FAQs on Patent Law & Procedures

What is patent?

In India, patent law is governed under THE PATENTS ACT, 1970 (Act No. 39 of 1970). Section 2 of the Act provides definition of “patent” as “a patent for any invention granted under this Act” that means, patent is not an automatic right. It is granted under the Patents Act, 1970, which means one has to obtain a patent by complying with the provisions of the Act, not by just inventing. The true and first inventor or assignee/representative of true and first inventor of invention have to file patent application before respective patent office in accordance with the Act.

What is invention and criteria of patent?

Patent granted on the invention. According to Section 2(j), “invention means a new product or process involving an inventive step and capable of industrial application”. This means, it can be granted on either product or process and should involve inventive step. Section 2(ja) of the Act provides what should be termed as inventive step as “a feature of an invention that involves technical advance as compared to the existing knowledge or having economic significance or both and that makes the invention not obvious to a person skilled in the art”. This means, it should either have technical advance or economic significance and must not be obvious to a person skilled in the art to qualify to be inventive. The other requirement is, it must have an industrial applicability. Section 2(ac) provides definition of "capable of industrial application", according to which, an invention should be capable of being made or used in an industry. It is worth mentioning that, here it refers to the “capability” not the economically significant. That means it should be capable of being made or used in the industry and whether it is economically significant is immaterial. It may be costly but must have industrial application. Capable of industrial application under Section 2(ac) is different from the economic significance under Section 2 (ja). It should not be misunderstood and should be read differently in different contexts.

What inventions are not patentable?

Besides its patentability criteria of being new, non-obvious, and industrial applicability, invention must not be hit by Section 3 and 4 of the Act. Section 3 provides certain invention that are not considered invention for grant of patent under the Act, as follows:

• Invention which is frivolous or which claims anything obviously contrary to well established natural laws.

• Invention the primary or intended use or commercial exploitation of which could be contrary to public order or morality or which causes serious prejudice to human, animal or plant life or health or to the environment.

• Mere discovery of a scientific principle or the formulation of an abstract theory or discovery of any living thing or non-living substance occurring in nature.

• Mere discovery of a new form of a known substance which does not result in the enhancement of the known efficacy of that substance or the mere discovery of any new property or new use for a known substance or of the mere use of a known process, machine or apparatus unless such known process results in a new product or employs at least one new reactant. For this purposes, salts, esters, ethers, polymorphs, metabolites, pure form, particle size, isomers, mixtures of isomers, complexes, combinations and other derivatives of known substance shall be considered to be the same substance, unless they differ significantly in properties with regard to efficacy.

• Substance obtained by a mere admixture resulting only in the aggregation of the properties of the components thereof or a process for producing such substance.

• Mere arrangement or re-arrangement or duplication of known devices each functioning independently of one another in a known way.

• Method of agriculture or horticulture.

• Process for the medicinal, surgical, curative, prophylactic diagnostic, therapeutic or other treatment of human beings or any process for a similar treatment of animals to render them free of disease or to increase their economic value or that of their products.

• Plants and animals in whole or any part thereof other than micro­ organisms but including seeds, varieties and species and essentially biological processes for production or propagation of plants and animals.

• Mathematical or business method or a computer programme per se or algorithms.

• Literary, dramatic, musical or artistic work or any other aesthetic creation whatsoever including cinematographic works and television productions.

• Mere scheme or rule or method of performing mental act or method of playing game.

• Presentation of information.

• Topography of integrated circuits.

• Invention which in effect, is traditional knowledge or which is an aggregation or duplication of known properties of traditionally known component or components.

Additionally, Section 4 provides restrictions on inventions related to atomic energy to be patented. According to which, “No patent shall be granted in respect of an invention relating to atomic energy falling within sub-section (1) of section 20 of the Atomic Energy Act, 1962 (33 of 1962).”

What are the requirements for filing patents?

To file a patent application in India, the applicant has to file either online mode or offline. There are different charges/fees for online and offline filling of patent application and other documents in connection thereto.

To file a patent application in India, log on to the official website of O/o CGPDTM, i.e. ipindia.gov.in, and register yourself in the website.

Who can register?

Registered Patent Agent or Applicant.

What are the requirements for registration?

Patent Agent: Patent Agent code.

Natural Person: Name, Place of business, Address, Contact details.

Organisation/Company/Startup/Educational Institutions: Organisation name, Address, Contact details, Official website (optional).

Applicant/Patent Agent must have either an electronic signature or digital signature certificate to complete registration for online filing.

What are the forms need to be filed?

Forms required to be filled:

Form 1, Form 2, Form 3, Form 5, Proof of rights, Authorization.

Form 9 if early publication required.

Form 18 for request of examination.

Form 18A for request of expedited examination, if eligible for same.

Suggested readings:

The Patents Act, 1970 https://ipindia.gov.in/Patents/acts_patents

The Patents Rules, 2003 https://ipindia.gov.in/Patents/rules_patents