Patent registration in India is continuously increasing, resulting in a rise in demand for new and revised legislation. The Patent Act of 1970 governs patents, and the government has introduced the Patent (Amendment) Rule, 2021. The government wants to encourage society’s creativity and the development of new technology.
India has caught the global community’s interest with its burgeoning IP ecosystem. There are several sections in the Indian Patent Law that are not found in any other country.
Patent search is a crucial tool for companies all around the world. A firm constructs a road plan based on numerous factors to preserve a competitive edge, with patent searches acting as an important tool for providing strategic insights.
This page aims to explain and offer information on some recent patent developments in India.
Foreign Filing Permit (FFL)
For Indian residents who intend to file for patents outside of India before applying in India, a foreign filing license (FFL) is necessary. The rules for the licence are laid forth in Section 39 of the Patents Act of 1970.
For patent registration, an FFL from the Indian Patent Office is required. The FFL requirement lets Indian authorities to keep track of all innovations in the national interest, particularly those connected to military or atomic energy.
What exactly does the provision say?
The clause stipulates that if a person (Applicant or Inventor) who is a resident of India desires to submit a patent abroad of India without first applying in India, he or she must obtain an FFL in India. When the innovation has little commercial value in the Indian market or is regarded non-patentable subject matter in India, the Applicants typically resort to filing patent applications outside of India.
In such circumstances, formal approval from the Indian Patent Office (IPO) is required before filing a patent application outside of India.
A brief description of the innovation is required when applying for a foreign licence. Please attach the following documents:
- The names, residences, and nationalities of all Indian inventors.
- When a patent agent has been designated to represent the inventor(s) or applicant resident in India, a Power of Attorney (POA) from them is required.
- Invention title and disclosure (including drawings, if any)
- The co-inventors names (non-residents in India).
- The applicant’s name and address (if rights are assigned to an applicant).
- The name of the nation or country where the application will be lodged.
- Justification for submitting such an application
A national phase filing application is a form of application that allows you to apply for a patent in many nations at the same time using a single International/PCT application. It is required to be submitted within 12 months after the priority date.
The Patent Cooperation Treaty (PCT), which is overseen by the World Intellectual Property Organization, is used to file these applications (WIPO). Because there are 153 PCT members, the applicant can use the PCT method to nationalize the application in any or all of the 152 nations.
By filing a single worldwide patent application rather than many national or regional patent applications, an applicant can seek patent protection for innovation in a large number of nations at the same time (through the Paris Convention route).
Because the IPO accepts English, no local language translation is required while filing and prosecuting patent applications in India. This results in a significant reduction in overall patenting expenses when compared to nations such as Japan, China, Brazil, and South Korea, which all need native-language translations.
According to one estimate, the expense of translation into the original language accounts for roughly 35% of the total cost of patent protection. Furthermore, Indian patent law, based on the international patent cooperation treaty (PCT), allows for a 31-month period to file a national phase application, as compared to the 30 months provided by other countries.
India’s patent application process
What is the procedure for filing a patent in India?
In India, the patent prosecution procedure (patent registration) begins with the submission of a patent application with the Indian Patent Office (IPO). After the application is submitted, officials conduct a document verification and technical examination to see whether the invention fits the patentability standards, which include industrial applicability, novelty, and legislative requirements (subject matter eligible).
If the examiner raises any patentability objections, he or she must include them in an examination report and deliver it to the applicant(s) for a response within a certain time frame.
Due to the speedier examination method, patent registration is now completed in 8 to 2 years rather than 3-6 years.
The applicant has six months to react after receiving the first examination report. A patent is awarded directly if all of the objections are answered. Otherwise, after some time has passed, an oral hearing is held to allow the applicant to address any remaining issues before a decision is made. If the applicant receives a negative decision, he or she has two options: file a review petition with the patent office or file an appeal with the appropriate high court.
Statement of Work
What is the definition of a working statement?
A functioning statement is a statement that patentees and licensees must provide to describe how their patents awarded in India work. It assures that patents are given in order to stimulate new ideas in the country, and it is implemented quickly in India. As a result, a functioning statement is required for patent registration in India.
According to the Patent Rules, every patentee must provide a working statement on Form 27. Failure to file this declaration does not result in the loss of patent ownership or licensing rights right away, but the dangers are significant. If the patentee fails to produce this statement on a regular basis, the patent will very probably be abandoned or revoked, thereby resulting in the loss of rights.
Form 27 was formerly filed for each patent awarded by the applicant. Now that the procedure has been streamlined, it is well understood that a product is only covered by one patent. Because a product is covered by several patents, recent revisions allow only one form, Form 27, to be used for multiple patents if the following requirements are met:
- The approximate revenue/value produced from one patented innovation cannot be determined independently of that collected from related inventions.
2. Patents should be associated.
3. All of these patents must be awarded to the same applicant(s).
The Patent (Amendment) Rules, 2020, would presumably alleviate a number of challenges that patentees and licensees have in the regulatory compliance process in India after revising Form 27. The modification has streamlined the form, reducing uncertainty and making it less difficult for filers in general.
IPAB (Intellectual Property Appellate Board) is being abolished (IPAB)
It was founded in September 1958 by the Central Government as a quasi-judicial authority. When the President signed the Tribunal Reforms Act, 2021, on August 14th, 2021, IPAB was legally disbanded. The IPAB’s jurisdiction has been returned to the High Courts and commercial courts as a result of this law. New appeals must now be filed with the relevant high court under the Patents Act, the Trademarks Act, and the Geographical Indications Act.
The IPAB has made the news for a number of reasons, including a lack of independence, a lack of appointments, poor appointment quality, illegal appointments, and a lack of resources.
Intellectual property issues are frequently more complex than civil and criminal proceedings, and their resolution necessitates a decent level of knowledge. IPAB was created specifically to handle intellectual property-related disputes, hence judges with a strong background in intellectual property issues were appointed to the body.
The IPAB’s dissolution looks to be a hasty move that might result in unwarranted delays in cases of intellectual property infringement. Instead of abolishing IPAB totally, greater emphasis should have been focused on its proper management.
Over the last few years, the patent registration procedure has improved significantly. The Patent (Amendment) Rules, 2021, will also encourage educational institutions to file more patents in order to foster creative technology research and commercialization.
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(MARCH – APRIL 2022