Patent Grant Procedure
AMRENDRA KR. AJIT
Assistant Professor of Law
National Law University Odisha, Cuttack
Patent Grant Procedure (In Brief)
Filing of PATENT APPLICATION
EXAMINATION & NOVELTY SEARCH
ACCEPTANCE OR REFUSAL
NOTIFICATION OF “ACCEPTANCE”
IN THE GAZETTE OF INDIA (part III section 2)
OPPOSITION (if any)
GRANT OF A PATENT
• THE PATENT ACT, 1970
Chapter lll = Application for patent
Chapter lV = Publication and examination of
Chapter V = Opposition proceedings to grant
Chapter Vlll = Grant of patents and rights
Person entitled to apply(sec.6)
-the true and first inventor of the invention -
the assignee of the person claiming to be the
true and first inventor
-the legal representative of any deceased
-by any person being the assignee of the person
claiming to be the true and first inventor
An application under may be made by any of the
persons referred; either alone or jointly with any
• Every application for a patent shall be for one
• Application under PCT shall be deemed to be an
application under The Patent Act .
• Every application shall state that the applicant is
in possession of the invention and shall name
the person claiming to be the true and first
• Every such application (not being a convention
application or an application filed under the
PCT) shall be accompanied by a provisional or a
• General Meaning-
Specification means a detailed description of
how something is, or should be made.
• Legal Meaning-
-A patent specification is a unilateral
statement by the patentee,
-in words of his own choosing, addressed to
those likely to have a practical interest in the
subject matter of his invention,
-by which he informs them what he claims to
be the essential features of the new product
or process for which the patent grant him a
Types- There are two types of specifications
i) provisional specification
ii) complete specification
Sec. 9 deals with provisional and complete
-Where an application for a patent (not an
international application) is accompanied by a
provisional specification, a complete
specification shall be filed within twelve
months from the date of filing of the application,
and if the complete specification is not so filed
the application shall be deemed to be
Contents of specifications
• Title of invention-
Every specification, whether provisional or
complete, shall describe the invention and shall
begin with a title sufficiently indicating the
subject-matter to which the invention relates.
• Field of invention-
• Background of invention (Prior art)
• Object of invention
• Shall describe the invention
• First page of every specification shall also
give name, address, & Nationality of the
applicant and end with a preamble.
• Shall be drawn in Form-2
-Detailed description of the invention with
reference to the accompanying drawings, and it
form part of the provisional and/or complete
-A model or sample of the invention shall be
furnished only when required by the controller,
but such sample shall not be deemed to form
part of the specification
-Advantages and or uses of the invention
-Filing date of specification determines the priority
PUBLICATION AND EXAMINATION OF
APPLICATIONS (CHAP. – IV)
• Sec. 11A.
• Ordinarily, an application for patent shall not be open
to public before the expiry of 18 months from the date
of filing of application .
• The applicant may make a request for an early
publication before the expiry of 18 months after
depositing the prescribed fees.(Form-9).
• Every application for patent shall be published after
the expiry of 18 months; except in cases-i)
where secrecy direction (invention relating to
defence) is imposed u/s 35.
ii) where appln. has been abandoned.
iii) where appln. has been withdrawn three months
prior to expiry of 18 months.
The applicant or any interested person, after
the publication, shall make request for
examination of the application, within 48 months
from the date of priority.
NO REQUEST----- NO EXAMINATION ------ TREATED AS
WITHDRAWN BY THE APPLICANT
• Examination Of Application. (s.12)
After request, the Controller shall referred the
relevant document to an examiner.
Search of prior art (s.13)
-anticipation by previous publication
-anticipation by prior claim.
Consideration of Report of examiner by
Where the report of the Examiner received by
the Controller is adverse to the applicant or
requires any amendment ,the Controller shall
communicate the gist of the objections to the
Power of Controller in cases of
Where it appears to the Controller that the
invention so far as claimed in any claim of the
complete specification has been anticipated ,
he may refuse to accept the complete
• Except- the applicant
i) shows to the satisfaction of the Controller that the
priority date of the claim of his complete specification
is not later than the date on which the relevant
document was published; or
ii) amends his complete specification to the satisfaction
of the Controller.
Time for putting application in order for acceptance
An application for a patent shall be deemed to have
been abandoned unless within 12 months from the
date of first statement of objections, the applicant has
complied with all the requirements imposed on him by
or under this Act, whether in connection with the
complete specification or otherwise in relation to the
OPPOSITION PROCEEDINGS TO
GRANT OF PATENT (Chap. V)
• Opposition to the patent (sec.25)
• Sec.25(1) says ,after the publication of
application and before granting of patent, any
person may ,in writing, represent by way of
opposition to the controller.
The grounds of opposition may be….
a) the applicant for the patent wrongfully
obtained the invention or any part thereof from
b) the invention so far as claimed in any claim of
the complete specification has been published
before the priority date of the claim
• c) if the same invention has been claimed
in a specification, which is published on or
after priority date (PD) of the applicant’s
claim and the PD is earlier than claimant.
• d) if invention is the prior art of India
• e) the invention so far as claimed in any
claim of the complete specification is
obvious and clearly does not involve any
• f) the subject of any claim of the complete
specification is not an invention within the
meaning of this Act
• g) the complete specification does not
sufficiently and clearly describe the invention or
the method by which it is to be performed .
• h) applicant has failed to disclose to the
Controller the information required by section 8
(application for other countries) or has furnished
the information which in any material particular
was false to his knowledge;
• i) in the case of a convention application, the
application was not made within twelve months
from the date of the first application for
protection for the invention made in a convention
country by the applicant or a person from whom
he derives title;
• J) the complete spe. does not disclose or
wrongly mentions the source or
geographical origin of biological material
used for invention.
• k) invention is anticipated or prior art of
elsewhere(i.e. outside of India ).
NO OTHER GROUND OF OPPOSITION
• Sec.25(2) deals with opposition
proceeding in post-grant patent.
• It says that after the granting of patent but
before the expiry of a period of one year
from the date of publication of the grant of
a patent, any person interested may give
notice of the opposition to the controller.
The grounds are same as pre-grant
• The Controller shall notify the patentee
about opposition notice in post-grant
• The Controller shall constitute a Board i.e.
called the Opposition Board.
• On receipt of the recommendation of the
Opposition Board and giving an an
opportunity of being heard to both the
parties ; the Controller shall order either
-to maintain, or
-to amend, or
-to revoke the patent.
• Chapter VI deals with anticipation
-anticipation by previous publication
-anticipation by previous communication to
-anticipation by public display, etc.
-anticipation by public working
-anticipation by use and publication after
This chapter deals only those conditions,
which don’t form the part of anticipation.
• Chapter VII deals with secrecy provision for
• Chapter VIII talks about grant of patent and
right conferred thereby.
• Sec.43 says that where an application for the
-has not been refused by the controller, and
-has not been found to be in contravention of any
of the provision of the Act,
then patent shall be granted as expeditiously
• Date of patent (sec.45)-
-date on which the application was filed.
Form and extent of patent (sec.46)
-every patent shall be in the prescribed form and
shall have effect throughout India
- a patent shall be granted for one invention only.
Grant of patents of be subject to certain
use of patent by the government
TERM OF PATENT (Sec.53)
-the term of every patent granted under this Act
shall be twenty years from the date of filing of
the application for the patent.