Patent Registration Process, Criteria, And Documents

INTRODUCTION:

Patent registration is a critical step for inventors and businesses aiming to safeguard their innovative ideas and secure exclusive rights over their inventions. This comprehensive article provides an in-depth overview of the patent registration process in India, covering essential aspects such as criteria for patentability, different types of patents, required documents, office jurisdictions, online registration procedures, fees, validity periods, handling objections, revocation, patent assignment, the appeals process, and international patent registration.

In India, the registration and enforcement of patents are governed by the Patent Act, 1970, and its corresponding rules, the Patent Rules, 2003. As the tech industry continues to witness rapid advancements, numerous innovative technologies become eligible for patent protection, granting inventors exclusive rights over their inventions for a period of 20 years. Moreover, India is a signatory to the Patent Cooperation Treaty, enabling inventors to seek international patent protection across multiple countries simultaneously.

Understanding the intricacies of the patent registration process is crucial for applicants. This article delves into the step-by-step procedure of filing a patent application, along with the necessary documentation. By gaining a comprehensive understanding of the patent registration process, inventors and businesses can effectively protect their intellectual property, capitalize on their innovations, and leverage the multitude of benefits associated with patent rights

WHAT IS A PATENT?

A patent is an exclusive right granted to any invention, whether it’s a process or a product, under the provisions of the Patents Act. According to the Patents Act, an invention is defined as a new product or process that involves an inventive step and is capable of industrial application. This definition highlights three crucial components, also known as the patentability requirements:

1. Novelty: The invention must be new and not disclosed to the public in any way before the filing date of the patent application. It should be a fresh and original concept that has not been previously known or made available to others.
2. Inventive Step: The product or process to be patented should involve an inventive step. This means that the invention should demonstrate a technical advancement over existing knowledge and should not be obvious to someone with the same skill set. It should possess an element of creativity and uniqueness.
3. Industrial Application: The invention should be capable of industrial application, meaning it should be useful and applicable in a particular industry or across various industries. It should have practical utility and be feasible to produce or use.

Only when an invention satisfies these patentability requirements does it become eligible for protection under the Patents Act of 1970. By meeting these criteria, inventors can secure the exclusive rights to their inventions, safeguard their intellectual property, and have the opportunity to capitalize on their innovative creations.

However, there are certain kinds of inventions that cannot be patented as per the Patent Act, 1970. These include:

• Inventions contrary to natural laws.
• Inventions those are prejudicial to human, animal, plant life, health, or the environment.
• Mere discoveries of scientific principles or formulation of abstract theories.
• Discoveries of living or non-living substances occurring in nature.
• Mere inventions of known process or machines unless they result in a new product.
• Mere admixtures resulting in the collection of properties of components.
• Mere arrangements or rearrangements of devices commonly found in nature.
• Inventions excluded by the Patents (Amendment) Act, 2002.
• Methods used for agriculture or horticulture purposes.
• Processes related to medicinal, surgical, curative, prophylactic, diagnostic, therapeutic treatment for humans.
• Processes related to animal treatments for disease prevention.
• Inventions concerning plants and animals, including seeds, varieties, species, and essentially biological processes for their production, excluding microorganisms.
• Computer programs or mathematical methods.
• Creations related to literary, dramatic, musical, or artistic works, including cinematographic works and television productions.
• Mere methods of playing a game.
• Mere information presentation.
• Topography of integrated circuits.
• Inventions that aggregate or duplicate known properties of components traditionally known.
• Inventions related to atomic energy, for which no patent shall be granted.

It’s important for inventors to understand these exclusions when considering patentability and seeking protection for their inventions.

TYPES OF PATENTS:

There are different types of patents that can be obtained based on the nature of the invention:

1. Utility Patents: Utility patents are the most common type of patents granted for new and useful processes, machines, compositions of matter, or any useful improvements thereof. These patents provide exclusive rights to inventors for their inventions that have a practical application. Utility patents typically cover a wide range of fields, including technology, manufacturing, and pharmaceuticals.

Illustration: A utility patent may be granted for inventions such as a novel manufacturing process, a new electronic device, or a pharmaceutical composition.

1. Design Patents: Design patents protect the ornamental appearance or visual characteristics of an object rather than its functionality. They are granted for new, original, and ornamental designs applied to an article of manufacture. Design patents focus on the aesthetic elements of an invention and are often sought for consumer products and industrial designs.

