From specification to grant under the Patents Act, 1970

Section 2(1)(j) defines an invention as a new product or process involving an inventive step and capable of industrial application. The last phrase is defined in section 2(1)(ac): the invention must be capable of being made or used in an industry. Inventive step in section 2(1)(ja) means a feature that involves technical advance as compared to existing knowledge, or has economic significance, or both, and that makes the invention not obvious to a person skilled in the art.

Novelty is defined by what has already been disclosed. Section 2(1)(l) describes a new invention as one not anticipated by publication in any document, or used in the country or elsewhere in the world, before the date of filing of the application with complete specification, that is, the subject matter has not fallen in the public domain or does not form part of the state of the art. Because section 11(1) gives every claim of a complete specification its own priority date, one specification can hold claims that are new and claims that are anticipated.

The person skilled in the art is the yardstick for obviousness. The Act does not describe that person in section 2(1)(ja), but section 64(1)(h) measures the sufficiency of a description against a person in India possessing average skill in, and average knowledge of, the art to which the invention relates. Under section 10(4) the complete specification must describe the invention and its operation fully and particularly, disclose the best method known to the applicant, and end with claims defining the scope of protection.

Section 3 lists what are not inventions within the meaning of the Act. A claim to any of them is open to objection at examination, to opposition under section 25(1)(f) and to revocation under section 64(1)(d). The list covers an invention that is frivolous or obviously contrary to well established natural laws, and one whose primary or intended use would be contrary to public order or morality or would cause serious prejudice to life, health or the environment. It also covers the mere discovery of a scientific principle or of a living or non-living substance occurring in nature, a method of agriculture or horticulture, any process for the medicinal, surgical, curative, prophylactic, diagnostic, therapeutic or other treatment of human beings, or a similar process for animals to render them free of disease or to increase their economic value or that of their products, plants and animals in whole or any part other than micro-organisms, including seeds, varieties and species and essentially biological processes for their production or propagation, a presentation of information, the topography of integrated circuits, and an invention which in effect is traditional knowledge.

Section 3(d) applies to a claim for a new form of a known substance, a new property or use of one, or the mere use of a known process, machine or apparatus. It excludes the mere discovery of a new form of a known substance which does not result in the enhancement of the known efficacy of that substance, the mere discovery of a new property or new use for a known substance, and the mere use of a known process, machine or apparatus unless the process results in a new product or employs at least one new reactant. The Explanation treats salts, esters, ethers, polymorphs, metabolites, pure form, particle size, isomers, mixtures of isomers, complexes, combinations and other derivatives of a known substance as the same substance, unless they differ significantly in properties with regard to efficacy. The clause does not define efficacy or say how it is measured, so its content comes from decided cases. Novartis AG v. Union of India, set out below, is the Supreme Court's reading of section 3(d) together with section 2(1)(j) and (ja). The High Court has applied the third limb since appeals moved to it in 2021.

In Indian Institute of Technology (IIT Madras) v. The Controller of Patents and Designs, (T) CMA (PT) No. 52 of 2023, decided on 11 June 2024, the Madras High Court held that a sieve or filter paper used to filter an ammonium perchlorate solution is a medium and not a reactant, because nothing in the specification showed that it caused a chemical reaction. It sustained the refusal under section 3(d). In Tapas Chatterjee v. Assistant Controller of Patents and Designs, LPA 836 of 2023, decided on 6 October 2025, a Division Bench of the Delhi High Court set aside a refusal under the same limb. It held that the person skilled in the art has no role in section 3(d), that the later process must be shown positively to be a mere use of the earlier one, and that a new product or one new reactant is enough to take it outside the clause, since the sub-clause joins the two with or. It rejected the section 3(d) objection and remanded only the section 25(1)(e) obviousness objection.

