This article has been written by Saksham Sharma, a B.A. L.L.B. V sem student of S.S. Jain Subodh Law College, Jaipur.

Abstract

 

The patent application process is hard for inventors and innovators seeking protection for their creations. However, it is often fraught with challenges that can hinder the timely and effective grants of patents. This document explores the common challenges encountered during the patent application process and presents practical solutions to address them. challenges covered include eligibility and novelty, technical and legal knowledge, documentation and formalities, patent office delays, foreign filing complexities, examination and rejections, competitor challenges, maintenance fees, enforcement, and financial costs. By adopting these solutions, applicants, patent office and stakeholders can navigate the patent process more efficiently and secure stronger patent protection for their innovations.

Introduction

Intellectual Property Rights are a set of legal rights that protect creations of the mind such as inventions, artistic works and symbols, names and images used in business purposes. These rights are essential for protecting and providing motivation for individuals and organizations to innovate and shape their creativity. Intellectual Property Rights, also known as IPRs, include patents, copyrights, industrial design rights, trademarks, plant variety rights, trade dress and geographical indications. 

Patents are a form of intellectual property protection that allows inventors to prevent others from making, using, selling or importing their inventions without their permission. In exchange for this exclusive right, inventors are required to publically disclose the details of their inventions in the patent application, which can help advance technology and knowledge in the respective field.

Hence, from this we can infer that a Patent is a legal document granted by the government to an inventor or assign that gives that exclusive rights to their inventions for a certain period of time.

What is Patent?

• It is a Statutory right to the applicant by the government for his cration which is either a new process or product.
• It is for the limited period of time   for example in india the patent is limited for a period of 20 years.
• It is granted in the place of sufficient disclosure to the patent offices
• It is only territorial right for example patent is applicable in the region or country only in which it is filed.
• It is a negative right

However, patent is not an absolute right

This is subject to certain conditions like-

• Government use
• Important or manufacturing by or on behalf of the government 
• Experimental purpose
• Research purpose
• Teaching purpose

Distribution of drug or medicine by government in dispensary, hospital or other medical institutions rendering public service or on behalf of the government 

Importance of patent

Important source of scientific and technical literature

• A treasure-house of scientific inventions
• Avoids duplication
• Paves way for further discoveries 
• Stop re-inventing the wheel 
• Identifies emerging technologies, emerging areas

What are patent rights

Patent rights are a set of exclusive legal rights granted by a government to an inventor or the owner of an invention. These rights are provided in exchange for disclosing the details of the invention to the public.

Patent rights typically cover new and useful inventions or discoveries. Patent rights generally cover the following procedures related to an invention:

• Making or manufacturing
• Using,
• Offering for sale
• Selling,
• Importing 
• Distributing 
• Licensing

Patent application process

Patent provide Intellectual Property rights protection to newly invented products, services and processes. To enforce this rights, patents must be registered under the Indian patent act of 1970. After ensuring that the invention is truly original, a patent application can be filed to the Indian patent office.

Stepwise procedure for patent registration in india 

Patent Registration process can be completed in various stages, starting from patent search to the issuance of patent registration certificate. these stages involve legal difficulty which can be better handled by an experienced IPR professional.

Step 1: Patent search

Patent search is the first step of patent filing procedure in india and is conducted worldwide to determine the originality of an invention.

Step 2: Drafting patent specification

After conducting thorough searches worldwide, the specification of the invention is written in a techno legal language with or without the inventors claims. without claims is the provisional specification and with claims is the complete specification.

Step 3: Patent application filing

After drafting the patent specification, you can start the procedure for filing the patent application in India. The drafted provisional or complete specification is filed in form-2 while patent application form is filed in form1 as prescribed by the Indian patent act. If a provisional patent specification is filed then within 12 months of its filing, a complete specification has to be filed with the inventors claims.

There are various types of patent application forms which can be filed on the basis of their purpose.

1. Ordinary patent application: used to file a patent application directly in India, seeking protection only within the territory of india
2. PCT National patent application: used to enter the national phase of PCT or patent cooperation treaty in india after which the applicant will be allowed to seek patent protection in multiple countries.
3. PCT International patent application: used to file a single patent application for patent registration in multiple countries which are the members of the PCT providing a centralized process for seeking patent protection internationally
4. Convention patent application: used to claim priority based on an earlier application filed in a convention country allowing applicants to secure the priority date for their invention.
5. Divisional patent application: used to divide an existing patent application into multiple separate applications typically when the existing application contains multiple inventions.
6. Patent of addition application: used to file an application for an improvement or alteration of an already existing invention for which a patent has already been granted.

 

Step 4: Patent publication for public opposition 

Once the patent application process is complete, then after the expiry of 18 months form the date of patent filing or date priority whichever is earlier the patent is published.

Step 5 : Requesting patent examination 

The request for examination has to be filed within 48 months of the patent filing date or date of the priority. the patent examiner examines a patent application and presents an examination report. the examination report consists of  a series of objections raised by an examiner. the response to an examination report has to be filed within 12 months of the presentation of the examination report.

 

Step 6: Grant of patent

After all complaints to the examination report have been replied to and the examiner is happy with the reply of the applicant, the application is put in order for grant of patent registration. this marks the end of the procedure for registration of patent. on the other hand if the examiner is not satisfied with the reply and arguments of the applicant then he or she can reject the patent application. in this case the applicant will again have to repeat the complete patent process in India again to get patent protection.

