COMPLETE APPLICATION

The complete specification/application is a techno-legal document which fully and particularly

describes the invention and discloses the best method of performing the invention. As the
complete specification is an extremely important document in the patent proceedings it is
advised that it should be drafted with utmost care without any ambiguity.

FORM OF APPLICATION

Section 7 dealing with form of application requires every application for a patent to be made for
one invention only. Where the application is made by virtue of an assignment of the right to
apply for a patent for the invention, there shall be furnished with the application proof of the
right to make the application.

Form shall contain following particulars:

 One invention
 Proof of assignment
 Possession of invention
 Name of the true and first inventor
 Specifications

INFORMATION AND UNDERTAKING REGARDING FOREIGN APPLICATIONS

(SECTION 8)

Section 8 requires the Patentee to file information at the Indian Patent office from time to time
stating whether he has made any application for a patent for the same or substantially same
invention in any foreign country or countries, to furnish particulars of any such applications,
objections raised and the amendments effected to the specifications.
PRIORITY DATE SECTION 11

11.-(1) There shall be a priority date for each claim of a complete specification.

(2) Where a complete specification is filed in pursuance of a single application accompanied by-

(a) a provisional specification; or

(b) a specification which is treated by virtue of a direction under sub-section (3) of section 9 as a
provisional specification,

and the claim is fairly based on the matter disclosed in the specification referred to in
clause (a) or clause (b), the priority date of that claim shall be the date of the filing of the
relevant specification.

(3) Where the complete specification is filed or proceeded with in pursuance of two or more
applications accompanied by such specifications as are mentioned in sub-section (2) and the
claim is fairly based on the matter disclosed-

(a) in one of those specifications, the priority date of that claim shall be the date of the filing of
the application accompanied by that specification;

(b) partly in one and partly in another, the priority date of that claim shall be the date of the filing
of the application accompanied by the specification of the later date.

(4) Where the complete specification has been filed in pursuance of a further application made
by virtue of sub-section (1) of section 16 and the claim is fairly based on the matter disclosed in
any of the earlier specifications, provisional or complete, as the case may be, the priority date of
that claim shall be the date of the filing of that specification in which the matter was first
disclosed.

(5) Where, under the foregoing provisions of this section, any claim of a complete specification
would, but for the provisions of this sub-section, have two or more priority dates, the priority
date of that claim shall be the earlier or earliest of those dates.
(6) In any case to which sub-sections (2), (3), (4) and (5) do not apply, the priority date of a
claim shall, subject to the provisions of section 137, be the date of filing of the complete
specification.

(7) The reference to the date of the filing of the application or of the complete specification in
this section shall, in cases where there has been a post-dating under section 9 or section 17 or, as
the case may be, an ante-dating under section 16, be a reference to the date as so post-dated or
antedated.

(8) A claim in a complete specification of a patent shall not be invalid by reason only of-

(a) the publication or use of the invention so far as claimed in that claim on or after the priority
date of such claim; or

(b) the grant of another patent which claims the invention, so far as claimed in the first
mentioned claim, in a claim of the same or a later priority date.

AMENDMENT OF PATENT APPLICATION SECTION 57-59

The Indian Patents Act, 1970 ("the Act") provides for amendment of an application for a patent
or a complete specification or any related document, at any time either before or after grant of
the patent, if the Controller so thinks fit and subject to certain conditions. In general,
amendments to patents and applications are governed by Sections 57 and 59 of the Act, which
stipulate that such amendments can be made only by way of disclaimer, correction or
explanation without addition of new subject matter. Additionally, Section 78 empowers the
Controller to correct any clerical error, either upon a request made by any person interested or
even without such a request.
REFERENCE FOR EXAMINATION

Once a request for examination is received, and the application is published under Section 11A,
the application is taken up for Examination in the chronological order of filing of request for
examination.

