marketplace. By prioritising the initial user, the law recognises the dedication and resources required to establish a strong brand presence and cultivate customer loyalty. This principle also helps to prevent unfair competition by ensuring that well-known brands are not replaced by new ones with similar marks, thus maintaining consumer trust and market stability. Territorial Nature of Trademark Rights In addition, the principle of prior use acknowledges the territorial nature of trademark rights. The Vans v. Ivans case clearly illustrates that having a worldwide reputation is not enough to establish legal rights in a particular jurisdiction. The principle highlights the significance of establishing a tangible market presence and utilising a trademark within India, rather than solely relying on international recognition or registration in other nations. Engaging with well-known Trademarks The prior use principle also has implications for other aspects of trademark law, including the recognition of well-known trademarks. The ruling by the Delhi High Court provides clarity on the advantages of having a well-known trademark status, while also acknowledging the rights of prior users in the market. This delicate equilibrium ensures the safeguarding of well-known local brands while acknowledging the prestige and recognition of globally renowned trademarks. Practical Considerations for Trademark Owners In practice, trademark owners are faced with a significant burden of maintaining proper documentation of their trademark use due to the prior use principle. This encompasses sales records, advertisements, and proof of customer recognition. Consistent and authentic use of the mark is essential, as any substantial gaps in usage can undermine a prior use claim. Conclusion Ultimately, the verdict of the Delhi High Court in the Vans v. Ivans case serves as a strong affirmation of the prior use principle within Indian trademark law. It emphasises the significance of having a strong market presence and building a reputable brand in order to establish and safeguard trademark rights in India. As the country continues to attract global brands while nurturing its own business ecosystem, this principle will undoubtedly have a significant impact on the development of trademark strategies and dispute resolutions.

    Read More »
    July 12, 2024 No Comments
    The Ethical and Legal Dilemma of AI Voice Cloning in the Music Industry - Intellect Vidhya

    The Ethical and Legal Dilemma of AI Voice Cloning in the Music Industry

    In recent years, artificial intelligence (AI) has made remarkable progress in various fields, including music production. Voice cloning in music has been a subject of intense debate, raising questions about copyright infringement, moral rights, and the preservation of artistic integrity. The recent criticism voiced by legendary Indian playback singer Kumar Sanu against AI voice duplication brings attention to the mounting concerns within the music industry. Power and Potential of AI Voice Cloning AI voice cloning technology has made significant progress in recreating the voices of singers with outstanding precision. This ability has resulted in the development of new songs that utilise the voices of artists who have passed away, as demonstrated in the recent example of “Pehle Hi Main.” This song was created using an AI-generated voice that mimics the late Mohammed Rafi, who sadly passed away in 1980. Although this technology presents fascinating opportunities for music production and preservation, it also brings up important ethical and legal concerns. Dealing with Copyright Infringement Copyright infringement is a significant legal concern when it comes to AI voice cloning. A singer’s voice is regarded as their valuable asset, safeguarded by copyright laws in numerous jurisdictions. When AI is employed to imitate a singer’s voice without authorization, it may potentially infringe upon copyright protections. This encompasses violations of reproduction rights, distribution rights, and the unauthorised creation of derivative works. Moral Rights and Personality Rights In addition to copyright concerns, AI voice cloning also brings up ethical and legal questions surrounding moral rights and personality rights. It is important for singers to safeguard their work from any alterations or manipulations that may negatively impact their reputation. Additionally, there is a potential for confusion and misrepresentation when AI-generated voices are not explicitly identified. Furthermore, in numerous legal systems, people possess the authority to regulate the commercial exploitation of their identity, appearance, or voice. Voice cloning might be perceived as a violation of these rights. Cloning the Voices of Deceased Artists Using AI to replicate the voices of deceased artists, such as Mohammed Rafi, brings about a whole new set of challenges. Although copyright protection usually lasts for many years after an artist’s passing, the ethical considerations surrounding the use of a deceased artist’s voice without their permission are quite substantial. There are concerns regarding the preservation of the legacy and artistic intentions of deceased musicians. Industry Response Kumar Sanu’s decision to pursue legal protection against AI voice cloning demonstrates a rising recognition of these concerns within the music industry. Other artists and industry professionals are also advocating for the establishment of regulatory frameworks to oversee the utilisation of AI in music production. There are several potential solutions being discussed to address the challenges posed by AI in music. These include establishing licencing protocols for the use of AI-cloned voices, requiring clear disclosure when AI voice cloning is used in a production, and developing specific laws to tackle these unique challenges. The Path Forward As AI technology advances, it is essential for the legal system to stay up to date. Collaboration between the music industry, legislators, and AI developers is crucial in establishing a framework that balances the protection of artists’ rights with the promotion of innovation. This could potentially include the need to revise copyright laws to specifically tackle AI-generated content, setting industry norms for the ethical application of AI in music production, and devising methods for artists to maintain control over and profit from the utilisation of their AI-replicated voices. Conclusion The emergence of AI voice cloning technology brings forth a range of possibilities and complexities for the music industry. Although it presents exciting opportunities for creativity, it also raises serious concerns regarding artists’ rights and the authenticity of their work. As evidenced by Kumar Sanu’s case, it is clear that there is a pressing requirement for the establishment of legal and ethical frameworks to regulate the utilisation of this technology. As we move forward with the more enhanced versions of AI, it’s crucial to find a harmony between technological advancement and safeguarding artists’ rights. It is crucial to establish thoughtful regulation and foster industry cooperation to ensure that AI positively impacts the creative ecosystem of the music industry.

    Read More »
    July 8, 2024 No Comments