The document summarizes the process of registration and grant of patents in India. It discusses key aspects like application for a patent, provisional and complete specifications, publication of applications, examination of applications, opposition to patents, and grant of a patent. It also provides statistics on patents filed, examined, granted and disposed in India from 2014-15 to 2019-20. Finally, it discusses an important case law on determining the timeline for pre-grant opposition.

1. Registration and Grant of Patent
CS Meenakshi Jayaraman

2. Research Credits
Iswariya BS
Hari Saanthosi R

3. Legends Used
App. Application
CS Complete
Specification
PS Provisional
Specification

4. Presentation Schema
Application for grant of
patent
Provisional and
Complete specifications
Publication of
application
Examination of
application
Opposition to the
patent
Grant of patent
Case law: Dr. Snehalata
C. v. Gupte v. Union of
India
Statistics

5. Application for grant of Patents

6. Person claiming to be the true and first inventor of the invention
Person being the assignee of the person claiming to be the true
and first inventor
Legal representative of any deceased person who immediately
before his death was entitled to make such an app.
Person entitled to apply for Patents

7. Form of application
App. for a patent shall
be made for 1
invention only
If app. Is made by
virtue of assignment, a
proof of the right to
make the app. shall be
furnished by the
assignee within 6
months
App. shall state that the
applicant is in
possession of the
invention and shall
name the person
claiming to be the true
and first inventor
App. shall be
accompanied by a
Provisional
Specification (PS) or a
Complete Specification
(CS)
Application for Grant of Patent - Form A

8. Provisional and Complete
Specifications

9. Provisional & Complete Specification
Provisional
Specification is
something
which is not a
Complete
Specification
Complete
Specification is
something which
describes the full
process, invention,
method, scope of
the invention etc.

10. Provisional and Complete specifications
If an app. for a patent is accompanied by a PS, a CS shall be filed
within 12 months from the date of filing of the app.
If two or more app. is made by the same applicant with PS and if
the Controller is of the opinion that all such inventions will
constitute a single invention he may allow one CS to be filed,
instead of all such PS
If an app. for patent is accompanied as a CS, the controller may,
on request of applicant within 12 months treat the same as PS
Controller may on request of applicant before the grant of patent,
cancel the PS and post-date the app. to the date of filing of the CS
PS  CS – Mandatory
(otherwise the patent
will be abandoned)
CS  PS -
Optional
Form filed with PS
but request made by
the applicant to
consider the date of
CS

11. Priority dates
If 2 or more applications are being made for CS, and the claim of
priority date is based on the specification
• made in one of such application, then the date of such
application
• made partly in one and partly in another, then the date of
filing the later application accompanied by the specification
Either the date of
PS or the date of
PS, when a request
has been made by
the applicant for
change in date
from CS  to PS
Where CS based on a previously filed application in India has been filed within 12 months from
the date of that application and the claim is fairly based on the matter disclosed in the previously
filed application, the priority date of that claim shall be the date of the previously filed
application in which the matter was first disclosed
Where the CS has been filed in pursuance of a further application and the claim is fairly based on
the matter disclosed in any of the earlier PS or CS, the priority date of that claim shall be the date
of the filing of that specification in which the matter was first disclosed
Where, any claim of a CS would, but for the provisions above said, have two or more priority
dates, the priority date of that claim shall be the earlier or earliest of those dates
In any other case, the date of filing Complete Specification

12. Publication of application

13. In general, the patent app. is not available to
public for a period of 18 months from the
date of filing of application or the date of
priority of application (whichever is earlier)
The Controller may publish the patent app.
Within 1 month either on the expiry of the
said period or on expiry of app. made by
the applicant
In case secrecy direction
has been imposed for
inventions relating to
defence purposes
In case app. has been
abandoned (Failed to
make PS  CS within 12
months)
App. withdrawn 3 months
prior to the end of 18
months from the date of
filing
Publication of application
Thus, the publication of patent can be made by the Controller himself after the expiry of the said
period or on request of the applicant
Exceptions for publication of Patent
In this case, publication can be made after the expiry of 18 months from the date of filing of
application or after the secrecy direction has ceased to operate (whichever is later)