When an application is referred by the Controller, the Examiner makes a report on the
patentabilility as well as other matters ordinarily within one month but not exceeding three
months from the date of such reference. [Section 11A, & 12.Rule 24B (2)(i)]

EXAMINATION OF APPLICATION

Section 12 dealing with examination of application provides that when the request for
examination has been filed in respect of an application for a patent in the prescribed manner
under Section 11B(1) or (3), the application and specification and other documents related
thereto shall be referred at the earliest by the Controller to an examiner for making a report to
him in respect of the following matters, namely:

a) whether the application and the specification and other documents relating thereto are in
accordance with the requirements of the Act and of any rules made thereunder;
b) whether there is any lawful ground of objection to the grant of the patent in pursuance of
the application;
c) the result of investigations made under Section 13, and (d) any other matter which may
be prescribed.

The examiner to whom the application and the specification and other documents relating thereto
are referred shall ordinarily make the report to the Controller within the prescribed period.

SEARCH FOR ANTICIPATION BY PREVIOUS PUBLICATION AND BY PRIOR

CLAIM

Section 13 dealing with search for anticipation by previous publication and by prior claim
provides that the examiner to whom the application for a patent is referred shall make
investigation for the purpose of ascertaining whether the invention so far as claimed in any claim
of the complete specification:
 a) has been anticipated by publication before the date of filing of the applicant’s complete
specification in any specification filed in pursuance of an application for a patent made in
India and dated on or after the 1st day of January, 1912;
b) is claimed in any claim of any other complete specification published on or after the date
of filing of the applicant’s complete specification, being a specification filed in pursuance
of an application for a patent made in India and dated before or claiming the priority date
earlier than that date.

The examiner shall, in addition, make such investigation for the purpose of ascertaining whether
the invention so far as claimed in any claim of the complete specification has been anticipated by
publication in India or elsewhere in any document other than those mentioned in Section 13(1)
before the date of filing of the applicant’s complete specification. In case a complete
specification has been amended before the grant of a patent, the amended specification shall be
examined and investigated in the like manner as the original specification.
CONSIDERATION OF THE REPORT OF EXAMINER BY CONTROLLER

Section 14 provides that in case the report of the examiner is adverse to the applicant or requires
any amendment of the application, specification or other documents, the controller shall, before
proceeding to dispose of the application, communicate the gist of obligations to the applicant as
expeditiously as possible and give him an opportunity of being heard.

POWER OF CONTROLLER TO REFUSE OR REQUIRE AMENDED APPLICATION

IN CERTAIN MATTERS

Section 15 empowers the Controller to refuse the application or direct to amend the application,
specification or other documents, if he is satisfied that the application or any specification or any
other document filed in pursuance thereof does not comply with the provisions of the Act and the
rules made thereunder.

POWER OF CONTROLLER TO MAKE ORDERS RESPECTING DATING OF

APPLICATION AND CASES OF ANTICIPATION

Section 17 provides that at any time after the filing of an application and before the grant of the
patent, the Controller may at the request of the applicant direct that the application shall be post-
dated to such date as may be specified in the request and proceed with the application
accordingly. However, no application shall be post-dated to a date later than six months from the
date on which it was actually made or would be deemed to have been made. This is subject to the
provisions of Section 9 of the Act dealing with provisional and complete specifications.

Where an application or specification (including drawings) or any other document is required to

be amended under Section 15, the application or specification or other document shall, if the
Controller so directs, be deemed to have been made on the date on which the requirement is
complied with or where the application or specification or other document is returned to the
applicant, the date on which it is refiled after complying with the requirement.

Section 18 says that 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 the application unless the
applicant:
 a) 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
b) amends his complete specification to the satisfaction of the Controller.

If it appears to the Controller that the invention is claimed in a claim of any other complete
specification, he may, direct that a reference to that other specification be inserted in the
applicant’s complete specification unless the applicant shows to the satisfaction of the Controller
that the priority date of his claim is not later than the priority date of the claim of the said other
specification; or the complete specification has been amended to his satisfaction.

The above-mentioned provisions also apply in the case where it appears to the Controller that the
invention so far claimed in any claim of the applicant’s complete specification has been claimed
in other complete specification referred to in section 13(1)(a) and that such other complete
specification was published on or before the priority date of the applicant’s claim.

