India

Spruson

india

Overview

Capital: New Delhi

Population: 1,205,073,612 (est. 2012)

Languages: English, Hindi

Area: 3,287,263 km²

Currency: Indian Rupee (INR)

Legal System: Common law system based on the English model

Patent Practice Summary

Filing Statistics

india_graph

Key Issues

  • All litigation and prosecution in English or Hindi
  • Ranked 71st in the world for IP protection in the World Economic Forum’s Global Competitiveness Report 2013/2014

Enforcement

  • Specialized courts for patent enforcement are not available. However, the Intellectual Property Appellate Board (IPAB) is available to hear appeal against decisions made by the Indian Intellectual Property Office (IPO). District courts are the Courts of first instance while the Indian High Courts hear the appeals from decisions of the District courts with a further appeal to the Supreme Court
  • The reliefs that a court may grant in a patent infringement suit include an injunction and, at the option of the plaintiff, either damages or an account of profits. The court may also order for the seizure and destruction of any infringing products
  • Infringement proceedings can take 2 to 3 years while revocation proceedings can take between 1 to 2 years
  • After the grant of an Indian patent, Patentees indicate whether or not the patent is being worked in India. Non-working of the patent in India allows third parties to request for a compulsory licence

Prosecution

  • National phase entry deadline for PCT applications in India: 31 months
  • Prosecution of an Indian patent applicant takes between about 4 to 6 years
  • During the course of prosecution, the Applicant needs to update the Indian patent office regularly about the status of patent applications referring to the same invention filed in countries outside India (Section 8(1)). Non-compliance with this requirement is a ground for revocation
  • There are a number of exclusions to patentable subject matter in India. The list of non-patentable subject matter (Section 3) relates to:
    • Frivolous or contrary to well established natural laws;
    • Invention against public order;
    • Discovery of a scientific principle or formulation of an abstract theory;
    • Discovery of new form of a known substance which does not result in enhancement of any efficacy, any new property or new use for a known substance or mere new use of a known process, machine or apparatus;
    • Substance obtained by mere admixture;
    • Mere arrangement or re-arrangement or duplication of known devices;
    • Method of agriculture or horticulture;
    • Process for medicinal, surgical, curative, prophylactic, diagnostic, therapeutic or other treatment of human beings or animals;
    • Plants and animals in whole or any part thereof other than micro-organisms;
    • A computer programme per se, other than its technical application to industry;
    • A mathematical method or business method, algorithms;
    • A literary, dramatic, musical or artistic work or any other aesthetic creation;
    • Scheme or rule or method of performing mental act or method of playing game;
    • Topography of integrated circuits;
    • Traditional knowledge;
    • A presentation of information;
    • Invention relating to atomic energy and inventions prejudicial to the interest of security of India
  • Excess claim fees are payable at national phase entry and are calculated according to the number of claims mentioned in the IPRP as published in the international phase
  • Applicants must provide details of corresponding applications within six (6) months of filing in India and failure to do so can result in the application being refused or invalidation of any granted patent (Section 8(1))
  • Request for examination deadline: 48 months from earliest priority date
  • 12 month deadline for putting application in order for grant after receipt of the First Examination Report
  • First Examination Report also requires Applicant to provide patent office with copies of granted patents and the respective claims as well as latest office actions of and pending claims of other corresponding applications (Section 8(2)). Non-compliance is a ground for revocation
  • Renewal fees need to be paid only upon grant of an Indian patent. Back annuities need to be paid upon grant of a patent

Other issues

  • Pre or post-grant opposition exists
  • No Patent Term Extensions
  • Foreign filing license required
  • 18 month deadline for restoration of lapsed patent

Filing Requirements in India

 

Affiliations

Bodies

  • Copyright Division
  • Department of Higher Education
  • Ministry of Human Resource Development
  • Government of India
  • Office of the Controller-General of Patents, Designs and Trademarks
  • Department of Industrial Policy Promotions
  • Ministry of Commerce and Industry
  • World Intellectual Property Organization

 

Member

  • Washington Treaty on Intellectual Property in Respect of Integrated Circuits
  • Rome Convention for the Protection of Performers, Producers of Phonograms and Broadcasting Organizations
  • Budapest Treaty on the International Recognition of the Deposit of Micro-organisms for the Purposes of Patent Procedure
  • Paris Convention for the Protection of Industrial Property
  • Patent Cooperation Treaty
  • Nairobi Treaty on the Protection of the Olympic Symbol
  • Convention Establishing the World Intellectual Property Organization
  • Convention for the Protection of Producers of Phonograms Against Unauthorized Duplication of Their Phonograms
  • Berne Convention for the Protection of Literary and Artistic Works

 

 

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