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A patent grants the exclusive right to exploit an invention economically for a limited period (20 years in most countries). The grant of patent excludes others from making, selling, or importing the patented product producing for those purposes. A patent is a territorial right – that is, the right to exclude others from making the same product is only applicable in the country where the entity has a patent, and not in other jurisdictions. Hence, businesses which sell their products internationally usually file patent applications in multiple nations.


A patent can only be obtained in respect of products and processes, not with respect to services. In order to obtain a patent, the entire invention must be publicly disclosed. In order to be patentable, an invention must meet the three requirements of novelty, inventive step and industrial application, which are briefly explained below:

  • Novelty: The matter disclosed in the specification is not published in India or elsewhere before the date of filing of the patent application in India. If the invention has already been published in the form of a paper in a journal then it cannot be patented.

    Due to this requirement, until the idea for a patent can be entirely implemented, it is kept in secrecy and inventors are discouraged from disclosing it except where the disclosure is under an obligation of confidentiality and where the patentee(inventor) has described his invention in a journal read by a society; the patent application has to be filed within SIX MONTHS of such publication. Applying for a patent after publishing an idea in a journal might lead to leaking of the "novelty" to other persons and hence should be avoided.

    In order to determine whether a particular invention meets the requirement of novelty, a patent authority usually conducts a ‘prior art’ search using various searching tools to find what kind of products existed in the relevant area or sector to which the invention pertains.
  • Non-obviousness: The invention has to be ‘non-obvious’. Non-obviousness merely implies that a person who is ordinarily skilled in the concerned field would not have naturally or obviously come up with the invention, if he had access to all the prior information that existed in that field before the invention was created. This is a qualitative assessment, and there is an amount of discretion and subjectivity associated with any decision on whether a particular invention is obvious or not.

    For example, if an electronics manufacturer makes an LCD using a new kind of technology for the first time (say, the first 3D television), it could still be refused a patent (even though it is new), if it can be concluded that this would have been obvious to a person ordinarily skilled in the relevant art.

    The drafting of a patent application can significantly help in the way it is understood, and the perspective it casts on the prior art, and the degree or extent of novelty that it is able to disclose. For this reason, inventors spend a lot of money in engaging qualified patent counsels.
  • Industrial application: Industrial application merely means that an invention should possess some kind of practical utility, so that it can be used in real-life – it should not be something which is abstract or merely theoretical and which cannot be applied.

Further, there are certain categories of subject matter which are not patentable as per the Patents Act, 1970 in India. Briefly speaking, discovery of a scientific principle (e.g. the special theory of relativity), plants and animals (except microorganisms in certain cases), mathematical processes, business methods or computer softwares, or even new forms of known substances (unless they result in increased therapeutical or other form of effectiveness) are not patentable. The complete list of subject matter classified as non-patentable under the Patents Act is provided in Annex 3.

A patent is territorial in nature and a patent obtained in one country is not enforceable in other country. Therefore, an applicant who seeks to obtain patent protection must observe a specific procedure (discussed below under steps to obtain a patent).

Unfortunately, patent prosecution, that is, drafting a patent application and pursuing it until the patent is acquired is a very expensive process and is time-consuming. Patent attorneys can charge very high fees depending on the type of the invention and the industry (e.g. electronics, biotechnology, pharmaceuticals, etc.) in which patent is claimed. Patent offices sometimes suffer from a backlog of applications, and acquiring a patent can easily take around 3-5 years or even longer (for example Amazon’s application in the US for a business method patent called ‘One Click’ took 13 years), in case there has been opposition.

Software patents

Technology related patents (which are not in relation to hardware) are usually categorised as software patents or business method patents. For example, a system or process developed by a taxi company which allows any customer to choose a taxi which is closest to his location could qualify as a business method. Or, consider a mechanism developed by Amazon to select the nearest available warehouse to service a customer’s order, which could also be considered as a business method.

In India, it should be noted that both softwares and business methods ‘softwares per se’ cannot be patented. This essentially implies that a pure software program cannot be patented, unless software is combined with hardware to result into a unique device (in which case the invention could be patented if it meets the criteria of novelty, inventive step and industrial application). For this reason, in India, software-related patents have largely been obtained by companies manufacturing telecom equipment (such as Qualcom, NTT Docomo, etc.) unlike in the US, where companies such as Microsoft, Facebook and Apple have obtained patents on various methods. For example, Facebook has obtained patents on how its supplies

Countries which allow softwares to be patented understand software as a tool to achieve a particular goal. A software patent is not intended to grant monopoly over the software itself, but over the process or function that is ultimately performed. For example, the patent may be granted on a method to manage customer orders, or a unique method to save credit card information of users (which can save time), etc.  The software is merely a tool for the achievement of the end-result. Theoretically, any other tool for implementing the same method will equally be covered by the same patent application, although in reality it is possible that the software may be the only feasible way to achieve the solution under consideration.