Clause (k) excludes a mathematical or business method or a computer programme per se or algorithms. The words per se are part of the text, so an objection under this clause is argued against the claim as drafted, and it reaches the applicant as a lawful ground of objection under section 12(1)(b). Section 4 separately bars a patent for an invention relating to atomic energy falling within section 20(1) of the Atomic Energy Act, 1962. The Delhi High Court held in BlackBerry Limited v. Assistant Controller of Patents and Designs, C.A. (COMM.IPD-PAT) 229/2022, decided on 30 August 2024, that per se qualifies computer programmes and does not qualify algorithms. It dismissed the appeal against a claim whose core was logic for resolving conflicts between configuration policies, although it also said that requiring inventive hardware features was not in accordance with law. It added that where algorithmic instructions are implemented through software and produce a technical effect or technical contribution, the test for computer software applies and the inventive feature must be the implementation. In Microsoft Technology Licensing, LLC v. The Assistant Controller of Patents and Designs, (T) CMA (PT) No. 49 of 2023, decided on 3 July 2024, the Madras High Court allowed an appeal against a section 3(k) objection. It found a technical effect on the working of the system that did not depend on any one application or data set, and held that enablement is not a consideration under section 3(k).

Section 6(1) allows an application by the person claiming to be the true and first inventor, by that person's assignee in respect of the right to apply, or by the legal representative of a deceased person who was entitled to apply, alone or jointly with any other person. Under section 7 the application is for one invention only, in the prescribed form, filed in the patent office. It states that the applicant is in possession of the invention and names the person claiming to be the true and first inventor. Where the applicant claims by assignment, proof of the right to apply is furnished with the application or within the prescribed period.

Section 9 governs the first choice. An application accompanied by a provisional specification needs a complete specification within twelve months of filing, or it is deemed abandoned. The applicant may ask, within the same twelve months, that a purported complete specification be treated as provisional (section 9(3)), and may ask before grant that the application be post-dated to the filing of the complete specification (section 9(4)). Section 17 also lets the Controller post-date an application on the applicant's request at any time before grant, to a date no later than six months from the date on which it was made. Where applications in the same name with provisional specifications cover cognate inventions, or one modifies another, and the Controller thinks they make a single invention, he may allow one complete specification for all of them, and the twelve months run from the earliest provisional (section 9(2)). An international application under the Patent Cooperation Treaty designating India is deemed an application under the Act if a corresponding application is filed before the Controller, and its filing date is the international filing date (section 7(1A) and (1B)).

Section 8 requires disclosure of foreign filings. If the applicant is prosecuting, or knows that a person through whom he claims is prosecuting, an application abroad for the same or substantially the same invention, he files a statement of detailed particulars with the application, or within the prescribed period the Controller allows. He also gives an undertaking to keep the Controller informed in writing up to the date of grant. The Controller may further require details of how the application was processed abroad. A failure, or a statement that is false in a material particular, is a ground of opposition under section 25(1)(h) and 25(2)(h) and of revocation under section 64(1)(m).

A person resident in India may not apply for a patent abroad without a written permit from the Controller, unless an application for the same invention was made in India not less than six weeks earlier and no secrecy direction under section 35 is in force or every such direction has been revoked (section 39(1)). Where the invention is relevant for defence or atomic energy the Controller cannot grant a permit without the prior consent of the Central Government. Section 39 does not apply where the first filing was abroad by a person resident outside India (section 39(3)). Making an application outside India in contravention of section 39 is a ground of revocation under section 64(1)(n).

Section 11(1) gives each claim of a complete specification its own priority date. Where the complete specification follows a provisional specification and the claim is fairly based on the matter disclosed in it, the priority date is the date of filing of the provisional (section 11(2)). Where the complete specification is based on a previously filed Indian application and is filed within twelve months of it, a claim fairly based on that application takes its date (section 11(3A)). A claim that would have two or more priority dates takes the earliest (section 11(5)), and in any other case the priority date is the date of filing of the complete specification (section 11(6)).

