Professional Documents
Culture Documents
Patent filing in India is a tedious task. Let us summarize the process with the help of flow chart.
Particulars
Natural
Person
Large
Entity
Small Entity
1, 760
8, 800
4, 400
352
1, 760
880
176
880
440
a)
b)
Generation of Form 1 through portal with field specific information to be given by filer
Complete/Provisional Specification as in Form 2 comprising
Claims
Abstract
Description
Drawings
c) Inventorship Declaration as in Form 5
d) Power of Attorney (original) as in Form 26 (in case an agent for the patent is assigned).
The original copy must be submitted before Indian Patent Office
e)
f)
g)
h)
i)
Natural
Person
Large
Entity
Small Entity
1, 600
8, 000
4, 000
320
1, 600
800
160
800
400
Natural
Person
Large
Entity
Small Entity
E-Filing
2500
12500
6250
Physical Filing
2750
13750
6875
Statutory fees
Table 5 Statutory fees for Post Grant Opposition
Particulars
Natural
Person
Large
Entity
Small Entity
E-Filing
2400
6000
12000
Physical Filing
2640
6600
13200
Appeal
An applicant can go for appeal against the Controllers decision. Such appeal will be filed
before the Intellectual Property Appellate Board (IPAB).
STEP 4: EXAMINATION REQUEST
No Request, No Grant
Form 18 has to be produced within period of 48 months from date of filing or priority,
whichever is earlier [section 11B; rules 20(4)(ii) and 24B(1)(i)] (in duplicate when filed in
physical copy)
Table 6 Statutory fees for Examination Request
Particulars
Natural
Person
Large
Entity
Small Entity
E-Filing
4000
20000
10000
Physical Filing
4400
22000
11000
Natural
Person
Large
Entity
Small Entity
E-Filing
5600
28000
14000
Physical Filing
6160
30800
15400
send the First Examination Report (FER) along with the application and specification to the
applicant.
STEP 6: AMENDMENT TO OBJECTIONS BY THE APPLICANT
To file a response and overcome the objections raised by the examiner, the issued FER gives an
opportunity to the applicant. As per Rule 24 B (4) (iii), the report should be filed within 12
months from the date on which FER has been issued to the applicant. As per Section 15&16,
In case of the unjustified response, the Controller has power to deny the patent grant/ amend
claim(s) or make order for the division of application.
STEP 7: GRANT OF PATENT
The Controller shall grant the application upon satisfactory response by the applicant to
overcome all objections raised under FER. Upon the patent grant, the application will be
assigned a serial number in the series of numbers accorded to the patents under Indian Patents
Act, 1970.
STEP 8: RENEWAL FEES
a) To keep an existing patent in continuance, the renewal fees shall be payable at the end
of the second year from the patent date or of any succeeding year and this fees shall be
remitted to the patent office before the end of the second or the succeeding year.
b) While paying the renewal fees, the serial number and date of the patent concerned and the
year for which the fee is getting paid shall be quoted. This fees payable in respect of two
or more years can be paid in advance.
Table 8 Statutory Renewal Fees (mode is online)
Particulars
ND
Before expiration of 2
year from the date of
RD
patent in respect of 3 TH
6
year [per year]TH
Before expiration of 6
year from the date of patent
TH
TH
in respect of 7
10
year [per year]
Natural
person
500
Large
Entity
4, 000
Small
Entity
2,000
2, 400
12, 000
6,000
TH
Before expiration of 10
year from the date of
TH
patent in respect of 11
TH
-15
year [per year]
4, 800
24, 000
TH
8,000
40, 000
Before expiration of 15
year from the date of
TH
patent in respect of 16
TH
-20
year
All quantities are in Indian National Rupee
12,000
20,000
Natural
Person
480
Large
Entity
1200
528
1320
Small Entity
2400
2640
Plant patent
Plant patent represents a kind of patent issued against identification and characterization of
asexually reproducing plant strains of economical and sociological importance.
