PAPER ON

Comparison between India & EU patent grant procedure

SUBMITTED FOR THE PURPOSE OF INTERNAL ASSESSMENT

PATENT LAW-2

FOURTH SEMESTER

LL.B. (HONS.) IN INTELLECTUAL PROPERTY LAW

AT RGSOIPL – IIT KHARAGPUR

SUBMITTED TO: SUBMITTED BY:

Dr. Niharika Sahoo CHINMOY MISHRA – 17IP63011

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Comparison between India & EU patent grant procedure

Comparison between India & EU patent

grant procedure

Parameters INDIA EU
Governing Law Patents Act, 1970; as amended in European Patent Convention (EPC)

2005 -15thedition, 2013

Rules/Regulations Patents Rules, 2003; as amended till Implementing Regulations to the

2017 EPC, 2014

Role of Patent Office An Indian Patent Examiner is In Europe, the EPO has its own

mandated to search for prior art internal appeal system, and

and for objections under any other decisions of the EPO Boards of

ground as provided in the Patent's Appeal cannot be appealed to the

Act, then to report to the national courts

Controller, who has the power to Guidance document; Guidelines

either accept or reject Examiners' for Examination in the European

reports. Patent Office.

Unlike the system at the USPTO

/EPO, Examiners at IPO have only

recommending power and the

controllers are empowered by

statute either to accept or refuse

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Comparison between India & EU patent grant procedure

their recommendations Intellectual

Property Appellate Board is

empowered to receive, hear and

dispose of all appeals from any

order or decision of the Controller

and he jurisdiction to hear patent

infringement cases continues with

the High Court’s

Guidance document; Manual of

Patent Office Practice and

Procedure.

Patentable Subject Matter New product or process involving New Invention, involving an

an inventive step and capable of inventive step, industrial

industrial application application, belonging to any field

of technology

Non-patentable Inventions Section 3 and Section 4 of the Articles 52 (2) and 53 of the EPC

Patents Act, 2005 provides for what is not regarded

as invention and cannot be

patented.

Criteria of Patentability Novelty; Inventive step; Industrial Newness; Inventive step; Industrial

application applicability

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Comparison between India & EU patent grant procedure

Software Patentability India grants patents to software Under EPO a software is granted

however the basis for granting a patent if it is non-obvious to a

patent in India is the technical person skilled in the relevant field

result that the process can obtain. of technology and has a technical

Further, the claims for computer effect.

related inventions in India are EPO on the other hand provides a

categorized under: Method/ negative definition. It provides for

process, Apparatus/ System, a list of inventions which are

Computer readable medium, and not regarded as invention,

Computer program product. namely:- Discoveries, scientific

theories and mathematical

methods, Aesthetic creations,

Schemes, rules and methods for

performing mental acts, playing

games or doing business, and

programs for computers, and

Presentations of information.

Specific restrictions on the Under Section3(d) of the Patents No specific restrictions

patentability of Act, to be patentable a new form of

polymorphs or new forms the known substance must show

in the governing law/rules enhanced efficacy as compared to

the existing substance

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Comparison between India & EU patent grant procedure

Regulations by case laws/ Term “efficacy” in Section3(d) The polymorph shall merely not

patent prosecution/ means “therapeutic efficacy” provide only the “obvious

examination guidelines advantages” of a crystalline

material over the amorphous

form; in the absence of any

“technical prejudice” and

“unexpected property” it cannot be

regarded as inventive

Best mode requirement In India, Section 10 (4)(b) of the In contrast, in EU there is no such

Patents Act, 2005 requires an requirement. At least one way of

applicant to disclose the best practicing the invention must be

method of performing the invention included in the application but

which is known to the applicant and there is nothing that states this

for which he is entitled to claim way must be the best way.

protection. The specification should

disclose the best mode of carrying

out the invention and if there is

more than one best mode of

carrying out the invention, should

describe all of them.

First to File In a first-to-file patent system, if Same

two individuals invent the same

invention, the first to file their

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Comparison between India & EU patent grant procedure

patent application will be entitled

to the patent.

Who can File patent As per Section 6 of the Patent act, Regardless of the nationality and

application any of the following persons can file place of residence/ business, a

a patent application in India either European patent application may

alone or jointly with each other: (a) be filed by any of the following: (a)

a person who claims himself the any natural person, (b) any legal

true and first investor of the person, (c) a body equivalent to a

invention, (b) an assignee of the legal person. A European patent

person who is claiming himself the application may also be filed by

true and first investor of the two or more than two applicants

invention, (c) the legal jointly or by the applicants

representative of a deceased designating different contracting

person who was entitled to make states.

such an application before his/ her

death.

