INDIA Law and Practice Contributed by: Anu Paarcha, Aniruddh Bhatia, Mishthi Dubey and N Parvati, Saikrishna & Associates
opposition is pending, further action qua grant or rejection is taken only after the pre-grant opposi- tion is adjudicated upon. 1.3 Timeline for Grant Procedure Timeline There is no specific timeline in which the grant procedure must be completed. Typically, the timeline for such procedure is around three to five years, and may vary depending on exten- sions in timelines sought by the applicant in filing responses and ensuring due compliance of the mandates by the Patent Office, or on the vol- ume of cases pending adjudication before the Patent Office. Further, the existence of multiple pre-grant oppositions and their adjudication may also delay the process beyond the estimated An applicant need not necessarily have any legal representation. As provided under Section 6 of the Act, an applicant is free to file a patent appli- cation on their own. Costs timeline above. Representation The average costs of granting an ordinary appli- cation filed in India entail the statutory fee, pay- able to the Indian Patent Office, and the profes- sional fee that may be payable to a patent agent (if any) for filing such patent application. Additionally, prior to filing a patent application, if a patentability/clearance search is conducted by a patent agent to assess the likelihood of suc- cess of a patent being granted, this would also add to the costs associated with the grant pro- cedure. An applicant can also perform a search on their own, and free of cost, on the Indian pat- ent database (which consists of published pat- ent applications and granted patents) as well as
on other publicly available databases (such as Google Patents or Espacenet). The statutory fee payable to the Indian Patent Office consists of: • the filing fee; • the fee accompanying an application seeking extension of time; • the fee for expedited filing/examination; and • the fee for filing a request for examination, et al. This is as prescribed under Schedule I of the Patent Rules, 2003. 1.4 Term of Each Intellectual Property Right Being a signatory to the Agreement on Trade- Related Aspects of Intellectual Property Rights (TRIPS), India recognises the term of a granted patent to be 20 years from the date of filing of such patent application; in the case of a National Phase application, the term of the patent will be 20 years from the international filing date. 1.5 Rights and Obligations of Owners of Intellectual Property Rights Section 48 of the Act provides the patentee with exclusive rights to restrain third parties from the act of making, using, offering for sale, selling or importing for those purposes that product in India. In the case of a process patent, the provision also provides a patentee the exclu- sive right to prevent third parties from the act of using such process, and from the act of using, offering for sale, selling or importing for those purposes the product obtained directly by that process in India. The right to exclude others from the acts described above further enables a pat- entee (either by themselves or with a co-owner) to take legal action against third parties who are
225 CHAMBERS.COM
Powered by FlippingBook