A patent is an exclusive right granted by the State to an inventor for a limited period, in exchange for disclosing the invention to the public. Patents are one of the most important forms of intellectual property as they protect technological innovations and inventions. In India, the law relating to patents is governed by the Patents Act, 1970 as amended by the Patents (Amendment) Acts of 1999, 2002, and 2005. The 2005 amendment was particularly significant as it introduced product patents for pharmaceuticals and agrochemicals, bringing Indian patent law in full compliance with the TRIPS Agreement.
The Patent Office in India has its headquarters in Kolkata with branch offices in Mumbai, Chennai, and Delhi. The administration of the Patents Act is vested in the Controller General of Patents, Designs and Trade Marks.
What is a Patentable Invention?
Definition of Invention — Section 2(j)
Under Section 2(j) of the Patents Act, 1970, "invention" means a new product or process involving an inventive step and capable of industrial application.
For an invention to be patentable, it must satisfy the following three conditions:
1. Novelty — The invention must be new — i.e., it must not have been known or used before anywhere in the world. It must not form part of the "state of the art" (existing knowledge).
2. Inventive Step — The invention must involve an inventive step — i.e., it must not be obvious to a person skilled in the relevant field of technology. The invention must represent a significant advance over existing knowledge.
3. Industrial Applicability — The invention must be capable of being made or used in some kind of industry. Purely theoretical discoveries or abstract ideas are not patentable.
What Cannot Be Patented — Section 3
Section 3 of the Patents Act lists inventions that are not patentable in India. These include:
- An invention that is frivolous or contrary to well-established natural laws
- An invention that is contrary to public order or morality or causes harm to human, animal, plant life or health or to the environment
- The mere discovery of a scientific principle or abstract theory
- The mere discovery of a new form of a known substance that does not result in enhanced efficacy (Section 3(d) — the famous anti-evergreening provision)
- A method of agriculture or horticulture
- Any process for the medicinal, surgical, curative, prophylactic, diagnostic, therapeutic treatment of human beings or animals
- Plants and animals in whole or any part thereof (other than microorganisms)
- A mathematical or business method or a computer program per se or algorithms
- A literary, dramatic, musical, or artistic work
- A mere scheme or rule or method of performing a mental act or a method of playing a game
- Presentation of information
- Topography of integrated circuits
- An invention that in effect is traditional knowledge or aggregation of known properties of traditionally known components
Types of Patent Applications
The Patents Act, 1970 provides for the following types of patent applications:
1. Ordinary Application — Section 7 A simple application for a patent filed without claiming any priority from any prior application.
2. Convention Application — Section 135 An application filed in India claiming priority from an application filed in a convention country (a country with which India has a bilateral agreement, or a Paris Convention member). Must be filed within 12 months of the priority date.
3. PCT National Phase Application — Section 7(1A) An application entering the national phase in India under the Patent Cooperation Treaty (PCT). Must be filed within 31 months from the international filing date or priority date.
4. Application for Patent of Addition — Section 54 An application for a patent for an improvement or modification of an already patented invention, filed by the same patentee. A patent of addition lasts for the same term as the main patent and does not require a separate renewal fee.
5. Divisional Application — Section 16 Where a single application contains claims for more than one invention, the applicant can file a divisional application to claim the additional invention(s) separately.
Process of Obtaining a Patent — Step by Step
Step 1 — Prior Art Search
Before filing a patent application, the inventor should conduct a prior art search to determine whether the invention is novel. The prior art search involves searching existing patents, scientific literature, and other publications worldwide. This helps the inventor assess the patentability of the invention and draft appropriate claims.
Step 2 — Filing of Application — Section 7
The patent application is filed at the Patent Office (Kolkata, Mumbai, Chennai, or Delhi) having jurisdiction over the applicant. The application must be filed in the prescribed Form 1 along with:
(a) Complete Specification (or Provisional Specification first) (b) Abstract of the Invention (c) Claims (d) Drawings (if necessary) (e) Declaration as to Inventorship (Form 5) (f) Power of Attorney (if filed through a patent agent) (g) Prescribed Fee
Step 3 — Provisional Specification — Section 9
An applicant who has not completed the invention can first file a provisional specification to secure the priority date. The provisional specification:
- Describes the nature of the invention
- Does not need to contain full claims
- Gives the applicant 12 months to file the complete specification
If the complete specification is not filed within 12 months, the application is deemed to be abandoned.
Step 4 — Complete Specification — Section 10
The complete specification is the most important document in a patent application. It must contain:
1. Title of the invention — A clear and concise title
2. Field of invention — The technical field to which the invention belongs
3. Background of the invention — Description of the prior art and the problems it presents
4. Object of the invention — What the invention aims to achieve
5. Statement of invention — A brief summary of the invention
6. Detailed description — A complete and clear description of the invention with sufficient detail to enable a person skilled in the art to reproduce it
7. Drawings — If the invention can be illustrated, drawings must be provided
8. Claims — The most legally important part of the specification. Claims define the scope of protection sought. Only what is claimed is protected by the patent.
9. Abstract — A brief summary of the technical disclosure
Section 10(4) requires that the complete specification must fully and particularly describe the invention and disclose the best method of performing the invention known to the applicant.
Step 5 — Publication of Application — Section 11A
After filing, the patent application is kept secret for 18 months from the filing date (or priority date, whichever is earlier). After 18 months, the application is published in the Official Journal of the Patent Office.
The applicant can also request early publication by filing a request in Form 9 with the prescribed fee, in which case the application is published within 1 month of the request.
