PATENT-AN OVERVIEW

PATENTS

Meaning

A Patent is an intellectual property right relating to inventions and is the grant of exclusive right, for limited period, provided by the Government to the patentee, in exchange of full disclosure of his invention, for excluding others from making, using, selling, importing the patented product or process producing that product.

Introductions

The term "patent" may be explained to be a monopoly right granted by the Government to a person who has made a new invention. The term "invention" means a new product or process involving an inventive step capable of industrial application.

Legislation

The Patent System in India is governed by the Patents Act, 1970 (No. 39 of 1970) as amended by the Patents (Amendment) Act, 2005 and the Patents Rules, 2003, as amended by the Patents (Amendment) Rules 2006 effective from 5-5-2006.

Novelty

Under both the new law as well as the earlier law the process or the product that is subject matter of patent claimed, shall be novel; i.e., the invention shall be new and not known to others.

NON Obviousness

It shall also be non obvious; i.e., the process or the product that is subject matter of patent claimed shall not be obvious to the notional addressee or to a person skilled in the art.

Utility

It shall also be useful in industrial application. Here utility means industrial utility and not the practical usefulness or commercial utility.

Types of patent applications

1. Ordinary Application.

2. Application for Patent of Addition (granted for Improvement or Modification of the already patented invention, for an unexpired term of the main patent).

3. Divisional Application (in case of plurality of inventions disclosed in the main application).

4. Convention application, claiming priority date on the basis of filing in Convention Countries.

5. National Phase Application under PCT (Patent Cooperation Treaty).

Who may apply?

The inventor may make an application, either alone or jointly with another, or his/their assignee or legal representative of any deceased inventor or his assignee.

General Precautions

Currently the first to file system is employed, in which, among persons having filed the same invention, first one is granted a patent. Therefore an application should be filed promptly after conceiving the invention.

What is Patentable?

A new product or process, involving an inventive step and capable of being made or used in an industry. It means the invention to be patentable should be technical in nature and should meet the following criteria —

1. Novelty : The matter disclosed in the specification is not published in India or elsewhere before the date of filing of the patent application in India.

2. Inventive Step: The invention is not obvious to a person skilled in the art in the light of the prior publication/knowledge/ document.

3. Industrially applicable: Invention should possess utility, so that it can be made or used in an industry.

What is not Patentable?

1. an invention which is frivolous or which claims anything obviously contrary to well established natural laws;

2. an invention the primary or intended use or commercial exploitation of which could be contrary to public order or morality or which causes serious prejudice to human, animal or plant life or health or to the environment;

3. the mere discovery of a scientific principle or the formulation of an abstract theory or discovery of any living thing or non-living substances occurring in nature;

4. 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 or the mere discovery of any new property or mere new use for a known substance or of the mere use of a known process, machine or apparatus unless such known process results in a new product or employs at least one new reactant ;

5. a substance obtained by a mere admixture resulting only in the aggregation of the properties of the components thereof or a process for producing such substance;

6. the mere arrangement or re-arrangement or duplication of known devices each functioning independently of one another in a known way;

7. a method of agriculture or horticulture;

8. any process for the medicinal, surgical, curative, prophylactic, diagnostic, therapeutic or other treatment of human beings or any process for a similar treatment of animals to render them free of disease or to increase their economic value or that of their products;

9. plants and animals in whole or any part thereof other than micro-organisms but including seeds, varieties and species and essentially biological processes for production or propagation of plants and animals;

10. a mathematical or business method or a computer programme per se or algorithms;

11. a literary, dramatic, musical or artistic work or any other aesthetic creation whatsoever including cinematographic works and television productions;

12.  a mere scheme or rule or method of performing mental act or method of playing game;

13. a presentation of information;

14. topography of integrated circuits;

15. an invention which in effect, is traditional knowledge or which is an aggregation or duplication of known properties of traditionally known component or components;

16. Inventions relating to atomic energy and the inventions prejudicial to the interest of security of India.

Documents required for filing an application

1. Application form in duplicate. (Form 1).

2. Provisional or complete specification in duplicate. If the provisional specification is filed, it must be followed by the complete specification within 12 months. (Form 2).

3. Drawing in duplicate. (if necessary).

4. Abstract of the invention in duplicate.

5. Information & undertaking listing the number, filing date & current status of each foreign patent application in duplicate. (Form 3).

6. Priority document (if priority date is claimed) in convention application, when directed by the Controller.

7. Declaration of inventor-ship where provisional specification is followed by complete specification or in case of convention/PCT national phase application. (Form 5).

