Key Procedures and Features of the Indian Patent System
The rapidly growing Indian market is also receiving significant attention in the field of intellectual property (IP). It is practically crucial for Korean companies or patent experts to understand the entire process from filing an Indian patent application to examination and enforcing rights. This article compares the Korean and Indian patent systems, comparing the main features of the Indian patent system with those of Korea. Each section explains the content of the Indian patent system and clearly points out the differences from the Korean patent system.
1. Patent Application Procedures and Required Documents: Indian Patent Application vs. Korea
1) Online Application System
Both countries have established electronic filing systems that allow applications to be submitted remotely. The Indian Patent Office (IPO) has adopted English as its official language, so no local language translation is required for the application and examination process. Because of this, there are no translation costs, which significantly reduces the overall cost when filing in India. On the other hand, the Korean Intellectual Property Office (KIPO) uses Korean as its official language, so if you submit a specification written in a foreign language, you must submit a Korean translation later. However, since 2020, Korea has relaxed the system so that you can first submit the specification in English to secure the filing date, and in this case, you only need to submit a Korean translation within 14 months from the filing date. Therefore, when filing in Korea, you should consider translation costs and procedures.
2) Claim of priority and international applications
Since both India and South Korea are signatories to the Paris Convention, if an invention was filed first in another country, it can be recognized as the priority date by filing within 12 months of the initial filing date through a priority claim. The entry period for the national phase of PCT international applications is usually 30 months for both countries, but India and South Korea set it at 31 months, allowing some flexibility. In India, entry is possible within 31 months, which is longer than the global average (30 months), and Korea also has the same 31 months. Therefore, when entering through international applications, both countries operate similar systems in strategy formulation.
3) Required Documents and Procedures
India has a system that recognizes provisional statements (provisional applications) if the specification is not completed. At the filing stage, first submit a provisional specification that only roughly states the gist of the invention, and if the specification is completed within 12 months, the original filing date can be maintained. This is advantageous for securing rights through early filing at a stage when the invention is not yet fully established. Korea does not have a separate provisional specification system; traditionally, applications must have both the claims and specification complete, but recent amendments allow applications that submit only the specification without claims. However, in Korea, if an application is filed without claims, the claims must be supplemented within 14 months.
Documents required for an application in delivery include the application form, specification (provisional or completed), claims (for completed specification), drawings, abstract, and inventor information. If filed through an agent, a power of attorney and other documents are required. Additionally, India is obligated to report the information within a certain period if an overseas application is made for the same invention (Patent Act §8). You must submit a list of corresponding applications from around the world within 6 months at the time of filing or within 6 months after filing, and if there are changes in overseas filing status later, additional reports must be made within 6 months. Failure to comply may be grounds for refusal, so caution is needed. On the other hand, Korea is not required to submit overseas application information.
4) Application fee structure
India offers significant differences in official fees depending on the type of applicant. For individuals, startups, small and medium-sized enterprises, and universities, the application fee is about one-fifth lower than that of large corporations, encouraging innovation entities. For example, in India, the basic filing fee for individuals and small and medium-sized enterprises is set much lower than that for large corporations. Overall, the official fees for Indian patent applications are relatively low internationally, offering cost advantages, but Korea also maintains a relatively reasonable fee structure due to the promotion of electronic filing.
2. Patent examination procedures and criteria: India patent examination vs. Korea
1) Method of Request for Review
In both countries, substantive examination is not automatically conducted after filing an application; rather, the procedure begins only when the applicant separately requests examination. Deferred Examination We operate the system. In India, an examination request must be filed within 48 months from the filing date (or priority date), and if the deadline is missed, the application will be withdrawn. However, according to the revised Indian Patent Act rules in March 2024, the deadline for new applications filed after March 15, 2024, has been shortened to 31 months. In Korea, the examination filing deadline, which used to be five years, has gradually shortened, and now you must file within three years from the filing date. In other words, the examination period is similar to 31 months for India (for new applications) and 36 months for Korea.