POTENTIAL INFRINGEMENT

Section 19 provides that if in consequence of the investigations it appears to the Controller that
an invention in respect of which an application for a patent has been made cannot be performed
without substantial risk of infringement of a claim of any other patent, he may direct that a
reference to that other patent, be inserted in the applicant’s complete specification by way of
notice to the public within such time as may be prescribed, unless:

a) the applicant shows to the satisfaction of the Controller that there are reasonable grounds
for contesting the validity of the said claim of the other patent; or
b) the complete specification is amended to the satisfaction of the Controller.

Where after a reference to another patent has been inserted in a complete specification in
pursuance of a direction under Section 19(1):

a) that other patent is revoked or otherwise ceases to be in force; or

b) the specification of that other patent is amended by the deletion of the relevant claim; or
c) it is found, in proceedings before the court or the Controller, that the relevant claim of
that other patent is invalid or is not infringed by any working of the applicant’s invention,
 the Controller may, on the application of the applicant delete the reference to that other
patent.

SUBSTITUTION OF APPLICANTS ETC.

Section 20 says that if the Controller is satisfied, on a claim made in prescribed manner at any
time before a patent has been granted that by virtue of any assignment or agreement in writing
made by the applicant or one of the applicants for the patent or by operation of law, the claimant
would, if the patent were then granted, be entitled thereto or to the interest of the applicant
therein, or to an undivided share of the patent or of that interest, the Controller may direct that
the application shall proceed in the name of the claimant or in the names of the claimants and the
applicant or the other joint applicant or applicants, accordingly as the case may be. No such
direction shall however, be given by virtue of any assignment or agreement made by one of the
two or more joint applicants for a patent except with the consent of the other joint applicant or
applicants. Further, no such direction shall be given by virtue of any assignment or agreement for
the assignment of the benefit of an invention unless:

a) the invention is identified therein by reference to the number of the applications

for the patent; or
b) there is produced to the Controller an acknowledgement by the person by whom
the assignment or agreement was made that the assignment or agreement relates
to the invention in respect of which that application is made; or
c) the rights of the claimant in respect of the invention have been finally established
by the decision of court; or
d) the Controller gives directions for enabling the application to proceed or for
regulating the manner in which it should be proceeded with under sub-section (5).

Where one of two or more joint applicants for a patent dies at any time before the patent has
been granted, the Controller may upon a request made by the survivor or survivors and with the
consent of the legal representative of the deceased direct that the application shall proceed in the
name of the survivor or survivors alone.

If any dispute arises between joint applicants for a patent whether or in what manner the
application should be proceeded with, the Controller may upon an application made by any of
the parties, and after giving to all parties concerned an opportunity of being heard, give such
directions as he thinks fit for enabling the application to proceed in the name of one or more of
the parties alone or for regulating the manner in which it should be proceeded with.
TIME FOR PUTTING APPLICATION IN ORDER FOR GRANT

Section 21 of the Act provides that an application for a patent shall be deemed to have been
abandoned unless, the applicant has complied within the prescribed period with all the
requirements imposed on him by or under the Act, whether in connection with the complete
specification or otherwise in relation to the application from the date on which the first statement
of objections to the application or complete specification or other documents related thereto is
forwarded to the applicant by the Controller.

Explanation appended to Section 21(1) clarifies that where the application for a patent or any
specification or, in the case of a convention application or an application filed under the PCT
designating India any document filed as part of the application has been returned to the applicant
by the Controller in the course of the proceedings, the applicant shall not be deemed to have
complied with such requirements unless and until he has re-filed it or the applicant proves to the
satisfaction of the Controller that for the reasons beyond his control such document could not be
re-filed.

Sub-section (2) of Section 21 provides that if at the expiration of the period as prescribed under
sub-section (1) an appeal to the High Court is pending in respect of the application for the patent
for the main invention; or in the case of an application for a patent of addition, an appeal to the
High Court is pending in respect of either that application or the application for the main
invention, the time within which the requirements of the Controller shall be complied with shall,
on an application made by the applicant before the expiration of the period as prescribed under
sub-section (1), be extended until such date as the High Court may determine. In case, the time
within which the appeal mentioned in sub-section (2) may be instituted has not expired, the
Controller may extend the period as prescribed under sub-section (1), to such further period as he
may determine. However, in case of an appeal filed during the said further period, and the High
Court has granted any extension of time for complying with the requirements of the Controller,
then the requirements may be complied with within the time granted by the High Court.
OPPOSITION TO THE PATENT

Section 25 of the Act deals with opposition to grant of patent and provides that where an
application for a patent has been published but a patent has not been granted, any person may, in
writing, represent by way of opposition to the Controller against the grant of patent on the
following grounds and the Controller on request of such person shall hear him and dispose of the
representation in the prescribed manner and specified time.

