Patent Application Procedure

Nowadays, the applicant is always eager to receive the patent grant as soon as possible without any further delay. But, it is essential for all parties (applicant, Patent Office and any person) to understand that the patent application should be granted after six months from the date the publication. There are many procedures and rules that are required to follow after the filing of a patent application till the grant of the patent. According to the Indian Patent Act 1970, an applicant can file a form of application for patent of their invention in accordance with Section 7, after 18 months from the date of filing, the application is published. If the applicant does not wish to wait until the period 18 months prescribed under the Act, then the applicant can file a separate request under Form 9 with the required costs for seeking early publication. In most cases, the patent application is published within one month after filing the request for early publication. The period for which a patent application shall not ordinarily be open to the public under sub-section (1) of section 11A shall be eighteen months from the date of filing of the application or the date of priority of the application, whichever is earlier, according to Rule 24 of the Patent Rules 2003. Provided, however, that the Controller usually publish the application in the journal within one month of the period’s expiration or one month of the date of the request for publication under regulation 24A.

Publication of Patent Grant Application

A request for publication under sub-section (2) of Section 11 A must be made in Form 9 according to Rule 24A. Anyone can raise pre-grant opposition to the patent grant after the application has been published. In the pre-grant opposition, any person, in writing, represents to the Controller against the issue of a patent on the reasons listed in Sections 25(1)(a) to (d) of the Patents Act 1970, where an application for a patent has been published. Still, a patent has not been granted (k). Additionally, after the grant of a patent, any interested individual may file a post-grant opposition by submitting a notice of opposition to the Controller within 12 months of the date of publication. The Controller has the authority to determine the merits and inform the applicant of the opposition. The applicant must file a response, and a judgment can be made. 

Examination of the Patent Application

Unlike publication, the examination is not an automated procedure; the applicant must request that the Patent Office examine the patent application. Under Form 18, the usual request must be filed within 48 months after the date of the application’s filing. Upon receiving such a request, the Controller assigns the application to a patent examiner, who reviews it using several patentability criteria, such as novelty, inventive step, and industrial applicability, and issues the First Examination Report (FER) to the applicant. Under Form 18A, the applicant can also request an accelerated application assessment. According to Rule 24C, on any of the following grounds, an applicant may file a request for expedited examination in Form 18A along with the fee specified in the first schedule only by electronic transmission duly authenticated within the period prescribed in rule 24B:(a) that India has been indicated as the competent International Searching Authority or elected as an International Preliminary Examining Authority in the corresponding international application; or (b) that the corresponding international application has been indicated as the competent International Searching Authority or elected as an International Pre, the applicant must respond to the Patent Office’s objection in the form of the First Examination Report.

Response by the Applicant on the Raised Objection

The applicant is required to respond to the objection expressed in the examination report in writing. The applicant can show that the invention is patentable and try to disprove the entire argument. If necessary, physical hearing or video conferencing might be ordered. Following the resolution of all objections, the application would be submitted for a grant if it was determined to fulfil all patentability conditions, and the applicant would be granted the patent. The patent grant is announced in the patent journal, which is published on a regular basis. 

Post-Grant Opposition procedure of the Patent Application

Any interested individual may file a post-grant opposition by submitting a notice of opposition to the Controller within 12 months of the date of publication of the granted patent. Section 25(2) of the Patents Act 1970 states that any person interested may give notice of opposition to the Controller in the prescribed manner at any time after the grant of a patent but before the expiration of a period of 12 months from the date of publication of the grant of a patent on any of the grounds listed in Sections 25(2)(a) to (d) (k).

In Indian history, one of the patents was granted within four months and was the fastest patent grant. Now the question arises whether it is justifiable on the part of the Controller or Patent Office to grant the patent that early? Doesn’t it question natural justice? The notion of natural justice is being questioned in this instance. The natural justice principle’s purpose is to offer an equal opportunity to be heard, the concept of fairness, fill legal gaps and loopholes, defend fundamental rights essential aspects of the Constitution, and ensure that there is no miscarriage of justice. The principles of natural justice should be free of prejudice, and parties should be given a fair opportunity to be heard. The court should also notify the parties of all the grounds for their decisions. According to the Supreme Court, the objective of judicial and administrative authorities is to reach a reasonable and justifiable decision. Natural justice’s major goal is to avoid miscarriages of justice from occurring.

Patents granted without following proper procedure or rules can be revoked?

A patent can be deemed partly invalid, meaning that certain claims are invalid and others are legitimate. Under Sections 72(4) and 75 of the Patents Act 1970, the court may cancel the patent unless the specification is modified to the court’s satisfaction within a certain time.

