Prerequisites, Procedure & Perks of Patent Registration in IndiaFebruary 18, 2023 By Dinesh Parmar
While you are celebrating the fact that you created something new and are confident that your latest innovation is going to be a game-changer in the competitive market, someone might be eyeing it already and may replicate it soon and start selling without your knowledge. When you come to your senses, things will have already spiraled out of your control. If you don’t want such a disaster to happen, read about patent registration in India and head out to get it done before your launch.
What is a Patent? Why it has to be Registered?
For an invention or innovation, a patent is an exclusive intellectual property right granted by the government to the patentee. It gives the creator sole control over the creation as well as protection of the process and product.
Governed and administered by the Patent Act 1970 & Patent Rules 1972, patent registration provides a statutory right to the inventor to prevent the third party without authorization from making or manufacturing, using, offering for sale, selling, importing, distributing, and licensing that particular creation. However, the patent right is only granted if the creation is really unique, novel, innovative, and useful.
In a court of law, patents are like legal weapons that can be used as evidence. Although it is not mandatory to do patent registration, doing it will help you gain 20-year-long protection over your creation. So, in short, patent registration is an important process that you must undergo before even launching your business if you don’t want someone claiming it to be theirs later.
So, it's time to see how patent registration in India works. What are the requirements for a patent fling and what benefits do you get from it?
Prerequisites of Patent Registration in India
You cannot simply walk into a patent office and ask someone to register your patent. There is some prep work to be done to file a patent in India which we will discuss below.
First of all, the applicant must be the true and first inventor of the product/process or the assignee of the actual inventor. In the event that the invention/innovation's first inventor dies after patenting it, both the assignee and his or her legal representative can claim the patent registration.
Secondly, you must perform a detailed patentability search before applying for registration because the chances of rejection are higher if the patent you are planning to file falls under non-patentable things.
Yes, Patentable Subject Matter is one of the key requirements for obtaining a patent which means there are a few conditions that make you eligible for patent registration. The provisions of the Patents Act, section 3 and 4 includes a comprehensive list of non-patentable subject matter which means if your invention/innovation falls under such a list, the same will not be qualified for patent registration. Hence it is important to go through that with the help of a patent attorney to understand it better.
Other than this, there are three more criteria that you must meet before filing a patent in India and they are:
Novelty - which denotes that the invention is a new development and unique and hasn't been issued anywhere in India before the date of filing a patent application.
Inventive or Non-obviousness - meaning the invention should not be obvious. It should be simple and must be considered by a skilled and experienced person and must also be technologically advanced and economically profitable to be patented.
Industrial Applicability - Last but not least, it must be practical and operational in the industries and public domain.
Now, to do a patent registration in India, you are required to submit quite a number of patent documents the list of which is as follows:
- Form 1 - Patent Registration Application
- Proof of right to file a patent application from the inventor, which can either be endorsed at the end of the application or attached as a separate agreement along with the patent application.
- Applicants who do not have complete specifications must submit provisional specifications. However, the applicant is required to file the complete specifications within 12 months in Form 2 i.e. Provisional or Complete Specification
- Form 3 - Statement and Undertaking under Section 8 of The Patents Act, 1970 which is mandatory and can be filed along with the application or within 6 months from the date of application.
- Form 5 - An Inventorship Declaration form from the inventor.
- Form 9 - Publication Request, an optional form if you want the publication process to be done quickly.
- Form 18 - Examination Request - a request to examine the patent application whether the invention is patentable or not, which has to be done within 48-months from the date of filing of the application. A person other than the applicant can also apply this request on behalf of the applicant.
- Form 26 - Patent Agent Authorization which means a power of attorney form, in case a patent registration application is filed by the patent agent/patent attorney
- Form 28 - For Small Entity which startups and small business entities have to fulfill and file.
- Priority documents for the following cases, which must be filed along with the application or within 18 months from the priority date:
- Convention Application (under Paris Convention).
- PCT National Phase Application wherein requirements of Rule 17.1(a or b) hasn't been fulfilled.
- Requisite Statutory fees (online payment)
- MSME or Start-up certificate
- KYC information along with applicant details
- Complete and brief information about the innovation to be patented
- A permission letter from the National Biodiversity Authority if the application pertains to a biological material obtained from India which can be submitted at any time before the grant of the patent. Don’t forget to mention the source of origin of any biological material used in the specification in the application form.
- Please note that the patent registration application must bear the signature of the applicant or authorized person or Patent Attorney along with name and date. The Applicant/ Agent must also sign the last page of the Complete/ Provisional Specification for the application to be complete.
Process of Patent Registration in India
A patent application in any form printed, handwritten, or typed can be filed at the very first stage of research and development in either Hindi or English language and the steps to successfully submit it are as follows:
Step 1 - Decide whether to DIY or hire a professional
You can file a patent yourself but considering the amount of time it takes and the deadlines to meet, it is advisable to hire a patent attorney who will guide you well and speed up the process. If you decide to hire one, don’t forget to sign an NDA (Non-Disclosure Agreement) with the patent professional before revealing your invention.