Illustration: A design patent may be granted for the unique shape of a smartphone, the pattern of a fabric, or the design of a furniture piece.

1. Plant Patents: Plant patents are granted for new and distinct varieties of plants that are asexually reproduced. This type of patent protects the invention of new plant species, excluding microorganisms. To be eligible for a plant patent, the plant variety must be novel, non-obvious, and reproducible through asexual reproduction methods such as grafting or cutting.

Illustration: A plant patent may be granted for a newly cultivated hybrid orchid or a unique strain of genetically modified corn.

DIFFERENT TYPES OF PATENT REGISTRATION: 

1. Complete Patent: A complete patent application is a comprehensive filing that includes a detailed specification, claims, drawings (if necessary), and other supporting documents. It provides full legal protection for the invention and is suitable when the invention is ready for commercialization or public disclosure. The complete patent application undergoes a thorough examination by the patent office to assess its patentability and determine whether the invention meets the criteria for granting a patent.

Illustration: When an inventor has fully developed their invention and wants to secure exclusive rights, they can file a complete patent application. This includes a detailed description of the invention, its technical aspects, any necessary drawings, and specific claims that define the scope of the invention’s protection.

1. Provisional Patent: A provisional patent application serves as a preliminary or temporary filing that establishes an early filing date for the invention. It allows inventors to secure a priority date and use the phrase “Patent Pending.” The provisional patent application is less formal and does not require the same level of detail as a complete patent application. It provides inventors with a one-year period to further develop the invention, assess its market potential, and decide whether to proceed with a complete patent application.

Illustration: Inventors who have an invention in the early stages of development or are not yet ready to disclose all the details of their invention may opt for a provisional patent application. This provides them with an initial level of protection and allows them to refine their invention, conduct market research, or seek potential investors without losing their priority filing date.

It’s important to note that while a provisional patent application offers some initial protection, inventors must file a complete patent application within one year to fully protect their invention. The complete application will incorporate the details from the provisional application and undergo a comprehensive examination process by the patent office.

WHAT DOCUMENTS ARE REQUIRED FOR PATENT REGISTRATION?

To register a patent, you need to submit various forms and documents. Here is a comprehensive list of the forms and documents required for patent registration:

1. Form-1: Application for Grant of Patent
   1. Identity proof and address proof of the inventor and assignee.
   1. Contact details and information on any prior patent applications related to the invention.
   1. Necessary declarations and other relevant information.
2. Form-2: Provisional/Complete Specification
   1. Detailed description of the invention as a provisional or complete specification, depending on the application type.
3. Form-3: Statement and Undertaking under Section 8
   1. Disclosure of any patent applications filed for the same invention in other countries.
   1. Undertaking to keep the patent office informed about corresponding applications filed outside India.
4. Form-5: Declaration as to Inventorship
   1. Declaration of the inventors of the patent application.
5. Technical Information:
   1. Background information about the invention.
   1. Explanation of the need for the invention and its practical applications.
   1. Summary of how the invention works.
6. Form-18: Request for Examination
   1. Request for the examination of your patent application.
7. Form-19: Request for Early Publication
   1. Optional request for early publication of your patent application.
8. Form-26: Disclosure of Power of Attorney (if using a patent agent)
   1. Assignment of power of attorney to a patent agent, if applicable.
9. Form-9: Request for Publication (optional)
   1. Filing this form to request the publication of your patent application, if desired.
10. Form-28: For Small Entity or Start-up
    1. Submission of Form-28 if claiming the status of a small entity or a start-up.
11. Other Details:
    1. Disclosure of Claims and Abstracts: Provide a clear and concise disclosure of the claims and abstracts associated with your invention.
    1. Requisite Statutory Fees: Pay the necessary statutory fees through a cheque or demand draft.
    1. Proof of Right to File the Patent: Provide proof of the right to file the patent application, which can be in the form of an endorsement at the end of the application or a separate agreement attached to the patent application.
    1. MSME or Start-up Certificate: If applicable, submit relevant certificates demonstrating your status as a Micro, Small, and Medium Enterprise (MSME) or a start-up.
    1. Provisional Specifications: Submit provisional specifications if complete specifications are not yet available for your invention.
    1. Priority Document: File a priority document in the following cases:
       1. Convention Application (under the Paris Convention).
       1. PCT National Phase Application where the requirements of Rule 17.1 (a or b) have not been fulfilled.
    1. Permission from National Biodiversity Authority: If your application pertains to a biological material obtained from India, obtain permission from the National Biodiversity Authority before the grant of the patent. Additionally, clearly indicate the source of geographical origin of any biological material used in the specification.
    1. Signature: Ensure that all patent applications bear the signature of the applicant or authorized person or Patent Attorney, along with their name and date.

