Patents Registration

Overview of Patent Registration

The process of Patent registration involves a series of steps that are mandatory to be followed. Are you planning to protect your patent and get a priority date for your patent by filing a Patent application? Contact us and get the Patent registration done by securing exclusive rights over your invention.

Patent Registration provides a statutory right to the inventor by the government for his/her invention which is either a new process or product. The Registered patent helps the inventor to prevent the third party without the authorization from making or manufacturing, using, offering for sale, selling, importing, distributing, and licensing.

What is Patentable Subject Matter?

The below-mentioned list will help you in determining whether the invention is patentable or not, which are as follows:-

• Novelty
• Inventiveness
• Inventive Steps
• Utility Application
• Must not fall under Section 3 and Section 4.

In India, the Patents are administered by the Patent Act 1970 and Patent rules 1972. However, Inventions must not be published in India or outside India, in prior knowledge or already in use in Public within India, and claimed before in any specification in India.

What are the Benefits of Patent Registration?

• Grants Right to Inventor
  Registered Patent keeps the opponent away, as the inventor has all the rights owned by him/her.

• Good Market Reputation
  Patent rights enable the inventor to get a noticeable market status and improve his portfolio by uncovering the invention publicly. It then helps him in building up a good relationship with consumers and competitors that ultimately add to his revenue.
  
  
• Enhances Business Interest
  Patent registration enhances the business interests and enables the registered patent holder to receive a premium for the invention.
  
  
• Public Disclosure
  Patent rights allow public disclosure that helps the inventor in building up his portfolio along with increasing the funds, market value, and business partners. Sharing information that pertains to the invention publicly will demonstrate the inventors’ specialization and good command of the technical subject matter. All these facts benefit the owner by attracting leading and high-end investors, shareholders, business partners, and consumers.
  
  
• Provides Legal Status
  Registered patents provide legal status to the inventor. Hence, it is reasonable to license them.
  
  
• Fund Raising
  If a patent holder is ready to sell or license the patent that he/she possesses, it helps in simplifying the process of raising the funds.
  
  
• Enhances Credibility
  The credibility of the inventor will get enhanced after the patent registration is done.
  
  
• Privileges for Return on Investment
  Sometimes, the owner finds that his invention is not bringing good outcomes for him and therefore, wants to hand it over to any other deserving or successful person. Once obtained, the patent rights allow him to earn a good amount of ROI, i.e., returns on his investments by commercializing the invention.
  
  
• Advantageous in Longer Run
  The selling of the invention will result in various advantages to the inventor. It only helps in getting a royalty of 5%, but it is highly advantageous to inventors who have the idea but don’t have the appropriate money to bring the discovery to the market themselves.
  
  
• Prohibits Usage of Registered Inventions
  Registered Patents prohibit others from using patents’ creativity without the patentee’s permission. Also, in case of violation, it helps in using the 3rd party.
  
  
• Exclusive Access from Early Filing
  Patent registration begins bestowing the inventors with the benefits right from the first step, i.e., the time of filing for the patent. The applicant gets the security and surety that no other person or company could claim the ideas similar to his invention, as soon as he files the Provisional Patent Application.
  
  
• Liberty to Make Changes
  The patent law entitles the owner to use his ideas in any way for the permitted period. It means that the owner owns full freedom to utilize, sell, or even modify the original invention and to prevent others from making profits from the same ideas without his consent.

What are the Essential Ingredients of Complete Specification under Patent Registration?

• Title and Preamble
• Prior Art
• Loopholes in the Prior Art
• Solution to Drawbacks
• Summary of the Invention
• Statement of invention
• Particulars of invention
• Particulars regarding drawings
• Examples
• Claims

What Documents are Required for Patent Registration?

For Patent registration, the below-mentioned forms and documents are required-

1. For FORM-1 (Application for Grant of Patent)

• Identity Proof of the Inventor and Assignee
• Address Proof of the Inventor and Assignee.
• Contact Details
• Information corresponding to prior patent applications relating to the current invention, which you or any authorized entity has filed
• Some declarations, among other information.