Step 2 - Patent search
As mentioned earlier, it is important to perform a detailed patentability search before applying because only via search will you be able to determine the novelty, non-obviousness, industrial application & enabling of the invention. You can simply visit http://ipindiaservices.gov.in/publicsearch to do so or ask your patent attorney to conduct the search and advise further steps. After the patentable search, the applicant must create a user id and password for applying online.
Step 3 - Drafting the patent application
If you find your invention patentable after the patent search, you can confidently proceed to draft your patent application. Fill up Form 1 and all other necessary forms as mentioned earlier and include a detailed description of the invention along with all the important clauses, inventive steps, patent specifications, and more for the patent registration to be successful.
You can choose between a provisional patent application and a complete patent application based on your invention stage because if it's in the testing stage, opt for a provisional patent application which will grant you 12 months to move your invention to the final stage.
Step 4 - Filing of patent application
Upon drafting a patent application, the very first step is to file it. You can either file it online on the official government website or submit hard copies if it along with all relevant documents, in the proper Indian Patent office which are four of them located in Delhi, Kolkata, Mumbai, and Chennai, based on your location.
Your application must be error-free and complete or else it is bound to get rejected so it is better to ask a patent attorney to do the job on your behalf. After filing, you will be provided a patent application number which permits you to use words like patent-pending/patent applied for your invention, which will help prevent any other person from misusing your idea.
Step 5 - Publication of patent application by the patent office
According to the Patent Law, post any patent registration, the Indian Patent Office must publish the patent application in the official patent journal after 18 months of filing. Along with the same, the patent application comes into the public domain after the patent office publishes it. There is no need to request this process as it is automatic. However, if you want an early publication, you can request it by submitting Form 9 and the application will ordinarily be published within one month of the request only if it's complete and faces no restriction by the Indian Patent Act.
Step 6 - Application examination
Next comes the review of the patent application by the Indian Patent Office. Unlike the publication of the application, the examination is not an automatic process hence, the applicant must put up a request to examine their patent application via Form 18.
The patent application examiner will then examine to check whether there is an existing patent on a similar idea and whether the invention meets the statutory requirements for patentability or not. If the invention is found unique and falls under the criteria of the patentable invention, the examiner will release the First Examination Report(FER) along with grounds for objections (if any) then the reply to FER must be submitted within 6 months from the date of issue of report but can also be extended further for a maximum of 3 months by filing request for extension of time via Form 4.
Step 7 - Grant of patent registration
The applicant must revert on the objections raised by the examiner within 6 months from the issuing date of the First Examination Report in a written response proving that your invention is patentable and novel. The applicant must also appear for a hearing if summoned. At last, when the patent application fulfills all formalities and overcomes the objections, the final status of the patent application is uploaded online which you can check by visiting the site https://ipindiaservices.gov.in/publicsearch. However, for the patent certificate, you will have to wait for 6 months to 1.5 years.
Benefits of Patent Registration
Although not mandatory, registering your patent will provide you with a lot more benefits than you think. They are as follows:
Legal protection of invention - A patent is an Intellectual Property Right and hence it needs to be protected legally or else anyone can claim it to be theirs and make a profit out of it. By registering, you can restrict others from using your invention without your consent.
Exclusive & transferable rights - Patent registration will give you exclusive rights to take action against patent infringement and sue for damages as well as the right to sell, transfer or franchise a patent to raise revenue.
Provides long-term legal status - A registered patent remains valid for 20 years, starting from the date of registration which can further be renewed. Hence, you can use it as evidence anytime to fight against infringement.
Competitive advantage & monopoly - A registered patent enables the inventor to get a noticeable market status, improve their business, and help in building up a good relationship with consumers and competitors which creates trust and a boost in business and profit. Moreover, since the competitors cannot replicate or reuse your invention, you can enjoy a market monopoly.
Creation of asset - A patent is an intellectual property making it an intangible asset that the owner can take advantage of by commercializing the invention, receiving royalties, charging premiums from their customers for the patented product, etc.
Public disclosure - When your patent becomes public, you will gain good market exposure which will help you build your portfolio along with increasing the funds and market value, and attract leading and high-end investors, shareholders, business partners, and consumers.
Liberty to make changes - With patent registration, you get the right to modify your original invention as and when needed and gain profits out of it.
So, Are You Ready For Your Patent Registration?
We know you might be exhausted after going through what it takes to register a patent in India but, it is not something that you cannot do on your own, still, the perks of approaching an efficient law firm like us Parker and Parker Co. LLP will help you get proper guidance, quick and non-stop support, problem tackling and solving, and faster filing of the patent without any rejections. So, meet us today for a smooth, quick, and successful patent registration!