Comparative Guides
Welcome to Mondaq Comparative Guides - your comparative global Q&A guide.
Our Comparative Guides provide an overview of some of the key points of law and practice and allow you to compare regulatory environments and laws across multiple jurisdictions.
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Results: 4 Answers
Patents
3.
Obtaining a patent
3.1
Which governing body controls the registration procedure?
 
India
The procedure for registering patents in India is governed by the Office of the Controller General of Patents, Designs and Trademarks, an office under the Department of Industrial Policy and Promotion, which in turn is under the jurisdiction of the Ministry of Commerce and Industry.

For more information about this answer please contact: Essenese Obhan from Obhan & Associates
3.2
What is the cost of registration?
 
India
The cost for a registering a patent in India depends upon the following factors:

  • the status of the applicant;
  • the number of priorities;
  • the number of claims in the specification;
  • the number of pages in the specification; and
  • the number of sheets of nucleotide sequence/amino acid sequence, where relevant.

The costs of registering a patent in India are set out in the table below.

Particulars Natural person(s) and/or start-up
(INR)
Small entity, alone or with natural person(s) and/or start-up
(INR)
Others alone or with natural person(s) and/or start-up and/or small entity
(INR)
On application for a patent accompanied by provisional or complete specification 1,600 4,000 8,000
For each additional priority claimed 1,600 4,000 8,000
For each sheet of specification in addition to 30, excluding sequence listing of nucleotides and/or amino acid sequence 160 400 800
For each claim in addition to 10 320 800 1,600
For each page of sequence listing of nucleotide and/or amino acid sequence 160
subject to a maximum of 24,000
400
subject to a maximum of 60,000
800
subject to a maximum of 120,000
Request for examination 4000 10,000 20,000
Expedited request for examination 8,000 25,000 6,000
Express request for examination 5,600 14,000 28,000
For more information about this answer please contact: Essenese Obhan from Obhan & Associates
3.3
What are the grounds to reject a patent application?
 
India
A patent application may be rejected on various grounds, as follows.

Substantive grounds: A patent application may be rejected upon various substantive grounds, which include the following:

  • Novelty: If the claims contained in the patent application are not new, or were known to the public before the filing date of the patent application or before its date of priority (where the applicant claims priority from an earlier patent application), the application may be rejected on grounds of lack of novelty.
  • Lack of inventive step: ‘Inventive step’ has been defined under the Patents Act, 1970 to mean features of an invention that involve technical advances as compared to existing knowledge, that have economic significance or both, and that make the invention not obvious to a person skilled in the art. If neither of these is present in an application, it stands to be rejected.
  • Lack of industrial applicability: The claims of the application must be such that they can be made or used in some kind of industry. In the absence of such applicability, the application may be rejected. The term ‘industry’ for this purpose is widely understood.
  • Non-patentable subject matter: Some subject matter is non-patentable under Section 3 of the Patents Act, 1970. The following are not considered as inventions in India:
    • inventions which are frivolous or which claim anything that is contrary to well-established natural laws;
    • inventions whose use could be contrary to public order or morality, or which cause serious prejudice to human, animal or plant life or health, or to the environment;
    • scientific principles or abstract theories,
    • discoveries of any living thing or non-living substance occurring in nature;
    • new forms of a known substance which do not result in the enhancement of the known efficacy of that substance. Salts, esters, ethers, polymorphs, metabolites, pure form, particle size, isomers, mixtures of isomers, complexes, combinations and other derivatives of known substances are considered to be the same substance, unless they differ significantly in their properties with regard to efficacy;
    • mere discoveries of any new property;
    • new uses for a known substance or mere uses of a known process, machine or apparatus, unless the known process results in a new product or employs at least one new reactant;
    • substances obtained by an admixture resulting only in the aggregation of the properties of its components, or a process for producing such substance;
    • the arrangement or re-arrangement or duplication of known devices, each functioning independently of the others in a known way;
    • methods of agriculture or horticulture;
    • all processes for the medicinal, surgical, curative, prophylactic, diagnostic, therapeutic or other treatment of human beings, or for the similar treatment of animals to render them free of disease or to increase their economic value or that of their products;
    • plants and animals in whole or in part, including seeds, varieties and species;
    • essentially biological processes for production or propagation of plants and animals;
    • mathematical or business methods, computer programmes per se or algorithms;
    • literary, dramatic, musical or artistic works, or any other aesthetic creations, including cinematographic works and television productions;
    • schemes, rules or methods of performing mental acts or playing games;
    • presentation of information;
    • topography of integrated circuits; and
    • inventions which in effect, are traditional knowledge or which are an aggregation or duplication of known properties of a traditionally known component or components.
  • Sufficiency of disclosure: If the specification for an invention fails to fully and particularly describe the invention, its operation or use and the method, the application may be rejected on grounds of insufficiency of disclosure.
  • Clarity and conciseness of claims: If the claims of the application are not clearly worded so as to render the scope of claims unclear, there is a possibility of rejection.
  • Definitiveness: An application may be rejected if its claims are not definitive and do not contain the technical features of the invention.

