TerraLex Cross Border Patent Guide

In India, the main sources of patent law include:

The Patents Act, 1970: This is the primary legislation governing patents in India. It outlines the criteria for patentability, the rights conferred by a patent, the process for filing and prosecuting patent applications, and the grounds for revocation of patents, among other provisions (the “Act”).

The Patents Rules, 2003: These rules, framed under the authority of the Patents Act, provide detailed procedural guidelines for various aspects of patent prosecution and administration, including filing requirements, examination procedures, and fees (the “Rules”).

Judicial Precedents: Decisions of Indian courts, particularly the High Courts and the Supreme Court, contribute to the development and interpretation of patent law in India. These rulings help clarify legal principles and resolve disputes related to patents.

International Treaties and Agreements: India is a signatory to various international agreements and treaties related to patents, such as the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) under the World Trade Organization (WTO). These agreements influence India's patent laws and obligations concerning intellectual property rights.

These are the primary sources shaping patent law in India, providing the legal framework for the protection and enforcement of patents within the country.

The Act does not specifically address the ownership of employee inventions. Unlike some other intellectual property laws (such as the Copyright Act, 1957), which grant employers ownership of creative works produced by employees during employment, the Act is silent on this matter. As a result, the law considers the inventor to be the ‘first owner’ of the patent, which poses a significant risk for employers if they do not have proper employment contracts with a clause assigning the invention to the employer.

Protection is granted for inventions covering new and inventive process, product, or an article of manufacture that satisfy the patent eligibility requirements of novelty, inventive steps, and are capable of industrial application.

An invention is patentable if it meets the following criteria –

• Novelty.
• Have inventive step or it must be non-obvious.
• Capable of Industrial application.
• Does not fall within the ambit of provisions of the Act which lay down what is not patentable/protectable.

The following are not protectable under patent law: (a) an invention which is frivolous, or which claims anything obviously contrary to well-established natural laws; (b) 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 (c) the mere discovery of a scientific principle or the formulation of an abstract theory or discovery of any living thing or non-living substance occurring in nature; (d) 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 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. For this purpose, salts, esters, ethers, polymorphs, metabolites, pure form, particle size, isomers, mixtures 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; (e) 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; (f) the mere arrangement or re-arrangement or duplication of known devices each functioning independently of one another in a known way; (g) a method of agriculture or horticulture; (h) 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. (i) plants and animals in whole or any part thereof other than micro­organisms but including seeds, varieties, and species and essentially biological processes for production or propagation of plants and animals; (j) a mathematical or business method or a computer programme per se or algorithms; (k) a literary, dramatic, musical, or artistic work or any other aesthetic creation whatsoever including cinematographic works and television productions; (l) a mere scheme or rule or method of performing a mental act or method of playing a game; (m) a presentation of information; (n) topography of integrated circuits; (o) an invention which in effect, is traditional knowledge or which is an aggregation or duplication of known properties of traditionally known component or components. (p) an invention relating to atomic energy under the Atomic Energy Act, 1962.

Yes, software-related inventions can be patentable in India under certain conditions. The Act excludes "a mathematical or business method or a computer program per se or algorithms" from patentable subject matter. However, this exclusion does not mean that all software-related inventions are automatically non-patentable. The Computer Related Invention (CRI) guidelines issued by the Office of the Controller General of Patents, Designs & Trademarks provide further clarification on the patentability of software or computer-related inventions. These guidelines state that patents are available for inventions in all fields of technology, including computer-related inventions if they involve technical advancement compared to existing knowledge and are not subject to exclusion under Section 3 of the Act. Thus, software-related inventions are patentable in India if they meet the following criteria:

