Patent Filing in India – Publication of Patent Application

publication of patentAccording to the Patents Act, 1970, a patent application is not open to the public before the expiry of 18 months from the date of filing and/or date of priority (whichever is earlier) of the application. The Patent Office publishes the patent application in the Official e-Journal ordinarily within one month from the date of expiry of 18 months from the date of filing or priority (whichever is earlier), except under some specific conditions where:

  1. A secrecy direction is in force
  2. Application is abandoned under subsection (1) of section 9 (the complete specification is not filed within twelve months from the date of filing of provisional specification)
  3. Application is withdrawn three months prior to the publication period, (before the end of the 15th month from the date of filing and/or date of priority (whichever is earlier). Similar is the case with National Phase entry of PCT applications as well wherein application has been filed in India before the expiry of 15 months from the date of priority)

The official Patent Office Journal is published every Friday with particulars including Application number, Date of filing, Title of invention, Publication date, International Patent Classification, Name and address of Applicant(s), Name of the Inventor(s), Priority details like priority document number, date, country, etc., Reference to Patent of Addition/Divisional Application along with filing date of the Parent Application, Abstract, No. of claims and Drawings (if any).

On publication of the patent application, the Patent Office makes specification (provisional or complete) along with drawing (if filed) available to the public on the Indian Patent Office website. The biological material disclosed in the specification will be made available to the public by a depository institution on publication of the patent application.

A request for the early publication of a patent application can be made by filing Form-9 with a prescribed fee. The patent application is published within one month from the date of the request if the application does not pertain to a subject matter relevant for defense or atomic energy.

However, the early publication has some pros and cons for the Applicant discussed hereinbelow:

  1. Early patent rights (patent rights start from the publication of patent application)
  2. Financial benefit as in case of an infringement suits damages are claimed from the date of publication of the application
  3. Attract potential investor from the market if Applicant possess a published patent application claiming a product of commercial value
  4. Early publication of the application for a patent provides more time for an opponent to file and strategized a pre-grant opposition
  5. In the early publication of the patent application, the Applicant cannot withdraw (within 15 months from date of filing and/or priority, whichever is earlier) and file a new application, if Applicant believes that the invention is not ready or strategically claimed according to market. In such cases, filing a new application after 12 months for the same can attract the earlier-filed application as prior art.

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