A claim that goes beyond the provisional is not fairly based on it. If it is not fairly based on the matter disclosed there, it falls to section 11(6) and takes the later date, so whatever was published in between counts against it. A convention application has its own clock: section 25(1)(i) makes it a ground of opposition that the application was not made within twelve months from the first application for protection in a convention country. Where an application has been post-dated, the dates in section 11 are read as the post-dated date (section 11(7)). A claim is not invalid only because the invention as claimed was published or used on or after its priority date, or because another patent claims it with the same or a later priority date (section 11(8)).

Section 11A keeps a pending application closed to the public for a prescribed period, and the Act leaves that period to the rules. The applicant may ask the Controller in the prescribed manner to publish earlier. Every application is published when the period ends, except one under a secrecy direction under section 35, one abandoned under section 9(1), and one withdrawn three months before the period ends. The publication carries the date and number of the application, the name and address of the applicant and an abstract (section 11A(5)).

From publication until grant the applicant has the same privileges and rights as if the patent had been granted on the date of publication, but cannot institute infringement proceedings until the patent is granted (section 11A(7)). Publication also opens the pre-grant opposition window described below.

No application is examined unless the applicant or any other interested person makes a request in the prescribed manner within the prescribed period (section 11B(1)). If no request is made in time, the application is treated as withdrawn (section 11B(4)). On a request, the application goes to an examiner under section 12, who reports within the prescribed period on compliance with the Act and the rules, on any lawful ground of objection, and on the result of the investigation under section 13.

The section 13 investigation looks for anticipation in Indian specifications dated on or after the first day of January, 1912, in claims of other specifications published later but with an earlier priority date, and in any other document published in India or elsewhere. Section 13(4) says the examination does not warrant the validity of any patent, so a grant after examination does not close the validity question. Where the examiner's report is adverse or requires amendment, the Controller communicates the gist of the objections as expeditiously as possible and, if the applicant asks within the prescribed period, gives a hearing (section 14). An applicant can file a further application under section 16, before grant, for an invention disclosed in the provisional or complete specification already filed. The applicant can do this on his own, or to meet an objection that the claims relate to more than one invention. The divisional carries a complete specification that adds no matter not in substance disclosed in the first, is deemed filed on the date of the first application, and is examined when its own request for examination is filed within the prescribed period (section 16 and the Explanation).

Section 15 lets the Controller refuse the application, or require amendment to his satisfaction and refuse it if the applicant fails to comply. Section 18 deals with anticipation: the Controller may refuse unless the applicant shows that the priority date of the claim is not later than the date the relevant document was published, or amends the specification. A publication before the priority date does not always anticipate. Under section 29(2) an invention is not anticipated by reason only of a publication of matter obtained from the applicant and published without consent, if the applicant applied as soon as reasonably practicable after learning of it. The proviso withdraws that protection where the invention was commercially worked in India, other than for reasonable trial, before the priority date. Under section 21 the application is deemed abandoned unless the applicant complies with every requirement within the prescribed period, counted from the day the first statement of objections is forwarded. Where an appeal to the High Court is pending in respect of the application, the time to comply is extended, on an application made before the prescribed period expires, until the High Court determines it, and while the time to appeal has not expired the Controller may extend the prescribed period further (section 21(2) and (3)).

Once the application is in order and has not been refused, the patent is granted as expeditiously as possible, the date of grant is entered in the register and the Controller publishes the fact of grant (section 43). A decision under section 15 or 18 is appealable under section 117A(2) within three months (section 117A(4)). The section title and sub-section (4) still say Appellate Board, but the Tribunals Reforms Act, 2021 substituted the High Court with effect from 4 April 2021, and the appeal now lies to the High Court, which section 2(1)(i) defines in relation to a State or Union territory as the High Court having territorial jurisdiction there. Tapas Chatterjee reached the Division Bench as LPA 836 of 2023, a letters patent appeal from the decision of a single judge.