2. For Form-2 (Provisional/Complete Specification)

• Form 2 is used to furnish your patent specification. It may be provisional or a complete patent specification depending on the type of patent application you are filing.

3. For FORM-3 (Statement and Undertaking under Section 8)

• Particulars of Assignments
• Details of Foreign filing.

4. Form 5: Declaration as to Inventorship

• This application is used to declare the inventors of the current patent application

5. For Technical Information

• Background of the Invention
• Disclosure of need of invention
• Summary of the Invention
• Description of how the Invention works.

6. For Form-18 Request for Examination.

7. For Form-19 Request for Early Publication.

8. Form 26 Disclosure of Power of Authority (If assigned to the Patent Agent)

9. Request for Publication: This is optional (form 9) if the express publication is required.

10. Other Details

• Disclosure of Claims and Abstracts
• Requisite Statutory fees ( cheque / DD)
• Proof of Right to file the form of patent:-The proof of right can either be an endorsement at the end of the application or a separate agreement attached with the patent application.
• MSME or Start-up certificate
• Provisional specifications, if complete specifications are not available.
• Priority documents must be filed in the following cases:

• Convention Application (under Paris Convention).

• PCT National Phase Application wherein requirements of Rule 17.1 (a or b) or have not been fulfilled.

• If the Application pertains to a biological material obtained from India, the applicant is required to submit permission from the National Biodiversity Authority any time before the grant of the patent.
• The Application form should also indicate clearly the source of the geographical origin of any biological material used in the specification.
• All patent applications must bear the signature of the applicant or authorized person or Patent Attorney along with the name and date.

What is the Procedure for Patent Registration?

The process of Patent registration involves various steps, which are as follows in brief:-

• Application for grant of registration
• Provisional/Complete Specification
• Statement and Undertaking under Section 8
• Declaration as to Inventorship
• Request for publication
• Request for Examination of Application for Patent
• Authorization of a Patent Agent

• Step-1- Engaging a Professional
  Before you proceed with the filing of a patent application you need to decide if you will be taking any help of a patent professional or undertaking the patent process itself. Considering the no. of deadlines, it is recommended that you hire a professional who has experience in the world of patents.
  
  If you decide to take the help of a professional make sure that you sign an NDA (Non-Disclosure Agreement) with the patent professional before revealing your invention.
  
  
• Step-2-Patentability Search
  The very first step for Patent registration is the patentability search. Patentable search determines the novelty, inventiveness, industrial application & enabling of the invention. https://ipindiaonline.gov.in/epatentfiling/user/NewUserRegistration.aspx.
  
  After Patentable Search, an applicant needs to create a user id and password for applying online.
  
  
• Step-3-Drafting the Patent Application 
  After a patentable search, if the invention is patentable, an applicant has to draft an application that includes the description of the invention. Once a patent application is drafted, the very first step is to file the patent application.
  
  
• Step-4-Patent Filing Application
  The next step is filing the patent application. An application must contain specifications of the invention and other required and related details of the invention. An applicant can file both provisional and complete applications for their invention to get a Patent registration.
  
  
• Step-5-Publication of Application
  Once the application is filed it goes to the Indian patent office. Simultaneously, the Indian patent office publishes the patent application in the official patent journal. Along with the same, the patent application comes in the public domain after the patent office publishes it.
  
  Every application is published in the official journal after 18th month period from the date of filling of application or the date of priority of application whichever is earlier. There is a provision for early publication of an Indian Patent application by filling a formal request. The early publication rule does not apply if:

• Secrecy directions are imposed under Section 35 of The Act.

• Application has been abandoned under Section 9(1) of The Act.

• The applicant has withdrawn his application three months prior to the expiry of said prescribed period of 18 months

• Step-6-Examination of the Application 

After publication, the next is the examination of the patent application. Unlike the publication of the application, the examination does not happen automatically by way of filing the Indian patent application.

For examination, the applicant has to request for examination of their patent application. It helps in determining whether the invention meets the statutory requirements for patentability or not. The examiner examines the application considering the prior art information of the invention.

