India Patent System Practice Guide

Key Points of This Article

• The Indian Patent Act is the 1970 Act (with five major amendments). It features some of the world’s most stringent unique examination standards
• Section 3(d): New uses and derivatives of known substances are generally non-patentable (strictly enforced in the pharmaceutical sector)
• Section 3(k): Software “per se” is unpatentable; it must be combined with a technical effect
• PCT national phase entry deadline: 31 months; request for examination must be filed within 48 months of the filing date
• IPAB abolished in 2021 → Invalidity trials and cancellation cases transferred to the High Court
• Mandatory Form 27 (Annual Implementation Report); failure to file carries penalties and risk of revocation
• Numerous examples of the compulsory licensing system (Section 84) in practice (e.g., Natco v. Bayer)

INDIA PATENT

A comprehensive guide to the patent system and practice in India—South Asia’s largest market with a population of 1.4 billion—written by a patent attorney. This book systematically explains everything from CGPDTM applications to compulsory licensing and High Court practices following the abolition of the IPAB across 12 sections.

Table of Contents

1. Executive Summary
2. Basic Structure of the System and Legal Basis
3. Application Procedures and Required Documents
4. Standard Workflow and Timeline Management
5. Estimated Government Fees
6. Patent Requirements and Section 3 Provisions
7. Key Precedents and Practical Implications
8. Enforcement and Infringement Litigation
9. Opposition and Cancellation Practice Following the Abolition of the IPAB
10. Maintenance, Implementation Reports (Form 27), and Compulsory Licenses
11. Differences Between Japanese and Indian Systems and Practical Considerations
12. Practical Checklist for Japanese Companies

Four Key Points to Understand in Indian Patent Practice

1. Classify application methods (direct filing, Paris Convention priority, PCT national phase entry) based on “securing a priority date” and “entry into the Indian examination process”
2. Government fees vary significantly depending on the applicant category (Natural Person/Startup/Small Entity/Large Entity). Make maximum use of discounts for startups and small businesses
3. The most distinctive feature of the examination process is the unique requirements under Section 3 (exclusion of new uses and new forms of pharmaceuticals from patentability, and exclusion of software per se from patentability)
4. Following the abolition of the IPAB in 2021, intellectual property cases are now centrally handled by state High Courts (particularly the Delhi High Court). Pay close attention to examples of compulsory license enforcement

Significance of the 2021 Reforms: The Indian Parliament passed the 2021 Tribunal Reforms Act, abolishing the Intellectual Property Appellate Board (IPAB). Patent appeal and revocation cases previously handled by the IPAB were transferred to the High Courts of each state. The Delhi High Court has established a specialized Intellectual Property Division (IPD) that functions as a de facto centralized processing body.

Pitfalls of Section 8 Obligations: Indian applicants are obligated to continuously disclose information regarding foreign applications for the same invention to the CGPDTM (Form 3 at filing, plus updates every 6 months). Violation constitutes grounds for cancellation (Section 64(1)(m)). Cancellations have actually been granted in cases such as the Chemtura case, making comprehensive management of global applications essential.

Startup and Educational Institution Incentives: Under the 2024 amendments, fees for startups and educational institutions were aligned with those for natural persons. Startups registered under Startup India within the past five years are eligible for significant fee reductions. There is also a special discount for female inventors, which is unique in promoting gender diversity.

Key Exclusions Under Section 3 (Particular Caution Required in the Pharmaceutical and IT Fields)

• 3(d): New forms, derivatives, or new uses of known substances are unpatentable unless they demonstrate “significantly enhanced efficacy” compared to the known substance (to prevent pharmaceutical evergreening)
• 3(e): Mere mixtures of known substances
• 3(i): Methods of diagnosis or treatment for humans or animals (inventions relating to pharmaceutical products are acceptable)
• 3(j): Plants and animals (excluding microorganisms)
• 3(k): Mathematical methods, business methods, computer programs per se, and algorithms
• 3(p): Inventions based on traditional knowledge

Remedies Available to Patent Holders

• Injunctions (Preliminary and Permanent)
• Damages or Account of Profits: Optional Claims
• Order for Destruction of Infringing Goods
• Loser Pays Rule for Costs (Attorney Fees) (Unique to India, derived from the Anglo-American legal system)

Impact of the 2021 Reform: Revocation petitions, which were previously centralized at the IPAB, are now filed with the High Courts of each state. The High Courts of Delhi, Bombay, Madras, and Calcutta have primary jurisdiction. There is no filing deadline, and the definition of “interested party” is broadly interpreted. The petitioner must allege and prove that the patent falls under the grounds for revocation listed in Section 64 (lack of novelty or inventive step, violation of Section 3, violation of Section 8, etc.).

Obligation to file Form 27 (Although the 2020 amendment relaxed the filing frequency from annual to biennial, the requirement remains in place)

• Persons Required to File: Patent holders and exclusive licensees
• Filing Deadline: Within 6 months of the end of the fiscal year (September 30 of each year is the de facto deadline)
• Content: Whether commercial exploitation has taken place, licensing information, revenue amounts, import volumes, etc.
• Consequences of Non-compliance: Basis for granting a compulsory license + evidence for a request for revocation

• Section 3(d) and 3(k) Compliance: For pharmaceuticals, include data on therapeutic effects; for software, describe technical effects
• Claim drafting: Comprehensive protection, including system and apparatus claims
• Optimization of Applicant Classification: Utilize fee reductions through startup registration
• Deadline Management: 31 months via PCT, 12 months via the Paris Convention

• Ensure Form 3 is submitted at the time of filing and every 6 months thereafter
• Request for examination must be filed within 48 months of the filing date (early examination results in 8 months)
• Strictly adhere to the 6-month FER response deadline plus a 3-month extension
• If an opposition is filed before grant, promptly submit a response

• Be sure to submit Form 27 by September 30 of each year (to defend against compulsory licensing)
• Be vigilant during the post-grant opposition period (12 months from the publication date)
• If infringement is discovered, file for a preliminary injunction with the Delhi High Court IPD
• Annuities are due annually starting from the third year (amounts increase significantly from years 17 to 20)
• Licensing and assignment require registration (registration with the CGPDTM satisfies the requirement for third-party enforceability)

Consultation on Indian Patent Applications

EVORIX Intellectual Property Law Firm provides comprehensive support for patent applications and enforcement in India, South Asia’s largest market with a population of 1.4 billion. From claim drafting compliant with Section 3 to Form 27 compliance and litigation support at the Delhi High Court IPD, our experienced patent attorneys—working in collaboration with local agents—are here to assist you.

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