Frequently Asked Questions
Frequently Asked Questions
A patent is a form of intellectual property that provides an owner of an
invention the legal right to exclude others from making, using, selling and
importing the invention for a limited period of years.
What are the documents to be submitted for filing an application for patent in Indian Patent Office?
- a. Form 1
- b. Form 2 (Provisional or Complete specification)
- c. Form 3
- d. Form 5
- e. Form 26 (Power of Authorization)
We cannot file a patent if the invention is published or displayed
anywhere. In certain situations, a grace period of 12 months is provided
from the date of publication or display for filing the patent application.
- a. Novel
- b. Inventive step
- c. Industrial applicability
Provisional specification consists of description of invention. It is usually
filed without claims. The main advantage of filing the provisional
specification is to secure the priority date for the invention.
Complete specification explains the invention in detail along with the set of
claims. It should be filed within 12 months from the filing date of
provisional specification. The patent application will get abandoned if the
complete specification is not filed within 12 months. The complete
specification can be directly filed without filing the provisional
specification if the invention is completely developed and finalized.
- Get a priority date of the invention
- Provide 12 months duration to completely develop the invention and to file the complete specification
Priority date is the date of filing of the patent application.
The Patent application should be filed either in Hindi or English. We have
to submit English translation if the specification is in foreign language. In
case of PCT National phase, we should submit the English translation of the
published PCT application within 31 months from priority date and not
later than the priority date.
- a. True and first inventor(s) of invention
- b. Assignee of true and first inventor(s) (Assignee may be a natural person or a firm/company)
- c. Legal representative in case of deceased person
- a. Background of invention
- b. Objective of invention
- c. Summary of invention
- d. Detailed description of invention
- e. Claims
- f. Abstract
- g. Drawings
Yes, we can submit either General Power of Attorney or Separate Power of
Attorney. We should submit an attested copy of the General Power of
Attorney for subsequent applications of the same applicant.
Proof of right should be submitted within 6 months from the date of filing of
the patent application.
The patent application is published in the official journal within 18 months
from the date of application. The patent application is open to public only
after 18 months. Once the patent application is published, it is open for
opposition if any. If the applicant wants to publish the patent application
early, he/she has to file Form 9 for early publication.
The Controller issues directions for restricting the publication of
information related to the invention, if the filed patent application is
relevant to defense. The directions are intimated to the applicant along
with a notice to the Central Government. The Central Government decides
the invention is detrimental to the defense of India or not. The secrecy
directions should be reviewed periodically by the Central Government at
an interval of 6 months.
The Indian resident can file a Patent application outside India by filing a
request in Form 25 to get written permission for filing the Patent
application outside India. The Controller should dispose of the request
within 21 days from the date of application of such request under the
condition that the invention should not fall under defense or atomic energy
category.
We should apply request to the Patent office formally to withdraw the
Patent application within 15 months from the date of filing of Patent
application.
The Patent application will be examined by filing Form 18 within 48 months
from the date of filing of application. The request for examination can be
made either by applicant or third party.
The request for early examination of the Patent application can be done by
filing Form 18A under some conditions.
After filing of request for examination, we will receive First Examination
report (FER) from the Patent Office. The FER consists of objections for
which we should give reply to the Patent Office within 6 months from the
date of issue of the FER. The Patent application gets automatically
abandoned, if we are not filing reply for FER within the prescribed period.
There is an option of extending the time limit for responding to the FER by
filing Form 4 along with prescribed fee before expiry of 6 month duration.
“Address for service” should be given to the Controller during filing of
Patent Application. The Controller requires the address for service for
sending notices or communications in relation to the filed Patent
Application.
For Foreign Applicant of Patent, the address of legal representative or
Patent agent/Attorney should be given as an address for service in India
for further proceedings.
- a. Form 3 – Details of corresponding Patent applications filed in other countries
- b. Form 26 – Power of Authorization
Yes. India is recognized as an International Searching Authority (ISA) and
International Preliminary Examination Authority (IPEA) under the Patent
Cooperation Treaty.
The Patent application can be amended when required. The amendments
should not deviate from the earlier filed subject matter. The amendments
should be in such a manner that it should support the actually filed
description and claims.
The Patent Act allows to oppose the Patent application both before grant of
patent (Pre-grant opposition) and after grant of patent (Post-grant
opposition).
The Pre-grant opposition can be filed in Form 7A by any person by way of
representation at any time after publishing but before grant. The Postgrant opposition can be filed in Form 7 by any person interested within 1
year from the date of grant of Patent application. The notice of opposition is
given to the Controller in duplicate in Form 7 along with prescribed fees.
