Patent Act

PATENTS _ INTELLECTUAL

PROPERTY RIGHT 1

Index What is intellectual property Meaning of Patent Legislative Framework Patents Patent Law - Salient Features Safeguards in the Patent Law Definition of patentable invention Inventions not patentable Documenting invention Steps for obtaining a patent in India Rights of product patentee Rights of process patentee Renewal of patent Infringement of patent Patent Due Diligence

What is intellectual property

Intellectual Property refers to creation of mind i.e. inventions, industrial designs for article, literary & artistic work, symbols etc. used in commerce

Meaning of Patent

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 for those purposes.

LEGISLATIVE FRAMEWORK

PATENTS The Patents Act, 1970 (as amended in

2005)

The Patents Rules, 2003 (as amended in 2006)

The Patent Act was amended in line with international treaty that is Trade Related

Intellectual Property Rights ( TRIPS )

Patent Law - Salient Features

Both product and process patent provided

Term of patent 20 years Examination on request Both pre-grant and post-grant

opposition Publication of applications after 18

months with facility for early publication Substantially reduced time-lines

Safeguards in the Patent Law

Compulsory license to ensure availability of drugs at reasonable prices

Provision to deal with public health emergency

Revocation of patent in public interest and also on security considerations

Definition of patentable invention

A new product or process, involving

an inventive step and capable of

being made or used in an industry. Section 2(1)j

Inventions not patentable

Section 3 and Section 4 sets out the inventions which are not patentable

Patentable invention

Invention must relates to a Process or Product or both

be new(Novel)

involves an inventive step inventive step be Capable

of industrial application industrial application not fall

under Section 3 and 4

Meaning of Novelty, Inventive step and Industrial applicable

i) Novelty : The matter disclosed in the specification is not published or used in India or elsewhere before the date of filing of the patent application in India. 2(1)l

ii) Inventive Step: The invention is not obvious to a person skilled in the art in the light of the prior publication/ knowledge/ document.2(1)ja

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


Section 3(a) Frivolous inventions Inventions contrary to well

established natural laws

Examples Machine that gives more than 100%

performance Perpetual machine

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Section 3(b) Commercial exploitation or primary use of inventions, which isContrary to

public order or Morality

Examples Gambling machine, Device for house-breaking

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Section 3(b) Commercial exploitation or primary use of inventions , which

Causes serious Prejudice to health or human, animal, plant life or to the environment

Examples Biological warfare material or device,

weapons of mass destruction Terminator gene technology, Embryonic stem cell

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Section 3(b)Excludes patents on GMOs – exploitation of which could be

contrary public order or morality or prejudicial to human, animal or plant life or health or to the environment

Effect : Only genetically modified micro-organisms (GMOs) which do not fall under section 3 (b) are patentable.

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Section 3 ( c ) Mere Discovery of a Scientific Principle or formulation of an Abstract Theory or discovery of any living thing or discovery of non–living substance occurring in

nature

ExamplesNewton’s Laws Superconducting Phenomenon as such Property of certain material to withstand mechanical shockDiscovery of micro-organism Discovery of natural gas or a mineral

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Section 3(c)Excludes patents on

Naturally occurring Micro-organisms

Effect Genetically modified microorganisms (GMOs) are however, patentable.

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Section3 (d) 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

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Section3 (d) ExplanationFor the purposes of this clause, salts, esters, ethers, polymorphs, metabolites, pure form, particle size, isomers, mixture of isomers, complexes, combinations and other derivatives of known

substances

shall be considered to be the same substance, unless they differ significantly in properties with regard to

efficacy.

Examples Crystalline forms of known substance

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Section 3 (d) Explanation

Effect Salts, esters, ethers, polymorphs, metabolite, pure

forms, particle size, isomers, complexes, combinations and derivatives of a known substance with enhanced efficacy are patentable

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Section3 (d) Mere discovery of any new property or 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.

