Important Aspects to Remember While Filing Patent in India

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Date: 16 May 2023

Important Aspects to Remember While Filing Patent in India

The importance of Intellectual Property (IP) has been increasing globally, with significant impacts on the market. As awareness of IP grows, companies are becoming more diligent in protecting their intellectual property, striving to register it effectively and promptly. Given that IP generates profits for companies, they are taking no chances in safeguarding it through patent filing services.

Patents serve as a primary means of generating valuable assets across numerous industries. By licensing or assigning patents, companies and industries can earn substantial amounts in royalties. These practices of licensing and assigning patents are widespread in the market, and with the continued growth of technology and global user base, the trend is not likely to diminish anytime soon. Companies not only use these assets for licensing, but they also utilize them for securing loans and obtaining sanctions.

Patentability in India

A new invention, whether in the form of a product or process, that involves originality, an innovative approach, and is useful for industrial purposes, can be eligible for patenting. However, it should not fall under the categories of inventions that are deemed non-patentable under sections 3 and 4 of the Patent Act.

Defining a Patent

As per the Patent Act 1970, an invention is defined as a new product or process that involves an inventive step and can be used in an industrial context. An inventive step is considered to be a technical advancement compared to existing knowledge, which has economic significance and is not obvious to a person skilled in that particular field. For an invention to be considered new, it should not have been published in any document or used anywhere in the world before the date of patent filing with complete specifications.

For an invention to be eligible for patenting, it must pertain to a process or product or both, demonstrating innovation and uniqueness. Additionally, it must be applicable in an industrial setting. However, Section 3 of the Patent Act outlines several clauses specifying the types of subject matter that are not eligible for patenting.

For an invention to meet the newness or novelty requirement, all elements of its claim must not be known to the public, published, or used in a single prior art. The presence of an inventive step is crucial, indicating that the invention offers a technical advancement beyond the existing knowledge or has economic significance, or both, making it non-obvious to a person skilled in the relevant field of the invention.

The government has launched various innovative initiatives such as Make in India, Startup India, Digital India, and Skill India. As intellectual property is integral to fostering innovation, the Cell for IPR Promotion and Management, in collaboration with the Office of Controller General of Patents, Design, and Trademark, has been actively engaged in developing and commercializing IP assets.

Things to Consider While Filing a Patent Application

To proceed with patent filing in India, the applicant must conduct comprehensive research and development to prepare the invention. During this process, the applicant should identify the key components of the invention, which will form the basis for claiming the patent. This information must be included in the patent application, along with a patent specification. The applicant can choose to file either a provisional specification or a complete specification. If the invention is still in the development phase, it is advisable to file a provisional specification, which provides the applicant with 12 months to further refine the invention. This can be achieved by submitting Form 2.

Once a patent application has been filed, it will be published after 18 months from the application filing date. However, if requested through Form 9, the publication can be done earlier. To initiate a thorough examination of the filed patent application, the applicant must file Form 18. During examination, an expert examiner will scrutinize the application to ensure that the patent application is in compliance with the Patent Act, which can be streamlined through patent filing services. If any objections are raised, the applicant will receive a First Examination Report. Once these objections are addressed, the application can proceed to the granting process.

Points to Remember

For filing a patent application, the fees specified in the Schedule must be paid. The claims made in the application should be neither too broad nor too narrow, as it affects the level of protection granted. The applicant should be careful to include clear and specific claims regarding the novel part of the invention, along with the inventive steps and industrial applicability. The claims should match the description or specification provided and be interpreted accordingly. While it may not be possible to provide every detail necessary to put the invention into effect, the description should correspond to the claim. The technical area of the invention should be clearly stated to aid the examiner in conducting an official search in that area. Additionally, the technical field should be relevant to the invention and should have existed prior to the application, which can be established with the help of patent filing services.