This post was first published on 18th July, 2014.
If an invention has been published or publicly displayed, it will not be eligible for patenting except for in certain cases. As part of this post, we will look at an essential stage in the patenting process called Publication. We will also discuss the exceptions, where prior publication may not hinder the patenting of an invention.
In India, once an application for a patent has been made, the application shall be published by the Patent Office for public inspection, before the expiry of 18 months from filing or priority date. Under Section 11A of the Indian Patent Act, 1970 it is mandatory to publish patent applications for public inspection in the Official Gazette. Such publications in the Official e-Journal, shall be published every Friday by the Patent Office.
Under Sections 29 to 34, however, in case the details of an invention have been published, the Patent Act provides a grace period of 12 months from the date of publication for a patent application for that invention to be made. These exceptions may be of certain types only. Them being: 1. if the publication is made in a journal; 2. if its public display has been in an exhibition organized by the Government; 3. if its disclosure was made before a learned society; 4. if it was published by applicant himself.
Coming back to the mandatory publication of Patent Applications by the Patent Office, there are certain exceptions to this mandatory publication as well, them being:
- if the Secrecy direction under section 35 is in force
- if the Application is abandoned when the Complete Specification has not been filed within twelve months from the date of filing of the Provisional Specification (section 9(1))
- if the Application was withdrawn before the expiry of 15 months from the date of filing or priority, whichever is earlier. This is applicable to National Phase entry of PCT Applications as well, if such applications have been filed in India before the expiry of 15 months from the date of priority.
The publication of Patent Applications in the Official Gazette shall provide the Application Number, Applicant Name and Address, Title of the invention, Priority details, if any and the Abstract.
Request for Early Publication
This is an advantageous option for an applicant to make use of. A request for early publication may be formally made in Form 9 with the prescribed fee. When such a request is made, the application is published within one month from the date of the formal request.
Importance of Publication
Upon publication, the Patent Office makes the specification and the drawings filed in respect of the application, available to the public on its website or upon payment of prescribed fee if a request for it is made. Rights and privileges are accrued on the applicant as if a patent is granted. However, the applicant shall not be entitled to institute any proceedings for infringement until the patent has actually been granted.
For a third party, publication of a patent application provides the opportunity to oppose the application for grant; similar publication shall also be made once the patent is granted. The granted patent is published in the Official Gazette for a period of one year to make allowance for any post grant opposition, if any, by a third party.
Unless an application is published, it will not be considered for examination. It is also very important to note that a patent shall not be granted before the expiry of six months from the date of publication of the application.