INDIA Law and Practice Contributed by: Anu Paarcha, Aniruddh Bhatia, Mishthi Dubey and N Parvati, Saikrishna & Associates
1. Intellectual Property Rights and Granting Procedure 1.1 Types of Intellectual Property Rights Indian law provides for protection of “inventions” under the Patents Act, 1970 (the “Act”). An “invention”, defined under the Act as a new product or process involving an inventive step and which is capable of industrial application, is protected by way of a patent. Whether an inven- tion is capable of being protected as a patent is based on both the provisions of the Act (particu- larly Sections 3 and 4, which provide the crite- ria for exclusion from patentability) and on case laws interpreting the scope of the provisions of the Act. For example, Section 3(d) of the Act stipulates, inter alia, that “the mere discovery of a new form of a known substance” would not qualify as an invention unless it “result(s) in the enhancement of the known efficacy of that substance”. Effi- cacy in the context of medicines has been held to mean therapeutic efficacy by the Supreme Court of India in Novartis AG v Union of India & A patent is a creature of statute and arises only once an application made before the Indian Pat- ent Office is granted as per the Act, duly sup- plemented by the Patent Rules, 2003. The grant procedure for a patent typically arises with the filing of an application before the Indian Patent Office. India permits filing of a provi- sional specification with an ordinary application and provides the applicant with 12 months to file the complete specification. For a convention application, Section 135 of the Act prescribes that such application be filed within 12 months Others, 2016 (6) SCC 1. 1.2 Grant Procedure
from the date of first application in a convention country. A PCT National Phase application must be filed within 31 months from the priority date of the PCT International application. The next stage in the grant procedure is the pub- lication of the patent application under Section 11A of the Act. The patent application is pub- lished after expiry of 18 months from the date of its filing or priority date, whichever is earlier, to give due notice to the public and to facilitate filing of pre-grant oppositions, if any. However, it is possible for an applicant of a patent applica- tion to request an early publication of the patent application by filing such request under Section 11A(2) of the Act. A patent application made before the Indian Pat- ent Office is not examined automatically upon filing. Under Section 11B of the Act, an applicant is required to furnish a request for examination within 48 months from the date of filing or prior- ity. As per the Patent Amendment Rules, 2024, the timeline for filing such a request for exami- nation has been reduced to 31 months from the filing date, for all applications filed on or after 15 March 2024. Upon filing of the request for examination, a first examination report is issued by the Indian Patent Office, under Section 12 of the Act, rais- ing objections/defects relating to the form and manner of the application and/or its substance, based on the grounds provided under the Act. The applicant thereafter usually has a period of six months to respond to the first examination report and to include proposed modifications, if any. An oral hearing opportunity may also be accorded to the applicant if necessary. The same is accorded if the application is found to be in order for grant, provided no pre-grant opposition is pending before the Controller. If a pre-grant
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