It is difficult to predict in advance whether a particular software-related invention will be granted a patent, as the patent standards in different countries for software and business methods can differ significantly.

Test for software patenting in US and UK

The European Union used to follow a similar test as India earlier, which prohibited patenting of software per se, it now uses a different test – any software which results in a ‘technical effect’ going beyond the ordinary interaction between hardware and software is allowed to be patented. This test is wider and permits certain kinds of software to be patented.

Should Indian software companies consider filing patent applications in US?

Under Indian law, permission of the Controller General of Designs, Patents and Trademarks (CGDPTM) must be obtained before filing for a patent in another jurisdiction – this permission is granted in due course, unless the invention relates to the field of atomic energy or the defence sector. Therefore, if a company is of the opinion that it is likely to be granted a patent offshore (say, in the US) but not in India, it could obtain the permission of the Controller and file the application in such country.


Part I - Patent Application Process

Who can apply for a patent?

The inventor(s), or his assignee or legal representative (in case the inventor has died) is entitled to apply for a patent. The application can be filed by either the inventor (or his assignee or legal representative, where applicable) or a patent agent.
Any Indian citizen who is above 21 years and has a bachelor’s degree in science or engineering from an Indian university, or possesses any other qualifications which are prescribed by the Central Government is eligible to become a patent agent, after passing an annual exam conducted by the Controller General of Patents (popularly known as the ‘patent agent exam’).


Frammerstein, a scientist, invents a new technology which revolutionises the way portable music players process and play music, and significantly improves audio quality. This technology has not been discussed or published previously. Frammerstein however dies of cancer, bequeathing his entire estate to his only son. Frammerstein’s son is entitled to file a patent as his legal representative.


Patents, employees and researchers – the Invention Disclosure Form

Large technology companies, pharmaceutical companies, research organizations and even universities which apply for patents on a regular basis in capacity as assignees. In case of inventions by employees/ researchers (in case of universities), such employees (or researchers) are required to provide requisite information about the invention in an ‘invention disclosure form’ so that the company (or university) can make the application in its own name.

Similar invention disclosure formats are also used by patent attorneys for the purpose of applying for a patent – inventors are asked to furnish necessary information in such a format to the patent attorney.As the invention disclosure form is a confidential document, disclosure of the features of the invention does not amount as ‘publication’.



1. For a sample invention disclosure format, see the University of California, Berkeley Invention Disclosure Form here.

2. Example: A firm of patent attorneys uses the format on the link here. 

As discussed in the Module on Employment Law, organizations usually include an assignment clause in the employment agreement which states that any intellectual property (IP) created by the employee will automatically vest in the employer after creation.

With respect to copyright and trademarks, usually no specific disclosures are required by employers and specific information pertaining to the IP which is required to be submitted for registration is not significant. , and any IP created in the course of the employment will automatically vest with the employer (who shall be free to register such IP).

However, it should be noted that a patent application requires description of the invention and the problem solved by it (in light of pre-existing knowledge and devices in the given field) in an extremely high level of detail. Employer entities may not be able to file applications merely by looking at the invention itself, and therefore require employees to provide necessary details so that they can apply for patent as assignees. The invention disclosure form serves this purpose.

Preliminary step – the patent search

Before filing a patent application, the applicant should ideally conduct a preliminary search so that he can confirm at his end whether an application for the same invention (or a similar invention) was made previously. The search can save time and provide the applicant pointers for drafting his own application – if an application for a similar invention was previously filed, the applicant may have to draft his application differently and highlight unique aspects of his invention, so that it is not treated as similar to the earlier invention by patent authorities.

To conduct a patent search, an applicant may conduct a physical search at the Patent Office, or he may conduct it online, by visiting the link of the Patent Office (under the ‘Published Applications’ tab).

In addition, conducting a patent search on international databases (to the extent possible) will also be helpful in finding out whether a similar invention has been patented in another country – if a similar invention is already patented elsewhere, it becomes part of prior art and will not be patentable in India. An international patent search can be conducted on the following databases:

  • WIPO (for patent applications filed under the Patent Co-operation Treaty), visit here.
  • Google Patents (for US patents), visit here.

The process of acquiring a patent comprises of the following steps:

Step 1 – Drafting and filing of the patent application

The first step involves drafting and filing of a patent application with the appropriate patent office (see Annexure B for the jurisdiction of various Patent Offices in India).  

As explained above, a patent specification can be prepared by the inventor or the assignee himself or through a registered patent agent. Drafting a patent application requires specialized skillsets and experience – patent applications are seldom prepared by inventors/ assignees themselves, although they may provide significant help to attorneys in the drafting process.

