Excelling in Patent Prosecution in India
India has seen significant recent updates to its patent law, with data to suggest that the country is fast becoming a favoured destination for patent litigation.
Below, we take a deeper look at the process of patent prosecution in India with Dr Anju Khanna, partner and head of the Patent Department at Lall & Sethi. Drawing upon more than 20 years’ worth of experience in the sector, she shares her insights as to the most effective patent application techniques and likely developments for the future of patent law in her jurisdiction.
To begin with, can you describe the process involved in patent prosecution in India and the key pieces of legislation that regulate it?
Patent prosecution is regulated by the Patents Act 1970 in India. The inventions covered by patents in India pertain to only utility inventions. Industrial designs are protected under the ambit of the Designs Act. The Patents Act 1970, along with the Patent Rules 1972, came into force on 20 April 1972 (after replacing the Patent Act 1911). Since then, various amendments in the Patents Act (hereinafter referred to as the Act) and Rules have been brought about from time to time. The Patents Act 1970 was last amended by the Patents (Amendment) Act 2002 (38 of 2002). It is read together with the Patents (Amendment) Rules 2021.
The patent prosecution process begins with the filing of a patent application (provisional/complete specification) at the Indian Patent Office (IPO). In case a provisional is filed, a complete specification is required to be filed within 12 months of filing the provisional, failing which the provisional automatically gets abandoned. A foreign filing license is required for an invention for which the inventor resided in India at the time of the invention, if the first application is to be filed outside India.
An application submitted to the Patent Office with a complete specification is published 18 months from the earliest priority date under section 11A of the Act. A request for examination under section 11 B can be filed within 48 months from the earliest priority date. Thereafter, the application is referred to an examiner for technical examination with respect to the patentability of the subject matter of the invention. Following a detailed examination, a First Examination Report (FER) is issued containing both formal and technical objections. The applicant has six months’ time from the date of issuance of the examination report to put the application in order for grant, with a one-time extension of one, two or three months.
A second examination report and/or an oral hearing may be issued for further clarifications and overcoming objections. New art may be cited in these reports. Also, an application, once published, can be opposed by any person by filing a pre-grant opposition until the date of grant under the provisions of section 25(1) of the Act. An application cannot be granted prior to six months from the date of publication. A patent can be opposed by any interested person within one year of grant under the provisions of section 25(2) of the Act. A patent can be revoked any time after grant by an interested person under section 64 until the life of patent either by filing a revocation petition or in a counter claim in a suit for infringement.
A foreign filing license is required for an invention for which the inventor resided in India at the time of the invention, if the first application is to be filed outside India.
India is signatory to various international treaties like the Paris Convention for the Protection of Industrial Property, the Patent Cooperation Treaty and the TRIPS agreement. Hence an application can be filed either as an ordinary or convention or national phase of a PCT application.
Under rule 24C of the Act, an applicant may file for early or expedited examination. The following applicants are eligible to file for expedited examination under the Indian Patent Act:
- An applicant who has chosen India as an International Searching Authority (ISA) or as an International Preliminary Examining Authority (IPEA) in a corresponding PCT application;
- If the applicant is: a start-up as defined in rule 2(fb) of the Patent Rules, 2003; or a small entity as defined in rule 2(fa) of the Patent Rules, 2003; or a female natural person; or a government undertaking in accordance with section 2(1) (h) of the Act, in case of an Indian applicant, or is a similar entity in case of a foreign applicant; or if an applicant is eligible under an arrangement for processing an international application pursuant to an agreement between the IPO with another participating patent office.
The Patents Act 1970 is the primary legislation that governs patent filing and prosecution in India. Being a signatory to the various international treaties, India is compliant with all its obligations under the treaties.
How long does the patent application process ordinarily take, and what measures is the Indian Patent Office (IPO) taking to expedite patent applications?
Ordinarily, the time to grant a patent depends upon time taken in different stages, which may vary from around three to five years, depending upon the case. The time period for filing request for examination (RFE) is 48 months from the earliest priority date. Once an RFE is filed, the application is examined between six months’ to one year’s time. The first step towards expediting the process is to file for RFE as soon as possible.