2) Start and Duration of Evaluation
The Indian Patent Office used to suffer from severe examination bottlenecks, but recently, with staff expansion and institutional improvements, it has largely resolved these bottlenecks. As a result, the process has accelerated to the point where the first notice of reasons for refusal (the results of the first round) is received within about a year after filing a review. Applicants must then correct or resolve these issues within six months, and if necessary, an extension of three months is possible.
The Korean Intellectual Property Office also provides the results of the first round of examination in about one year, although there are differences depending on the timing of the examination request and the technical field. In all countries, the first round of review is conducted about a year after filing a review. However, if the applicant delays the examination request until the maximum deadline, the time required to obtain full rights may differ. South Korea can deferr up to 3 years, while India has 31 months, so in terms of strategic delay, South Korea tends to have a slightly longer delay.
3) Expedited Examination System
Both countries operate expedited examination systems for urgent applications, which can expedite examination. In Korea, if you fall under the statutory priority examination criteria (such as when the technology is already in progress), you can receive an early examination, and if you receive a positive result from the Overseas Patent Office, you can request expedited examination using the PPH (Patent Examination Highway). India also offers expedited examinations for startups, small and medium-sized enterprises, and certain international cooperation targets. For example, PCT applications designating India as an international searching body or startup applicants can apply, and using this system allows for much faster examination.
4) Evaluation Criteria and Reasons for Rejection
The criteria for determining patentability (novelty, inventiveness, industrial applicability) are almost the same in Korea and India. In other words, if the technology was disclosed or disclosed before the application, it lacks novelty, and if a conventional technician can easily invent it from prior art, it is judged to lack inventive step and thus rejected. If the statement is insufficient or unclear, it may be rejected.
However, there are some differences in the scope of unpatentable inventions. Section 3 of the Indian Patent Act explicitly excludes mathematical methods, business methods, computer programs themselves, algorithms, natural laws, and treatments for humans and animals from the scope of patents. Especially in the pharmaceutical field, if the efficacy of an existing substance is not improved as a new form of substance, the patent is not recognized. Section 3(d) The regulations are well known. Meanwhile, unlike India, Korean Patent Law does not specify specific items, but stipulates that inventions that violate public order, good morals, or do not use natural laws cannot be patented. Software inventions are similar to India in that patents can only be granted if the technical characteristics based on natural laws are fully met.
5) Response to Grounds for Rejection and Review Procedures
In India, after receiving the First Examination Report (FER) and resolving all grounds for rejection, the patent is granted; if the issue is not resolved by written response, a final opinion is presented through an oral hearing. If a refusal decision is made, you can file for reconsideration or appeal to the High Court. In Korea, after the first notice of reasons for refusal, a written opinion or amendment is submitted to respond, and upon the final rejection decision, a rejection appeal can be filed with the Intellectual Property Tribunal to contest the case. If you appeal the Tribunal's decision, the structure leads to the Patent Court and then the Supreme Court, forming a step-by-step structure. India once had the Intellectual Property Appeals Board (IPAB), but it was abolished in 2021, so appeals and appeals are now directly transferred to the courts, which is different from Korea.
6) Patent Publication and Opposition (Option)
There are also differences between the two countries in the operational procedures for third parties to file patent oppositions after the application is published. In India, pre-grant oppositions are possible from the publication of the application until the patent is decided, and post-grant oppositions are also possible within one year after the patent is registered. Korea has a system that allows anyone to file an objection within a certain period (within six months) after registration, so although the timing differs from India's prior objection, the purpose of verifying validity at the initial stage of the right is similar.
3. Patent Maintenance and Annual Fees
The patent term is the same as 20 years from the filing date in both India and Korea. It also states that annual leave payments must be paid annually to maintain your rights. However, there are some differences in the method and structure of the annual leave fee.
1) Annual leave in India
In India, there is no annual fee for the first two years after filing, and from the third year after registration, annual fees are paid annually. You can also prepay multiple annual leave payments at once, reducing the hassle of maintaining your rights. Annual leave fees gradually increase as the number of years of rights increases, and there is a large difference between small applicants such as individuals, SMEs, startups, and universities, as well as large corporations. There is also a remedy system that allows you to apply for restoration within 18 months if your patent expires due to missed annual fee payments.