8. Power of attorney (if filed through Patent Agent).

9. Fee (to be paid in cash/by cheque/by demand draft) (See Schedule I).

(Note: The cheque or demand draft should be payable to the "Controller of Patents" drawn on any schedule bank at a place where the appropriate office is situated).

Appropriate office for filing an application

Application is required to be filed according to the territorial limits where the applicant or the first mentioned applicant in case of joint applicants, for a patent normally resides or has domicile or has a place of business or the place from where the invention actually originated. The four patent offices are located at Kolkata, Mumbai, Delhi & Chennai.

Publication & examination of patent applications

(i) Request for examination

No application for patent will be examined if no request is made by the applicant or by any other interested person in Form 18 with prescribed fee of Rs. 2,500/- or Rs. 10,000/- for natural person and other than natural person respectively, within a period of 48 months from the date of priority of the application or from the date of filing of the application, whichever is earlier.

(ii) Examination

Application for patent, where request has been made by the applicant or by any other interested person, will be taken up for examination, according to the serial number of the requests received on Form 18. A First Examination Report (FER) stating the objections/requirements is communicated to the applicant or his agent according to the address for service ordinarily within six (06) months from the date of request for examination or date of publication whichever is later. Application or complete specification should be amended in order to meet the objections/requirements within a period of 12 months from the date of First Examination Report (FER). No further extension of time is available in this regard. If all the objections are not complied with within the period of 12 months, the application shall be deemed to have been abandoned. When all the requirements are met the patent is granted, after 6 months from the date of publication, the letter of patent is issued, entry is made in the register of patents and it is notified in the Patent Office, Journal.

(iii) Publication

All the applications for patent, except the applications prejudicial to the defence of India or abandoned due to non-filing of complete specification within12 months after filing the provisional or withdrawn within 15 months of filing the application, are published in the Patent Office Journal just after 18 months from the date of filing of the application or the date of priority whichever is earlier.

(iv) Early Request for Publication

The applicant may also file a request for early publication in Form 9 with a prescribed fee of Rs. 2,500 or Rs. 10,000 for natural person and other than natural person respectively. The above application is published ordinarily within one month from the date of the request on Form 9.

Withdrawal of patent application

The application for patent can be withdrawn at least 3 months before the first publication which will be 18 months from the date of filing or date of priority whichever is earlier.

The application can also be withdrawn at any time before the grant of the patent.

The application withdrawn after the date of publication, cannot be refiled as it is already laid open for public inspection. However, application withdrawn before the publication can be refiled provided it is not opened to public otherwise.

Pre grant Opposition

Where an application for a patent has been published but a patent has not been granted, any person may, in writing represent by way of opposition to the Controller against the grant of any Patent. It shall be filed in Form 7 along with a fee of Rs. 1,500/- or Rs. 6,000/- for natural person and other than natural person respectively, in duplicate at the appropriate office.

Acceptance of complete specification & advertisement thereof

Upon acceptance of the complete specification, the Controller shall give notice thereof to the applicant and advertise the fact of such acceptance in the Official Gazette.

Provisional specification

Application for patent may be accompanied by the provisional specification. It should contain the descripttion of invention with drawing, if required. It is not necessary to include claim. However, the complete specification should be fairly based on the matter disclosed in the provisional specification and should be filed within 12 months. If the complete specification is not filed within 12 months the application is deemed to have been abandoned.

Complete specification

The complete specification is an essential document in the filing of patent application along with the drawing to be attached according to the necessity. Complete specification shall fully describe the invention with reference to drawing, if required, disclosing the best method known to the applicant and end with Claim/Claims defining the scope of protection sought.. The specification must be written in such a manner that person of ordinary skill in the relevant field, to which the invention pertains, can understand the invention. Normally, it should contain the following:–

(1) Title of invention, (2) Field of invention, (3) Background of invention with regard to the drawback associated with known art, (4) Object of invention, (5) Statement of invention, (6) A summary of invention, (7) A brief descripttion of the accompanying drawing, (8) Detailed descripttion of the invention with reference to drawing/examples, (9) Claim(s), (10) Abstract.

If the application is made with the provisional specification, complete specification shall be filed within 12 months from the date of filing of application. This period of 12 months may be extended by another 3 months by the Controller upon request being made therefore.

The specification must start with a short title, which describes the general nature of invention. The title should not contain anyone’s name, a fancy name and trade name or personal name or any abbreviation etc.