Provisional and complete specification

A patent application may either be prepared with complete specification or with provisional specification, at the option of the applicant. Nowadays, it has become a practice to first file a provisional application (which is much more abridged compared to the complete specification) by the inventors – usually at an early stage of the invention. At this stage, the invention is conceivable and its working has been conceptualized, but it is not necessary that it has also been created and is ready for use in industry. A provisional application does not require every minute detail of the invention to be disclosed – it is only required to give a person who is reasonably skilled in the relevant technical field to be able to understand what the invention is and how it will function.

In case the application is filed with provisional specification, then the applicant must file a complete specification within 12 months from the date of filing of the application. Usually, several provisional applications are filed over this 12-month period, as the invention begins to acquire clearer shape (see the Figure on the next page). Subsequent applications may be narrower in scope (as the invention is becoming more fine-tuned) but may have some new components in the process – e.g. a new outlet may have been installed in the design of a particular machine for the purpose of ejecting waste products, after filing the first provisional application. Irrespective of the number of provisional applications, the priority date (for a single invention) is the date of filing the first provisional application.


Explanation - In the above figure, the initial provisional application was filed with the invention having “A, X, Y, Z” as its elements. In the next provisional application, an additional element ‘b’ was added to the invention, but its scope was restricted to “A + b” or “Y + b” (the priority date still remained the date of filing of the first provisional application). Ultimately, the invention was finalized with “Y + b + p” elements, in the complete specification.

Advantages of filing a provisional application

A provisional application has certain advantages which are explained below.

Firstly, a provisional application helps in establishing an earlier priority date with respect to the invention. There may be a time lag between conceptualizing the broad contours of the invention and actually being able to achieve it technically. At the same time, drafting a complete specification requires significant expertise and can be a time consuming process.

Therefore, in most countries, the law grants a period of 1 year to an applicant to be able to fine-tune the invention. During such time, the cut-off date for the purpose of determining novelty and inventive step is considered to be the date of the provisional application. This is understandably fair from the point of view of the applicant, because the working of the invention has already been conceptualized to a great level of detail - it is only its actual implementation that is left.

A provisional application does just that - it freezes the date for considering the prior art until the date when the application is filed – any subsequent inventions in the field that are created after the filing of the provisional application will not be considered. 

Secondly, many inventors are able to obtain funding from potential investors on the basis of the provisional application this funding helps them in giving the invention a form which can be commercialized.

Thirdly, a provisional application helps in saving time and costs. It must be borne in mind that applying for a patent can be an expensive process – filing a provisional application provides an inventor an extended period of time (12 months after filing) to evaluate the commercial viability of the invention (and probably fine-tune some aspects of it so that it is easier to use commercially), before filing the complete specification.

It does not require the applicant to specify ‘claims’ for the invented products or processes (drafting claims is the most crucial part of the patent application - see discussion below for an understanding of what ‘claims’ are). Some patent attorneys prefer to file ‘broad claims’ at the provisional stage itself, which can be narrowed down when the complete specification is filed.

This enables an inventor to weigh the costs of patent prosecution (i.e. pursuing a patent application till the grant or rejection of the patent in its final stages) and save time and energy in the drafting process in the initial stages.

Fourthly, a provisional application preserves confidentiality of the invention – it is not published in the journal of the Patents Office. An inventor can continue to implement or improvise on the invention for a period of 1 year, and a competitor will not be able to have the benefit of the inventor’s research during this time frame as the provisional application has not been published.

Why is drafting of a patent application important?
The manner in which a patent application is drafted can strongly influence whether the applicant is ultimately able to obtain the patent. The application is a crucial instrument which aids a patent examiner in understanding the invention and in determining whether the invention meets the three criteria of patentability (i.e. novelty, inventive step and industrial application).

Second, although the invention may satisfy the criteria of patentability, the drafting of the application is crucial in determining whether the patent will eventually be granted or refused, and the scope of the patent.

Third, a patent with a narrow scope may reduce the scope of the monopoly right which enabling commercial exploitation of the invention, as others may be able to create competing products (or processes) which do not violate the legal patent, but still harm the commercial market for the product. Therefore, it is in the interest of any inventor (who seeks to exploits his invention commercially) to have the claim drafted in as wide terms as possible, in order to prevent others from creating the same product or process.

Fourth, a patent application is usually drafted keeping in mind that a patent will have to be applied for in multiple jurisdictions, and therefore good patent attorneys try to ensure that the patent application meets the requirements of multiple jurisdictions. WIPO guidelines, guidelines of the US Patents and Trademarks Office and the European Patent Office are also kept in mind while drafting patent applications in India.

For more details on how to draft patent applications, see the following links:

Role of the inventor in filing the patent application

For this discussion, we shall assume that the entrepreneur is also the inventor. Although it is advisable that drafting of the patent application be undertaken by a patent attorney, an entrepreneur has a significant role to play in the process of drafting.

