ICFAI UNIVERSITY

DEHRADUN

ICFAI LAW SCHOOL

TOPIC: Procedure for Registration

Of Patent in India

Name: Adwita Singh

Enrollment No.: 17FLICDDN02157
Course: BA-LL. B (Hons.)
Batch: 2017-2022
Section: ‘C’
Subject: Intellectual Property Rights
Faculty In-charge: Mrs. Samradhi Singh
(Assistant Professor)

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INTRODUCTION:
A patent is a legal monopoly, granted for a limited time by a country to the owner of an
invention in exchange for public disclosure of the invention. A patent gives an inventor the
exclusive right for a limited period of time to stop others from making, using, offering for sale,
selling or importing the patented invention without the permission of the inventor. Merely
holding a patent does not give the owner the right to use or exploit the patented invention. That
right may still be affected by other laws such as health and safety regulations, food and drugs
regulations or even by other existing patents. That is why a patent is called a "negative right".

A patent is a right that is granted to an individual of enterprises under the government used to
exclude other individuals or companies to copy makes or sells the patent products without the
approval of the owner of the patent. It is mandatory for all the Indian inventors who want to
protect their intellectual property, regardless of their respective sectors to get their patent
registered under, the Patent Act, 2002.

QUESTION: Briefly explain the steps for registration of patent in

India.
ANSWER: Following steps are being followed for the registration of patent in
India:

STEP-1 Write down the invention (idea or concept) with as much details as
possible

Collect all the information about your invention such as:

 Area of invention
 Description of the invention what it does
 ow does it work
 Advantages of the invention

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Ideally, if you have worked on the invention during research and development phase you should
have something call lab record duly signed with date by you and respective authority.

STEP-2 Include drawings, diagrams or sketches explaining working of

invention

The drawings and diagrams should be designed so as to explain the working of the invention in
better way with visual illustrations. They play an important role in patent application.

STEP-3 Check whether the invention is patentable subject matter

All inventions may not be patentable, as per Indian patent act there are certain inventions that are
not patentable explained in detail in (inventions not patentable).

STEP-4 (a) Patentability search

The next step would be finding out whether your invention meets all patentability criteria as per
Indian patent act? That is,

 Novelty
 Non-obviousness
 Industrial application
 Enabling

The detailed explanation for patentability criteria is given here (what are patentability
criteria’s). The patentability opinion is provided by the patent professionals up on conducting
extensive search and forming patentability report.

STEP4- (b) Decide whether to go ahead with patent

The patentability report and opinion help you decide whether to go ahead with the patent or not,
chances are what you thought as novel might already been patented or know to public in some
form of information. Hence this report saves lots of time, efforts and cost of the inventor by
helping him decide whether to go ahead with the patent filing process or not.

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STEP-5 Draft (write) patent application

In case you are at very early stage in the research and development for your invention, then you
can go for provisional application. It gives following benefits:

 Secures filing date

 12 months of time to file complete specification
 Low cost

After filing provisional application, you secure the filing date which is very crucial in patent
world.  You get 12 months of time to come up with the complete specification, up on expiry of
12 months your patent application will be abandoned.

When you complete the required documents and your research work is at level where you can
have prototype and experimental results to prove your inventive step you can file complete
specification with patent application.

Filing the provisional specification is the optional step, if you are at the stage where you have
complete information about your invention then you can directly go for complete specification.

STEP-6 Publication of the application

Up on filing the complete specification along with application for patent, the application is
published after 18 months of first filing.

An early publication request can be made along with prescribed fees if you do not wish to wait
till the expiry of 18 months from the date of filing for publishing your patent application.

Generally, the patent application is published within a month form request form early
publication.

STEP-7 Request for examination

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The patent application is examined only after receiving request for examination that is RFE.  Up
on receiving this request the controller gives your patent application to a patent examiner who
examinees the patent application with different patentability criteria like:

 Patentable subject matter

 Novelty
 Non-obviousness
 Inventive step
 Industrial application
 Enabling

The examiner creates a first examination report of the patent application upon reviewing it for
above terms. This is called patent prosecution. Everything happening to patent application before
grant of patent is generally called as patent prosecution.

The first examination report submitted to controller by examiner generally contains prior arts
(existing documents before the date of filing) which are similar to the claimed invention, and
same is reported to patent applicant.

STEP-8 Respond to objections

Majority of patent applicants will receive some type of objections based on examination report.
The best thing to do it analyze the examination report with patent professional (patent agent) and
creating a response to the objections raised in the examination report.

This is a chance for an inventor to communicate his novelty over prior arts found in the
examination report. The inventor and patent agent create and send a response to the examination
that tries to prove to controller that his invention is indeed patentable and satisfies all
patentability criteria’s.

STEP-9 Clearing all objections

This communication between controller and patent applicant is to ensure that all objections
raised in the patent application are resolved. (if no the patent will not be grant) and the inventor

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has his fair chance to prove his point and establish novelty and inventive step over existing prior
arts.

Up on finding the patent application in order of grant, it is grant to the patent applicant as early
as possible.

STEP-10 Grant of patent

The application would be placed in order for grant once it is found to be meeting all patentability
requirements. The grant of patent is notified in the patent journal which is published time to time.

APPROPRIATE OFFICE FOR FILING AN APPLICATION &

FOR OTHER PROCEEDINGS:
 Application is required to be filed according to the territorial limits where the applicant or
the first mentioned applicant in case of joint applicants,
 For a patent normally resides or has domicile or has a place of business or the place from
where the invention actually originated.
 If the applicant for the patent or party in a proceeding having no business place or
domicile in India, the appropriate office will be according to the address for service in
India given by the applicant or party in a proceeding.
 The appropriate office once decided in respect of any proceedings under the Act shall not
ordinarily be changed. The four patent offices are located at Kolkata, Mumbai, Delhi &
Chennai.
 Patent rights are territorial, so an Indian patent does not confer any rights outside India.
Patent rights last for 20 years in India and this is also generally the case globally.

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 Flow Chart of Registration Process of Patent

With complete Publication u/s 11A

Filling of Patent
specification (early publications or
Application
post 18 -months)

Filling complete specification

With provisional within 12 months after Yes
specification provisional specification

Pre-grant opposition u/s 25(1) can

be filled
If NOT

Request for EXAMINATION on EXAMINATION for

Application Form-18/REQUEST FOR patentability and other
deemed to be EXPEDITED EXAMINATION on requirements under the
ABANDONED Form 18A (within 48 months from act
date of priority)

EXPEDITED EXAMINATION for Startups/Applicant

has indicated India as ISA/IPEA in the corresponding FER
International Application (for patentability and other Issued
requirements under the act)

Application Objections not  Application is to be put in order

deemed to be meet within by the applicant within 6
ABANDONED 7
6/9 months months (extendable by 3
months) from issuance of FER.
 Re-Examination of Amended
Grant of Patent
u/s 43 and Objections meet
publication of within 6/9 months
grant