While plant patent allows applying for a patent of asexually/ vegetatively propagating plant
strain, any mutant forms, hybrids, newly characterized seedlings etc., it impedes in registering
proprietorships for sexually reproducing, tuber propagated and uncultivable wild type plants. By
biological definition, an asexually reproducing plant can be described as a plant growing through
its vegetative parts in ways like layering, budding, grafting, and inarching etc. but not through
seeds. The sexually reproducing plants, on the other hand, multiply by pollination and
subsequent embryogenesis from monochot or dichot seeds. The tuber growing plants are like
potatoes which can grow from branching of subcutaneous parts of plants like root or
underground stem.
Again availability of lodging a plant patent has limitations in many countries. Still some
countries like USA, India accepts plant patents under the policies and rules laid by the United
States Patent and Trademark Office (USPTO).
Criteria for a Fundamental Patent:
1. Plant patent is pertinent for two decades and enables the inventor to prevent others from
exploring the concerned plant in terms of commercial and scientific view points.
2. In plant patents the set(s) of wild type or altered/ modified genetic configurations
accountable for the genotype and phenotype (i.e. properties for the plant) has to be
disclosed properly and in detail.
3. Mutants and hybrids, in either form of spontaneous or induced, can be natural or
artificially crafted, but must be asexually cultivable under all circumstances.
4. Plant patent only holds good for any of the living thing belonging to plant kingdom (of
biological definition) and not for anything belonging or related to animal phyla or protist
(like bacteria, archaea).
It is interesting to note the difference between the Plant patent and Plant variety protection
Act. While the former deals with the newly identified or genetically modified crops, seeds
and/or genes that are associated with truly asexually propagating plants, the later monitors the
matters related to actual breeding plants (sexually or tuber-propagated) or their varieties.
However, both of them protect the proprietorship in terms of legal and intellectual aspects.
The claim of inventor-ship in plant patent has relaxations in considering more than one inventor.
Regardless of being solo or in a group, any individual who has contributed in identification
and/or characterization (like the asexual breeding property) of the investigated plant can be
virtually a claimant or proprietorship as inventor or co-inventor. In any case, commercial custom
propagating services and biotechnology enterprises remain ineligible and cannot file a plant
patent application unless they represent one or more individuals as the legal patent holder.
The first plant patent in USA under the vigilance of UPSTO was recorded way back in 1931 A.D
by Henry Bosenberg for the Ever-Blooming Rose. This was the first event introducing the
concept that plant could also be discovered and legally authorized when the plant is identified
and remarked in cultivable area (and strictly not in wild natural/ uncultivable areas) with also a
disclaimer about its asexual reproducibility.
For plant related issues, another patent termed Utility patent for plants exist. This patent is
issued under the basic ground of plant products and elements obtainable from both sexually and
asexually reproducing plants. This patent holds true for biological elemental things like modified
genes (DNA), RNA, proteins, excretory materials (like latex) etc. while also retaining the
characteristics of novel utility and non-obviousness. Though not mandatory, materials
concerning this kind of patent are required to be submitted to a national repository for not only
proper evaluation of the claims but also for the future availability of the materials. Under this
patent, the buyer/ consumer/ explorer cannot manufacture the elements but retains the rights to
transfer or sell the elements to some downstream user.
The goal of plant patent or plant related patents was to secure the legal and intellectual rights of
the inventor for the invention. This is also to correlate the profits and benefits to the inventors,
while also discouraging the competitors from unethical usage, modification and exploration.
Nonetheless, a plant patent is sellable and transferable to a third party when it is abide by the
legal rules and regulations and in consent with all associated parties/ authorities/ institutions.
Though a plant patent is valid for 20 years and renewable thereafter with terms and conditions,
the scientific notions and commercial dimensions of the patent become available in public
domain within 18 months for review. Its advised and equally customary to apply for a
combination of plant patent and utility patent/ design patent so as to protect the entire copyright
of the invention. The copyright remains with the inventor(s) for 100 years and the trademark, if
acquired, stays forever. For plant patent accepted after 1995 A.D in USA, the patentability time
was reduced to 17 years in sake of allowance for better research of the previous invention.