The IPO has taken several measures to increase transparency in the process and decrease delays in prosecution. The entire process from filing to grant is now conducted online, including oral hearings and also opposition hearings that are held through video conferencing. File wrappers of published applications are available online for public to access. Dynamic online utility services provide updated information about the status of an application. Vide noticed as of 16 January 2023 that the IPO is undertaking hearings in pending matters in an expedited manner. In addition to these, there are certain categories of applicants who can avail of expedited examination provisions as mentioned above.
How can an applicant best increase their odds of having their application accepted by the IPO?
In order to increase chances of a patent application being accepted by the IPO, some general considerations that must be kept in mind are as follows:
Many inventions are rejected on the basis of the subject matter of the invention, which should not fall under sections 3 and 4 of the Patent Act, i.e. must fulfil the criteria of eligibility. For example, pharmaceutical inventions are generally objected under sections 3(d) and 3(e); sufficient data must be provided in the specification to justify the technical advancement over the prior art for 3(d) and synergy in case of a composition, combination or formulation comprising multiple ingredients for 3(e).
As mentioned above, CRIs are objected under section 3(k). It is important to show technical effect of the software to overcome 3(k). It is also important to show a hardware component. For devices that are likely to be objected under section 3(f), it must be ensured that it is not a mere arrangement or re-arrangement of a known device. The device must be new and also all its components must act together to produce the desired technical effect.
The IPO has taken several measures to increase transparency in the process and decrease delays in prosecution.
With respect to inventions where biological material is used, a common objection raised is with respect to NBA (National Biodiversity Act) permission. An applicant must ensure that if the subject matter involves use of any biological resource obtained from India, its complete details are provided in the specification and NBA permission is taken, if required, to avoid an objection during the examination stage that normally delays grant.
Enablement is also a very common ground for objection. The claims must be supported with sufficient data and information in the specification. Use claims and method of treatment claims are not allowed in India and must be avoided.
An applicant must ensure that all the formal requirements of an application are complied with and that there is strict adherence to the various timelines. Requirement under section 8 ‘Statement and Undertaking’ must be taken care of by providing the details of the corresponding foreign applications within the stipulated time. Strict adherence to the stipulated timelines with respect to each of the procedures involved must be observed to avoid formality objections.
What are the most common mistakes that you see made during patent prosecution, and how do you help your clients to address these?
One of the most common mistakes committed by applicants is that they do not disclose sufficient data while filing the complete specification. It must be borne in mind that if the invention is not sufficiently disclosed and the subject matter of the claims is not enabled, it may lead to rejection of the application. Therefore, a balance must be struck.
Voluntary amendment of the as-filed specification after filing is not always allowed. The scope of amendments that may be allowed is restricted by section 59 of the Act. Therefore, care must be taken at the time of filing of the specification to ensure that it is carefully drafted.
Another common error is disclosure of information related to corresponding applications filed in other jurisdictions that applicants fail to provide. Material information not disclosed can lead to refusal of an application and is a ground for opposition and revocation of patent.
Another matter of concern is the strict adherence to timelines, failure of which may lead to fatal consequences.
In your view, what skills and technologies are most useful when it comes to bolstering the odds of success during patent prosecution?
Once a patent application enters into the examination stage, its fate depends in the hands of the examiner concerned. Therefore, it is very crucial for an applicant or patent attorney to handle the examination/hearing stage of an application skilfully. Communication skills play a very important role in patent prosecution. Clear, to-the-point and effective communication is a must.
Each of the objections raised in the examination report must be carefully addressed. The prior arts must be properly studied so as to be able to clearly differentiate the subject matter of the invention in question from the cited prior arts. The differences and the arguments must be clearly represented without leaving scope for any ambiguity. It is also important that no statement be made, in writing, at any stage of the prosecution that may act as an estoppel at a later stage, such as during litigation.
During hearings, the objections raised must be clearly understood before presenting a reply. Replies must be precise and to-the point unless a detailed answer is sought by the Controller. The applicant or attorney must utilise the opportunity efficiently.