The grounds of the opposition are:

(a) that the applicant for the patent or the person under or through whom he claims, wrongfully
obtained the invention or any part thereof from him or from a person under or through whom he
claims;

(b) that the invention so far as claimed in any claim of the complete specification has been
published before the priority date of the claim - (i) in any specification filed in pursuance of an
application for a patent made in India on or after the 1st day of January, 1912; or (ii) in India or
elsewhere, in any other document : Provided that the ground specified in sub-clause (ii) shall not
be available where such publication does not constitute an anticipation of the invention by virtue
of sub-section (2) or sub-section (3) of section 29;

(c) that the invention so far as claimed in any claim of the complete specification is claimed in a
claim of a complete specification published on or after the priority date of the applicant’s claim
and filed in pursuance of an application for a patent in India, being a claim of which the priority
date is earlier than that of the applicant’s claim;

(d) that the invention so far as claimed in any claim of the complete specification was publicly
known or publicly used in India before the priority date of that claim.

Explanation — For the purposes of this clause, an invention relating to a process for which a
patent is claimed shall be deemed to have been publicly known or publicly used in India before
the priority date of the claim if a product made by that process had already been imported into
India before that date except where such importation has been for the purpose of reasonable trial
or experiment only
(e) that the invention so far as claimed in any claim of the complete specification is obvious and
clearly does not involve any inventive step, having regard to the matter published as mentioned
in clause (b) or having regard to what was used in India before the priority date of the applicant’s
claim;

(f) that the subject of any claim of the complete specification is not an invention within the
meaning of this Act, or is not patentable under this Act;

(g) that the complete specification does not sufficiently and clearly describe the invention or the
method by which it is to be performed;

(h) that the applicant has failed to disclose to the Controller the information required by section 8
or has furnished the information which in any material particular was false to his knowledge;

(i) that in the case of 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) that the complete specification does not disclose or wrongly mentions the source of
geographical origin of biological material used for the invention;

(k) that the invention so far as claimed in any claim of the complete specification is anticipated
having regard to the knowledge, oral or otherwise, available within any local or indigenous
community in India or elsewhere.

Section 25(2) entitles any interested person to give notice of opposition, to the Controller in the
prescribed manner at any time after the grant of patent but before the expiry of a period of one
year from the date of publication of grant of a patent, on any of the following grounds only :-

(a) that the patentee or the person under or through whom he claims, wrongfully obtained the
invention or any part thereof from him or from a person under or through whom he claims;

(b) that the invention so far as claimed in any claim of the complete specification has been
published before the priority date of the claim in any specification filed in pursuance of an
application for a patent made in India on or after the 1st day of January, 1912; or in India or
elsewhere, in any other document. However, the ground that the invention so far claimed in any
claim of complete specification has been published before the priority date of the claim in India
or elsewhere in any other document shall not be available where such publication does not
constitute an anticipation of the invention by virtue of section 29(2) or (3);

(c) that the invention so far as claimed in any claim of the complete specification is claimed in a
claim of a complete specification published on or after the priority date of the claim of the
patentee and filed in pursuance of an application for a patent in India, being a claim of which the
priority date is earlier than that of the claim of the patentee;

(d) that the invention so far as claimed in any claim of the complete specification was publicly
known or publicly used in India before the priority date of that claim.

Explanation to clause (d) of Section 25(3) clarifies that an invention relating to a process for
which a patent is granted shall be deemed to have been publicly known or publicly used in India
before the priority date of the claim if a product made by that process had already been imported
into India before that date except where such importation has been for the purpose of reasonable
trial or experiment only.