• The invention must involve technical advancement compared to existing knowledge. This means the software must provide a technical solution to a technical problem or achieve a technical effect.
• The invention should have economic significance or practical utility. It should not be purely theoretical or abstract but should have real-world applications and benefits.
• The invention should not fall under the excluded categories specified in Section 3(k) of the Act, such as mathematical methods, business methods, computer programs per se, or algorithms. The interpretation of whether a software-related invention is patentable depends on the underlying substance of the invention rather than the specific form in which it is claimed. Claims in the form of method/process, apparatus/system/device, computer program product/computer-readable medium are evaluated based on their substance and technical contribution. In summary, while not all software-related inventions are automatically patentable in India, inventions that demonstrate technical advancement, and economic significance, and do not fall under excluded categories can be considered for patent protection. Software by itself is not patentable in India. However, software can be patented if it is part of an invention that is both inventive and capable of industrial use. Software that is part of computer-related inventions is patentable.

In India, AI-related inventions are examined based on the subject matter exclusions defined in Section 3(k) of the Act, which proscribes patentability of “mathematical methods, business methods, computer programs per se, and algorithms”. AI-based inventions that are novel, non-obvious, and useful are patentable in India. The key points regarding the patentability of AI inventions under the Act, are as follows:

• An AI invention must show a significant technical effect or technical contribution. It should not merely involve mathematical methods, business methods, or algorithms without any technical application.
• The AI invention should have industrial utility and economic significance. It should be capable of being used commercially and providing tangible benefits.
• Pure algorithms or computer programs per se are not patentable under Section 3(k) unless they produce a technical effect or technical contribution.
• The Indian Patent Office evaluates AI inventions based on their technical aspects, practical applications, and contributions to the field. The patentability of each AI invention is assessed on a case-by-case basis.

Application Form: A duly filled and signed patent application form (Form 1) is required, providing details such as the applicant’s name, address, and contact information. The application may be:

• Ordinary patent application: Used to file a patent application directly in India, seeking protection only within the Indian territory.
• PCT National phase patent application: Used to enter the national phase of PCT or Patent Cooperation Treaty in India, after which the applicant will be allowed to seek patent protection in multiple countries.
• PCT International patent application: Used to file a single patent application for patent registration in multiple countries which are members of the PCT, providing a centralized process for seeking patent protection internationally.
• Convention patent application: Used to claim priority based on an earlier application filed in a convention country, allowing applicants to secure the priority date for their invention.
• Divisional patent application: Used to divide an existing patent application into multiple separate applications, typically when the existing application contains multiple inventions.
• Patent of addition application: Used to file an application for an improvement or modification of an already existing invention for which a patent has already been granted.

Provisional/Complete Specification: A patent specification document (Form 2) is required, describing the invention in detail, including its technical aspects, working examples, and any drawings or diagrams necessary for understanding the invention. A provisional patent specification may be initially filed, followed by a complete patent specification within 12 months.

Abstract of the Invention: A brief summary (not exceeding 150 words) highlighting the technical features and advantages of the invention is required. **Power of Attorney: **If the patent filing procedure is being carried out by a Patent Agent or Service Provider, a Power of Attorney document authorizing them to act on behalf of the applicant is required.

Statement and Undertaking: A statement and undertaking (Form 3) declaring the inventorship of the invention and the accuracy of the information provided in the application must be submitted.

Priority Document (if applicable): If the applicant is claiming priority based on an earlier filed patent application in the convention country, a certified copy of the priority document, along with its English translation must be submitted.

Proof of Right to File: In cases where the applicant is not the inventor, a document establishing the applicant’s right to file the patent application, such as an assignment deed or employer-employee agreement, needs to be submitted.

**Form 28: **If the applicant is a registered micro, small, or medium enterprise or government recognized startup, it can claim a reduction in patent registration fees by using Form 28.

Proof of Fee Payment: The requisite patent registration fees for filing the patent application form, along with any additional fees for specific services like Patent Examination and filing replies to the Patent Objection, must be paid and the proof of such payment must be submitted.