Each of the objections raised in the examination report must be carefully addressed.
Keeping a tab on all the timelines once a patent application is filed until grant is very important to ensure that they are strictly adhered to. Continuous follow-ups with the IPO and self-audit of files on the IPO website are also important.
During your time as a practising IP lawyer, what significant changes have you observed in the way that patent prosecution is handled?
Two decades ago, only processes were patentable in respect of inventions relating to pharmaceuticals, food, drugs and substances produced by chemical process. Since 1 January 2005, patents are open to grant in all categories of inventions, which has made a significant impact in India.
Comprehensive e-filing services, including hearings through video conferencing, have facilitated inventors and applicants, which have in turn enhanced patent filing in India. Recording of hearings also help avoid misuse of the system.
Early disposal of the applications has changed the whole working of IPO and has reduced the grant time. The search engine InPass has vastly improved and every document filed with the IPO gets uploaded in the concerned file wrapper within the same day .
Several kinds of applicants can avail discounted official fees and expedited examination as mentioned above. This has given a boost to filings by start-ups and educational institutes.
The IPO has published guidelines for Computer Related Inventions (CRIs), pharmaceutical and biotechnology-related inventions and inventions based on traditional knowledge. It has also published an updated Manual for Patent Practice and Procedures. The Act requires approval from the National Biodiversity Authority for any biological material obtained from India, obtaining which used to delay the grant of the application. This process has now been streamlined by the IPO. In recent times, the IPO has allowed grant of patent right to a right holder even when the approval from NBA has been under process.
Do you foresee any major developments on the horizon for patent enforcement in 2023?
India is an IP friendly nation and has shaped and defined its laws and standards as per its global obligations under various treaties .
Establishment of the IPD (Intellectual Property Division) in the High Court of Delhi in 2022 and other High Courts (under process) in India has aligned the country with similar global practices to deal with IPR-related matters. This will help facilitate the efficient disposal of IP matters, as well as bringing consistency in the precedents set by the Courts in the areas of IP law. The IPD deals with all matters which are in the nature of original, appellate or any other proceedings related to IPR, which includes cancellation, revocation applications, other original proceedings, appeals and petitions from the various Intellectual Property Offices.
2022 saw the notification of the High Court of Delhi Rules Governing Patent Suits, which provides procedures and mechanisms for simpler, effective and efficient adjudication of patent infringement cases. It also prescribes various procedures related to pleadings, hearings etc. Implementation of these rules has led to the setting up of standard procedures that will certainly help in adjudication of infringement suits.
Jurisprudence in patent domain has significantly evolved in the past decade and a half. India is becoming the jurisdiction of choice for Standard Essential Patent (SEP) litigation. In virtually every SEP case, the patentee has received favourable orders from the Court either in the form of an interim injunction (that leads to settlement between parties) or deposition of interim royalties or bank guarantees with the Court. With the advent of 5G technology in the telecommunication space, this is likely to increase further.
Similarly, the formation of specialised IP courts in the IPD has seen rapid advancement in development of jurisprudence, at least in the Delhi High Court. With formation of IPDs in other High Courts, the time frame of patent litigation is expected to see a further significant reduction.
Dr Anju Khanna, Partner & Head, Patents
D-17, South Extension II, New Delhi -110 049, India
Tel: +91 11-4289-9988 | +91 11-4289-9999 (Ext: 124)
M: +91 99-7168-1696
Dr Anju Khanna heads the Patent Department at Lall & Sethi and has also been the firm’s managing partner from 2019-2021. With more than 20 years of work experience and 18 years in the field of patents, she handles both patent prosecution and patent litigation at the firm. Dr Khanna oversees and handles work in various technology domains including chemistry, pharmaceuticals, telecommunications, medical devices, electrical and mechanical inventions, and she is actively involved with the Patent Office and the Department for Promotion of Industry and Internal Trade (DPIIT) regarding policy decisions.
Lall & Sethi is a boutique IP firm that provides a complete range of services relating to contentious and non-contentious IP issues. Its areas of practice include trademarks, copyright, designs, patents, confidential information and trade secrets, information technology and entertainment and sports law.