(e) that the invention so far as claimed in any claim of the complete specification is obvious and
clearly does not involve any inventive step, having regard to the matter published as mentioned
in clause (b) or having regard to what was used in India before the priority date of the claim;

(f) that the subject of any claim of the complete specification is not an invention within the
meaning of this Act, or is not patentable under this Act;

(g) that the complete specification does not sufficiently and clearly describe the invention or the
method by which it is to be performed; ]

(h) that the patentee has failed to disclose to the Controller the information required by section 8
or has furnished the information which in any material particular was false to his knowledge;

(i) that in the case of a patent granted on convention application, the application for patent was
not made within twelve months from the date of the first application for protection for the
invention made in a convention country or in India by the patentee or a person from whom he
derives title;
(j) that the complete specification does not disclose or wrongly mentions the source and
geographical origin of biological material used for the invention;

(k) that the invention so far as claimed in any claim of the complete specification was anticipated
having regard to the knowledge, oral or otherwise, available within any local or indigenous
community in India or elsewhere.

OPPOSITION PROCEEDINGS

Rule 55 dealing with opposition by representation against the grant of patent requires the
representation for opposition under section 25(1) to be filed at the appropriate office within a
period not exceeding three months from the date of publication of the application under section
11A of the Act, or before the grant of patent, whichever is later and include a statement and
evidence, if any, in support of the representation and a request for hearing if so desired. The
Controller has been empowered to consider such representation only when a request for
examination of the application has been filed.

On consideration of the representation if the Controller is of the opinion that application for
patent shall be refused or the complete specification requires amendment, he shall give a notice
to the applicant to that effect. On receiving the notice the applicant shall, if he so desires, file his
statement and evidence, if any in support of his application within one month from the date of
the notice.

On consideration of the statement and evidence filed by the applicant, the Controller may either
refuse to grant a patent on the application or require the complete specification to be amended to
his satisfaction before the patent is granted. After considering the representation and submission
made during the hearing if so requested, the Controller shall proceed further simultaneously
either rejecting the representation and granting the patent or accepting the representation and
refusing the grant of patent on that application, ordinarily within one month from the completion
of above proceedings.

Rule 55A dealing with filing of notice of opposition provides that the notice of opposition to be
given under section 25(3) shall be made in Form 7 and sent to the Controller in duplicate at the
appropriate office.
Under Rule 57 the opponent is required to send a written statement in duplicate setting out the
nature of the opponent’s interest, the facts upon which he bases his case and relief which he
seeks and evidence, if any, along with notice of opposition and to deliver to the patentee a copy
of the statement and the evidence, if any.

CONSTITUTION OF OPPOSITION BOARD AND ITS PROCEEDING

Section 25(3) provides that where any such notice of opposition is duly given under sub-section
(2), the Controller shall notify the patentee and constitute a Board by order in writing to be
known as the Opposition Board consisting of such officers as he may determine and refer such
notice of opposition alongwith the documents to that Board for examination and submission of
its recommendation. Every Opposition Board is required to conduct the examination in
accordance with the prescribed procedure. Sub-section (4) provides that the Controller shall, on
receipt of the recommendation of the Opposition Board and after giving the patentee and the
opponent an opportunity of being heard, order either to maintain or amend or revoke the patent.

However, the Controller while passing the order shall not take into account any personal
document or secret trial or secret use in case the opposition is based on the grounds mentioned
under sub-section (2)(d) & (e). In case the Controller issues an order under sub-section (4) that
the patent shall be maintained subject to amendment of the specification or any other document,
the patent shall stand amended accordingly.

On receipt of notice of opposition, the Controller shall, by order, constitute an Opposition Board
under Rule 56 consisting of three members and nominate one of the members as the Chairman of
the Board. An examiner appointed under section 73(2) shall be eligible to be a member of the
Opposition Board. However, the examiner, who has dealt with the application for patent during
the proceeding for grant of patent thereon shall not be eligible as member of Opposition Board
for that application.