By providing these additional details and submitting the required forms and documents accurately, you can facilitate the patent registration process and provide the necessary information for the examination and evaluation of your patent application.  

PROCEDURE FOR REGISTRATION OF PATENT:

The patent registration process generally involves the following steps:

• Step 1: Document the invention
  • Gather all the necessary information about the invention, including its area, description, functionality, and advantages.
  • Maintain a record of the invention, such as lab records signed and dated by the inventor and relevant authorities, if available.
• Step 2: Create visual representations
  • Develop drawings or diagrams that illustrate how the invention works, making it easier to understand and explain in the patent application.
• Step 3: Assess patentability
  • Check if the invention meets the patentability criteria outlined in the Indian Patent Act to determine if it qualifies for patent protection.
• Step 4: Conduct a patentability search
  • Perform a comprehensive search to ensure the invention is new (novel), not obvious to experts (non-obvious), has industrial applicability, and is enabling.
  • This search helps identify any existing similar inventions or prior art that could affect the patentability of the invention.
• Step 5: Draft the patent application
  • If the invention is still in the early stages, consider filing a provisional application. It secures the filing date and provides 12 months to file a complete specification.
  • Alternatively, if all the information about the invention is available, file a complete specification directly.
• Step 6: Publication of the application
  • After filing the complete specification, the application will be published 18 months from the first filing date.
  • If desired, an early publication request can be made by submitting the required fees.
• Step 7: Request examination
  • To initiate the examination process, submit a request for examination (RFE). The patent office will review the application’s patentability based on various criteria.
  • An examiner will prepare a first examination report, which may include references to prior art related to the invention.
• Step 8: Respond to objections
  • If the examiner raises any objections or concerns in the examination report, the inventor has an opportunity to respond to address those issues.
  • The response should provide arguments and evidence supporting the patentability of the invention.
• Step 9: Overcome objections
  • Work to overcome the objections raised in the examination report by providing convincing explanations, clarifications, and additional information as needed.
  • The goal is to demonstrate that the invention meets all patentability requirements.
• Step 10: Grant of patent
  • Once all the requirements are met, and objections are resolved, the patent will be granted.
  • The grant of the patent will be announced and recorded in the patent journal.

The patent registration process involves documenting the invention, conducting a patentability search, drafting the patent application, publishing the application, requesting examination, responding to objections, overcoming objections, and ultimately, obtaining the grant of the patent. By following this comprehensive and easy-to-understand procedure, inventors can successfully register their patents in India.

OFFICE JURISDICTIONS OF FILING PATENT APPLICATIONS:

In India, patent applications can be filed at the Indian Patent Office, which has multiple jurisdictions spread across the country. The jurisdiction where you file your patent application depends on your residence or place of business. Territorial Jurisdiction of Appropriate Office for the Applicants;

It is important to file your patent application in the appropriate jurisdiction based on your residence or place of business to ensure that it is processed correctly. Each patent office is equipped to receive patent applications either online or through physical submission.

ONLINE PATENT REGISTRATION PROCESS IN INDIA:

The Indian Patent Office provides an online portal for filing patent applications. The online process simplifies application submission, fee payment, document upload, and tracking of application status. Applicants can access the portal and follow the step-by-step instructions to complete the registration process. Step-by-step procedure for online filing a patent application in India;