Examples New use of Aspirin for heart ailments, Mere new uses of Neem

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Section 3(e)

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

Examples Combiflam [Paracetamol (Antipyretic) + Brufen

(analgesic)] Solution of sugar and color additives in water to form

a soft drink However,A mixture resulting into synergistic properties of mixture of ingredients however, may be patentable - Soap, Detergents, lubricants etc

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Section 3 ( e )

Effect Substance obtained by mere admixture resulting

only in the aggregation of the properties of the components thereof or

a process for producing such substance

are not patentable

However Synergistic formulations are patentable

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Section 3 ( f )Mere arrangement or re-arrangement or duplication of known devices, each functioning independently of one another in a known way

Examples A Bucket fitted with torch, An Umbrella with fan A Clock and radio in a single

cabinet A flour-mill provided with sieving

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Section 3(h) Method of Agriculture or Horticulture

ExamplesCultivation of algae , Producing new form of a known plant, Preparation of an improved soil

However, Agricultural Equipments are patentable

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Section 3(i) Any process for medicinal, surgical, curative, prophylactic, diagnostic, therapeutic or other treatment of human beings or a similar treatment of animals to render them free of disease or to increase their economic value or that of their products

Examples Removal of cancer tumor Removal of dental plaque and carries Surgical processes Processes relating to therapy

Method of vaccination,

Blood transfusion

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Section 3(j) Plants & animals in whole or any part

thereof other than microorganisms, but including seeds, varieties an d species and essentially biological process for production or propagation of plants & animals

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Section 3(j) Plants & animals in whole Parts of plants & animals Seeds Varieties & species Essentially biological processes

for propagation or production of the animals & plants

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Section 3(j)Excludes patents on Plants and animals in whole or any parts

thereof, …… including seeds, varieties and species and essentially biological processes for production or propagation of plants and animals

Examples Clones and new varieties of plants A process for production of plants or animals if it consists

entirely of natural phenomena such as crossing or selection Essentially biological Process

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Section 3(k) * mathematical method or * business method or * algorithms or * computer programme per se

ExamplesComputer program by itself or as a record on a carrier

However New calculating machine combination of hardware and software is patentable

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Section 3(l) A literary,dramatic, musical or artistic work or any other aesthetic creation including cinematographic work and television productions

These subject-matters fall under the copyright protection

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Section 3(m) A mere scheme or rule or method of performing mental act or method of playing game

ExamplesScheme for learning a language Method for solving a crossword puzzle, Method of learning a language Method of teaching /learning

However,Novel apparatus for playing game or carrying out a scheme is patentable

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Section 3 (n)Presentation of information

Examples Any manner or method of expressing

information whether by spoken words Visual display symbols diagrams

Information recorded on a carrier

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Section 3 (o)Topography of integrated

circuits.

ExamplesMask works - circuits layout

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Not patentable invention

Section 4 Inventions falling within Section 20(1) of the Atomic Energy Act, 1962 are not patentable

Effect Inventions relating to compounds of Uranium, Beryllium, Thorium, Plutonium, Radium, Graphite, Lithium and more as notified by Central Govt. from time to time are not patentable .

Documenting invention

Keep a notebook sequential numbered

Write down experiments, showing structure of invention and how these are conducted and how the invention is made out .

Keep on noting and updating the

claims of the patent

Steps for obtaining a

patent in India

Application for patent File an Application form in duplicate for each

invention (Form 1) .(section 7,54,135 Rule 20.1 ) Provisional or complete specification in

duplicate in Form 2. s.7 Information and undertaking listing the number,

filing date and current status of each foreign patent application ( in case application is made in foreign country ) in duplicate for same invention s 8

Applicable fee of Rs 750 in case of individual or Rs 3000 in case of corporate . With one of the patent offices based on territorial jurisdiction of the place of office or residence of the applicant ( head office Kolkata, Madras, New Delhi , Chennai ) (r 4)

Granting of application number

An Examiner after checking the formal requirements before accepting the application and the fee , issues application number and the cash receipt on the same day of filing of application

Provisional Specifications

It is permissible to file an application for a patent accompanied by a "Provisional Specification" describing the invention.

The application may, therefore, be made even before the full details of working of the invention are developed. The filing of an application for a patent disclosing the invention would secure priority date of the invention, and thereby, enable the inventor to work out the practical details of the invention .

