1. OVERVIEW OF PATENTS IN INDIA

A patent is an exclusive legal right that is granted to an owner for inventing a new and useful product or process for a limited period. It is a privilege granted by the Government to prevent others from practicing or using the invention. The main aim of the patent is to protect technological advancements. It not only rewards the creation of an invention but also the development of an invention. It works as an incentive and promotes more creativity. During protection, the patent holder has the right to exclude others from making, using, offering for sale, etc. He also has the right to assign (sell) or license the patent. Thus, this means that the patent owner can transfer their exclusive rights to another person as per his wish. In this GrowthX Article, we have covered the important aspects of filing and securing your invention through patents.

2. WHY PATENT IS NECESSARY FOR COMPANIES?

The need for patents can be understood by examining the following case studies. Are you aware of the legal battle over Generic Apixaban that occurred between Indoco Remedies Ltd. v. Bristol Myers Squibb Holdings Ireland Unlimited Co.? Let’s understand this legal battle in brief.

Indoco Remedies (‘Indoco’) is a prominent Indian pharmaceutical company. It introduced “Apixabid”, a generic product of the formulation “Apixaban” which was originally developed and patented by Bristol Myers Squibb (BMS). BMS approached the Hon’ble Delhi High Court (‘Delhi HC’) seeking an ad-interim injunction against Indoco for infringing their patent.  The Delhi HC granted an injunction to BMS. Through this injunction order, Indoco and other Indian pharmaceutical companies like Emcure Pharmaceuticals, Torrent Pharmaceuticals, Cipla, etc. were restrained from manufacturing or selling generic versions of Apixaban. It was argued by BMS that any production or sale of Apixaban by these companies would infringe on its patent rights and cause irreparable harm to the company. Delhi HC granted the injunction.

Then, Indoco filed an SLP in the Hon’ble Supreme Court (‘SC’) which challenged the Delhi HC’s injunction. The company wanted to lift the stay and proceed with the production of its generic version of Apixaban. However, the Hon’ble SC decided and favored BMS. The apex court dismissed Indoco's petition and upheld Delhi HC’s order.

There’s another legal battle of Strix Ltd. v. Maharaja Appliances Ltd. over the infringement of a patent granted for a Liquid Heating Vessel.

Strix Ltd. (‘Strix’) was granted a patent for a ‘Liquid Heating Vessel’ with temperature control. Strix had exclusive rights to manufacture and sell the technology in India for a period of 10 years. Maharaja Appliances Ltd. (‘Maharaja’) purchased these patented products from Strix. However, later on, it began importing kettles installed with similar controls from a Chinese company. This led the Strix to file a suit for patent infringement against Maharaja.

Strix argued that one of the models of kettles sold by the Maharaja uses its patented sensors and therefore it has infringed on its patent by using temperature controls without authorization. However, Maharaja argued and challenged the validity of the patent. It presented three prior art documents to establish that the patent was invalid and hence should be revoked.

The Hon’ble Delhi High Court (‘Delhi HC’) after hearing the arguments from both sides held that the plea of invalidity raised by Maharaja has no substance and therefore it was rejected. Further, the Hon’ble Delhi HC compared the products of both companies and by applying the principle of ‘Pith and Marrow’, it held that Maharaja’s products were an infringement upon Strix’s patented technology. Maharaja was directed to pay Rs. 50 Lakh as damages.

From the above case studies, you can see that patents are a powerful and important tool of exclusivity that prevents competition from generic manufacturers. Patent protection not only protects the interests of the innovators but also shapes the market value of the particular brand. As it can be seen, the patent held by BMS played a pivotal role in its ability to control the market and maintain its competitive edge. It prevented the pharmaceutical companies from producing and selling generic versions of the drug. Now, these advantages are equally applicable to other industries as well. Therefore, it's highly crucial to patent your invention. As can be seen in the second case study between Strix and Maharaja, wherein Strix was able to secure damages for its patent infringement by Maharaja and therefore, able to establish the uniqueness of its product. This clearly shows how important it is for companies to get their unique products patented and secure them from unwanted infringement.

But how can you file a patent for your invention? Are there any criteria on which a patent is granted? All of these questions will be answered in this article. Read further to know more and if you need any help, visit IPR Advisory now.

3. CRITERIA FOR GETTING A PATENT

There is a criterion, on the basis of which a patent is granted. The three-fold criteria are described as follows:

3.1. Novelty

Novelty is the first key criterion to get the product patented. Your invention must be a ‘New invention’ which means any invention or technology which has not been anticipated by publication in any document or used in the country. It must also not be used in the world before the date of filing of a patent application with complete specifications. This implies that an invention is considered to be new if it is not anticipated by prior publication, prior use, or prior public knowledge. It is novel if it has not been disclosed in the prior art where prior art means everything that has been published, presented, or otherwise disclosed to the public before the date of filing of the complete specification.

3.2.Inventive Step/ Non-Obviousness

The second key feature is that your product must involve an inventive step. The inventive step is a feature of invention that involves technical advancement as compared to the existing knowledge or having economic significance or both and that makes the invention non-obvious to a person skilled in the art. The term non-obvious is also used because if the invention was obvious to the person of ordinary skill in the field concerned then it would not have qualified for patent protection.

3.3.Industrial Application

The third key feature is that your product must be capable of industrial application which means that the invention is capable of being used in the industry for which it is made. It should be capable of being used in real life and should possess some practical utility. It should not be something that is abstract or only theoretical and cannot be applied for industrial use.