After publication and before grant, any person may represent by way of opposition in writing to the Controller under section 25(1), and the Controller hears the opponent if requested. The grounds are listed, and the sub-section adds but on no other ground. They include that the applicant wrongfully obtained the invention, that it was published before the priority date, that it was claimed in an earlier-priority Indian specification, that it was publicly known or publicly used in India, and that it is obvious and clearly lacks an inventive step.

The remaining grounds are that the subject of a claim is not an invention or not patentable, that the specification does not sufficiently and clearly describe the invention, that section 8 information was withheld or false, that a convention application was made late, that the source or geographical origin of biological material is missing or wrongly stated, and that the invention was anticipated by knowledge available within a local or indigenous community.

After grant, section 25(2) lets any person interested give notice of opposition before one year has passed from the publication of the grant, on grounds of the same kind. The Controller notifies the patentee and constitutes an Opposition Board of officers, which examines the notice and submits recommendations. After receiving the recommendation and hearing the patentee and the opponent, the Controller orders that the patent be maintained, amended or revoked (section 25(3) and (4)). On the grounds of public knowledge or use and obviousness, the Controller takes no account of a personal document or secret trial or secret use (section 25(5)).

Pre-grant opposition is open to any person, while post-grant opposition is open to a person interested. The list of appealable orders in section 117A(2) names sub-section (4) of section 25, the post-grant order, and does not name sub-section (1). The post-grant hearing turns on the Opposition Board's recommendation, and Cipla Ltd. v. Union of India, below, holds that the parties must be given it. J. Mitra & Co. Pvt. Ltd. v. Asst. Controller of Patents & Desig., below, records that the legislature meant one statutory appeal, against the post-grant order. In Tapas Chatterjee, the Delhi High Court sent the application and the pre-grant opposition filed by the Council of Scientific and Industrial Research back to the Controller General. It confined the fresh hearing to the section 25(1)(e) objection on the prior art already cited, allowed no new evidence beyond authoritative textual or documentary material the Controller General chooses to admit, gave both sides a hearing and called for a reasoned order within six months of that hearing.

A patent for a product confers the exclusive right to prevent third parties who do not have the patentee's consent from making, using, offering for sale, selling or importing that product in India. A patent for a process confers the right to prevent use of the process and the use, offer for sale, sale or importation of the product obtained directly by it (section 48). The term is twenty years from the date of filing of the application, and for a Patent Cooperation Treaty application designating India it runs from the international filing date (section 53(1)). The patent ceases to have effect if the renewal fee is not paid within the prescribed period or the extended period prescribed, and after cessation or expiry the subject matter is not entitled to any protection (section 53(2) and (4)). A patent that has ceased for non-payment of the renewal fee can be restored on an application made within eighteen months from the date it ceased, with a verified statement of the circumstances (section 60). The Controller publishes the application if prima facie satisfied that the failure was unintentional and the delay not undue, and any person interested may oppose on either ground (section 61). No suit lies for infringement committed between the lapse and the publication of the restoration application, and the Controller may protect those who began to use the invention in that time (section 62).

An application to amend a granted patent is made to the Controller under section 57. It may be published, any person interested may oppose within the prescribed period, and the Controller hears both sides. The Controller may not pass an order allowing or refusing an amendment while a suit for infringement, or a revocation proceeding before the High Court, is pending (proviso to section 57(1)). Where an improvement on an invention is claimed by the applicant or patentee of the main invention, the Controller may grant a patent of addition, which cannot be granted before the main patent and needs a filing date the same as or later than that of the main invention (section 54(1), (3) and (4)).

An assignment, mortgage, licence or other interest in a patent is not valid unless it is in writing and the agreement is reduced to a document embodying all the terms and duly executed (section 68). The person who becomes entitled applies in writing to the Controller to register title or notice of interest (section 69(1)), and an unregistered document is not admitted as evidence of title unless the Controller or the court directs otherwise for reasons recorded in writing (section 69(5)). The register of patent agents is kept under section 125.