Formal grounds: A patent application may also be rejected upon various formal grounds, which include the following:

  • Power of authority has not been submitted.
  • Proof of right for the application has not been submitted.
  • The details of the corresponding applications have not been filed or have not been filed within the prescribed timeframe.
  • A verified English translation of a Patent Cooperation Treaty (PCT) application as published has not been submitted in case of a national phase application, where the PCT application was not published in English.
  • A verified English translation of the priority application has not been filed.
  • A certified copy of the priority application has not been filed.
  • The response to the first examination report was not filed within the prescribed timeframe.
  • The request for examination was not filed on time.
For more information about this answer please contact: Essenese Obhan from Obhan & Associates
3.4
What programmes or initiatives are available to accelerate or fast track examination of patent applications?
 
India
Two avenues are available in India to accelerate or fast-track examination of patent applications, as follows.

Expedited request for examination: This provision is available to a patent applicant only if one or more of the following conditions are met:

  • The patent applicant is a start-up, or was a start-up at the time of filing the patent application; or
  • The patent applicant chose India as an international searching authority or as an international preliminary examining authority in a corresponding PCT application.

The Indian Patent Office (IPO) entertains only a limited number of requests for expedited examination every year. This number is declared at the start of the year and once it is reached, no further requests for expedited examination may be entertained. It is thus recommended that if a patent applicant wishes to file a request for expedited examination, the request be filed at the beginning of the year.

For applications where a regular request for examination has already been filed, if the applicant meets one of the conditions mentioned above, it may convert the request for examination to an expedited request for examination by paying the prescribed fee.

Express request for examination for national phase applications: In the case of national phase applications, an express request for examination may be filed so that the IPO may process the application before the expiry of 31 months from the priority date.

For more information about this answer please contact: Essenese Obhan from Obhan & Associates
3.5
Are there any types of claims or claiming formats that are not permissible in your jurisdiction (eg, medical method claims)?
 
India
The following types of claims/claiming formats are not permissible in India:

  • use claims;
  • claims directed to methods of treatment or diagnosis;
  • second medical use claims;
  • claims directed to plants, animals or parts thereof;
  • claims directed to methods of agriculture or horticulture; and
  • claims that are directed to essentially biological processes for the propagation of plants or animals.
For more information about this answer please contact: Essenese Obhan from Obhan & Associates
3.6
Are any procedural or legal mechanisms available to extend patent term (eg, adjustments for patent office delays, pharmaceutical patent term extension or supplementary protection certificates)?
 
India
There is no procedural or legal mechanism available in India to extend the term of a patent.

For more information about this answer please contact: Essenese Obhan from Obhan & Associates
3.7
What subject matter is patent eligible?
 
India
Under the Patents Act, 1970, ‘invention’ is defined as a new product or process involving an inventive step and capable of industrial application. Therefore, any product or process that falls within this definition and that does not fall within the excluded subject matter is eligible for a patent. For a list of inventions not considered patentable in India, please see question 3.3.

For more information about this answer please contact: Essenese Obhan from Obhan & Associates
3.8
If the patent office does not grant a patent, is an appeal available and to whom?
 
India
If the IPO does not grant a patent, an applicant has the following options available:

  • Review of an order of the controller general of patents, designs and trademarks: The applicant may file a review application before the controller within one month of the date on which the original order was issued.
  • Appeal against an order of the controller: The applicant may appeal an order of the controller before the Intellectual Property Appellate Board within three months of receipt of the order.
For more information about this answer please contact: Essenese Obhan from Obhan & Associates