Any person can file a pre-grant opposition at any time after publishing of
the patent application but before grant. The pre-grant opposition can be
filed even when request for examination is not filed. But the opposition will
be considered only when the request for examination is applied within the
prescribed period. There is no fee for filing the pre-grant opposition.
- Wrongfully obtaining the invention
- anticipation by prior publication
- anticipation by prior date, Prior claiming in India
- Prior public knowledge or public use in India
- Obviousness and lack of inventive step
- non patentable subject matter
- insufficiency of description of the invention
- non-disclosure of information as per the requirement or providing materially false information by an applicant
- Patent application not filed within 12 months of filing the first application in a convention country
- Non-disclosure/wrong mention of source of biological material
- Invention anticipated with regard to traditional knowledge of any community, anywhere in the world.
- a. Study the invention fully
- b. Find out the novel features of the invention
- c. Frame keywords based on the novel features
- d. Search in Patent databases using the keywords
- e. Research the Patents hit during search and find whether there is any Patent equivalent to that of the invention
It will take minimum 3 years to get the patent granted. The time may vary
based on the workload in the Patent Office.
- a. Exclusive right to make and use of patented invention
- b. Right to assign patent Subjected to conditions and limitations
- c. Grant license
The term of Patent is 20 years from the date of filing.
Yes, the patent should be renewed after grant. Renewal should be paid for
each year. The first renewal fee should be paid at the end of second year
from the date of patent. Renewal fees should not be paid before grant.
Yes, the working of patent after grant should be informed to the Patent
office by filing Form 27.
Compulsory license is defined as authorization which permits a third party to make, use, or sell a patented invention without the consent from the patent owner. Compulsory license can be applied at any time after the expiration of three years from the date of the grant of a patent. Any person interested may make an application to the Controller for grant of compulsory licence on patent on any of the following grounds,
namely:—- (a) that the reasonable requirements of the public with respect to the patented invention have not been satisfied, or
- (b) that the patented invention is not available to the public at a reasonably affordable price, or
- (c) that the patented invention is not worked in the territory of India.
Patent can be revoked on a petition of any person interested or of the Central Government by the Appellate Board or on a counter-claim in a suit for infringement of the patent by the High Court on any of the following grounds,
- (a) that the invention, so far as claimed in any claim of the complete specification, was claimed in a valid claim of earlier priority date contained in the complete specification of another patent granted in India;
- (b) that the patent was granted on the application of a person not entitled under the provisions of this Act to apply therefor:
- (c) that the patent was obtained wrongfully in contravention of the rights of the petitioner or any person under or through whom he claims;
- (d) that the subject of any claim of the complete specification is not an invention within the meaning of this Act;
- (e) that the invention so far as claimed in any claim of the complete specification is not new, having regard to what was publicly known or publicly used in India before the priority date of the claim or to what was published in India or elsewhere in any of the documents referred to in section 13;
- (f) that the invention so far as claimed in any claim of the complete specification is obvious or does not involve any inventive step, having regard to what was publicly known or publicly used in India or what was published in India or elsewhere before the priority date of the claim;
- (g) that the invention, so far as claimed in any claim of the complete specification, is not useful;
- (h) that the complete specification does not sufficiently and fairly describe the invention and the method by which it is to be performed; (i) that the scope of any claim of the complete specification is not sufficiently and clearly defined or that any claim of the complete specification is not fairly based on the matter disclosed in the specification;
- (j) that the patent was obtained on a false suggestion or representation;
- (k) that the subject of any claim of the complete specification is not patentable under this Act;
- (l) that the invention so far as claimed in any claim of the complete specification was secretly used in India, otherwise than as mentioned in sub-section (3), before the priority date of the claim;
- (m) that the applicant for the patent has failed to disclose to the Controller the information required by section 8 or has furnished information which in any material particular was false to his knowledge;
- (n) that the applicant contravened any direction for secrecy passed under section 35 or made or caused to be made an application for the grant of a patent outside India in contravention of section 39;
- (o) that leave to amend the complete specification under section 57 or section 58 was obtained by fraud.
- (p) that the complete specification does not disclose or wrongly mentions the source or geographical origin of biological material used for the invention;
- (q) that the invention so far as claimed in any claim of the complete specification was anticipated having regard to the knowledge, oral or otherwise, available within any local or indigenous community in India or elsewhere.
Patent ceased to have effect by failure to pay renewal fee within the period
can be restored by filing Form 15 within eighteen months from the date on
which the patent ceased to have effect, by the patentee or his legal
representative.
