Patent Prosecution Process In India: An Overview

Introduction

A patent is a unique privilege given for an invention, whether it be a product or a process, that typically introduces a novel approach to accomplishing a task or presents an innovative technical resolution to a problem. To obtain a patent, detailed technical information about the invention must be revealed to the public through a formal patent application.

Essentially, the patent holder possesses the sole authority to prohibit or halt any unauthorized commercial utilization of the patented innovation. To put it differently, patent protection ensures that the invention cannot be produced, utilized, distributed, brought in, or traded by others without the permission of the patent owner. However, obtaining a patent is a complex process that requires the completion of various steps such as invention disclosure, patentability search, decision to file an application for a patent, patent drafting, filing of application, request for examination, responding to objections, grant of patent, renewal of patent. All the above points can be broadly put under two headings such as patent prosecution, and patent opposition which then fall under the broader heading of the patent prosecution process which shall be discussed in this article at length.

Patent Prosecution

Patent prosecution refers to the communication and interaction between applicants and their representatives, as well as a patent office, in relation to a patent or a patent application. In a broader sense, patent prosecution can be divided into pre-grant prosecution, where efforts are made to persuade and, at times, negotiate with a patent office for the approval of a patent, and post-grant prosecution, which addresses matters like post-grant amendments and opposition.

It’s important to note that patent prosecution is different from patent litigation, which involves legal proceedings concerning the infringement of patents. In simpler words, patent prosecution is a process where applicants and their representatives interact with the patent office to get a grant for their Patent application.

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Patent Opposition

The patent laws in India offer the public a chance to contest both pending patent applications and already granted patents through opposition filings with the Indian patent office. There are two types of patent opposition proceedings defined by Indian patent law. When an opposition is submitted before the patent is granted, it is termed a pre-grant opposition, whereas an opposition filed after the patent has been granted is referred to as a post-grant opposition. For patent opposition support choosing and identifying the correct attorney becomes a key factor for a top-notch attorney or firm that may facilitate better quality of work and shall streamline the process of granting of a patent.

Patent Prosecution Process

The patent prosecution process is a formal legal procedure that involves a series of steps for obtaining a patent in India, which starts from filing a patent application to reaching to the point of granting of certificate.

Patent prosecution is broadly divided into two phases-

Pre-Grant Prosecution
Post-Grant Prosecution

The Pre-grant prosecution stage includes the processes of-

Filing and Publication
Request for examination
Search and Examination
Issuance Of Examination report
Response To Examination Report
Subsequent Examination Report Or hearing
Pre-grant opposition
Decision Of the Examiner

The post-grant prosecution stage includes-

Post Grant Opposition
Post Grant Amendments

Post-grant opposition is enshrined under Section 25(2) of the Patents Act, a post-grant opposition can be initiated subsequent to the granting of a patent, yet it must be submitted within one year from the date of the patent grant publication, utilising any of the grounds outlined in the respective section. In contrast to a pre-grant opposition, only a “person interested” is eligible to file a post-grant opposition, and they are required to pay the specified official fees based on their entity status. Another distinction between the two opposition types involves the establishment of an Opposition Board at the Patent Office, tasked with reviewing the submissions from both the opponent and the patentee and providing a recommendation in the case of post-grant opposition. Following this, the examiner issues a hearing notice to both parties and makes a determination on whether the patent should be upheld, revoked, or amended.

Under the Patents Act, Section 57 and Section 59 have provisions related to both pre- and post-grant amendments. Section 59 outlines the criteria that must be satisfied for proposed amendments:

Amendments should be in the form of correction, disclaimer, or explanation.
Amendments must be made to incorporate a factual element.
Amendments to the specification or claims should not exceed the scope of the originally filed specification or claims.

The permissible amendments encompass:

Changes to name, address, and service address.
Modifications to the complete specification, including the description, claims, and priority date of a claim.
Additionally, Section 78 grants the examiner the authority to rectify any clerical error, whether requested by an interested party or initiated without a specific request.

Certain law firms additionally provide international prosecution support as well in addition to national prosecution support, such services help the clientele to expand on a global level with their inventions without having to dwell upon the issues with infringements of their patents or products. What must also be known is that there is a very slim chance that a patent can be granted as it is filed, there are certain office actions, that are letters from the patent office that contain official communication to the applicant regarding the status of the application, while choosing the firm or attorney what must also be regarded as that they provide quick responses to office actions as quicker the response to office actions the quicker a patent can be granted.

Conclusion

The patent system plays a very important role in furtherance of development and innovation by guaranteeing exclusive rights to the inventors of the technology. The process of obtaining a patent is not at all simple as it involves an exhaustive journey containing various steps, if put together known as the patent prosecution process.

Some of the IP legal firms offer not only national but also international prosecution advice and support, enabling the global expansion of technology while addressing potential infringement issues besides providing services such as patent portfolio management (which contains information regarding all of the patents that are owned or controlled by an entity or individual.). It is essential for the inventors to appoint legal representative that holds proficiency in examining the complexities of the patent prosecution process, ensuring proper and timely responses to official actions and expanding the chances of a successful patent grant.

Author: Abhinav Mishra, a student at Dr. B.R. Ambedkar National Law University, in case of any queries please contact/write back to us via email to [email protected] or at IIPRD.

References

Chaudhary, Richa. 2019. Understanding the Basics of Patent Prosecution in India. Accessed November 29, 2023. https://sagaciousresearch.com/blog/understanding-basics-patent-prosecution-india/.

IIPRD. n.d. Office Action Responses. Accessed November 30, 2023. https://www.iiprd.com/office-action-responses/.

Lee, Lisa. 2023. What is Patent Opposition? 21 February. Accessed November 30, 2023. https://legalvision.com.au/what-is-patent-opposition/.

Patil, Suveera Satyajeet. 2023. Breaking Down the Indian Patent Prosecution Process. 14 August. Accessed November 29, 2023. https://vakilsearch.com/blog/indian-patent-prosecutionprocess/#:~:text=The%20Indian%20Patent%20Prosecution%20process%20can%20be%20broadly%20divided%20into,it%20meets%20the%20necessary%20requirements.

Shah, Kaushali. 2020. How to Get a Patent in India: Everything You Need to Know. 13 February. Accessed November 29, 2023. https://razorpay.com/learn/apply-for-patent-in-india/.

Srivastava, Shikha. 2022. Opposition Proceedings In India. 25 April. Accessed November 30, 2023.https://www.mondaq.com/india/patent/1185948/opposition-proceedings-in-india.

Super Lawyers Staff. 2023. What is Involved in Patent Portfolio Management? 4 May. Accessed November 29, 2023. https://www.superlawyers.com/resources/patents/georgia/what-is-involved-in-patent-portfolio-management/#block0.

WIPO. n.d. PCT – The International Patent System. Accessed November 30, 2023. https://www.wipo.int/pct/en/.