India’s intellectual property (IP) landscape is undergoing a remarkable transformation, reflecting the nation’s growing stature on the global innovation stage. With a robust legal framework and recent amendments, India is positioning itself as a key player in the worldwide patent ecosystem. This article provides an in-depth overview of the critical aspects of patent law in India, highlighting recent developments, procedural nuances, and strategic considerations for patent holders and applicants.
Foreign filing licence
A foreign filing licence (FFL) is mandatory for resident inventors in India who wish to file patent applications abroad. This requirement underscores the importance of safeguarding national interests while balancing global innovation objectives.
Obtaining an FFL involves submitting a brief disclosure of the invention to the Indian Patent Office (IPO) for review. If the IPO finds no objection, the licence is typically granted within three weeks, allowing the inventor to proceed with foreign filings. Alternatively, inventors may file the initial application in India and wait for six weeks before filing abroad, provided no secrecy directions are issued by the IPO. It is crucial to note that the FFL cannot be obtained retrospectively, making timely submission a critical step in patenting.
Despite the recent decriminalisation of certain patent law provisions, the FFL requirement remains intact, carrying significant penalties for non-compliance.
If the IPO or a third party discovers the violation, the inventor could face imprisonment for up to two years, a fine, or both. Additionally, the Indian patent application could be abandoned, and any granted patent could be revoked.
This highlights the importance for patent applicants and owners to understand and comply with Indian regulations.
Patent filing and amendments
India offers a cost-effective environment for patent filing, particularly compared to other jurisdictions where native-language requirements can escalate costs. Accepting English as the filing language significantly reduces the complexity and expense of patent applications. Official filing fees in India are lower than global averages, making the country an attractive destination for patent seekers.
One of the unique features of Indian patent law is the flexibility it offers during the filing process. Applicants can choose to drop certain claims during the national phase, particularly those that may not meet patentability criteria. This strategic option can save costs and streamline the examination process. However, post-filing amendments are tightly regulated and limited to disclaimers, explanations, or corrections supported by the original specification. Significantly, any amendments cannot broaden the scope of the claims, ensuring that the integrity of the original application is maintained.
Prosecution proceedings
The patent prosecution process in India is designed to be efficient and applicant-friendly. The process begins with filing a request for examination, which must be submitted within 31 months from the priority date. Recent amendments have introduced provisions for substantial fee refunds if the request for examination is withdrawn before the examination begins, offering applicants greater flexibility and cost-saving opportunities.
The IPO has made significant strides in reducing the backlog of patent applications, leading to a record number of grants in recent years. Once the first examination report is issued, applicants have six months to respond to any objections raised. If the objections are not resolved, an oral hearing may be scheduled, allowing applicants to present their case directly to the patent office. Following the hearing, a decision is issued. If the application is unsuccessful, the applicant has the option to file a review petition with the IPO, or appeal to a high court.
Divisional applications
Divisional applications are essential in Indian patent law, allowing applicants to protect multiple inventions disclosed in a single patent application. However, these applications must demonstrate distinct inventions to avoid objections related to double patenting. The burden of proof lies with the applicant, who must clearly differentiate the claims of the divisional application from those of the parent application.
While amendments to claims are permitted during prosecution, they are subject to certain limitations. Therefore, it is advisable to draft divisional claims with a clear and distinct scope from the outset. Divisional applications can only be filed while the application being divided is pending, making it crucial to file them early to avoid losing the opportunity due to the sudden grant of the parent application.
Disclosure of foreign filings
Under Indian patent law, applicants are required to disclose details of any foreign patent applications related to the same or a similar invention. This disclosure must be made using form 3, either at the time of filing the Indian application or within six months after. The applicant is also obligated to update this information within three months of receiving the first examination report.
The IPO may request an updated form 3 if the initial disclosure is deemed inadequate. A grace period of three months is provided for filing this form, emphasising the importance of transparency in the patenting process. This recently simplified disclosure requirement is a crucial aspect of maintaining the integrity of the patent system in India, ensuring that the IPO is fully informed of all related international filings and, at the same time, not being too burdensome on applicants.
Working statement
The requirement to file a working statement in India is a unique feature of the country’s patent law, reflecting the emphasis on the practical utility of granted patents. Recent amendments have extended the periodicity of filing these statements from annually to every three financial years, reducing the administrative burden on patentees.
The new form 27, introduced under amended rule 131, has simplified the working statement process by removing the requirement to disclose sales or revenue data. Patentees are now only required to declare whether the patent has been worked or not during the relevant period. If the patent has not been worked, the patentee may optionally provide reasons for non-working and offer licensing contact details, if applicable.
Despite these simplifications, there has been some confusion regarding the interpretation of due dates under the new rules. The IPO has addressed these concerns by issuing FAQs to provide clarity on the matter. For patents granted before 31 March 2023, the due date for filing the working statement is 30 September 2026. This statement must cover the period from 1 April 2023 to 31 March 2026. Extensions are available up to 31 December 2026, or 30 June 2027, with corresponding fees. For patents granted between 1 April 2023 and 31 March 2024, the deadline is 30 September 2027, with the possibility of further extensions.
Enforcement
The enforcement of patent rights in India has seen significant developments, particularly in the context of litigation. Indian courts are increasingly adopting international best practices while tailoring them to local legal and cultural contexts. Recent landmark decisions have played a pivotal role in dispelling the perception that India is unfriendly to patent holders or incapable of handling complex patent disputes. A notable area of progress is handling cases involving standard essential patents (SEPs), where Indian courts have demonstrated a balanced approach, ensuring that both patent holders and implementers are treated fairly. The establishment of specialised commercial courts and IP divisions has further accelerated the resolution of patent disputes, leading to quicker judgments and enhanced legal certainty.
Way forward
India’s patent landscape is on a clear trajectory of growth and modernisation. While challenges remain, particularly in the areas of enforcement and procedural efficiency, the country has made significant strides in recent years. The reduction in patent application backlogs, the simplification of procedural requirements, and the increased emphasis on transparency have all contributed to a more robust and predictable patent system.
As India continues to refine its patent laws and practices, stakeholders can expect further improvements in the legal and regulatory framework. These developments, coupled with India’s growing emphasis on innovation and technology, position the country as an increasingly attractive destination for patent holders seeking to protect their intellectual property in one of the world’s largest and most dynamic markets.
In conclusion, by understanding the nuances of Indian patent law and staying abreast of recent developments, patent holders and applicants can secure valuable IP rights in a jurisdiction poised to play a central role in the global innovation economy.
Authors: Manisha Singh and Joginder Singh
First Published by: ABLJ here