Revocation under section 64 is sought on a petition by any person interested or by the Central Government, or by counter-claim in an infringement suit, and it is decided by the High Court, the 2021 Act having omitted the words by the Appellate Board. The grounds include that the subject of a claim is not an invention, that it is not new, that it is obvious or lacks inventive step, that it is not useful, that the specification does not sufficiently describe it, and that section 8 information was not disclosed. Monsanto Company v. Coramandal Indag Products (P) Ltd. shows the grounds in use, and Dr. Aloys Wobben v. Yogesh Mehra deals with the choice between a petition and a counter-claim. Both are below. A person who fears an infringement suit may ask the patentee or exclusive licensee in writing, with full particulars, for an acknowledgment that his process or article does not infringe, and may sue for a declaration if it is refused or neglected; costs fall on the plaintiff unless the court orders otherwise, and validity is not decided in that suit (section 105). A person aggrieved by a threat of infringement proceedings, made by circular, advertisement or oral or written communication, may sue for a declaration that it is unjustifiable, an injunction and damages, unless the defendant proves the acts infringe a claim not shown to be invalid; a mere notification that a patent exists is not a threat (section 106).

Section 83 sets the principles for the working of patents. Patents are granted to encourage inventions and to secure that they are worked in India on a commercial scale, they are not granted to enable patentees to enjoy a monopoly for the importation of the patented article, and they should not impede the protection of public health. Under section 146(1) the Controller may require a patentee or licensee by notice to furnish, within two months or such further time as the Controller allows, information on commercial working in India. Every patentee and licensee must also furnish prescribed statements at prescribed intervals, which cannot be shorter than six months. Section 122 deals with a refusal or failure to furnish this information. The Act now also contains section 124A on adjudication of penalties, so read section 122 as currently in force before relying on it.

After the expiration of three years from the grant, any person interested may apply to the Controller for a compulsory licence under section 84(1), on the ground that the reasonable requirements of the public are not satisfied, that the invention is not available at a reasonably affordable price, or that it is not worked in India. The Controller takes into account whether the applicant tried to obtain a licence on reasonable terms. A reasonable period for that purpose does not ordinarily exceed six months, and the requirement does not apply in national emergency, extreme urgency, public non-commercial use or where anti-competitive practices are established. Under section 92 the Central Government may notify a national emergency, extreme urgency or public non-commercial use, and the Controller then grants a licence on application; where the Controller is satisfied that a licence is necessary in any of those circumstances, including public health crises such as AIDS, HIV, tuberculosis, malaria and other epidemics, he does not apply the section 87 procedure and informs the patentee as soon as practicable.

Section 100 allows the Central Government, and any person authorised in writing by it, to use an invention for the purposes of Government at any time after an application is filed or a patent granted. Use of an invention that Government recorded or tried before the priority date, otherwise than because the patentee communicated it, may be made free of royalty (section 100(2)). Otherwise the terms are agreed with the patentee or determined by the High Court on a reference under section 103, and the patentee is paid not more than adequate remuneration (section 100(3)).

An infringement suit is filed in a court not inferior to a district court, and where the defendant counter-claims for revocation the suit and the counter-claim are transferred to the High Court (section 104). In a suit on a process patent the court may direct the defendant to prove that its process differs, if the patented process obtains a new product, or if there is a substantial likelihood that an identical product is made by the patented process and the patentee has been unable through reasonable efforts to determine the process actually used, once the patentee first proves that the product is identical to the one directly obtained by the patented process (section 104A(1)). The court does not require disclosure of manufacturing or commercial secrets where that would be unreasonable (section 104A(2)). Acts solely for uses reasonably related to developing and submitting information required under a law regulating a product, and importation from a person duly authorised under the law to produce and sell it, are not infringement (section 107A). The court may grant an injunction and, at the plaintiff's option, damages or an account of profits, and may order infringing goods seized, forfeited or destroyed (section 108).