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How India is excelling to become a favourable destination for Patent Prosecution?
- Global Lawyers Association
- Apr 12, 2023
- 4 min read
Patent Prosecution in India is usually regulated by the Patents Act of India, 1970 where the inventions under this act are actually covered by the Patents in India pertaining to utility inventions. In this way, the industrial designs of India are aimed to be protected under the ambit of the Designs Act. The Patents Act 1970 along with the Patent Rules of 1972 had been brought to force on 20th April 1972, following a gradual replacement of the Patent Act of 1911. It was since that time when various kinds of amendments were witnessed in the Patent Acts and Rules that were introduced in India, from a point of time. However, the Patents Act of the 1970s was the last amendment that was later introduced as the Patents (Amendment) Act of 2002, which read together with the Patent (Amendment) Rules of 2021.
In India, the Patent Prosecution process begins with the filing of a Patent Application with provisional or complete specifications at the Indian Patent Office (IPO), in case of which a provisional appeal is filed, following which another new declaration for a complete specification is required to be filed within the 12 months of filing the provisional appeal. In this case, if one fails to file the declaration, then the entire provision gets abandoned, automatically. In case of a foreign filing, a valid license is required for an invention where the inventor resides in India at the time of the invention when the first application needs to be filed outside India. India is a signatory to various international treaties like the Paris Convention for the Protection of Industrial Property, when the Patent Cooperation Treaty, and the TRIPS Agreement, thus with pertaining to these treaties it can be applied and filed as an ordinary or convention or national phase of a PCT application.
Understanding the pattern of Patent Application Examination-
In order to make a product or a process patentable in India where the applicants are required to get through the process of patent prosecution that begins with the filing of the application till the last stage of granting a patent grant or rejection. Following a surge in terms of filing a patent application, the need for an expedited prosecution stands to be quite inevitable bearing the same thing in mind as the Patent Prosecution Highway Programme has been commencing in India for a long time. The Indian Patent Office, which is mostly held under the control of the Controller General of Patents, Design, and Trademarks (CGPDTM), Government of India had undertaken various Patent Prosecution Highway Pilot programs, based upon the Joint Statement of Intent.
In this case, a set of new guidelines have been issued with the aim of addressing the procedures by which applicants are required to take precedence in order to request for carrying out a speedy process of examination. Under this pilot program, the Indian patent Office will be accepting patent applications for specific technical fields like electrical, electronics, computer science, information technology, physics, civil, mechanical, textiles, automobiles, and metallurgy. Patent prosecution is also a centrepiecefor the process to obtain a patent, as the proceedings undertaken during the process of the prosecution servicecome as an important lesson for legal guidance on the matter of patentability for invention and successful prosecution as the key to ensuring full and absolute protection for patent rights. However, Patent Prosecution in India is not only based upon the interaction between an applicant and the Indian Patent Office but also on the legal and technical competencies are also involved in leading an invention.
This process of examination regarding the process of Patent Prosecution goes through different stages where the first stage involves the filing of an application, followed by the publication of that application in the Patent Office. Following this step, the application undergoes a prosecution involving a further examination by the Patent Office that gets followed by another round of hearing that is held before the Controller.
Gradually, the process of Examination happens according to the order of data filing that takes place based upon the Request for Examination again taking grants for about 12-36 months from the date when the RFE first gets filed. At times, the process of prosecution of patent applications also becomes quite lengthy which can take a substantial amount of time depending upon the underlying invention, whereas India’s policy of patent application remains expedited under certain conditions.
Where lies the future of India’s Patent Prosecution?
With the increasing impact and influence left over by the trends of globalization, numerous patent applications have been filed whose digits are swiftly escalating, following a rise in terms of duplication of the work of a consequential deferral in terms of acquiring patents where several investors have traditionally opted to stay away from the Indian markets.
In the due course of time, it has also been found that the PPH program yields several rewarding benefits like reduction of disposal time with the pendency of patent applications along with consistency in terms of the quality of granted patents. The PPH programs are also seen as a golden opportunity for Indian inventors including the involvement of all MSMEs and startups in India.
However, a patent process in India can be time-consuming, involving an overwhelming outcome, with the patent application process allowing to take appeals against rejections with an effective withdrawal mechanism. The provisions for expedited grants and expedited examination provide methods to prosecute patent applications through cooperation. The number of applications for expedited examinations and PPH remains at a limited scale, as these can increase and lead the applications to take advantage of faster prosecutions where applications need to be prepared to go through the standard processes of prosecution.
Sources referred-
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