14. From the date
of publication
To the date of
grant
The applicant shall have privileges and rights
as if a patent for the invention had been
granted on the date of publication of the app.
Date of app. Number of app.
Name and address of the
applicant
Contents of Publication
Privileges & Rights of the Applicant

15. Examination of application

16. • App. for a patent shall be examined on request by applicant or interested person
• If any secrecy direction is issued for the said app., then the applicant can request for
examination after the expiry of the period as specified in the patent rules
• On request, the controller shall refer the documents of app. to the Examiner
• The Examiner shall examine whether it is in accordance with the provisions of the Act and rules,
whether there is any lawful ground of objection to the grant of patent and any other matter as
prescribed
• He shall submit a report based on his examination to the Controller
• If no request is made, the app. shall be deemed to be withdrawn
• The applicant may withdraw the app. at any time before the grant of patent
Examination of application

17. Opposition of patent

18. Opposition of Patent & ground of opposition
Wrongfully obtained
the invention
Priority date is earlier
to the claim of
applicant
Applicant failed to
disclose required
information
CS was known and
used publically
before priority date
of claim
Not an invention
within the meaning
of the Act
CS does not disclose
adequate
information or
wrongly mentions
the source
CS has been
published before
priority date
Does not involve
inventive step
CS is anticipated of
having regard to
knowledge available
in India or elsewhere
Before the grant of
patent by ANY
PERSON
After the grant of
patent but before
the expiry of 1 year
from the date of
grant by
INTERESTED
PERSON

19. Contd.
On receipt of opposition from the
Interested person, the Controller
shall constitute an opposition
board for conducting examination
On receipt of Opposition Board’s
recommendation and after giving
an opportunity for the Patentee
and the Opponent, the Controller
may order to either amend /
maintain / revoke the Patent

20. Grant of Patent

21. If app. is not
found in
contravention of
the provisions of
the Act
And it is not
refused by
Controller
Once granted
Controller shall publish the
fact that patent has been
granted
App., specification and
other documents shall be
open for inspection
Grant of Patent
The Patent shall be granted under the seal of Patent office and the same shall be entered in the register of Patent

22. Case law

23. Dr. Snehalata C. Gupte VS Union of India and Ors
The respondent J. Mitra and co. had filed two patent applications with the Controller of patent
As per the provisions of the Act, pre grant opposition has to be filed within 4 months from the
date of app. and a period of 1 month can be extended for the same
M/s. Span Diagnostics and Mr. Girish Randhani filed a pre grant opposition to the Controller,
but the same were rejected on the grounds that it was a time barred app.
Dr. Snehalata C. Gupte contended that according to the new amendment in section 25, the period of
opposition stood extended till the time, the patent granted is entered in register and sealed
Facts of the case:
Citation code : W.P (C) NO 3516 and 3517 of 2007

24. Issue raised
• What date has to be considered as the date of grant of patent?
Thus, the petitioner challenged such decision of the controller contending that the
opposition was made within the time limit
A Company named M/s. Cipla Limited also filed a pre grant opposition which was rejected
by the Controller
But, later the Controller allowed the pre-grant opposition and refused the grant of patent to
the applicant on the grounds that the patent lacked inventive step
Contd.

25. Judgement
When the patent
shall be considered
to be granted
Timeline within which
pre grant opposition
can be made
It was held that date of grant of patent is the important factor in determining the timeline for allowing
pre grant opposition according to section 25(1) of the act
The patent publication shall be made only after 18 months from the date of app. And no patent shall be
granted before the expiry of 6 months from the date of publication
Thus, the patent cannot be granted before 24 months from the date of application of patent
And thus, the pre grant opposition can be made only within a period of 24 months from the date of
application of patent
Points considered by the Court

26. Hence, patent is considered to be granted on
the date when controller passes an order to
that effect and noted in the file on the date in
which patent was granted
And no pre grant opposition shall be allowed
after the date of grant of patent
Decision as on 20th April, 2012

27. Statistics

28. Source: IP India
Statistics
42,763
46,904
45,444
47,854
50,659
56,284
22,631
16,851
28,967
60,330
85,426
80,088
5,978
6,326
9,847
13,045
15,283
24,936
14,316
21,987
30,271
47,695
50,884
55,945
2014-15 2015-16 2016-17 2017-18 2018-19 2019-20
Patent Statistics
Filed Examined Granted Disposed

29. Thank You!
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