Patent attorneys often meet the entrepreneur several times (or have multiple telephonic discussions) to discuss and understand the essential features of the invention before drafting a patent specification – this helps them in drafting the ‘claims’ (see below for a discussion on patent claims) better. Such discussions and meetings take place even though an entrepreneur may have submitted an invention disclosure form explaining various features of the invention previously to the patent attorney.

Components of a patent specification

A patent application should be filed with various forms and declarations as specified in Annex 2 Part B. Apart from the contents of the specification (which require careful drafting by a patent attorney), the remaining contents are fairly standardized.  In this discussion, we shall discuss the requirements for drafting a complete patent specification. The patent specification generally comprises of the following details:

A. Title of the invention (indicating its technical field)

Depending on the nature of the invention, the title will pertain to a product or a process. Consider the following examples for a product -

  • "a steering mechanism incorporating an automatic feed-back circuit ...";
  • "an insecticide consisting of X, Y, Z"; or
  • "a communication system comprising a plurality of transmitting and receiving stations"
  • “Motorised rubber tapping machine”
  • “Automatic bicycle shifting system”

Consider the following title for a process patent:

  • “Method of converting vehicle into hybrid vehicle”
  • “Method of issuing a machine readable international electronic passport card” 

Matters pertaining to prior art and summary of the invention

- The title is usually followed by a ‘background’ to the invention which explains the prior art as it exists and the gap or deficiency in the prior art. Broadly speaking, the background contains the following details: 

i) The description of prior art (that is, current state of art in the relevant technical field)

ii) The deficiency or gap in the prior art (which is proposed to be resolved by the invention)

iii) The solution provided by the inventor to obviate the drawbacks of the prior art,

iv) A brief description of the invention and its usefulness, drawings (if any) and details of the method of its implementation.

What is prior art?

Prior art is merely the state of technology which exists before the invention was created. For example, if a company creates the first 5G cellular communication technology, it will explain prior art as comprising 2G, 3G and 4G and other communications technologies that have been invented thus far.

  • Summary - The background is usually followed by a summary of the invention which explain how the invention works, its features and how it addresses the drawback in the prior art.
  • Detailed description and drawings - Most inventions are usually accompanied by drawings to explain the working of the invention. The working of different components as indicated in the drawings must be explained in the specification (although that is not required in the abstract). Therefore, the summary of the invention is followed by a ‘detailed description of the invention’. This section explains how various components of the invention (as mentioned in the drawing) function together to produce the desired result.

 C. Abstract

The abstract should be within 150 words, and should provide a summary of the specification. It should commence with the title of the invention, disclosing specific features of the invention in not more than 15 words. As per the Patents Rules, it should state the technical field to which the invention belongs, the problem to which it relates, the solution provided by the invention to the problem and the uses of the invention.

Examples of abstract –

  • The invention consists of a board with multiple phone devices mounted on it for installing it at a Sports Stadium which allows multiple callers to cheer and participate in the excitement of the game, and speak and listen to callers on their adjoining phones and nearby persons at the Stadium. The invention allows a group of friends to call their respective phones on the device to collectively enjoy seeing the match on TV in the comfort of their respective homes and at the same time hear one another and shout at the stadium venue with the crowd through the invented device.
    [Application No.2124/MUM/2010 A, filed on 26 July 2010, published in Official Journal of the Patent Office, Issue 42/2010 dated 15 October 2010, p. 30660].
  • An automatic bicycle shifting system for automatically controlling the shifting of a bicycle transmission based upon a plurality of Wheel speeds selected by rider. The system includes a controller that operates a shifting mechanism such as an internal gear hub system. The system operates in three modes: a setting mode, an automatic mode, and a manual mode. The rider selects the plurality of Wheel speeds by manually shifting the bicycle at desired bicycle speeds during the setting mode. The controller stores a bicycle speed each time the rider manually shifts the bicycle during the setting mode in its memory. The stored bicycle speeds are then used by the controller to shift the bicycle during the automatic mode.

At the stage of publication of the application in the journal of the Patent Office it is the title and abstract (and any drawings specifically selected by the applicant) which are published. A detailed description of how the invention works is not published.

D. Drawings and models

The applicant can submit drawings, which should be systematically numbered and present the name of the applicant. Typically, most inventions which have an apparatus or a machine have a numbered drawing like the one presented in the table below. For chemical compounds the formula may also be mentioned. Models or samples are only required to be submitted if a request has been made by the Controller.

Sample of Drawing  

(this drawing was published with an abstract of a patent application)


Note that the drawing is serially numbered, and the patent application will explain how each numbered component of the drawing is relevant to the functioning of the invention.

E. Claims

‘Claims’ actually describe the scope of what the applicant seeks a patent on. Drafting a claim appropriately is critical for an inventor - it is possible to draft a claim in broad terms or in narrow terms. The scope of the claim will determine the scope of the invention, so it is in an inventor’s interest to describe the claims very broadly. This is why large companies engage specialized patent attorneys and remunerate them very highly for drafting the right kind of claim. It is not necessary to mention the claims in the provisional specification – this makes it easier to file the specification.

