A comparison of patent regimes: India

    By Manisha Singh and Joginder Singh, LexOrbis
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    As innovation advances modern enterprises, Asian jurisdictions are competing to offer businesses maximum patent protection to secure their intelligence capital

    CHINA

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    India has been attracting global attention with its evolving IP ecosystem. This article captures some important patent provisions and recent patent-related updates from the country.

    FOREIGN FILING LICENCE

    Manisha Singh LexOrbis
    Manisha Singh
    Founder Partner
    LexOrbis, New Delhi
    Tel: +91 98 1116 1518
    Email: manisha@lexorbis.com

    India’s patent law has a provision for a foreign filing licence (FFL), which needs to be obtained in advance. There are two options for following this provision, which have criminal penalties for non-compliance. The first choice is that the Indian resident inventor, before filing the first application outside the country, applies to the Indian Patent Office (IPO) by submitting a brief disclosure of the invention. Within three weeks of such a request, the IPO issues the FFL to the Indian resident inventor subject to scrutiny that the disclosure does not pertain to defence technology or atomic energy. After obtaining the FFL, the first patent application can be filed outside the country, naming the Indian resident inventor.

    The second choice is that, instead of obtaining the FFL from the IPO, the applicant files the first application in India, naming the resident inventor. If there is no objection from the IPO within six weeks, the applicant can file applications outside India. If the IPO has any objection to the filing of applications outside India, it may issue secrecy directions to that effect to the applicant. However, this power has rarely been exercised by the IPO.

    PATENT FILING AND AMENDMENTS

    Joginder Singh LexOrbis
    Joginder Singh
    Partner
    LexOrbis, New Delhi
    Tel: + 91 97 1126 2818
    Email: joginder@lexorbis.com

    The IPO accepts the English language, which means no translation in native languages is needed for filing and processing patent applications in India. This leads to a significant reduction in the overall cost of patenting compared to jurisdictions that require native-language translations. The official fees of patent filing are also far lower than most patent offices across the globe.

    India is a member of the Paris Convention and an application taking priority from one or more foreign applications can be filed in India within 12 months from the date of earliest filing. Indian patent law also allows a 31-month period to file a national phase application, based on the international patent co-operation treaty (PCT) compared with the 30 months provided by most jurisdictions.

    There is a provision that allows applicants to drop some claims at the time of national phase entry, which can be used to save excess claim fees and/or expedite the prosecution by deleting claims directed towards a non-patentable subject matter in India. Once the application is filed, amendments can be done by way of a disclaimer, explanation, or correction only. All amendments need to be supported in the specification, and claims cannot be broadened once filed.

    PROSECUTION PROCEEDINGS

    The patent prosecution process in India begins with the request for examination. Most of the backlog has been cleared, and applications are now getting examined in less than a year from the date of request. The applicant gets six months to respond to the first examination report. If all objections are successfully overcome, a patent is directly granted.

    Otherwise, an oral hearing takes place to allow the applicant to address outstanding objections, and a decision is later issued. In the case of an unfavourable decision, the applicant has two remedies: the first is to file a review petition before the patent office, and the second is to file an appeal before a high court.

    DIVISIONAL APPLICATIONS

    A divisional application can be filed any time before the grant or refusal of its parent application. Since there is no advance notice of any decision on a patent application, the divisional application should be filed at the earliest opportunity. The divisional application is considered valid only when there are multiple inventions disclosed in the parent application, and the claims of the divisional application are distinct from the claims of the parent application.

    The independent claims of divisional applications should preferably have at least one novel and inventive feature that was not claimed in the parent application. The claims should also be supported in the description of the parent application. The divisional application can be filed either voluntarily or in response to a lack of unity objection from the IPO, which means the inventions must be so closely related to each other as to form one common concept.

    The current position on the maintainability of voluntary divisional applications in India is a bit complex compared with most other jurisdictions. According to the recent Boehringer v Controller of Patents DHC (2022) case, the claims of the divisional application must be derived from the claims of the parent application. This is a restrictive interpretation of laws relating to a divisional application.

    However, applicants may consider introducing the claims meant for a divisional application in the parent application. Delhi High Court recently held that as long as the invention is disclosed in the specification, and the claims are being restricted to the disclosures already made in the specification, the amendment ought not to be rejected, especially at the stage of examination before grant, as in Nippon A&L v the Controller of Patents (2022).

    If those claims get accepted in the parent application, that should be good enough for the applicant. Otherwise, the parent application will receive an objection for lack of unity, or newly added subject matter. Such an objection supplies a legitimate ground for the applicant to pursue the objected claims through a divisional application, as can be seen in Milliken & Company v Union of India (2016).

    DISCLOSURE OF FOREIGN APPLICATIONS

    This legal requirement can be divided into two parts. The first part is known as the section 8(1) requirement, under which the applicant needs to give a list of all the corresponding applications filed anywhere outside India voluntarily, and also when asked. The corresponding applications include any applications originating from a common priority or PCT application, all PCT national phases, continuation, continuation in part, and divisional applications in the same patent family. Necessary details about the corresponding applications must be filed on form 3 at the time of filing of the Indian patent application and/or six months after that. If any new corresponding application is filed anywhere outside India, the details of that application must be provided to the IPO on form 3 within six months.

    The second part, under section 8(2), relates to supplying copies of the search or examination reports and the granted claims in corresponding applications to the IPO, only when demanded. Since the IPO has now joined as a provider and accessing office to the World Intellectual Property Organisation’s centralised access to search and examination system, the controllers now have the facility to access the search and examination reports of the corresponding application through the system and, therefore, the demand made for such documents by the controller decreases.

    WORKING STATEMENT

    Another unique provision in Indian patent law is the requirement of a working statement. The government has introduced a few changes in the format and procedures involved with the filing of working statements for patents. The requirement for supplying the “quantum” of patented products manufactured and/or imported into India has been removed in the new form 27. There is no requirement of supplying the details of licences issued in any given financial year in the working statement.

    The requirement of ascertaining and telling whether the “reasonable requirement of the public” in India has been met by the patented product has also been deleted from form 27.

    The due date for filing the annual working statement has been changed from 31 March to 30 September each year. The period of working to be covered under the working statement has been replaced from calendar year (January to December) to financial year (April to March). No working statement must be filed for the financial year in which the patent is granted.

    One working statement can be filed in respect of multiple related patents, where the approximate revenue or value gained from a particular patented invention cannot be derived separately from the approximate revenue or value accrued from related patents, and all such patents are granted to the same patentees. Co-owners of a patent can jointly file one working statement in respect of one or related patents, however, each licensee needs to file the statements separately.

    IP DIVISION IN HIGH COURTS

    Last year, the Indian government abolished the Intellectual Property Appellate Board (IPAB), the appellate authority, which heard appeals arising from the decisions of the patent, trademark and copyright offices and cancellation, revocation, or nullity actions. After that, Delhi High Court announced the creation of an IP division for handling all IP rights matters (including those that are to be transferred from the IPAB), and notified the IP Division Rules and the Rules Governing Patent Suits. Other high courts may also follow the initiative and set up IP divisions, as well as notify required rules.

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