Patents in Outline: Procedure for Grant and Sealing

1. A patent in brief

A patent is a right granted by the State to an inventor (or assignee) to exclude others from making, using, selling, offering for sale or importing the patented invention in India for twenty years from the date of filing (Patents Act, 1970, ss.48 and 53), in exchange for full public disclosure of the invention. An “invention” is a new product or process involving an inventive step and capable of industrial application (s.2(1)(j)). Section 3 lists what is not an invention (discoveries, new forms of known substances without enhanced efficacy, methods of treatment, computer programs per se, traditional knowledge and others), and s.4 excludes inventions relating to atomic energy.

2. Who may apply (s.6)

The true and first inventor, his assignee, or the legal representative of a deceased inventor or assignee, alone or jointly. A company can apply only as assignee; the inventors must be named.

3. The procedure, stage by stage

1. Application (s.7). Filed in the prescribed form at the appropriate office (Kolkata, Delhi, Mumbai or Chennai, by the applicant's residence or place of business), for one invention only, with the fee. A PCT national phase application is treated as an application under the Act (s.7(1A)). Proof of right to apply is needed where the applicant is an assignee.
2. Specification (ss.9–10). The applicant may file a provisional specification to secure an early priority date and must then file the complete specification within twelve months, or the application is deemed abandoned. The complete specification must fully describe the invention and its operation, disclose the best method known to the applicant, and end with claims defining the scope of protection, with an abstract.
3. Foreign filing information (s.8). The applicant must furnish details of corresponding applications filed abroad.
4. Secrecy and foreign filing permission (ss.35, 39). Inventions relevant to defence may be subjected to secrecy directions. A resident of India must not file abroad without first filing in India or obtaining permission, unless six weeks have passed since filing in India.
5. Publication (s.11A). The application is published in the Patent Office Journal after eighteen months from the date of filing or priority, whichever is earlier, or earlier on request. From publication the applicant has the rights of a patentee, but cannot sue for infringement until grant (s.11A(7)).
6. Request for examination (s.11B). The application is examined only on a request, which must be made within the prescribed period. The Patents (Amendment) Rules, 2024 reduced this period to thirty-one months from the priority date. Without a request the application is treated as withdrawn.
7. Examination (ss.12–13). The examiner checks that the application meets the Act, that the invention is patentable, and searches for anticipation by prior publication and prior claiming. The first examination report (FER) is issued to the applicant.
8. Response and hearing (ss.14–15). The applicant must meet the objections within the prescribed period, by argument or by amendment. If the Controller is not satisfied he may refuse the application or require amendment, but only after giving the applicant a hearing (s.14, s.80).
9. Pre-grant opposition (s.25(1)). After publication and before grant, any person may oppose in writing on the grounds listed (wrongful obtaining, prior publication, prior claiming, prior public knowledge or use, obviousness, non-patentability, insufficiency, non-disclosure of s.8 information, late convention filing, non-disclosure of biological source, anticipation by traditional knowledge). The Controller decides, after hearing the applicant.
10. Grant (s.43). Where the application has been found in order and is not refused, and any pre-grant opposition has been decided in the applicant's favour, the patent is granted “with the seal of the patent office” and the date of grant is entered in the register. The grant is published. This is the “sealing” of the patent: the term survives from the pre-2005 text, which spoke of the grant and sealing of the patent.
11. Date and term (ss.45, 53). The patent is dated as of the date of filing of the application. The term is twenty years from that date, subject to payment of annual renewal fees; if a fee is not paid in time (with the six-month extension) the patent ceases, though it may be restored under s.60.
12. Post-grant opposition (s.25(2)). Within one year of publication of the grant, any person interested may file notice of opposition; the Controller refers it to an Opposition Board, whose recommendation he considers before deciding to maintain, amend or revoke the patent.

4. Expedited and special routes

The Rules permit expedited examination for certain applicants (startups, small entities, women applicants, government departments, applicants who chose India as the PCT searching authority, and others listed). Divisional applications may be filed for further inventions disclosed (s.16). A patent of addition (s.54) covers an improvement on the applicant's own patented invention and runs for the unexpired term of the main patent.

5. Is grant a guarantee of validity?

No. Section 13(4) says the examination and investigation do not warrant the validity of any patent. In Biswanath Prasad Radhey Shyam v. Hindustan Metal Industries, 1978 INSC 258, the Supreme Court held a patent for a method of manufacturing brass utensils invalid for want of novelty and inventive step, and said that grant raises no presumption of validity. Validity may be challenged after grant by post-grant opposition, a revocation petition (s.64, now before the High Court) or a counter-claim in an infringement suit.

How this is examined

Q3 of 2024 asked for the procedure. Write the twelve stages in order with section numbers, add a flowchart if time allows (application → specification → publication → request → FER → response → opposition → grant under seal → renewal), and close with Biswanath on validity. Detailed patentability and opposition questions belong to the Patents paper notes.