**Patent Publication for Public Opposition: **Once the patent application process is complete, then after the expiry of 18 months from the date of patent filing or date of priority, whichever is earlier, the patent is published in an official journal and is open for public viewing and inspection. This provides an opportunity to the general public to raise an objection to the patent on valid grounds.

Request for Examination: The patent application is examined only when a request for examination has been filed. The request for examination has to be filed within 31 months of the patent filing date or date of the priority, whichever is earlier. The patent examiner examines a patent application and issues an examination report.

Reply to Examination Report: The reply is to be filed within 6 months of receipt of the Examination Report. An extension of 3 months can be sought before the expiry of the initial 6-month period.

Grant of Patent: A patent is granted after all objections in the examination report have been cleared to the satisfaction of the Examiner.

The normal period is 3 to 5 years.

A patent prosecution through the Patent Prosecution Highway (PPH) pilot program between the Indian Patent Office (IPO) and the Japanese Patent Office (JPO) was commenced as a pilot program in 2019 for a period of 3 years, for patents in limited fields. The program is not continuing presently.

Patent maintenance fees are payable annually. The fee is payable for the 3rd year onwards from the effective date of the grant. The fee for the 3rd year is to be paid within three months from the date of issuance of the Patent Registration Certificate. The fee differs for e-filling and physical filing.

The renewal fee is payable in Indian currency and varies for e-filing from approximately US$ 10 to US$ 100 for natural persons/start-ups/small entities/educational institutions, and US$ 50 to US$ 500 for others. The fees for physical filing are marginally higher, but the preferred mode is e-filing.

An invention is patentable only if it meets the following criteria- i) Novelty. ii) Inventive step or it must be non-obvious iii) Capable of Industrial application. iv) Does not attract the provisions of Sections 3 and 4 of the Act.

The patent owner has legal ownership of the patent, which grants exclusive rights, preventing others from making, using, or selling the patented product or using the patented process.

Exclusive Right Whether it is a method or a product, this Act grants exclusive rights. If the patent covers a product, the patent owner has the exclusive right to prevent others from manufacturing, selling, importing, or using the patented product without permission. If it is a method, the patent owner can prevent others from using, selling, or importing products made using that method.

Right to Exploit the Patent The patent owner has the exclusive right to make, use, exercise, sell, or distribute the patented product or use the patented method. This right can be exercised by the patent owner, their agents, or licensees. However, these rights are only valid during the patent’s term, which is 20 years from the date of filing the patent application, and the maintenance fees are paid annually.

Right to License The patent owner has the right to grant licenses to others for using the patented invention in exchange for consideration. If there are multiple owners of the patent, all owners must collectively grant the license to a third party. The license must be in writing and registered with the Controller of Patents.

Right to Assign The patent owner has the right to assign or give licenses to third parties for producing and distributing the patented goods. In cases where multiple owners share the patent, all owners must agree to grant the license collectively. The license is only considered valid after the administrator has properly authorized the request. Therefore, for the assignment or license to be legal and valid, it must be in writing and submitted to the Patent Authority.

Right to Surrender the Patent The Patent owner can submit a surrender application to the Controller, who then publishes it in the official gazette. Interested parties can oppose the surrender and if the Controller finds sufficient grounds, a hearing is conducted to take a decision.

Right to Sue for Infringement The patent owner, their assignee, licensee, or agent has the right to file a civil suit for infringement in a court not lower than the District Court.

Right to be Issued a Duplicate Patent The patent owner can apply for a duplicate patent if the original is lost, or destroyed or if its non-production is satisfactorily explained to the Controller.

Right to Make a Convention Application Every patent owner in India has the right to make a Convention Application for patent protection in Convention Countries. This right of the patent owner is based on the principles of reciprocity and national treatment in international law.

Right to Make a Patent of Addition The patent owner has the right to apply for a Patent of Addition, allowing modifications to an existing invention. The patent holder is granted rights to the modified invention after the notification of acceptance. These rights are equivalent to those provided in the original patent, but only when the notification is presented.