Similarly, the design patent time was limited to 14 years.
The process involving plant patent is less complicated and requires filling a single application
with comprehensive specifications on origin, botanical criteria, all essential characteristics
(genetic, appearance, modifications etc.) and photographs (if applicable). Its recommended that
all inventors claiming the patent should deploy a registered patent attorney or agent for
representing them. However, Pro Se applications are equally welcome by law. Plant patents are
urged to be under notice of the concerned authority within one year of the invention and before
its public intimation in forms of publication and advertisement. Like all other patents, plant
patent is also subjected to fees, which may vary in different countries. From applying to
receiving the plant patent remains in the category of PPAF (Plant Patent Applied For) which also
gives the right to prosecute and limit the usage of the material within groups of wholesale
grower, retailer and breeder.
Plant patent has limited protection when regarding overseas usage and applications. While
USPTO provided plant patents are accepted as unanimous patent across the world, some
countries like Canada does not provide plant patent and only bestows certain rights, like plant
breeding right, plant regeneration right etc. to keep the boundaries and avenues open.
UTILITY PATENTS
According to The Agreement on Trade Related Aspects of Intellectual Property Rights
("TRIPS"), to qualify as a patent, threefold criterion of novelty, inventive step and nonobviousness must be satisfied.
Utility Patents are relatively Intellectual Property Rights granted for inventions that do not
qualify the threefold criteria of patentability, but still are inventions in their own consideration.
The criteria being talked about are inventive step, or non-obviousness. It allows the inventor to
prevent others from commercially using the protected invention, without his consent and
permission, for a shorter period of time as compared to patents, say around 10 years.
The prime objective behind patent law is to encourage and promote innovation and development
by granting protection rights to the creator for a limited time. It provides an incentive for the
creating something new even if not of the extent of being patentable.
There are many advantages of the utility patent system.
Utility model can be granted by following a much easier process rather than of a tedious
process for a regular patent. It does not require going through a lengthy process of
examination. Also it is granted for a shorter period of time without the possibility of a
renewal or getting extended.
In India, there is a delay in granting a patent which eventually shortens the term of the
patent. The term of validity of a patent is calculated from the date of filing of application.
A utility model law would effectively shorten this period and would also provide a more
rapid protection for innovations.
Utility patents would ultimately lead to development and progress of the nation. Smaller
units like SMEs and MSMEs would also be promoted and encouraged to perform and
undertake research and development of incremental innovations which may be less
capital-intensive because of the less stringent qualifications of non-obviousness and
inventiveness.
Nonetheless, the system has some disadvantages too. The analysis of the drawbacks will help us
to identify the areas were extra safeguards need to be employed.
The protection period for such innovations should be short as prolonged monopoly over
such utility patents would negate the very purpose and concept of this model for SMEs
and MSMEs.
The model should aim at supplementing the patent system and not erode it. The motive
behind the Intellectual Property Rights should not be diluted by introducing a lenient
system.
The system should not impede the way of innovation by providing an easy protection for
incremental inventions. It should facilitate the idea of free flow of innovation and
creativity in the nation.
In context of India, the country is growing at a faster rate and is hence witnessing developments
in all the fields. So much so that India is now a research hub of many multi-national companies.
However, the country still lags behind in patent filings.
The Indian Patents Act, 1970, follows the TRIPS provision, providing the same criterion for a
product or process to qualify as patent. But India till date does not recognize utility patent.
However, it has been included in the first draft of the National IPR policy submitted by the
Think Tank. It is a welcoming move. If implemented successfully, this system would effectively
encourage innovation and facilitate development in the country.
The first draft of the National IPR Policy says that in a country like India, there are innumerable
inventions that may fall into the category of Intellectual Property but not fulfil the stringent
criteria of patentability. Nevertheless, they are novel, utilitarian and inventive in their own
spheres. Such inventions are already given recognition and protection under 'utility model law' in
many countries but no such provision is available in India. This has adverse affects on a large
number of small and medium inventors who fail to protect their inventions by IPRs. To quote
some examples, it includes Micro, Small and Medium Enterprises (MSMEs) and the
unorganized/informal sectors. In India, MSMEs hold for about 45% of manufacturing output, but
their potential IP assets are recognized only in a limited, often informal, manner. Existence of a
new law on Utility Model is felt to derive the full benefits out of such inventions.