Step 6 — Request for Examination — Section 11B
Publication does not automatically lead to examination. The applicant must file a Request for Examination in Form 18 within 48 months from the date of filing (or priority date). If no request is filed within 48 months, the application is deemed to be withdrawn.
Step 7 — Examination by Patent Office — Sections 12-14
Upon receipt of the Request for Examination, the Controller assigns the application to a Patent Examiner. The examiner examines the application and prepares a First Examination Report (FER) which is sent to the applicant. The FER contains the examiner's objections, if any, relating to:
- Lack of novelty
- Lack of inventive step
- Non-patentable subject matter
- Deficiencies in the specification or claims
Step 8 — Response to First Examination Report
The applicant must respond to the FER by filing written submissions and/or amending the specification and claims within 12 months of the FER being sent. If the applicant does not respond within 12 months, the application is deemed to be abandoned.
Step 9 — Pre-Grant Opposition — Section 25(1)
After publication and before grant, any person can file a pre-grant opposition in the prescribed form opposing the grant of the patent on any of the following grounds:
- The invention was anticipated by prior publication
- The invention was claimed in a prior patent
- The invention was publicly known or publicly used before the priority date
- The invention is obvious and does not involve an inventive step
- The subject matter is not patentable under Sections 3 and 4
- Insufficient disclosure in the specification
- Failure to disclose information regarding foreign applications
- The applicant is not the true and first inventor
The Controller considers the opposition and may:
- Refuse the application
- Require amendments to the specification
- Proceed with the grant
Step 10 — Grant of Patent — Section 45
If the Controller is satisfied that the application complies with all requirements and there is no valid opposition, he grants the patent. The patent is entered in the Register of Patents and a Letters Patent (patent certificate) is issued to the patentee.
Under Section 45, a patent shall be sealed with the seal of the Patent Office — this is called the "sealing of the patent." The patent takes effect from the date of publication of the application (not from the date of sealing).
Sealing of Patents
Sealing is the formal process by which a granted patent is authenticated and made official. When the Controller grants a patent, the patent is sealed with the seal of the Patent Office under Section 45 of the Patents Act.
The sealed patent (Letters Patent) contains:
- The name and address of the patentee
- The title of the invention
- The date of filing
- The date of sealing
- The complete specification and claims
- The seal of the Patent Office
The sealing of the patent is the final step in the grant process and marks the commencement of the patentee's exclusive rights under the patent.
Duration of Patent — Section 53
Under Section 53 of the Patents Act, every patent is granted for a period of 20 years from the date of filing of the application. After 20 years, the invention falls into the public domain and can be used by anyone without the patentee's permission.
To keep the patent in force, the patentee must pay annual renewal fees starting from the 3rd year of the patent. Failure to pay renewal fees results in the patent lapsing.
Post-Grant Opposition — Section 25(2)
Within 1 year of the grant of the patent, any person can file a post-grant opposition challenging the validity of the patent on the same grounds as pre-grant opposition. The post-grant opposition is decided by an Opposition Board constituted by the Controller.
Rights of the Patentee — Section 48
The patentee has the exclusive right to:
- Make, use, offer for sale, sell, or import the patented product in India
- Use the patented process and make, use, offer for sale, sell, or import the product directly obtained by the patented process
Compulsory Licensing — Section 84
Even after a patent is granted, the Controller can grant a compulsory license to a third party to use the patented invention without the patentee's consent if:
- The reasonable requirements of the public have not been satisfied with respect to the patented invention
- The patented invention is not available to the public at a reasonably affordable price
- The patented invention is not worked in India
India famously used compulsory licensing in Natco Pharma Ltd. v. Bayer Corporation (2012) — the first compulsory license granted in India — for the anti-cancer drug Nexavar (Sorafenib Tosylate), making it available to Indian patients at a dramatically lower price.
Important Case Laws
1. Novartis AG v. Union of India (2013)
The Supreme Court upheld the rejection of Novartis's patent application for the cancer drug Gleevec (Imatinib Mesylate) under Section 3(d) of the Patents Act. The court held that Section 3(d) prevents the grant of patents for new forms of known substances unless they show significantly enhanced efficacy. This was a landmark ruling affirming India's right to use TRIPS flexibilities to protect public health.
2. Bishwanath Prasad Radhey Shyam v. Hindustan Metal Industries (1979)
The Supreme Court held that for an invention to be patentable, it must be new and useful and must involve an inventive step. Mere workshop improvements or obvious modifications of existing technology are not patentable.
3. Standipack v. Oswal Trading Co. (2000)
The Delhi High Court held that the claims in a patent specification determine the scope of the patent monopoly and must be interpreted carefully — neither too broadly nor too narrowly.
4. F. Hoffmann-La Roche Ltd. v. Cipla Ltd. (2009)
The Delhi High Court refused to grant an interim injunction against Cipla's generic version of the cancer drug Erlotinib, taking into account the public interest in access to affordable medicines.
Conclusion
The process of obtaining a patent in India involves a series of carefully designed steps — from the filing of the application and its examination to publication, opposition, and finally grant and sealing. Each step is designed to ensure that only truly novel and inventive creations receive the protection of a patent monopoly, while the disclosure requirement ensures that the knowledge is shared with the public. The Patents Act, 1970 as amended provides a comprehensive framework for patent protection in India that balances the rights of inventors with the needs of society — particularly in critical areas like public health. The process of sealing of patents gives formal legal recognition to the grant and marks the commencement of the patentee's exclusive rights. Understanding this process is fundamental to any study of intellectual property law in India.
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