Where/ how to file the At patent offices in Kolkata, Delhi, At EPO in Munich/ Hague/ Berlin;

patent application Chennai or Mumbai; or through e- or through e-filing

filing

Contents of the Patent A patent application in India should The European application patent

Application ideally contain: (i) Application for form is the EPO Form 1001. This

grant of patent in Form-1; (ii) should be accompanied (where

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Comparison between India & EU patent grant procedure

Applicant has to obtain a proof of applicable i.e. where the applicant

right to file the application from the is not the inventor or is not the

inventor which could be either an sole inventor) by a "Designation

endorsement at the end of the of the inventor" form (EPO Form

Application Form-1 or a separate 1002). An "Authorization" (EPO

assignment (iii) Provisional or Form 1003) is required if the

complete specification in Form-2; applicant does not have a

(iv) Statement and undertaking residence or a place of business

under Section 8 in Form-3, if within the territory of an EPC

applicable; (v) Power of authority in contracting state (non-resident

Form-26, if filed through an Agent applicants). In this case a

and (vi) Priority documents which professional representative is

are required in cases of a needed to represent the applicant

Convention Application (under Paris in all proceedings. In general, the

Convention) or PCT National Phase European patent applications must

Application wherein requirements contain: (1) A request for the grant

of Rule 17.1(a or b) of regulations of a European patent (EPO Form

made under PCT have not been 1001); (2) A description of the

fulfilled. In case, the Applicant is not invention; (3) One or more claims;

the Inventor, he also has to obtain a (4) Any drawings referred to in the

proof of right to apply by way of an description or the claim; (5) An

endorsement in Form-1. abstract.

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Comparison between India & EU patent grant procedure

Language The Indian Patent Office deals only The official languages of European

with the English language. Patent Office are English, French

and German. Patent applications

may be filed in any language

provided that a translation into

one of the official language is

submitted within two months.

Provisional specification Allowed Not allowed

filing

Publication of Patent India (Section 11, rule 24), where all EU (Article 93) where all patent

Application patent applications are published applications are published 18

18 months after their filing date, months after their filing date,

unless they have been withdrawn. unless they have been withdrawn.

Non-Publication request cannot be Non-Publication request cannot be

made. made.

Grace Period India has 12 month grace period for There is no general grace period

filling patent application after public for disclosures by the inventor, and

display at an exhibition which is a non- confidential disclosure

specially approved by the normally raises an immediate and

government. automatic bar to patentability.

There are some very limited grace

periods provided, for example,

where there is a breach of

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Comparison between India & EU patent grant procedure

confidentiality, but these will be

relevant only in unusual

circumstances.

Patent Term (Extension of The patent term in India is twenty The patent term in EU is twenty

Term) years from the date of filing the years from the date of filing the

application (Section 53(2) of the application (Article 63 of the EPC)

Patent Act) No term extension allowed.

No term extension allowed.

Request for early Possible Possible

publication

Stages in patent One stage Two stages viz. Formalities

examination examination and Substantive

examination

No. of Examiners In India, per Section 12 of the Under EPO, a patent is examined

Patents Act, when an application for by an Examining Division which

patent is filed, it is referred by the consists of three technically

Controller to a single Examiner who qualified examiners. Any oral

makes a report to the Controller proceedings are conducted before

concerning whether the application the Examining Division itself.

and the specification are in However, before a decision is

accordance with the requirements taken on a European Patent

of the Patents Act and whether Application, its examination is

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Comparison between India & EU patent grant procedure

there is any lawful ground of entrusted to one member of the

objection to the grant of the patent. Examining Division. In certain

exceptional cases, if the Examining

Division is of the view that the

nature of the case so requires, an

additional legally qualified

examiner may also be appointed.

In case of a deadlock, the vote of

the Chairman of the Examining

Division is considered decisive.

Option to opt-out of the Not available Not available

publication

Issue of search report & No Yes

opinion on patentability

Expedited patent Currently not available; proposed in Available

examination the new draft rules

Member of PPHprogram No Yes

Provision regarding duty Detailed particulars of the Copy of the results of prior art

to disclose information corresponding foreign patent search/patent examinations

regarding foreign application(s) must be submitted to (priority search reports) shall be

applications the Indian Patent office from time provided to EPO

to time

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Comparison between India & EU patent grant procedure

Consequence/ penalty on Ground of patent opposition u/s Application deems to be

failure to comply 25(1) and 25(2); Patent can be withdrawn if priority search

revoked after the grant u/s 64(1)(m) reports are not provided by the

applicant to EPO upon request by

the office; not a ground of patent

revocation after patent grant

Pre-grant opposition Inter-parte pre-grant opposition Ex-parte observations by third

parties

Two part Claim Indian Patent applications almost Contains two-part claims. The first

always have one part claims. part of claims is the former

features that are found in the prior

art. And the second part of claims

is what constitutes the invention,

often called the characterizing

features.

Challenging Patent Challenging patent applicability Within 9 months after the grant of

applicability Within 1 year after the grant of a a patent in EU.

patent in India.

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Comparison between India & EU patent grant procedure

Patent Grant Procedure in India:

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Comparison between India & EU patent grant procedure

Patent Grant Procedure in Europe:

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