However, the complete specification must contain at least one claim or statement of claims defining the scope of the invention for which protection is sought. Claims should indicate technical features of the invention (or sometimes its functions), but not commercial advantages or other non-technical matters.

Usually, an invention may have more than one claim pertaining to its essential features. Each claim will be called an ‘independent claim’. For example, consider the following independent claim:


“1. A bicycle actuating system, comprising:

a shift actuator configured to .................... ; 

a controller configured to ........................  ; 

a Y for ................................................; and

a memory coupled to ...................   

X                   -        X        -        X

Certain claims may also have one or more ‘dependent claims’, i.e. sub-claims for a particular product or process which is already being claimed. For example, consider the following:

A method as in claim 1 (see above) further comprising the steps of displaying a current gear of the bicycle on a display coupled to the controller.”

NOTE: A real patent claim can be relatively technical to read for the lay reader. 
For example, claim 1 of the patent specification mentioned above stated as follows:

“1. A method for controlling a bicycle transmission based on rider-selected wheel speeds, the method comprising the steps of:
actuating a controller mounted on a bicycle, while riding the bicycle, to enter a setting mode;
manually shifting the bicycle transmission into a selected gear during the setting mode by operating a shift actuator coupled to the bicycle transmission; and
setting mode by operating a shift actuator coupled to the bicycle transmission.”

Sometimes, a dependent claim could relate to a particular embodiment of the invention. An embodiment is essentially a manifestation of the invention. For example, a new kind of communication device manufactured by Apple could either be represented in a spherical form, or in the form of a cube, and could perform the same function. In such cases, it is not necessary that the patent application must refer to all possible shapes by which the invention will work - it may contain any one ‘embodiment’.

How is the application filed with the patent office?

The application can be hand-delivered or delivered through a courier service to the Controller. The Patent Office has also provided an option to file the application electronically (with a digital signature).

Step 2 - Publication and Examination of the Application

The application is ordinarily published after 18 months from its filing or the priority date, whichever is earlier. An applicant can make a request for early publication to the Controller. In such a case, the application will be published within 1 month from the date of the request.

After receiving early request for publication the Patent Office publishes an application within a period of one month provided the invention contained thereon does not relate to atomic energy or defence purpose.

Published particularsDate of application, application number, name and address of the applicant along with the abstract are published in the journal released by the Patent Office. These applications are open for public inspection after publication.

Actions required after publication of the patent application

After the application is published, the applicant must make a request for examination within forty-eight (48) months from the date of filing (or the priority date). The request initiates the process of examination of the application by the patent examiner. If no request is filed within this period, the patent application is considered withdrawn.

At the examination stage, a patent examiner (employed with the patent office) scrutinizes whether the patent application, if there are any grounds of objection to the patent, the results of the prior art search conducted by the examiner and other prescribed details. A First Examination Report (FER) is prepared by the examiner which contains his observations on these issues, including any deficiencies in the application. The FER must be prepared within 6 months, either from the date of request for examination or the date of publication, whichever is later.

The applicant has the opportunity to correct any deficiencies within 12 months. If the deficiencies are satisfactorily addressed, the patent is granted to the applicant (provided no pre-grant opposition is filed or pending).  Details of the patent are entered in the register of patents and it is notified in the Official Journal of the Patent Office.

A patent certificate must be in the format that is provided in the patents rules, as indicated on the next page.

Specimen of a sample patent certificate

Key actions that should be taken after grant of patent

Periodic renewal fees: After the grant of patent, a renewal fee must be paid annually, with the first instalment being payable after the initial two years. The patentee may also pay the renewal fee as a lumpsum.  If the renewal fee is not paid, the patent will cease to be valid (and will only be restored after filing a request for restoration).

Opposition to patent applications for similar inventions: As in the case of trademark law, patent law also permits oppositions to be filed. An opposition should be filed either with respect to existing (or pending) patent applications of the opponent himself, or to any applications which may restrict the opponent’s use of inputs/ outputs in that industry sector in future.

Assume that HTC contemplates filing a patent application for a gesture control technology that it has created for operating mobile phones. As a mobile phone manufacturer, Samsung should consider filing an opposition for the same if it is considering manufacturing such mobile phones in future (and if it believes that the technology may become commercially popular), as an HTC patent on gesture control technology could severely dent Samsung’s potential market share in future.