Patent infringement is defined as the commission of a prohibited act with
respect to a patented invention without getting the permission from the
patent holder. The Permission can be granted in the form of a license.
Infringement is possible only in a country where the Patent is in force as
the Patents are territorial.
Patent Cooperation Treaty (PCT) is an international patent law treaty,
concluded in 1970. The PCT provides an unified procedure for filing the
patent applications to protect the inventions in each of its contracting
states. A patent application filed under the PCT is called an international
application, or PCT application. . The PCT procedure leads to a standard
national or regional patent application, which is granted or rejected
according to applicable law, in each jurisdiction in which the patent is
desired.
FAQ's on COPYRIGHT
Copyright is a type of intellectual property rights that are provided to the
owner for the work he has created.
- a. Original literary, dramatic, musical and artistic works;
- b. Cinematographic films;
- c. Sound recordings
Yes, the copyright can be assigned to any person.
The copyright can be assigned in writing signed by the assignor or by his
duly authorized agent.
Yes, we can copyright software or computer programme.
No person cannot translate a work without getting the permission from the
owner of the copyright.
The term of the Copyright protection is the life of the author plus 60 years
from the beginning of the calendar year following the year in which the
author dies.
Some of the Copyright infringements are given below:
- a. Producing infringing copies for hire or sell
- b. Distributing infringing copies for purpose of trade
- c. Importation of infringing copies into India
Remedies for copyright infringement
- a. Injunctions
- b. Damages
- c. Accounts
- d. Criminal action also can be taken on basis of copyright registration
On basis of copyright registration, the copyright infringement falls under
criminal offence too.
FAQ's Trademark
A trademark is a symbol, word, or words that are legally registered or
established by use as representing a company or product. Trademarks are
territorial in nature. International protection laws facilitate to protect the
trademark in multiple jurisdictions.
A service mark is a trademark which identifies and distinguishes the type
or source of service being provided rather than a product.
Anyone who claims rights in a mark can use TM (trademark) or SM (Service
mark) designation with the mark to alert the public about the claim. The
registration symbol ® can be used only when the mark is registered.
No we cannot able to register all the trademarks if the trademark is
confusing with a trademark of another person who has been using the
trademark earlier for the same goods.
The trademark must be filed in the name of owner of trademark, usually an
individual or company.
In India, we can able to register the trademark without using before.
Yes, the ownership of the trademark can be assigned or transferred.
It is not compulsory to register the trademark. But without protecting the
trademark, one cannot take action against the infringers of the trademark.
Yes, we can use single trademark for different products. But the trademark
should be registered in all categories of goods and/or services.
Yes, a foreigner can apply for trademark registration.
The term of trademark is for a period of 10 years. The renewal of
trademark is done for further period of 10 years.
Yes, the trademark protection is territorial.
The violation of exclusive rights related to the registered trademark without the authorization from the owner of the trademark is known as trademark infringement. The trademark which is not registered is not infringed.
Remedies of trademark infringement are:- a. Injunction/stay against the use of trademark
- b. Claiming damages
- c. Accounts and handling over of profits.
- d. Appointment of local Commissioner by the Court for custody/sealing of infringing material/accounts
Domain names are internet addresses and used to find websites. The
domain name should be chosen in such a manner that it should not conflict
with trademark of another company.
FAQ's on Geographical Indications
A geographical indication (GI) is a name or sign used on products which
corresponds to a specific geographical location or origin.
The properly protected GI gives protection to the goods in domestic as
well as international market.
GI can be registered by an association of persons or producers or by an
organization or an authority established under any law for the time being
in force representing the interest of the producers.
The GI cannot be registered:
- a. When GI becomes a generic name
- b. If the use of GI deceives public, cause confusions, or is contrary to any law in force.
- c. GI which comprises scandalous or obscene matter or hurt any section of the society
GI is registered for a period of 10 years but can be renewed from time to
time for a further period of 10 years at a time by paying renewal fees. GI is
liable to be removed from the register, if the registered GI is not renewed.
An authorized user of registered GI can exercise the exclusive rights to use
the GI and prevent other from using the GI without permission. The
registered proprietor and authorized users can initiate infringement
actions against the infringer.
A trademark is a sign, which distinguishes the goods or services of one
company from those of other companies. A GI is an indication used to
identify goods having special characteristics originating from a definite
geographical territory.
GI is a public property belonging to the producers of concerned goods.
The rights are transferred on his successor in title, when an authorized user
dies.
- a. Darjeeling tea
- b. Pochampally Ikat
- c. Chanderi Saree
- d. Kota Doria
- e. Mysore Agarbathi