The PCT application in India plays an important function in the acquisition of patent protection for microbiology technology inventions across the world. It also allows the inventor to make a single international application and proceed with the national phase in the various countries of his/her choice, like India. Microbiology technology comprises a vast spectrum of technology ranging from medical diagnostic and environmental technology and contributes significantly to the growth of knowledge in the scientific fraternity as well as addressing global issues including diseases and the environment.
Who Can Apply for a Patent in India?
An application for a patent can be made by the true and first inventor or the Assignee, whether an individual or a company legal entity in India. Joint applications are also allowed if the applicant has made the invention in common and one or more other persons. Foreign nationals and companies may also obtain patents in India, however, only if they qualify according to the provisions of the Patents Act of 1970 and the accompanying procedure is followed.
How Long is a Patent Valid in India?
India patent protection lasts for a period of twenty years starting from the date when the application was filed. Concerning PCT application in India, the 20-year term is reckoned from the international filing date. The key point is that the patent must be renewed every year with the payment of the fees. If these fees are not paid then this usually leads to the expiration of the patent.
When Does the Patent Validation Time Start?
The period in India for validation of the particular patent takes its beginning point from the very date of filing of the application for the very patent itself. The validation time begins from the international filing date if the patents have been filed through the PCT route. This is important as it defines the first intervening date in the 20-year lifespan of the patent and is used to asses the patent’s priority.
What Can Be Patented in India?
In India, an invention must meet patentable criteria: innovativeness, inventiveness, and utility. It cannot be regarded within the listed non-allowable categories contained in the Patents Act including, arithmetic methods, scientific theories, or natural phenomena. Some of the inventions that may be patented are processes, machinery, manufactured items, and chemicals.
PCT Application in India
The Patent Cooperation Treaty (PCT) enables inventors to seek patent protection in multiple countries through a single international application. A PCT Application in India must be filed within 31 months from the priority date. This application is then examined under Indian patent law, and if granted, the patent enjoys the same protection as one filed directly in India.
Eligibility and Requirements
Criteria for Filing PCT Application in India
The claims entry into the national phase in India is usually time-sensitive, and it has to be done within 31 months from the filing date of the PCT Application in India. If this timing is not observed, then one misses the window of filing for patent protection in India. However, the application should also be accompanied by all the supporting documents together with the full IPE, claims, abstract, and other forms, a sweepstake letter, and a marketing authorization application within the same deadline.
Timelines and Deadlines for Entering National Phase
The strict 31-month deadline for entering the national phase in India is pivotal for applicants. Failure to meet this deadline results in the loss of the opportunity to pursue patent protection in India. Alongside the entry, applicants must ensure the submission of complete documentation, including the full specification, claims, abstract, and necessary forms within this period.
Applicant Categories and Corresponding Fees in India
As earlier established, the Indian Patent Office subdivides applicants into natural persons, applicants for small entities, and large entities with each of them having different fee scales. Individuals and SMEs also get lower tariffs as opposed to the large players in the field who are charged higher tariffs. The fee arrangements are very clear and are described in the fees tariff which have been prepared by the IPO.
Filing Procedure for PCT Application in India
Preparing the Patent Specification for the National Phase
Formation of the patent specification is an important process within the procedure of the National phase application. This document should contain one subtitle that explains various embodiments of the invention and how the invention solves a specific problem. The claims should be concise and clear because they are responsible for laying down the bounds of the invention.
Handling Article 19 and 34 Amendments from the PCT Stage
During the international phase, applicants can make amendments under Articles 19 and 34 to address issues raised during the international search and preliminary examination. These amendments must be integrated into the national phase application to ensure the application is aligned with the improvements and corrections made during the international phase.
Filing the National Phase Application with the Indian Patent Office
The prescribed form along with the national phase application must be submitted to the Indian Patent Office (IPO) either through computer medium or in writing. This application must be accompanied by full specification claims together with the abstract, drawings, and prescribed forms together with the requisite fees. Originally, the IPO operated an electronic filing system that allowed for ease of processing the applications.
