INDIA Law and Practice Contributed by: Mohit Goel, Sidhant Goel, Aditya Goel and Mehr Bajaj, Sim and San, Attorneys at Law
cants may initially file a provisional specification and submit the complete specification within 12 months. After filing, applications are ordinarily published after 18 months, although early publication may be requested. Substantive examination is initiated only upon filing a Request for Examination (RFE). For applications filed on or after 15 March 2024, the RFE must be filed within 31 months from the priority/filing date. The IPO then issues a First Examination Report (FER) identify- ing formal and substantive objections. The applicant must place the application in order for grant within the prescribed period, including responding to FER objec- tions and attending hearings where required. Expe- dited examination is available for eligible applicants, including start-ups and certain Patent Cooperation Any person may file a pre-grant opposition after publi- cation and before grant, while a post-grant opposition may be filed by an interested person within 12 months of grant. Timelines, Costs and Representation Patent grants typically take two to five years, depend- ing on complexity, examination backlog and opposi- tion proceedings. Official fees vary by applicant cate- gory, with start-ups, natural persons and small entities benefiting from significantly reduced fees. Foreign applicants generally appoint an Indian Patent Agent and provide an address for service in India, although representation is not mandatory for applicants acting through a valid local address. 1.3 Scope, Term and Maintenance of Patent Rights Rights Conferred Section 48 of the Patents Act, 1970 grants the pat- entee the exclusive right to prevent third parties from making, using, selling, offering for sale, or importing the patented product, and equivalent rights in respect of process patents. Rights are strictly territorial. Term Under Section 53, every patent has a term of 20 years from the filing date. India does not provide patent term Treaty (PCT) applicants. Opposition and Grant
adjustment for prosecution delays, and has no sup- plementary protection certificates or term extensions. Renewal Renewal fees are payable from the third year, escalat- ing annually. The 2024 Rules introduced a 10% dis- count for advance e-filed renewal payments covering at least four years. Non-payment results in the patent ceasing to have effect. Restoration may be applied for within 18 months of cessation under Section 60 if the failure was unintentional. Working Requirement Form 27 working statements now need only be filed once every three financial years under the 2024 Rules, and no longer require disclosure of revenue. False declarations or non-filing may attract penalties under Section 122 and are relevant to compulsory licensing proceedings. 1.4 Ownership, Assignment and Licensing Under the Patents Act, 1970, a patent application may be filed by the true and first inventor, an assignee, or the legal representative of a deceased entitled per- son. Ownership of employee inventions is governed primarily by contract; inventions created in the course of employment or using employer resources generally belong to the employer, although clear assignment provisions are advisable. India has no specific legisla- tion governing university inventions; ownership is usu- ally determined by institutional IP policies or research collaboration agreements. Patent assignments, licences, mortgages and oth- er interests must be in writing and duly executed. To ensure enforceability against third parties, such transactions should be recorded with the IPO within the prescribed period. While unrecorded licences may remain valid between the parties, registration is strongly recommended to protect rights against sub- sequent assignees, licensees and third parties. 1.5 Patent Infringement and Defences Direct infringement occurs where, without authori- sation, a person makes, uses, sells, offers for sale or imports a patented product, or uses a patented process and deals in products obtained directly from that process. India does not have a dedicated statu-
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