Pre-grant opposition

Under patent law, however, there are differences in terms of who can file the opposition and the time limits within which opposition can be filed. Before grant of patent, any person is entitled to file an opposition to the Controller at the appropriate office (after the publication of the patent application). This is called a ‘pre-grant opposition’, and can be made on any of the grounds mentioned in the act - broadly speaking, they relate to the following: 

  • lack of novelty – that is, the invention was publicly used/ known before the applicant filed his application,
  • absence of inventive step, or that the invention is obvious
  • the invention is under the list of non-patentable subject matter,
  • that the invention has been wrongfully obtained by the applicant, or
  • that the specification does not disclose the invention sufficiently, or that it wrongfully discloses the source of the application.

    See Section 25(1) for the full list of grounds.

Although the grant of a patent can be a long process, a person who intends to file an opposition must have a way to ensure that his application will be considered. For this purpose, filing a pre-grant opposition within 6 months from the date of publication will ensure that the opposition is considered, since a patent is not granted before 6 months from date of publication.

Documents necessary for filing an opposition

After the date of publication of the application, any member of the public is free to oppose the patent application (called a ‘pre-grant opposition’). Note that a patent application cannot be opposed on the basis of the abstract only. It is important to obtain the complete specification for preparing an opposition. For this, you can follow the steps below:

Obtain the patent application number

The patent application number is required to obtain the complete specification. which can be obtained from the published version in the journal of the Patents Office, or by conducting a search for keywords in the patent application on the following link (under the ‘Published Applications’ tab) on the CGDPTM’s website (the same method can be used for conducting a patent search before filing an application in India):

A typical application number has the following format: 00003/KOL/2003

Enter the application number on the CGDPTM website under the Application Status tab to view documents filed with the application:

Post grant opposition

A patent can be opposed even after it has been granted, until a period of 1 year. The grounds for opposition remain the same as those for a pre-grant opposition, except that a post grant opposition can only be filed by a person who has an ‘interest’ in the invention (i.e. whose commercial interest may be adversely affected by grant of the patent), and not by any other entity.

A computer or smartphone manufacturer which claims that it had invented a device (which is similar to the one for which opposition is being filed) earlier than the applicant could file a post-grant opposition, but not a washing machine manufacturer who may have nothing to do with computer or smartphone technology. A pre-grant opposition, on the other hand could have been filed by an expert who is conducts research in that area, but has no particular interest in the concerned invention or its commercial use.

At the time of filing the opposition, the entity filing the opposition must specify if he wishes to make an oral representation before the Controller, else an oral hearing may not be granted (unless the Controller is of the opinion that the opposition has no merit and has decided to dismiss it summarily).The opposition could result in two outcomes:

  • If the Controller is of the opinion that the opposition has no merit he will grant an opportunity of hearing before rejecting the opposition (if the opponent has requested to be heard).
  • Where the control (whether before or after the hearing), he may reject the original application or require it to be amended.

Where the Controller is of the opinion that the opposition is of no merit, he will dismiss the opposition. An opportunity of hearing may be granted before such dismissal.

What should be done by an applicant who seeks patent protection in multiple countries?

Patent prosecution (i.e. the entire filing process) is an expensive affair and businesses tend to limit the countries they file patent applications only to those where they have a key commercial interest. For example, if an Indian company is selling in India, UK and US, it would not apply for patent protection in any country other than India, US and UK, because that would involve additional costs and may not confer corresponding benefits (assuming the company does not plan to significantly start selling in any other country).

Applicants who claim patent protection in multiple jurisdictions can choose either of the two routes under the international conventions described below, keeping in mind the costs and the number of countries they wish to apply for patent protection. The international conventions are the Patent Cooperation Treaty and Paris Convention. Before filing the application, it is important to determine whether the country where the protection is sought is a member of the relevant international arrangement. A list of the members of the Paris Convention and PCT is available here.

In either case, before filing an application with a foreign authority, permission of the Controller under Section 39 of the Patents Act is mandatory. As per the Patents Rules, such permission should be issued within 21 days (although in practice it takes slightly longer), but it is rarely refused, unless the subject matter of the patent relates to the security of India or to atomic energy.

  • Filing under the Patent Cooperation Treaty (called the PCT) The PCT route is usually the preferred route, especially if patent protection is sought in more than three countries. The PCT has 146 members.

In a PCT filing, an ‘international application’ is required to be first prepared and filed at the International Bureau (IB) of the World Intellectual Property Organization (WIPO) within 12 months from the filing of the Indian application.

An international application is processed in two phases at the WIPO – first, at the international phase and then at the national phase. The international phase includes a search process by an international search authority, which helps in setting a somewhat uniform standard for the determination of prior art. This, however, does not prevent national authorities from undertaking independent prior art search. Note that under the PCT route, the ‘international application’ is forwarded to national level patent authorities (i.e. national patents offices of different states) unlike the Paris Convention where the patent application can be customized for each member state. Detailed procedure at the international phase and national phase is mentioned in Annex 1.

  • Filing under the Paris ConventionFiling under the Paris Convention is preferred if a patent is sought in up to three countries, in which case the PCT route may turn out to be more expensive.