The inventor of an invention is presumed to be the initial owner of the invention and therefore has the right to apply for a patent for that invention.

The term of every patent granted is 20 years from the date of filing of the application. However, for applications filed under the national phase under the Patent Cooperation Treaty (PCT), the term of the patent will be 20 years from the international filing date accorded under the PCT.

India does not grant an SPC (Special Protection Certificate).

An inventor is the first owner of the patent and has the right to a patent for that invention.

Yes, more than one person can jointly own patents. The co-owners have the following rights:

• An equal undivided share in the patent unless an agreement to the contrary is in force.
• Each co-owner has the right to use the patent for their own benefit without the permission of the others unless an agreement to the contrary is in force.
• If one of the co-owners wants to license the patent or assign their share to someone else, they need the consent of the other co-owners, unless an agreement to the contrary is in force.
• If one of the co-owners sells the patented article, the purchaser and any person claiming through him can deal with it as if it is sold by a sole owner.

To validly assign a patent or a share in a patent, mortgage, license, or create another interest in a patent requires a written agreement setting out the rights and obligations of the parties. There is no prescribed format for such an agreement.

Within six months from the date of execution of the agreement or within such further period not exceeding three months as the Controller may allow, the parties should apply to the Controller of Patents to record the transfer, assignment, or license, upon payment of the prescribed fee. The Controller may cause the particulars of the agreement to be published in the Official Gazette. This ensures that the transfer is valid and enforceable against third parties.

Direct infringement occurs when a third party without the permission of the patent holder, commercially uses the invention, reproduces the invention, imports a protected idea/ invention in India, sells patented inventions, or offers to sell patented inventions.

Indirect infringement occurs when someone violates a patent owner's rights. This can happen due to the complexity of products, often made up of multiple patented components. With modern products composed of multiple patented components, manufacturers may not always have all the necessary patent rights. They often obtain licenses, but sometimes inadvertently create similar products when supplied with necessary components by an indirect infringer.

There are two types of patent infringement: (1) literal infringement and (2) infringement under the Doctrine of Equivalents.

Literal Infringement occurs when a patent owner shows that the infringing product/procedure corresponds to every element of the patent’s claim and is commercially marketed without the patentee’s consent.

The Doctrine of Equivalences depends on two tests.

“All Elements” Test

• The Doctrine of Equivalents must be applied to each individual claim element and not to the claimed invention as a whole. It is essential to show that every element of the patented invention, or a substantially similar component, is present in the allegedly infringing product or process.

Triple Identity Test

• If the allegedly infringing product/process deviates from the literal language of the claims and performs the same function, in the same manner, to achieve the same outcome as the claimed product/process, infringement can be proved by the application of the Doctrine of Equivalents.

When determining the substantiality of the variations, the following considerations should be made:

• If a person with expertise in the field could have known such an equivalent. Whether the accused individual intentionally copied or was trying to design around it but ended up getting the same results.
• If the persons skilled in the art are aware that the accused and claimed innovations are equivalent.

• Making, using, selling, importing, or distributing patented inventions with consent.
• Research and experimentation, including for developing new products or processes, without infringing the patent rights. However, this exemption does not extend to commercial exploitation of the patented invention.
• Exhaustion of patent rights which allows the purchaser of a patented product to use, sell, or distribute the product without infringing the patent, provided that the patented product was lawfully acquired in India from the patentee or their licensee.
• Parallel importation by a person other than the patentee or their licensee is not considered patent infringement if the product was lawfully sold abroad and imported into India without the patentee's consent.
• Use of patented inventions by the Indian Government for the purpose of the government, including defence or national security, without the patentee's permission. However, the patentee is entitled to compensation for such use.
• Compulsory license which may be granted by the Controller of Patents to exploit a patented invention, to a third party without the patentee's consent. This is typically done to ensure the availability of the patented invention at reasonable prices or to address public health needs.