4. THE PROVISIONS RELATING TO FILING OF PATENT

In India, the Patents Act, 1970 is the primary law that deals with Patents filing in India. The Act has prescribed the provisions relating to the procedure of filing a patent with the Government. The filing procedure is majorly divided into four stages.

The first stage deals with the ‘Application for Patents’, the second stage deals with the ‘Publication and Examination of Applications’, the third stage deals with the ‘Opposition Proceedings to Grant of Patents’, and the fourth stage deals with the ‘Grant of Patents and Rights Conferred Thereby’.

4.1. Application for Patents

First of all, it is very necessary for you to file an application for patent. Now this application for patent can be applied for by the true and first inventor, their assignee, or the legal representative of a deceased eligible person either individually or jointly. Each patent application which is filed must be for a single invention.

Along with the application, a provisional specification is filed. A complete specification must be filed within 12 months, otherwise the application will be abandoned. 

The specifications must describe the invention, start with an appropriate title, and include drawings if required by the Controller. The Controller can also request models or samples to supplement the application. Complete specifications must provide full details of the invention, its best method and an abstract for the same.

4.2.Publication and Examination of Applications

After an application for a patent along with provisional or complete specification is filed, your patent application will be published. Though applications are generally not open to the public. However, after the prescribed period, applications are published.

You can request for examination of patent applications within a specified period, and failure to do so will lead to the withdrawal of the application. Now, the examination process will begin wherein the Controller refers the application to an examiner to assess compliance with legal requirements, potential objections, investigation results, and any other relevant matters and then submits the report based on the same.

4.3.Opposition Proceedings to Grant of Patents

Before a patent is granted to you, individuals or entities can oppose it on various grounds such as wrongful acquisition of the invention, prior publication, conflicting claims in other patent applications, public knowledge or use of the invention, lack of inventiveness, etc. Post-grant oppositions can also be raised within one year of a patent's publication. After hearing both parties, the Controller will decide whether to maintain, amend, or revoke the patent.

4.4.Grant of Patents

Generally, patents shall be granted expeditiously but there are two conditions that you must fulfill. Firstly, the application must meet the necessary requirements and secondly, it should not be refused by the Controller or found in contravention of the Act. Once granted, the patent is published, and related documents are open for public inspection. An applicant can obtain a certificate of inventorship. Furthermore, you must know that each patent is granted for one invention only, and objections cannot be raised regarding multiple inventions in a patent.

5. PROCEDURE TO FILE PATENT IN INDIA

The detailed procedure for filing a patent in India is explained below:

5.1.Considering an Invention

While you work on a new product or process must ensure that proper documentation is done of your work. You must also ensure that the invention meets the criteria of novelty, includes an inventive step, is capable of industrial application, and does not fall into any of the excluded categories provided under the Patents Act.

5.2. Prior-Art Search

Before submitting a patent application, it's necessary to perform a patent search to check for similar inventions. This helps in determining whether an invention is new, non-obvious, involves an inventive step, and can be used in industry or not.

5.3.Application Drafting

This is the most important step in patent registration. Your application for a patent must be attached along provisional/complete specification form wherein you should provide detailed specifications of the invention. These specifications must be as comprehensive as possible. The application should cover the background of the invention, a thorough description of what the invention is, its intended purpose, and how it will benefit the relevant industry. An abstract and a summary of the invention should also be included.

5.4.Application Filing

An application for the patent can be submitted either in person at the patent office or online. An application must accompany all the necessary forms. These forms must be submitted along with the required registration fee to the patent office.

5.5.Publication

A patent application is published 18 months after it is filed or from its priority date, whichever comes first. However, you can also submit a Form for early publication and pay the required fee. Once this request is made, the Controller General must publish the application. After publication and until the patent is officially granted, the application enjoys the same legal rights and protections as a granted patent.

5.6.Examination

After a patent application is published, a request needs to be submitted for examination. This step must be completed from the filing date or the priority date of the application. For an expedited examination, a separate form has to be filled. Once the request for examination is submitted, the Controller General will assign the application, specifications, and related documents to an examiner. The examiner will then prepare the first examination report within one to three months from the date they receive the assignment from the Controller General.

5.7.Objections

On examination of first examination report, if any objections are recieved, then that must be addressed. The applicant (inventor) or their appointed agent should respond to these objections. This must be done within six months from the date the report was issued.

5.8.Grant of Patent

If all objections are resolved, then the examiner and Controller will issue an order to grant the patent. This decision will be communicated to you and published in the patents journal. If there are any objections to the granting of the patent, anyone can file a notice of opposition with the Controller General within one year from the date the patent grant is published.

6.  CONCLUSION

So, you can see that patents in India are an essential tool for fostering innovation and protecting inventors' rights. Thus, it becomes important to understand the objectives and criteria for obtaining them. Patents incentivize creativity by granting exclusive rights to inventors and promoting technological advancement. The major criteria for getting a patent are novelty, inventive step, and industrial application.

After reading all this, what do you think? Is patent filing a cumbersome process?

It may be, but don’t worry! Learn more about the Types of IPR and how it is helpful

GenZCFO is here to help you out with all these processes. If you are looking for Intellectual Property Rights Advisory Services, GenZCFO is the best place to approach. We, at GenZCFO, help entrepreneurs in protecting and maximizing their intangible assets for the potential benefit of their company. We offer services in all fields of IPR like filing replies to Trademark Objection, Copyright, Patent, Geographical Indication, Designs, etc. Our experienced professionals will help you navigate the complex process of IP registrations in as simplest manner possible. For detailed information, you can Contact us.