    The Paris Convention route is also known as ‘direct filing’ because in this case patent applications are directly filed with the patent authorities of the relevant countries – there is no common international application. Under the PCT route (discussed below) a common PCT application is required to be first filed with WIPO, before approaching national authorities, as discussed before.

Direct filing before national authorities which can save time, compared to using the PCT route, where it can ordinarily take about 30 months for PCT applications to reach national patent authorities (see discussion of ‘national phase’ under Annex 1). Therefore, the Paris Convention may also be quicker as compared to the PCT route.

The Paris Convention has 174 member states – this route is usually preferred for patent protection in certain countries (especially African and Middle Eastern countries) – e.g. Argentina, Taiwan, Eritrea, Ethiopia, Jordan Kuwait and Saudi Arabia are members of the Paris Convention only.

Part II - A sneak peek into the business of Indian pharmaceutical companies and patent law

In India, significant activity (that has been discussed in intellectual property rights circles and the media) in the patent space has been witnessed around pharmaceutical patents. This has largely centred around two issues:
  • Indian pharmaceutical companies (such as Wockhardt, Ranbaxy) have made cheaper versions of medicines that are patented by foreign multinationals (which have huge resources to incur heavy R&D expenditures), using different chemical elements (called ‘generics’). Indian companies have been, in a way, able to piggyback on the developments of such foreign companies and create pharmaceutical compounds at much lower cost compared to their foreign counterparts.

    This is because the active ingredient in the compound (i.e. the chemical ion that results in the medicine having the desired effect) is the same, with the passive ingredient being changed. For this reason, Indian companies have been able to create alternate compounds cheaply and are selling them in India and in various foreign countries. They are frequently defending themselves against infringement-related litigation initiated by the foreign inventors.
  • Pharmaceutical companies have also been tangled in patent prosecution for discovering new forms of pre-existing chemical compounds (e.g. forms which have a different three dimensional structure). In India new forms of known substances are only patentable if they result in increased efficacy (e.g. in the case of a medicine, increased absorption by the body or some other indicator to demonstrate a higher effectiveness of the medicine). A search on the developments on Section 3(d) of the Patents Act will throw more light on the issue.



Process for filing an international application

These stages must be followed after national application in India has been filed and the Controller’s permission has been obtained.

The procedure for filing an international application is quite complex. Although the drafting process (and to a limited extent the search process) has been simplified by the PCT, which requires drafting of one application only for making an application in different countries, the application needs to be filed and examined independently by each national patent office where the applicant seeks patent protection. Therefore, depending on his marketing and sales strategy, an applicant should choose in advance the countries in which he seeks patent protection.

International phase (comprises 5 stages)

At the international phase, the application is received and processed by the patent office in a specific country (called the Receiving Office). Next, one of the International Searching Authorities prepares a search report and written opinion.  The IB then publishes the application and the search report, and also communicates the application and the search report to the national patent offices in the jurisdictions where the applicant seeks patent protection.

The fourth step involves another international search (called a supplementary international search) carried out by a different International Searching Authorities (other than the one that carried out the main international search) – this results in the preparation of a supplementary international search report. The fifth step (optional) involves a preliminary examination by an International Preliminary Examining Authority and publication of an international preliminary report on patentability (containing observations on general aspects of patentability of the invention). This is also communicated to the national offices where the applicant wishes to acquire a patent (refer to the flowchart below for a pictorial representation of the stages in a PCT application). 


National phase


In the national phase, the application is scrutinized by the national patent offices of the countries in which the applicant seeks patent protection. The national phase commences once a national fee is paid and furnishing of a translation or copy of the international application and the details of the inventor.


Usually, the national phase machinery will commence processing the application only 30 months after the priority date, unless the applicant makes a specific request at the concerned office for early examination. At the national level, an outer time limit may be fixed for initiating proceedings under before the national machinery. It is the responsibility of the applicant to ensure that these time limits he performs the necessary actions before expiry of these time limits.

For detailed guidelines for preparing an International patent application are available in provided in PCT Applicant’s Guide on the links mentioned below

NOTE: See Volume 1 (International Phase) ; Volume 2 (National Phase) .




---------------------------------------  Entry into national phase    -------------------------------

can take up to 30 months, unless a specific request has been made for early entry before the concerned office


 Part A - Forms at different stages of filing a patent application



Filing Patent Application

Form 1 – Application for grant of a patent

Form 2Format for the provisional or complete specification

Up to 10 claims and 30 pages of specification:

     i.        Individual person (natural person) is Rs.1, 000/-

    ii.        When the applicant is a legal entity and not a natural person, it is required to pay Rs.4, 000/-

If more than 30 pages, then:

     i.        Natural person has to pay Rs.100/- each extra page

    ii.        When the applicant is a legal entity and not a natural person, it is required to pay Rs.400/- per page. 