The following are the grounds for revocation of a patent under Section 64 of the Patents Act 1970: 

  1. If the procedure followed is against natural justice; 
  2. If the invention as claimed in a valid claim of earlier priority date contained in the complete specification of another patent granted in India; 
  3. If the patent was granted on the application of a person not entitled under the provisions of this Act to apply for the patent; 
  4. Considering what was publicly known or publicly utilised in India before the priority date of the claim or what was published in India or abroad in any of the papers referred to in Section 13, the invention asserted in any claim of the complete specification is not novel;
  5. If the invention is apparent or does not entail any inventive step in as much as it is asserted in any claim of the whole specification,
  6. Based on what was publicly known or utilised in India, or what was published in India or abroad prior to the claim’s priority date;
  7. The claimed invention, so far as claimed in any claim of the prescribed form, is not useful;
  8. The entire specification does not adequately and fairly define the invention and the technique by which it is to be performed, which means that the characterisation of the method or instructions for working the invention as contained in the complete specification is insufficient to enable a person in India with average skill and knowledge of the art to which the invention relates to work the invention, or that it does not sufficiently and fairly describe the invention and the method by which it is to be performed, or that it does not sufficiently and fairly describe the invention and the scope of any complete specification claim is not properly and clearly specified, or that any complete specification claim is not reasonably founded on the subject revealed in the specification;
  9. The patent was secured on the basis of a fraudulent representation or suggestion;
  10. Under the Indian Patent Act, 1970, the subject of any claim in the complete specification is not patentable;
  11. The claimed invention, in as much as it is claimed in any claim of the complete specification, was surreptitiously employed in India before the priority date of the claim, unless otherwise specified in sub-section (3);
  12. If the patent applicant omitted to disclose to the Controller the information required by section 8 or provided information that was untrue to his knowledge in any material detail;
  13. In the case where the applicant violated any confidentiality order issued under Section 35, or that the applicant submitted or caused to be made an application for a patent outside India in violation of Section 39;
  14. The permission to alter the whole specification under section 57 or section 58 was gained by deception;
  15. The entire specification omits or misrepresents the source or geographical origin of biological material utilised in the invention;
  16. The claimed invention was anticipated in so far as it was claimed in any claim of the complete specification, taking into account any oral or written information accessible within any local or indigenous population in India or elsewhere.

A person interested can submit a petition before the IPR High Court Bench or a counter-claim in action for infringement on any of the reasons listed in Section 64 of the Patents Act. Any interested person is referred to as a person under the Act. It indicates that the person filing for patent revocation must have an interest or stake in the patent or its revocation, whichever is the case. The patent can be revoked in a variety of ways, not just under Section 64. Section 25(2) further provides some reasons for post-grant opposition, which effectively implies that a person alleging that a patent issued under the Act is invalid on the basis of grounds listed in Section 25 might file an opposition to the grant of such patent with the Controller for revocation. This remedy is accessible for one year from the date of the patent grant’s publication. These arguments are similar to those made in Section 64.

Conclusion: Living in a democratic country, all citizens are bound to perform our duties properly. An act is made passed in parliament, and we are bound to follow it. Further, we are bound to follow because we have few duties and are given few rights for maintaining integrity and peace in the country without any inequalities, which we have taught in every principle of the law. When the Patent Office does not follow the rules or the proper procedure for one case, it will be infringing someone else’s right. Natural justice will be continuously questioned for the Controller and Patent Office acts.

References:

  1. https://ssrana.in/ip-laws/patents/revocation-of-patent-in-india/
  2. https://www.iiprd.com/abolishment-of-ipab-changes-to-the-ip-regime/ utm_source=Mondaq&utm_medium=syndication&utm_campaign=LinkedIn-integration

Disclaimer: The present article intends to provide general guidance on the subject, and you can also consult us in your specific case.

Authors

  • Title

    Abhishek is an intellectual property Attorney. He specializes in the registration and maintenance of patents, designs, trademarks, and copyrights. He regularly assists companies in relation to crucial technology issues. He also helps organizations or individuals to develop patent portfolio management strategies for exciting new inventions and processes. Abhishek has past work experience with reputed firms like SaiKrishna and Associates Advocates, L.S. Davar and Co., Masilamani Law Partners, and Ripple IP Services (NCR).

  • Title

    Suma Sri is a law student exploring various streams of law along with her enthusiasm towards IPR. Her interests dwell in ADR. She is also into NGO activities. She has good knowledge of legal research. She has experience in writing articles and blogs. Currently, she is pursuing her bachelor's of B.B.A.LL.B(Hons.) in ICFAI University, Hyderabad.