The remedies available to the patent owner are:

• Opposition proceedings before the Controller of Patents: The Act empowers any person to file an opposition within six months of publication but prior to the grant of the patent. Post-grant of patent a person has the right to file an opposition within 1 year of the grant.

• Temporary injunction: A temporary injunction may be granted by the court if the plaintiff prima facie establishes that it is the real owner of the patent.

• Permanent injunction: A permanent injunction may be granted by the court when the case is finally decided in favour of the plaintiff.

The validity and infringement can be decided in the same proceedings before a High Court if the validity of a patent is challenged in a counterclaim.

The High Court may grant a temporary injunction if the petitioner can establish a prima facie case of infringement which causes irreparable loss to the petitioner. Such temporary injunction may be granted ex-parte at the first hearing if the petitioner is able to make out a case, failing which the High Court will issue notice to the opposite party to appear and oppose the injunction application. In case, upon the opposite party’s appearance, a prima facie case for an injunction is not made out, the matter would proceed in the normal course, and a final decision can take 3 to 4 years.

In India, patent infringement is primarily a civil matter. However, under certain circumstances, it may be treated as a criminal act.

False representation: Tendering in evidence any writing or extract of a patent registered knowing it to be false; sanctions are imprisonment up to two years and/or a fine.

Unauthorized claim of patent rights: Falsely representing an article to be patented in India or the subject matter of an application for a patent in India; sanctions is a fine up to Indian Rupees 0.1 million.

Damages are calculated on the basis of the pecuniary equivalent of the injury resultant as natural or direct consequences of the infringement. Where the patent is the subject matter of the license, the loss of royalties is considered for the assessment of damages.

Personal liability can be invoked where individuals engage directly in activities, or contribute to, or induce infringement of a patent.

The Indian Limitation Act governs the period of limitation for bringing a suit for infringement of a patent, which is three years from the date of infringement.

Legal costs for patent infringement cases can vary widely depending on the complexity of the case, the duration of litigation, and the legal representation involved. Typically, legal costs can include attorney fees, court filing fees, expert witness fees, and other related expenses. Generally, the parties are left to bear their own costs.

The proceeding for the grant of a patent by the Controller of Patents can take up to 2 years. Infringement proceedings before the High Court can take up to 4 years.

The law does not provide for any border seizure procedure by the Indian Customs Authorities for patent infringements.

The top two recent patent law developments are as follows:

• Patents (Amendment) Rules, 2024 which came into effect from 15th March 2024, have, inter alia, significantly reduced filing fees for a patent of addition by 50%, extended the time up to 3 months for filing reply to the first examination report, and reduced the timeframe for deciding oppositions proceedings.

• Patentability of Computer-Related Inventions (CRIs) (India): The Delhi High Court judgment of September 2023 in the matter of Raytheon Company regarding the patentability of computer-related inventions, is significant. This decision revolves around the meaning of "technical effect" and "contribution" within the framework of Indian patent law, potentially impacting how software and technology inventions are evaluated. While the Indian Patent law excludes a computer program per se from being patented, the High Court held that software that reduces the time in executing a function by the hardware is not a computer program per se and therefore patentable.

In the realm of Indian patent law, several developments are anticipated in the coming year:

• Domestic Filings Surge: The number of domestic patent filings in India has surpassed international filings. This trend reflects the growing interest in protecting intellectual property within the country. Efforts by the Department for Promotion of Industry and Internal Trade (DPIIT) have contributed to this surge, including a 50% increase in patent filings over the past 7 years and a fivefold rise in granted patents during the same period.

• Amendments and Evolving Landscape: The Patents Act of 1970 has undergone significant amendments over the years. Notably, the 2005 amendment expanded the scope of product patents to include areas like food, drugs, chemicals, and microorganisms. As we move forward, further amendments may address emerging technologies, harmonize with international standards, and enhance the patent system’s efficiency.