Descripttion OF PROCESS / INVENTION

The specification must be written in good and clear English or Hindi. The specification should indicate those features which are essential for the operation of the invention as well as those features for which a choice can be made. The descripttion must be sufficiently detailed for someone who works in the same area of technology to be able to perform the invention from the information given in the descripttion. The best method of putting the invention into effect is required to be described.

In case of biological invention, it is required to mention the source or geographical origin of biological material used for the invention.

Claim OF EXCLUSIVITY OF PROOCESS/PRODUCT

A set of properly drafted claims is an important part of complete specification. The complete specification must have at least one claim. The first claim is the main and independent claim. The first claim defines an invention in the complete specification The subsidiary and dependent claims refer to the main claim and include qualifying or explanatory clauses on the various integers of the main claim or optional features. Although the claim clauses consist of a number of claims, the totality of the claims must relate to one invention only. It should be noted that a claim is a statement of technical facts expressed in legal terms defining the scope of the invention sought to be protected.

Abstract

The abstract is the concise summary of the invention claimed preferably within 150 words and shall commence with the title of the invention.

Drawing

Drawing should be filed on standard A4 size sheet in duplicate. Drawing should be drawn on the sheet with margin of 4 cm on top and left hand and 3 cm at the bottom and right hand side. Figure should be shown clearly on sufficient scale in upright position with respect to top and bottom position of the sheet. At left-hand top corner of the sheet, the name of applicant should be mentioned, with the application No. therebelow. No. of sheets and sheet No. should be mentioned at the right hand top corner. At the right-hand bottom, signature of the applicant/agent should be made mentioning the name thereunder. A reference letter/numerals as used in the descripttion should also be used in denoting the corresponding component/part in the figure(s).

Opposition to grant of patent

At any time within four months from the date of advertisement of acceptance of complete specification, any person interested may give notice of opposition to the Controller in prescribed manner on any of the relevant grounds mentioned in section 25 of the patent law. After giving opportunity of being heard to both the applicant and the opponent, the Controller shall decide the case.

Post grant opposition

Any interested person having trading, financial or research interest in the patent granted can file notice of opposition (along with written statement and evidence, if any) anytime after the grant of Patent but before the expiry of a period of one year from the date of publication of grant of a Patent in the Patent Office Journal. The above notice of opposition under Section 25(2) shall be filed in Form 7 along with a fee of Rs. 1,500/- or Rs. 6,000/- for natural person and other than natural person respectively, in duplicate at the appropriate office. The grounds of opposition under section 25(2) are the same as given before in case of pre-grant opposition. The post grant opposition is decided by an Opposition Board followed by a hearing and the reasoned decision by the Controller.

Term and date of patent

Term of every patent will be 20 years from the date of filing of patent application, irrespective of whether it is filed with provisional or complete specification.

Rights of the patentee

Where a patent covers a product, the grant of patent gives the patentee the exclusive right to prevent others from performing, without authorisation, the act of making, using, offering for sale, selling or importing that product in India.

Where a patent covers a process, the patentee has the exclusive right to exclude others from performing, without his authorisation, the act of using that process, using and offering for sale, selling or importing for those purposes, the product obtained directly by that process in India.

Register of patent

The Register of Patents are kept in the Patent offices and can be inspected or extract from it can be obtained on payment of prescribed fee.

Renewal fee

To keep the patent in force, Renewal fee is to be paid every year. The first renewal fee is payable for the third year and must be paid before the expiration of the second year from the date of patent. If the patent has not been granted within two years the renewal fees may be accumulated and paid immediately after the patent is granted, or within three months of its recordal in Register of Patents or within extended period of 9 months, by paying extension fees of six months in Form 4, from the date of recorded. If the renewal fees is not paid within the prescribed time, the patent will cease to have effect. However, provision to restore the patent is possible provided application is made within eighteen months from the date of cessation. Renewal fee is counted from the date of filing of the Patent application. Six months grace time is available with extension fee for payment of renewal fee. No renewal fees is payable on Patents of Addition, unless the original patent is revoked and if the Patent of Addition is converted into an independent patent; renewal fee, then, becomes payable for the remainder of the term of the main patent. The scale / amount of renewal fees is on the basis case to case basis on scrutiny of renewal application .

Restoration

Application for restoration of a patent that lapses due to non-payment of renewal fees must be made within 18 months of lapse.

Request for permission to file abroad

If any application is to be filed abroad, without filing in India, it should be made only after taking a written permission from the Controller. The request for permission for making patent application outside India shall be made in Form 25 along with a fee of Rs. 1,000/- or Rs. 4,000/- for natural person and other than natural person respectively. A gist of invention should also be filed along with the Form 25.