 

Challenges to the patent application process in india

The patent application process is a detailed and elaborate procedure in India. But still it faces some challenges due to various reasons. Some of the main challenges are discussed below:

1. Backlog of applications: The Indian patent office has experienced a significant backlog of patent applications which can results in delays in the examination and grant of patents. this backlog can be a important challenge for applicants, as they may have to wait many years for their patent to be granted.
2. Patent examination quality: The quality of patent examination and the understanding of patent examiners regarding many technical domains can sometimes be inconsistent. this can result in difficulties for applicants in convincing examiners of the patentability of their inventions.
3. Formal Requirements: Indian patent law has specific formal requirements for patent applications, including the preparation of specifications claims and drawings. failure to meet these requirements can results in objections and delays in the applications process.
4. Examination and Opposition: During the examination process , patent application may face objections and opposition from third parties which can further delay the grant of patents. this can be especially challenging when third parties raise valid concerns about the patentability of the inventions.
5. Administrative and procedural hurdles: The administrative and procedural aspects of the patent application process can present challenges to applicants. theses include dealing with communication with the patent office, responding to examination reports and complying with procedural requirements.
6. Subject matter expertise: In some cases, finding subject matter experts who can assist with the drafting and prosecution of patent applications can be challenging particularly for inventions in highly specialized or emerging fields.
7. Subject matter eligibility: Determining whether an invention is eligible for patent protection can be challenging. Indian patent law excludes certain subject matter from patentability such as inventions that are contrary to public order or morality, discoveries of nature and mere schemes or rules. applicants may face difficulties in establishing the patentability of their inventions.
8. Prior art searches: Conducting comprehensive prior art searches and preparing patent applications that meet the requirements of Indian patent law can be challenging. Ensuring that the invention is novel and not easily discovered in the context of existing prior art is essential for a successful patent application.

Solutions of common challenges:

1. There are some solutions that can be implemented to help in reduce the backlog of patent applications 

• increasing the number of patent examiners can help process applications more quickly. training programs can ensure that new examiners are proficient in patent examination.
• Modernizing and digitizing the patent examination process can improve efficiency. this includes using automated search tools and workflow management systems.
• Simplifying administrative and procedural aspects of the patent application process can reduce delays. This includes making it easier for applicants to submit necessary documentation.

1. There are some solutions that can be improving the quality of patent examination.

• Provide comprehensive and ongoing training to patent examiners to ensure that they have the necessary technical and legal expertise.
• keep examiners updated on changes in technology and patent law.

1. Formal requirements in the patent application process involve meeting specific administrative and procedural criteria.

• Start the patent application process by thoroughly reviewing the application guidelines and requirements provided by the patent office. pay more attention to required forms, formatting, and document submission instructions.
• Create checklists and templates for patent application preparation. these tools can help ensure that all necessary elements and documents are included.
• Establish an internal quality control process to review and verify that applications meet formal requirements before submission.

1. There are some solutions of both examination and opposition challenges in patent application process.

• In examination there is invest in continuous and specialized training for patent examiners to improve their understanding to evolving technology and patent law.

• Establish mechanisms for applicants to provide feedback on the examination process, allowing continuous improvement.
• here some solution of opposition:
• Develop and provide clear guidelines for opposition proceedings, including timelines and procedures, to ensure smooth and predictable process.
• Encourage the use of alternative dispute resolution methods, such as mediation or negotiation, to resolve opposition issues efficiently.

1. Addressing administrative and procedural hurdles in the patent process is essential to ensure that inventors and businesses can navigate the system efficiently. In administrative hurdles and procedural hurdles here are some solution

• Smooth administrative procedures by simplifying forms and documentation required for patent applications. clear and concise forms can reduce errors and save time.
• Promote online patent application submission and communication with patent offices to reduce paperwork and administrative burdens. 
• provide clear and up-to-date procedural guidelines for patent applications, oppositions and other patent-related processes.
• Offer alternative dispute resolution mechanisms to resolve procedural disputes efficiently without resorting to costly litigation.

1. Here are some solutions of Subject matter expertise:

• To solve subject matter expertise provide ongoing education and training programs to patent examiners to keep them updated on advancement in their respective fields.
• Encourage cross- training of examiners in different technical areas, allowing them to gain a broader understanding of various technologies.
• Provide examiners with clear guidelines and access to complete resources including databases and technical literature, to help in their examinations.

1. Here are some solutions to address subject matter eligibility challenges in patents.

• Patent office should provide clearer and more specific guidelines on subject matter eligibility, offering examples and case studies to assists applicants and examiners.
• Legislation could be passed or updated to provide clear criteria for subject matter eligibility, especially in areas where there is legal uncertainty.
• Encourage a case-by-case analysis, especially in emerging fields, to determine whether the invention meets the eligibility criteria.

1. Conducting thorough prior art searches is a crucial step in the patent application process to determine the novelty and non- obviousness of an invention. here are some solutions to improve prior art searches in patent applications.

• Develop a well-defined searches strategy that includes specific keywords, classification codes, and other search parameters made to measure the technical field of the invention.
• Maintain transparency in the search process and document the search methodology and results to ensure that they can be reviewed and assessed.
• Establish feedback mechanisms to allow applicants to provide input on the quality and thoroughness of prior art searches.

References

• https://yourpatentteam.com/top-challenges-issues-intellectual-property-rights-india/
• https://www.setindiabiz.com/learning/step-by-step-procedure-for-patent-registration-in-india
• https://forumias.com/blog/patent-regime-in-india-provisions-challenges-and-solutions/
• https://www.managingip.com/article/2a5bsc7vmakvohn4kh3i8/india-challenges-faced-in-the-protection-and-enforcement-of-patent-rights