A patent gives a time-limited right over an invention. In India the term is twenty years from the filing date, subject to payment of annuities.
Indian patent practice is governed by the Patents Act, 1970 and the Patent Rules, 2003, both amended repeatedly.
What is patentable
Three requirements must all be met:
Novelty. The invention must not have been disclosed anywhere in the world before the priority date.
Inventive step. It must involve technical advance or economic significance, and must not be obvious to a person skilled in the art.
Industrial application. It must be capable of being made or used in industry.
What is not patentable
Section 3 of the Patents Act lists exclusions, and it is more restrictive than many applicants expect.
Section 3(d) is the provision that most distinguishes Indian practice. It restricts patents on new forms of known substances unless they demonstrate enhanced efficacy. This is central to Indian pharmaceutical patent practice and is the reason many applications granted elsewhere do not survive in India.
Other exclusions cover, among other things, mere discoveries, methods of agriculture, methods of treatment, computer programs as such, and mathematical or business methods.
Prior art search
A prior art search, also called a patentability or novelty search, is conducted before filing.
The purpose is to uncover existing knowledge before the invention, assess the state of the technology in the field, and identify patents or applications parallel to the technology in question.
A thorough search covers WIPO, EPO, US, Japanese, Korean, Chinese and Canadian databases alongside other patent office databases and commercial sources.
Provisional and complete specifications
India permits filing a provisional specification to secure a priority date, followed by a complete specification within twelve months.
This is useful where the invention is still developing, but the provisional must adequately describe the invention. A thin provisional does not reliably secure the priority date it appears to.
Request for examination
Filing does not trigger examination. A request for examination must be filed separately, within the prescribed period.
Missing it means the application is treated as withdrawn. This is a recurring and entirely avoidable loss.
Expedited examination is available in defined circumstances, including for start-ups and small entities and where India was the International Searching Authority.
Foreign filing licence
If you are resident in India, you need permission before filing a patent application abroad first, unless an application has been filed in India at least six weeks earlier and no secrecy direction has been imposed.
A foreign filing licence is obtained from the Controller. Filing abroad without one, where required, carries real consequences including potential invalidity of the Indian patent and criminal liability.
This catches out Indian inventors working with foreign counsel who file in the US or Europe first as a matter of habit.
PCT and national phase
The Patent Cooperation Treaty allows a single international application, deferring the choice of countries.
Entering the Indian national phase is the step that actually starts Indian prosecution. The deadline is thirty-one months from the priority date, and it is not extendable.
Opposition
Pre-grant opposition can be filed by any person after publication and before grant.
Post-grant opposition can be filed by an interested person within one year of grant.
Both are used actively in India, particularly in pharmaceuticals.
Statement of working
Granted patents must periodically declare whether the patent is being worked commercially in India. This is a mandatory filing, and non-compliance carries consequences.
It is an obligation that has no equivalent in many other jurisdictions, and foreign patentees frequently overlook it.
Frequently asked questions
How long does a patent last in India? Twenty years from the filing date, subject to annuity payments.
What is Section 3(d)? The provision restricting patents on new forms of known substances absent enhanced efficacy. It is central to Indian pharmaceutical practice.
Do I need a foreign filing licence? If you are resident in India and intend to file abroad first, yes, unless you filed in India at least six weeks earlier without a secrecy direction.
Is examination automatic? No. A request for examination must be filed within the prescribed period, failing which the application is treated as withdrawn.
What is the statement of working? A mandatory periodic declaration of whether a granted patent is being commercially worked in India.
Can software be patented in India? Computer programs as such are excluded under Section 3. Whether a particular invention falls within the exclusion is a fact-specific question and the guidance has evolved.
Useful official resources
- IP India — Patents
- Patents Act, 1970
- WIPO PATENTSCOPE
- WIPO PCT
Filing in India, or entering the national phase? Talk to us. The foreign filing licence and the working statement are the two obligations foreign applicants most often miss.