14 Apr 2020

Early Publication of Patent Applications in India: Provisions, Importance and Current Scenario at Indian Patent Office (IPO)

Publication of Patent Application

Once a patent application gets filed at Indian Patent office (IPO), the patent application is automatically published in the Official Gazette after 18 months of completion from the date of filing or priority date (Section 11A(1), Rule 24). Thereafter, it becomes available for public inspection. The publication is done on every Friday in the Official Gazette.

 “Save as otherwise provided, no application for patent shall ordinarily be open to the public for such period as may be prescribed for such period as may be prescribed”.

The publish patent applications can be accessed from the following link: http://ipindia.nic.in/. This database generated by the Indian Patent Office is having currently all Patent Journals issued from 2005 onwards. Before 2005, the Patent Journals may be accessed from the IPO library physically. Following particulars of a patent application are provided while publication in Official Gazette (Section 11A(5)) :

  • Application number, Applicant Name and Address, Title of the invention, Priority details, Abstract

The date of publication is very important as it provides privileges and patent rights as if the patent has been granted on the date of publication of patent application, however infringement proceedings may be only run in court after date of grant (Section 11A(7))

 “On and from the date of publication of the application for patent and until the date of grant of a patent in respect of such application, the applicant shall have the like privileges and rights as if a patent for the invention had been granted on the date of publication of the application:

Provided that the applicant shall not be entitled to institute any proceedings for infringement until the patent has been granted:

Provided further that the rights of a patentee in respect of applications made under sub-section (2) of section 5 before the 1st day of January, 2005 shall accrue from the date of grant of the patent:

Provided also that after a patent is granted in respect of applications made under sub-section (2) of section 5, the patent-holder shall only be entitled to receive reasonable royalty from such enterprises which have made significant investment and were producing and marketing the concerned product prior to the 1st day of January, 2005 and which continue to manufacture the product covered by the patent on the date of grant of the patent and no infringement proceedings shall be instituted against such enterprises”.

Early Publication of Patent Application

An applicant may file request for early publication using Form 9 and submit it to IPO for publication (Section 11A(2)). Such patent applications would be published within 1 month from the date of making such request for early publication (Rule 24A).

Provisions – How to Apply for Early Publication for Patent Application

Patent applicant is only eligible to make request for early publication of a patent application. One is required to file Form 9 along with requisite fee as prescribed by IPO.

As per Section 11A(3), every patent application would be published excluding only cases where the secrecy directions have been imposed against a patent application (Section 35) or a patent application has been abandoned (Section9(1)) or a patent application has been withdrawn 03 months before the specified period i.e. 18 months.

“Every application for a patent shall, on the expiry of the period specified under subsection (1), be published, except in cases where the application

(a) in which secrecy direction is imposed under section 35; or

(b) has been abandoned under subsection (1) of section 9; or

(c) has been withdrawn three months prior to the period specified under subsection (1)”.

Further, as per Section 11A(4), in case of secrecy directions imposed under Section 35, patent application would only be published once secrecy directions have ceased to operate or if the  period as specified under Section (1) gets expired whichever is later.

“In case a secrecy direction has been given in respect of an application under section 35, then it shall be published after the expiry of the period prescribed under sub-section (1) or when the secrecy direction has ceased to operate, whichever is later”.

Additionally, when a patent application is related to biological inventions, then while publication of such patent application, applicant should reveal the biological material in the specification and depository institution should make such biological material(s) available for public and IPO should make specification and drawings of such patent applications available to general public (Section 11A(6)).

Advantages of Early Publication

  1. Faster Prosecution Time: Patent application gets only examined once request for early publication has been submitted. In matters where the complete application has been filed with Form-9 and Form-18 (Request for Examination) at the time of filing, the IPO publishes the patent application within 1 month and FER (First Examination Report) gets issued faster.
  2. Patentee Rights: A patentee can only file suits or other types of infringement proceedings against the infringing party once the patent gets granted, however, the patentee rights get into action only after the date of publication of a patent application. Therefore, in the first instance of making request of early publication at the time of filing the patent application, the patentee gets “extra” time for claiming damages against potential patent infringers.
  3. Acts as a Prior Art: The patent applicant who is interested in accruing his patent rights at an earliest may take advantage of detracting his competitors by making his invention/application public and ensuring the patent application acts as a prior art reference for other similar inventions.
  4. Discouraging Competitors: The provision of early publication provides access to the invention for public inspection as well as for the potential competitors in a related technology domain. This could detract the competitor(s) from thinking about published patent application with a similar product or process.

Disadvantages of Early Publication

  1. Official Fees: There is additional cost for applying request for making early publication, otherwise it will be automatically published in general cases after 18 months of completion.
  2. Withdrawal of Patent Application: There is a provision in IPO to withdraw a patent application within 15 months of filing the application. This choice is not applicable when it has been already published.
  3. Pre-grant Opposition risk: Any person/applicant may file pre-grant opposition once the patent application gets published till the time patent gets granted if the examination fee has also been paid by the applicant. Therefore, early publication provision gives more chances and more time for the opponents for filing pre-grant opposition.

Conclusion

It should be appreciated that based on Applicant’s interest and actions taken, the early publication provision may be exercised at the discretion of Applicant in order to enrich value of the patent. The patent publication date is important as the applicant’s advantages as well as patent rights start into consideration from the date of patent publication.   It should be also be noticed that the early publication seems to be effective non-expensive method to expedite the prosecution process.

About the Author

Dr. Amit Goel, Director and Jyoti Chauhan, Manager at Effectual Services.

Views expressed in this article are solely of the author and do not reflect the views of either of any of the employees or employers.  For any query related to Early Publication in India, please feel free to contact at : amit.goel@effectualservices.com.

Effectual Services is one of the fastest growing Intellectual Property Management Advisory firms offering IPR services (trademark, copyright, design and patent) and knowledge research services to Fortune 500 companies, law firms, start-ups, research institutes, universities, and venture capital/PE firms.

 

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