Patent Application and Grant Procedure in India

Understand Patent Application and Grant Procedure

Key rules to remember

Complete specification after provisional

Complete specification due within 12 months from date of filing the application (Section 9(1))

If not filed in time, the application is deemed abandoned. Convention and PCT applications designating India are excluded from this rule.

Treating a complete specification as provisional

Request within 12 months from filing; Controller may direct it be treated as provisional (Section 9(3))

Same exclusion for convention and PCT applications. If the Controller gives the direction, the specification is treated as a provisional specification for the purposes of the Act and the application proceeds accordingly.

Cognate provisional applications

Two or more provisionals, same applicant, cognate or one a modification of another: one complete specification allowed; 12 months run from the earliest provisional (Section 9(2))

The Controller must be of opinion that the inventions form a single invention.

Post-dating

Before grant, applicant may request cancellation of the provisional and post-dating to the date of filing the complete specification (Section 9(4))

Used when the provisional does not support the claims well.

Priority date of a claim

Claim fairly based on provisional = date of provisional (Section 11(2)); where Section 11(2), (3), (3A), (4) and (5) do not apply = date of filing complete specification (Section 11(6))

Each claim has its own priority date. Section 11(6) is a residual rule: use it only when the other sub-sections do not apply. If a claim would have two or more dates, the earliest applies (Section 11(5)).

Priority from earlier Indian application

Complete specification within 12 months of earlier Indian application, claim fairly based on it: priority = date of earlier application (Section 11(3A))

The date is that of the earlier application in which the matter was first disclosed.

Protection against intervening use or publication

Use or publication after the provisional filing date does not by itself justify refusal or revocation (Section 33(1)). Convention applications get similar protection for use or publication after the date of the convention-country application (Section 33(2))

Section 33(1) applies to matter described in the provisional specification. Section 33(2) applies to matter disclosed in the convention-country application.

Opposition windows

Pre-grant (Section 25(1)): after publication, before grant. Post-grant (Section 25(2)): after grant, within 1 year from publication of grant

Pre-grant opposition can be made by any person. Post-grant opposition is by any person interested. Both are made to the Controller.

How to solve Patent Application and Grant Procedure questions

1. 1Identify the stage the question is about: filing, specification, publication, examination, opposition or grant.
2. 2Note the type of application: ordinary with provisional, ordinary with complete, convention or PCT. Section 9(1) does not cover the last two.
3. 3Write down the dates given and compute the deadline, for example twelve months from the filing date.
4. 4For priority questions, take each claim separately. Ask whether it is fairly based on the provisional specification. If yes, use the provisional date. If no, check whether another sub-section of Section 11 applies (for example Section 11(3A) for an earlier Indian application). Only if none applies, use the complete specification date under Section 11(6).
5. 5For opposition, check whether grant has happened. Before grant, the pre-grant route applies. After grant, check the one-year window from publication of grant.
6. 6State the rule first, then apply it to the facts, then give a clear conclusion citing the section.

Quickest way: Date-and-stage check

Common mistakes in Patent Application and Grant Procedure

• Saying the complete specification must be filed within 18 months of the provisional.

  Students confuse the 12-month rule with the 18-month publication period.

  Fix: Remember: complete specification is due within twelve months from the filing date (Section 9(1)). Publication timing is a separate step.

• Applying the 12-month provisional rule to convention or PCT applications.

  Students overlook the bracketed exclusion in Section 9(1).

  Fix: State that Section 9(1) applies to applications other than convention applications and PCT applications designating India.

• Giving every claim the provisional date.

  Students think the application has one priority date.

  Fix: Section 11(1) gives a priority date to each claim. Only claims fairly based on the provisional disclosure get its date.

• Mixing up pre-grant and post-grant opposition.

  Both are opposition routes and both are filed with the Controller.

  Fix: Pre-grant: after publication, before grant. Post-grant: within one year from publication of grant.

• Treating Section 33 as protecting all disclosures made by the applicant.

  Students read it as a general grace period.

  Fix: Section 33(1) protects only against use or publication of matter described in the provisional specification after its filing date. Section 33(2) similarly protects a convention application against use or publication after the date of the convention-country application. Neither covers disclosures before the relevant filing date.

• Forgetting the clear conclusion in the answer.

  Students list the rule and stop.

  Fix: Use the ICSI pattern: provision, facts and analysis, then a firm conclusion such as 'the application stands abandoned'.

Worked examples