Obtaining a patent: application, specification and opposition

1. Who may apply: section 6

An application may be made by (a) any person claiming to be the true and first inventor; (b) his assignee in respect of the right to apply; or (c) the legal representative of a deceased person who was so entitled. It may be made alone or jointly. “True and first inventor” does not include the first importer of an invention into India or a person to whom it is first communicated from outside India (section 2(1)(y)). An assignee must furnish proof of his right (section 7(2)).

2. The application: section 7

• One application for one invention only, in the prescribed form, filed in the appropriate office of the Patent Office (section 7(1)).
• It must state that the applicant is in possession of the invention and name the true and first inventor (section 7(3)).
• It must be accompanied by a provisional or a complete specification (section 7(4)).
• An international application under the PCT designating India is deemed an application under the Act if a corresponding application is filed before the Controller (section 7(1A)), and its filing date is the international filing date (section 7(1B)).
• Section 8 requires the applicant to disclose corresponding applications filed abroad. Section 39 requires a resident of India to obtain written permission before applying abroad, unless he has first applied in India and six weeks have passed without a secrecy direction.

3. Provisional and complete specification: sections 9 and 10

A provisional specification describes the invention in general terms. It lets an inventor secure an early priority date while the invention is still being developed. If it is filed, the complete specification must follow within twelve months; otherwise the application is deemed abandoned (section 9(1)). The applicant may ask, within twelve months, that a specification filed as complete be treated as provisional (section 9(3)), or before grant that the provisional be cancelled and the application post-dated (section 9(4)).

Every specification must describe the invention and begin with a title (section 10(1)). Under section 10(4) every complete specification must:

• (a) fully and particularly describe the invention, its operation or use and the method by which it is to be performed;
• (b) disclose the best method of performing the invention known to the applicant;
• (c) end with a claim or claims defining the scope of protection; and
• (d) be accompanied by an abstract; where biological material is used and cannot be described sufficiently, it must be deposited with an international depository authority under the Budapest Treaty, and its source and geographical origin disclosed.

The claims must relate to a single invention or a group linked by a single inventive concept, be clear and succinct, and be fairly based on the matter disclosed (section 10(5)). Drawings may be required and form part of the specification (section 10(2)); a model or sample may be called for but does not (section 10(3)).

The claims are the most important part. They mark the boundary of the monopoly: what is not claimed is given to the public. Each claim has a priority date under section 11, normally the date of the specification in which the matter was first fairly disclosed.

4. Publication and examination: sections 11A to 21

• Publication (section 11A). An application is kept secret for the prescribed period (eighteen months from the priority or filing date under the Rules) and then published in the Official Journal. The applicant may ask for earlier publication. From publication until grant the applicant has the like privileges and rights as if a patent had been granted, but cannot sue for infringement until grant (section 11A(7)).
• Request for examination (section 11B). An application is examined only if the applicant requests it within the prescribed period; otherwise it is treated as withdrawn. The Patents (Amendment) Rules, 2024 shortened this period to thirty-one months from the priority date.
• Examination (sections 12 to 15). The examiner reports on whether the application complies with the Act, whether there is lawful ground of objection, and on the result of searches for anticipation. The Controller communicates the first examination report; the applicant must put the application in order within the prescribed time (section 21). The Controller may refuse or require amendment (section 15).

5. Opposition: section 25

The Indian Act allows two stages of opposition.

• Pre-grant (section 25(1)). After publication and before grant, any person may oppose by written representation to the Controller.
• Post-grant (section 25(2)). After grant but within one year from publication of the grant, any person interested may give notice of opposition. The Controller refers it to an Opposition Board (section 25(3)), considers its recommendation, and may maintain, amend or revoke the patent (section 25(4)).

The grounds are the same in both and are exhaustive (“but on no other ground”): (a) wrongful obtaining from the opponent; (b) prior publication; (c) prior claim in an Indian specification; (d) prior public knowledge or use in India; (e) obviousness and lack of inventive step; (f) not an invention or not patentable; (g) insufficient description; (h) failure to disclose foreign applications under section 8; (i) a convention application filed outside twelve months; (j) non-disclosure or wrong mention of the source or geographical origin of biological material; and (k) anticipation by traditional knowledge of any local or indigenous community. Opposition is cheaper and faster than revocation in the High Court, which is why civil society groups used the pre-grant route against Novartis’s application.

6. Grant, register and the Patent Office

If the application is in order and not refused, the Controller grants the patent with the seal of the Patent Office and publishes the fact (section 43). The patent dates from the date of filing (section 45), and lasts twenty years subject to renewal fees (section 53).

• Register of Patents (section 67). Kept at the Patent Office, it records the names and addresses of grantees, notifications of assignments and transmissions, licences, and amendments, extensions and revocations. It may be kept in electronic form and is open to public inspection (section 72). Rectification lies to the High Court (section 71).
• Patent Office (sections 73 and 74). The Controller General of Patents, Designs and Trade Marks is the Controller of Patents. The head office is at Kolkata, with branch offices at Delhi, Mumbai and Chennai, each with territorial jurisdiction. The Controller has certain powers of a civil court (section 77).

How this is examined

January 2026 set a note on “complete specification”; February 2025 a note on “specification”; August 2024 an essay on “fundamental principles governing registration of patent”. For the note, define the two kinds of specification, give the twelve-month rule in section 9(1), list the four requirements of section 10(4) and end with the role of claims. For the procedure essay, walk through sections 6, 7, 9, 10, 11A, 11B, 12 to 15, 25 and 43 in order. Always mention both stages of opposition: examiners treat a procedure answer without section 25 as incomplete.