The Opposition Board shall conduct the examination of the notice of opposition along with
documents filed under rules 57 to 60 referred to under section 25(4), submit a report with reasons
on each ground taken in the notice of opposition with its joint recommendation within three
months from the date on which the documents were forwarded to them.
CONTROLLER TO TREAT APPLICATION AS APPLICATION OF OPPONENT

Section 26 of the Act provides that where in any opposition proceeding the Controller finds that
the invention, so far as claimed in any claim of the complete specification, was obtained from the
opponent in the manner set out in section 25(2)(a) and revokes the patent on that ground, he may,
on request by such opponent made in the prescribed manner, direct that the patent shall stand
amended in the name of the opponent; or a part of an invention described in the complete
specification was so obtained from the opponent, he may pass an order requiring that the
specification be amended by the exclusion of that part of the invention.
GRANT OF PATENTS

Section 43 dealing with grant of patents provides that where an application for a patent has been
found to be in order for grant of the patent and either the application has not been refused by the
Controller by virtue of any power vested in him by the Act; or the application has not been found
to be in contravention of any of the provisions of the Act, the patent shall be granted as
expeditiously as possible to the applicant or, in the case of a joint application, to the applicants
jointly, with the seal of the patent office and the date on which the patent is granted shall be
entered in the register. The Controller has been put under obligation to publish the fact that the
patent has been granted and thereupon the application, specification and other documents related
thereto shall be open for public inspection.

GRANT OF PATENTS SUBJECT TO CONDITIONS

As per Section 47 the grant of a patent shall be subject to the conditions that:

(1) any machine, apparatus or other article in respect of which the patent is granted or any article
made by using a process in respect of which the patent is granted, may be imported or made by
or on behalf of the Government for the purpose merely of its own use;

(2) any process in respect of which the patent is granted may be used by or on behalf of the
Government for the purpose merely of its own use;

(3) any machine, apparatus or other article in respect of which the patent is granted or any article
made by the use of the process in respect of which the patent is granted, may be made or used,
and any process in respect of which the patent is granted may be used by any person, for the
purpose merely of experiment or research including the imparting of instructions to pupils; and

(4) in the case of a patent in respect of any medicine or drug, the medicine or drug may be
imported by the Government for the purpose merely of its own use or for distribution in any
dispensary, hospital or other medical institution maintained by or on behalf of the government or
any other dispensary, hospital or other medical institution which the Central Government may,
having regard to the public service that such dispensary, hospital or medical institution renders,
specify in this behalf by notification in the official gazette.
DATE OF PATENT

45. Date of patent.—(1) Subject to the other provisions contained in this Act, every patent shall
be dated as of the date on which the application for patent was filed. (2) The date of every patent
shall be entered in the register. (3) Notwithstanding anything contained in this section, no suit or
other proceeding shall be commenced or prosecuted in respect of an infringement committed
before the date of publication of the application.

TERM OF PATENT

Section 53 provides that the term of every patent granted after the commencement of the Patents
(Amendment) Act, 2002 and the term of every patent which has not expired and has not ceased
to have effect, on the date of such commencement, shall be twenty years from the date of filing
of application for the patent. Explanation to Section 53(1) clarifies that the term of patent in case
of international applications filed under the PCT designating India, shall be twenty years from
the international filing date accorded under the Patent Cooperation Treaty. A patent shall cease
to have effect on the expiration of the period prescribed for the payment of any renewal fee, if
that fee is not paid within the prescribed period or within such extended period as may be
prescribed. Further on cessation of the patent right due to non-payment of renewal fee or on
expiry of the term of patent, the subject matter covered by the said patent shall not be entitled to
any protection.

Rule 80 requires that to keep a patent in force, the renewal fees specified in the First Schedule
should be paid at the expiration of the second year from the date of the patent or of any
succeeding year and the same should be remitted to the patent office before the expiration of the
second or the succeeding year. Sub-rule (1A) inserted by Patents (Amendment) Rules, 2005
provides that the period for payment of renewal fees may be extended to such period not being
more than six months if the request for such extension of time is made in Form 4 with the fee
specified in the First Schedule. While paying the renewal fee, the number and date of the patent
concerned and the year in respect of which the fee is paid is required to be quoted. The annual
renewal fees payable in respect of two or more years may be paid in advance.