If the number of claims is more than 10, then:

     i.        Natural person has to pay Rs.200/- for each additional claim

    ii.        When the applicant is a legal entity and not a natural person, it is required to pay Rs.800/- for each additional claim.

Early request for publication

Form 9

The applicant may also file a request for early publication in Form-9 with a prescribed fee of Rs 2500/- or Rs 10,000/- for natural person and other than natural person respectively. The above application is published ordinarily within one month from the date of the request on Form-9.

Request for examination

Form 19

Within 48 months from the priority date or filing of the application.

If no request for examination is filed within this time, the application will be considered withdrawn.



Permission of Controller to file international patent application under Patent Cooperation Treaty


An application in Form-25 

A brief write up of the invention

Prescribed Fee with instrument of authority.

Power of Authority (if required)


Part B – Components of a Patent Application


S. No.

Description of Portion

Form No.


Application for grant of patent



Proof of right to file the application from the inventor

No specific format


Provisional / complete specification



If patent application is being filed abroad as well – a statement and undertaking along with application or within 6 months from the date of application. 



Declaration as to inventorship (for applications accompanying a complete specification).

If permission is sought from the Controller, the declaration may be filed within one month from the date of filing of application.

Form 5



Form 4


Power of authority (if filed through a Patent Agent).



Priority document is required in case of a Convention Application or certain PCT applications. The priority document may be filed along with the application or before the expiry of eighteen months from the date of priority, so as to enable publication of the application. In case of a request for early publication, the priority document should be filed along with the request.





List of Non Patentable Subject Matter

(see Section 3, Indian Patents Act, 1970)

1. An invention which is frivolous or which claims anything obviously contrary to well established natural laws;

2. An invention the primary or intended use or commercial exploitation of which could be contrary to public order or morality or which causes serious prejudice to human, animal or plant life or health or to the environment;

3. The mere discovery of a scientific principle or the formulation of an abstract theory or discovery of any living thing or non-living substances occurring in nature);

4. The mere discovery of a new form of a known substance which does not result in the enhancement of the known efficacy of that substance or the mere discovery of any new property or mere new use for a known substance or of the mere use of a known process, machine or apparatus unless such known process results in a new product or employs at least one new reactant;

[Explanation- For the purposes of this clause, salts, esters, ethers, polymorphs, metabolites, pure form, particle size, isomers, mixture of isomers, complexes, combinations and other derivatives of known substance shall be considered to be the same substance, unless they differ significantly in properties with regard to efficacy.]

5.  A substance obtained by a mere admixture resulting only in the aggregation of the properties of the components thereof or a process for producing such substance;

6. The mere arrangement or re-arrangement or duplication of known devices each functioning independently of one another in a known way;

7. A method of agriculture or horticulture;

8. Any process for the medicinal, surgical, curative, prophylactic, diagnostic, therapeutic or other treatment of human beings or any process for a similar treatment of animals to render them free of disease or to increase their economic value or that of their products.

9.  Plants and animals in whole or any part thereof other than micro-organisms but including seeds, varieties and species and essentially biological processes for production or propagation of plants and animals;

10.   A mathematical or business method or a computer programme per se or algorithms;

11.   A literary, dramatic, musical or artistic work or any other aesthetic creation whatsoever including cinematographic works and television productions;

12.   A mere scheme or rule or method of performing mental act or method of playing game;  

13.   A presentation of information;                                                                                                                

14.   Topography of integrated circuits;

15. An invention which in effect, is traditional knowledge or which is an aggregation or duplication of known properties of traditionally
known component or components.

16. Inventions relating to atomic energy and the inventions prejudicial to the interest of security of India.

Annexture 4


Choosing an appropriate patent office

There are currently four patent offices in India – they are located at Kolkata, Mumbai, Delhi & Chennai. The states over which they have jurisdiction is provided in the Table below.

An applicant has significant freedom to choose the patent office where he can file the application. It may be filed with the office having jurisdiction over any of the following places – i) where the applicant normally resides ii) or a place of business iii) or the place where the invention actually originated.

However, if a foreigner (who has no residence or place of business in India) applies for a patent in India, he can only file the application with the patent office which has jurisdiction over the place indicated as address for service. The foreigner is free to choose the address for service as per his convenience.

Table of patent offices and their territorial jurisdiction



Territorial Jurisdiction

Patent Office Branch,  

Maharashtra, Gujarat, Madhya Pradesh, Goa, Chhattisgarh, Daman and Diu & Dadra and Nagar Haveli

Patent Office Branch, 

Andhra Pradesh, Karnataka, Kerala, Tamil Nadu and Pondicherry and Lakshadweep .

Patent Office Branch, 
New Delhi

Haryana, Himachal Pradesh, Jammu and Kashmir, Punjab, Rajasthan, Uttar Pradesh, Uttaranchal, Delhi and Chandigarh.

Patent Office,

The rest of India.


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