• Step-7-Objection by the Examiner 

The examiner can raise objections while examining the application. The examiner scrutinizes the application following the patent act. Based on the information mentioned application, the examiner will issue an examination report to the applicant. The examiner will state all the objections related to the application.

• Step-8- Office Action Response 

Once the examiner issues the Examination Report, the applicant has to successfully revert to the objections raised by the examiner to receive a patent grant. The applicant has to respond to examination reports, appear for the hearing, etc.

Note- The maximum duration given to respond is 6 months from the issuing date of the first examination report. However, this duration can be extended for a period of another 3 months by filing a request to the IPO.

• Step-9-Grant of Patent Registration 

Once the application overcomes all the objections raised by the examiner, the patent office will grant a Patent to the applicant. Once the patent is granted, the IPO publishes it in the patent gazette.

What are the Penalties for Unauthorized Claims to Patent Rights?

Section 120 of the Patent Act penalizes the cases of unauthorized claims to patent rights. Thus, any individual or entity:-

• Who falsely represents any article sold by him to be patented in India or,

Falsely representing the subject of an application for a patent in India is punished with a fine which may extend to 1 lakh rupees.

What is Complete Patent Application?

The complete patent application is an exclusive legal right given to an investor. It gives him/her legal authority to exclude others from making, using, selling, and offering for selling or importing a particular invention.

This right remains valid for 20 years, from the date of filing. The holder of the patent is entitled to sue any person who violates the patent and chooses who to sell, grant, or license the patent.

What is not Patentable in India?

The invention is not patentable if anything-

• Is a mere discovery, and does not have any inventive step.
• Frivolous, obvious, contrary to law, injurious to public health and inventions relating to atomic energy.
• A mere arrangement or rearrangement or duplication of known devices, and anything that does not have any utility.
• A method of agriculture or horticulture.
• Anything comes under Section 3 and Section 4 of the Patent Act 1970

New Indian Patent Rules Offer Benefits to Startups and Small Entities

India's latest chains of amendments to its Patent Rules are expected to hugely benefit start-ups & small entities requesting patent protection for their inventions. With these amendments, overall filing and registration fees for start-ups & small entities have been considerably reduced. While the fees applicable for small entities have been concentrated outright, start-ups can retain their “start-up” position for up to ten years, thus permitting them the benefit of favorable fees, etc. for an absolute extended period from what was earlier available.

Earlier this year, the famous Scheme for “Facilitating Start-ups Intellectual Property Protection” (SIPP) which was first launched as a pilot project to help start-ups in increasing and protecting their intellectual property has been extended for an additional period of 3 years from April 01, 2020, to March 31, 2023.

Amendments on 19 October 2020

The Patents (Amendment) Rules, 2020 simplified the procedure concerning to the submission of priority applications and their translations, as well as the filing of working statements (Form 27). These amendments will trim down both compliance and prosecution expenses for applicants.

Amendments on 04 November 2020

The Patents (Second Amendment) Rules, 2020 has also further reduce the filing & prosecution costs for applicants that are start-ups as well as small entities. These amendments shall cumulatively make IP protection affordable as well as available to various classes of business, and will likely also improve patent filings.

Fees for Small Entities

The Patent Rules, 2003 beforehand allowed a 50% decline in the fees payable by a small entity, measured up to that payable by other entities. However, now, the fee payable by a small entity is reduced to 20% of that payable by other entities. This enables the fee payable by a small entity at par with that payable by a natural person & a start-up.

Change in the Status of Start-ups

The Patent Rules, 2003 beforehand provided that an entity would no longer be able to claim the position of a start-up after a period of “5 years” from the date of its incorporation/registration. The amendments substitute this period of 5 years by a “period during which it is acknowledged and recognized by the competent authority”.

At present, an entity ceases to be known as a ‘start-up’ by the DPIIT (Department for Promotion of Industry and Internal Trade) on the completion of 10 years from the date of its incorporation/registration or if its turnover for any previous year exceeds 100 crore rupees