Submitting Required Documents and Fees
In addition to the patent specification, applicants need to submit a power of attorney, if applicable, and the national phase entry form. The required fees, determined by the applicant category, must be paid promptly to ensure the processing of the application without delays.
Technical Considerations for Microbiology Patents
Patentable Subject Matter for Microbiology Technology in India
Under the Indian patent act, usable concepts in patent laws for microbiology technology regard to results of microbiology as the following: new microbes, genetic modifications, microbial techniques, and application techniques. An invention must be novel, meaning it cannot be found in any part of the world; it cannot be obvious to a person with knowledge in that specific field; and it needs to be of commercial utility or applicable in any trade. Following this it has been ascertained that products of nature alongside any biological material that is in its natural, unaltered form cannot be patented.
Drafting Claims to Overcome Indian Patent Law Requirements
The requirements of defining the nature and field of invention to claim it were met for microbiology inventions through the provision of specific and clear information. It should not use words or phrases that are ambiguous, rather these words should be backed up by the description. Additional measures, which entail strict observance of the Indian Patent Act standards, including among others the exclusion of theories and discoveries, would be required.
Importance of Prior Art Search and Freedom-to-Operate Analysis
A final novelty and non-obviousness search is essential to establish the state of the art of the invention to determine the prior patents and publications that may impact the novelty and the inventive step of the invention. A freedom-to-operate (FTO) analysis is also carried out to understand the possibility of legal battles when commercializing the invention since patents of the third party have to be avoided.
Strategies for Accelerated Examination and Early Grant
Applicants can utilize mechanisms such as expedited examination under the Startup India initiative or the Patent Prosecution Highway (PPH) to accelerate the examination process. These strategies can significantly reduce the time to grant, providing an advantage in bringing innovations to market swiftly.
Specific Requirements for Microbiology Inventions
Microbiology patents often require detailed disclosure of experimental methods and results to demonstrate reproducibility. Biological sequences, if involved, must be accurately represented and may need to be submitted in specific formats. The utility of the invention must be clearly demonstrated, showing practical applicability in industrial or commercial settings.
Case Studies and Examples
Successful PCT National Phase Applications in the Microbiology Field
A recent instance is of a multinational pharmaceutical firm that was able to file a PCT national phase application in India for a new generation antibiotic prepared from a rare microbial culture. The multinational pharmaceutical firm filed a PCT national phase application in India for a new generation antibiotic prepared from a rare microbial culture. They did this to demonstrate its effectiveness against resistant bacterial strains, which will explain the effects on public health and antimicrobial resistance.
Challenges Faced and How They Were Overcome
Challenges such as objections related to inventive steps or clarity in claims are common. In one case, an applicant overcame an inventive step objection by providing additional experimental data and expert opinions demonstrating the superiority of their invention over existing solutions.
Data on Grant Rates and Prosecution Timelines
Data from the IPO indicates a reasonable grant rate for microbiology patents, with an average prosecution timeline of approximately 3-4 years. Proactive engagement with the IPO and timely responses to examination reports can positively impact these metrics.
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Advocate Rahul Dev is a Patent Attorney & International Business Lawyer practicing Technology, Intellectual Property & Corporate Laws. He is reachable at rd (at) patentbusinesslawyer (dot) com & @rdpatentlawyer on Twitter.
Quoted in and contributed to 50+ national & international publications (Bloomberg, FirstPost, SwissInfo, Outlook Money, Yahoo News, Times of India, Economic Times, Business Standard, Quartz, Global Legal Post, International Bar Association, LawAsia, BioSpectrum Asia, Digital News Asia, e27, Leaders Speak, Entrepreneur India, VCCircle, AutoTech).
Regularly invited to speak at international & national platforms (conferences, TV channels, seminars, corporate trainings, government workshops) on technology, patents, business strategy, legal developments, leadership & management.
Working closely with patent attorneys along with international law firms with significant experience with lawyers in Asia Pacific providing services to clients in US and Europe. Flagship services include international patent and trademark filings, patent services in India and global patent consulting services.