Complete Specifications

If the provisional specification is filed, it must be followed by the complete specification within 12 months.(Form 2). s9

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.

Complete Specifications

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 matter- s9 Title of invention, sufficiently indicating the subject matter

of invention Detailed description of the invention with reference to

drawing/examples, Operation or use of the invention Best method of performing the invention, Claim(s)defining the scope of invention , Abstract to provide technological information of invention

Publication of application

Application is kept secret for a period of 18 months from the date of filing

In 19th month, the application is published in the official journal – this journal is made available on the website weekly

Applicant has an option to get his application published before 18 months also

In that case, application is published within one month of the request

Publication of Application

The publication includes the particulars of the date of the application, application number, name and address of the applicant along with the abstract.

The applications for patent are not open for public inspection before publication.

Examination of Application

Application is examined on request

Request for examination can be made either by the applicant or by a third party

A period of 48 months, from the date of filing, is available for making request for examination

Examination

Application is sent to an Examiner within 1 month from the date of request for examination

Examiner undertakes examination w.r.t. whether the claimed invention is not prohibited for grant of patent

whether the invention meets the criteria of patentability

Issue of First Examination Report

A period of 1 to 3 months is available to Examiner to submit the report to the Controller

1 month’s time available to Controller to vet the Examiner’s report

First Examination Report (FER) containing gist of the objections is issued within 6 months from the date of filing of request

Meeting the objections of Examination Report

Application or complete specification should be amended in order to meet the objections within a period of 12 months from the date of First Examination Report (FER).

If objections are met, grant of patent is approved by the Controller – within a period of 1 month

Pre- Grant Opposition to the patent

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 with in period of six months of publication .

Opportunity of hearing the opponent is also available

Main Grounds of Opposition

-specification has been published before the priority date of the claim

-publicly known or publicly used in India before the priority date of that claim.

- being a claim of which the priority date is earlier than that of the applicant's claim;

- that the invention so far as claimed in any

claim of the complete specification is obvious Continue


- that the subject of any claim of the complete specification

is not an invention within the meaning of this Act

- that the complete specification does not sufficiently

and clearly describe the invention

that in the case of convention application, the application was not made within twelve months from the date of the first application for protection for the invention made in a convention country by the applicant or a person from whom he derives title.

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that the complete specification does not disclose or wrongly mentions the source or geographical origin of biological material used for the invention.

-that the invention so far as claimed in any claim of the complete specification is anticipated having regard to the knowledge, oral or otherwise, available within any local or indigenous community in India or elsewhere.

Examination of Pre-grant Oppositions

Opposition (documents) is sent to the applicant.

A period of 3 months is allowed for receipt of response from the applicant .

Consideration of Pre-grant Opposition

After examining the opposition and the submissions made during the hearing, Controller may Either reject the opposition and

grant the patent Or accept the opposition and

modify/reject the patent application This is to be done within a period of 1

month from the date of completion of opposition proceedings

Grant of a Patent

A certificate of patent is issued within 7 days

Grant of patent is published in the official journal

Terms 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.

Date of patent is the date on which the application for patent is filed.

Post-grant opposition to the patent

Any interested person 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.

Rights of product 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 for the above purpose.

Rights of process patentee

Where a patent covers a process, the patentee has the exclusive right to exclude others from performing, without his authorization, 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.

Renewal of patent

To keep the patent in force, renewal fee is to be paid every year. Application for restoration of a patent that lapses due to non-payment of renewal fees must be made within 18 months of lapse

Patent Infringement

“Infringement” of a patent occurs when a person makes, uses, sells, or imports an invention without the permission of the patent owner.

Patent Infringement

Patents only cover those products or processes described by the claims

An infringing product or process must have each element of the claim

The accused product or process may have more than required by the claim

Patent Due Diligence

1. Patent searches on relevant product lines of primary competitors

2. Compare proposed new product or process to any relevant patents or competitor products

3. If necessary, search for prior art

Date post:	08-May-2015
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Patent Act

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