The policy clearly motivates Indian Government to facilitate creation, designing and protection
of 'small inventions' through a new law on utility models. Also specific laws must be designed
and enacted to address national needs. It will help reduce gaps in the protective regime of IPRs
such as Utility Models to keep up with advancements and developments in the field of
technology.
Their role in growth of the country and the position of Small and Medium Enterprises (SMEs)
and MSMEs is uncontested in a developing country like India. They account for about 44 % of
the gross value of industrial production. Adding to it, they provide employment to around 60
million people. Without a doubt, Indian economy largely depends on the inputs of these SMEs
and MSMEs. Hence, they require a protection for their inventions which does not demand for
strict examination and qualification requirements. In light of this, utility model would be the
perfect solution for them. The rights granted under the utility model are quite similar to those
given by the patent but are more considerable for using the term 'incremental inventions'. They
require lesser formality checks and lasts for a shorter period of time. These models are
considered to be more suitable for such inventions that are making the 'minor but significant'
improvements in the existing inventions. Only when these incremental inventions are recognised
under utility model in India, it can be expected that number of inventions and their due
protection will be more in India.
DESIGN PATENTS
INTRODUCTION
Industrial Design is a protection provided by law for any work of creativity that enhances the
ornamental or formal appearance of any item or product.
Industrial Design is also known as Patent Design. It is protected in India under the Designs Act,
2000. Since India is member of Paris Convention for Protection of Industrial Property, 1883,
Patent Design from any member country is protected under the Indian Designs Act, 2000 as any
Indian design is. The same applies for any Indian industrial design in other member nations of
Paris Convention for Protection of Industrial Property, 1883.
If the design has been revealed to public whether in India or any other country by
reproduction of same in a tangible form or by usage before priority date of the application
If any foreign entity wants to protect any Industrial Design in India then it should file an
application for registering the same within six months from date of corresponding filing
of application in home country.
infringement and it was only able to establish his suspicion that the defendant might be
infringing his patent. The court observed:
The exact reason why the defendants set up the plea of obviousness on the ground that these
developments were to be known or at least expected in prior art, for individuals skilled in the art.
But I rejected the argument with the intention to give the benefits of the innovation to the
plaintiff. Therefore, as a corollary, the defendants are entitled to the benefits of the
dissimilarities that exist between their prosthesis and the plaintiffs prosthesis.
Conclusion
A patent provides the owner protection rights to stop others from exploiting his patented
technology. This process helps the patent owner to get a fair amount as royalty for the use of
technology. Patents provide a wide range of value to their owners, some of which may be more
applicable to one business or another. First, patents provide freedom of movement in the
companys field. For companies, this is very valuable, especially in the field competition is high
and competitors are many. Patent filing is vital in order to protect the invention from copy. This
early mover position assures the organizations of assurance for their inventions. Indeed, the
sooner patents are applied for, the better the chance that someone else will not be first.
The various steps involved in filing a patent have been thoroughly discussed ranging from filing
of patent application, publication, opposition to grant of patent. The monetary costs involved in
filing and renewal of patent have also been detailed.
The basics of plant patent, the kind of plants the plant patent is awarded is discussed in detail.
The process involving plant patent is less complicated and requires filling a single application
with comprehensive specifications on origin.
Utility Patents are relatively Intellectual Property Rights granted for inventions that do not
qualify the threefold criteria of patentability, but still are inventions in their own consideration. .
It allows the inventor to prevent others from using his/her protected invention, without his
consent and permission, for a shorter period of time as compared to patents, say around 10 years.
Industrial Design is protected by provision of law for any work of creativity that enhances the
ornamental or formal appearance of any item or product. It is protected in India under the
Designs Act, 2000. Registration, duration and other details about the act are mentioned.