• Step 1: Account Registration
  • Visit the E-Filing of Patent Applications website and create an account using e-signing.
  • Optionally, conduct a patent search to determine the novelty of your invention and avoid unnecessary fees.
• Step 2: Patent Application
  • Prepare the patent application in Form 1, which includes a description of the invention, claims, and abstract.
  • Attach Form 2, the patent specification form, which contains the provisional or complete specification of the invention.
• Step 3: Claims and Abstract
  • Draft patent claims to define the subject matter and boundaries of the invention, ensuring it cannot be used without permission.
  • Prepare an abstract that provides a short description of the invention’s technical field, advancements, and principal use.
• Step 4: Drawing and Figure of Abstract
  • Attach a drawing of the invention in PDF format, as required by Rule 15(3) of the Patent Rules.
  • Include an abstract figure in JPG format.
• Step 5: Statement and Undertaking
  • Provide a statement in compliance with Section 8(1)(a) of the Patent Act, disclosing any similar applications filed outside India.
  • Submit an undertaking to the patent controller, promising to update regarding any foreign applications.
• Step 6: Power of Attorney
  • If you have assigned a patent agent, provide a power of attorney in Form 26, authorizing them to act on your behalf.
• Step 7: Declaration of Inventorship
  • File a declaration of Inventorship in Form 5, confirming that you are the true inventor or joint inventor of the invention.
• Step 8: Fee Payment
  • Complete the payment of fees using the online payment gateway.
• Step 9: Publication
  • As per Rule 24 of the Patent Rules, the patent application will be published in the official journal after 18 months from the filing date.
  • The published application includes the title, abstract, application number, and names of the applicant and inventor.
• Step 10: Opposition (if applicable)
  • Rule 55 allows any person to file an opposition within three months from the date of publication or before the grant of the patent.
  • The patent controller will forward the opposition to the applicant, who can submit a statement and evidence in reply.
  • If requested, a hearing will be conducted. The controller will either reject the opposition or not grant the patent based on the decision.
• Step 11: Request for Examination
  • File a request for examination within 48 months from the filing date, as per Rule 24B.
  • Section 11B of the Patent Act mandates the request for examination before the patent can be examined.
  • Failure to file the request within the specified time will result in the application being treated as withdrawn.
• Step 12: First Examination Report (FER)
  • The patent examiner will examine the invention for novelty, inventiveness, and industrial application.
  • The examiner will issue a FER with objections and suggestions, usually within one month.
• Step 13: Response to FER
  • The applicant can submit a response to address the objections raised in the FER and overcome them.
  • If the controller finds the responses satisfactory, the patent will be granted to the applicant.

Following these steps will guide you through the online patent registration process in India. It is important to ensure compliance with the regulations and timely submission of all required documents.

PRESCRIBED FEES FOR PATENT REGISTRATION UNDER DIFFERENT HEADS:

The Indian Patent Office has a fee structure as follow;

NEW INDIAN PATENT RULES OFFER BENEFITS TO STARTUPS AND SMALL ENTITIES:

The Indian government has introduced new patent rules that provide benefits and incentives to startups and small entities. These rules aim to encourage innovation by reducing fees, simplifying procedures, and expediting the examination process for qualifying applicants.

VALIDITY PERIOD OF REGISTERED PATENT IN INDIA:

The validity period of a patent in India is 20 years from the date of filing the application. To maintain the patent rights, annual renewal fees need to be paid.

OBJECTIONS RECEIVED FROM THE EXAMINER AND THE RESPONSE PROCESS:

If objections are raised by the examiner during the examination process, the applicant must respond to those objections within the stipulated time frame. A well-prepared response addressing the objections with relevant arguments and supporting evidence is crucial for overcoming objections and securing patent approval.

REVOCATION OF PATENTS IN INDIA:

Patents can be revoked in India under certain circumstances, such as non-compliance with the patent requirements, fraud, prior publication, or public interest. Revocation can be initiated through a petition filed with the Intellectual Property Appellate Board (IPAB) or the High Court.

PROCESS OF MAKING AN APPEAL AGAINST REJECTION OF THE PATENT REGISTRATION APPLICATION:

If a patent application is rejected by the examiner, the applicant can file an appeal with the IPAB within the prescribed period. The IPAB reviews the decision of the examiner and considers the arguments and evidence presented by the applicant.

INTERNATIONAL PATENT REGISTRATION:

A patent registration in India only provides protection within the territorial boundaries of India. To protect an invention outside India, separate patent applications need to be filed in the desired countries or regions. However, India is a member of international patent conventions and treaties, such as the Patent Cooperation Treaty, which provides a streamlined process for filing international patent applications.

CONCLUSION:

The patent registration process is vital for protecting inventors and businesses. Understanding patentability requirements and the types of patents is crucial. The article outlined the steps for filing a patent application, including conducting a patentability search and submitting a comprehensive application. It also highlighted the office jurisdictions in India for filing. By following the process, inventors can secure their intellectual property and enjoy the benefits of patent rights. Overall, patent registration empowers inventors to protect their innovations and foster innovation globally.

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