2) Annual Leave in Korea
In Korea, you must pay the registration fee for the 1st~3rd years in a lump sum when registering a patent. In other words, if a patent decision is approved, the first three years' worth of fees are paid all at once and registration is completed, and from the fourth year onward, the next annual fee is paid each year before the registration date. In Korea, you can prepay several years in advance, and the annual leave fee varies depending on the number of claims. If you miss the payment deadline, you can pay an additional fee and pay late within 6 months, and thereafter you can apply for restoration of expired rights within a certain period (within 12 months).
3) Comparison of maintenance costs
Overall, official fees in India are relatively low, but the structure increases significantly in the later years, and there is a clear preferential policy for small applicants. While Korea faces the burden of paying for the first three years, costs tend to rise relatively gradually toward the end. Therefore, when establishing long-term cost planning, it is important to consider the differences in systems between the two countries.
4. Compulsory License System
A compulsory license is a system that allows the patent holder to obtain a license or a third party to forcibly grant a license when the patent holder fails to implement the patent without a valid reason or when there is a public interest necessity. Both India and South Korea have mandatory implementation provisions in the TRIPS Agreement process, with slight differences in how they operate.
1) India's Compulsory Enforcement Rights
Indian patent law allows anyone to apply for compulsory licensing rights after three years have passed since a patent is granted. The main requirements are: (1) not sufficiently implemented domestically to meet demand, (2) patented products are too expensive to access to the general public, or (3) are virtually unimplemented in India. A major case that once became a major issue was when a local pharmaceutical company was granted compulsory licensing rights for anticancer drug patents by a multinational pharmaceutical company. There are also regulations that allow the government to immediately grant compulsory implementation in cases of national emergencies or extreme emergencies.
2) Korea's Compulsory Enforcement Rights
The Korean Patent Act also allows interested parties to request compulsory enforcement if a patent is not implemented domestically without a valid reason even after three years have passed since it was registered. The main reasons are: (1) cases where domestic demand cannot be met due to insufficient or insufficient implementation for more than three years, (2) when necessary for public welfare, (3) corrections of fair trade, and (4) national emergencies. Additionally, compulsory licensing may be granted for exporting pharmaceuticals to developing countries overseas.
3) Actual Operation
Both countries have mandatory enforcement powers under their laws, but actual enforcement cases are very rare. In Korea, only a handful of exceptional cases have been recognized over decades, and in India, except for the pharmaceutical sector, there are very few cases where it has been applied. This system severely restricts the rights of patent holders, so it carefully balances public interest and rights protection. India requires patent holders to submit a mandatory annual implementation report (Form 27) as a reference for determining mandatory implementation, whereas Korea does not impose a separate implementation report obligation.
5. Patent Infringement and Litigation Procedures
1) Protection of Rights and Remedies for Infringements
Once a patent is registered, the patent holder has exclusive rights to manufacture, use, transfer, sell, and import the invention, and unauthorized use constitutes patent infringement. The patent holder can file a civil lawsuit against the infringer, seeking injunction to prevent infringement and claim damages. In Korea, intentional patent infringement can be subject to criminal penalties, but in India, patent infringement falls under the civil domain.
2) Patent litigation procedures and timeline
India does not have a separate court dedicated solely to patents, but major metropolitan high courts have established IP Divisions. If the amount exceeds a certain threshold, the case is handled by the High Court from the first instance, and if it is lower, it starts at the District Court and goes to the High Court for appeals. In Korea, patent litigation is handled mainly at the Seoul Central District Court, with first-instance judgments followed by appeals to the High Court and Supreme Court.
In Korea, litigation periods are relatively short, with about a year for the first trial verdict and an additional year for the appellate trial. Overall, civil litigation in India tends to be prolonged, but recently the introduction of the commercial court system and the establishment of dedicated IP departments have made efforts to expedite processing. Nevertheless, since it can take years to reach a substantive judgment, India often employs injunctions (preliminary injunctions) as a strategy to prevent infringement early.
3) Compensation and practical strategies
Both countries use the actual amount of damages or reasonable royalties as the basis for damages, but South Korea introduced a punitive damages system in 2019 that requires up to three times the amount of damages for intentional infringement. Although India does not have punitive damages provisions, there have been cases where courts have added exemplary damages when malicious infringement is recognized. In Korea, patents can be registered with customs to suppress the import of infringing goods, and India has a similar system, but it is not actively used in the patent field.
In terms of litigation costs in both countries, Korea has relatively high attorney fees, but litigation periods are short, and some costs can be borne by the opposing party if you win. It is important to note that while lawyer fees in India tend to be lower, if litigation drags on, cumulative costs can increase, and cases filed in the High Court increase in court costs proportional to the amount of the lawsuit.
6. Differences in Patentability Requirements and Criteria for Determining Patentability
Finally, let's summarize the differences between Korea and India in terms of the requirements for patentability, such as "What is an invention eligible for a patent?" The three core requirements—novelty, inventiveness, and industrial applicability—are benchmarks that the two countries use very similar. However, in certain areas such as pharmaceuticals, India applies additional higher standards (e.g., Section 3(d)).
1) Novelty
Both countries have adopted absolute novelty requirements, so technology that has already been disclosed anywhere in the world cannot be patented. Korea recognizes exceptions to novelty in limited situations, such as when the inventor disclosed their invention within 12 months prior to filing. India also makes exceptions for exhibitions or conferences with government approval, but actual applications are rare.
2) Inventiveness (Non-Fame)
A patent is granted only if the prior art is so creative that ordinary engineers cannot easily invent it. India also considers economic effects by defining certain legal provisions that "technological advances or economic significance shall not be self-evident." In the pharmaceutical field, Section 3(d) is a distinctive feature, which considers a new form of an existing substance as identical and does not grant patents unless a "significant improvement in efficacy" is proven. Korea tends to recognize inventiveness in existing materials, even in crystalline or salt forms, if they have new effects, but India requires much more stringent proof.
3) Industrial Applicability
It must be industrially usable, and inventions that are merely theoretical or natural phenomena cannot be patented. In Korea, human treatment methods are considered not patentable due to lack of industrial value, and India explicitly defines treatment methods for humans or animals as unpatentable. Therefore, in the medical and pharmaceutical fields, strategies such as acquiring patents in other forms, such as invention of use, are common.
4) Inventing software and business methods
Both countries strictly judge abstract ideas such as computer software, business methods, and mathematical algorithms. India explicitly excludes "computer programs themselves" from patents under the law, but is operated in a direction that allows patents if there is a technical implementation such as hardware integration. Korea imposes similar restrictions through the invention definition that natural laws must be used, and patents are granted only when hardware or specific technical effects are combined, not the program itself.
Conclusion
Overall, while the patent systems of Korea and India are broadly similar, there are localized differences in detailed regulations and practical operations. Especially when filing in India, you can take advantage of advantages such as the use of English specifications, the obligation to report foreign applications, and the provisional specification system, while keeping in mind the strict non-patentability clauses (e.g., Section 3(d)) during examination.
Additionally, to secure patents and respond to infringement disputes in the Indian market, it is necessary to work closely with local patent attorneys to develop litigation strategies such as injunctions, taking into account India's relatively long litigation periods. Foreign companies wishing to exercise patents in Korea can enhance their bargaining power through criminal complaints and punitive damages, while simultaneously using invalidation trials to contest the opposing patents, employing a two-track strategy.
By accurately understanding and actively utilizing the differences between Korea's and India's patent systems, intellectual property rights can be protected more efficiently and strongly in both countries. Especially for Korean companies aiming to enter the Indian market, it is advisable to comprehensively understand India's patent practices, system operations, compulsory licensing regulations, litigation costs, and procedures to develop a patent portfolio strategy. If you properly understand the trade-offs of the two systems and respond locally, you can manage your company's core innovation assets as safely and effectively as possible.
