What is patent?
Patents protect inventions and improvements to existing inventions.
Patent is a monopoly right granted by the Government to exclude others from exploiting or using a particular invention.
In India the law which govern patent right is "Indian Patent Act 1970". This exclusive monopoly granted by a Patent is provided in return for the inventor disclosing the details of the invention to the public. Therefore, the patent is a monopoly right which offers exclusivity to the patentee to exploit the invention for 20 years after which it falls to the public domain. In case of inventions relating to manufacturing of food or drugs or medicine it is for seven years from the date of patent.
While filing a patent for your invention, there are several critical aspects to be followed especially in drafting the claims, which define the scope of the invention. Drafting patent specification is an art by itself, and requires the expertise of skilled professionals in this field.
Under these Acts, there are six types of patent applications in India :
1. Ordinary Application
2. Convention Application
3. PCT International Application
4. PCT National Phase Application
5. Application for Patent of Addition
6. Divisional Application
1. Ordinary Application
It refers to a patent application which doesn’t claim any priority of application made or without reference to any other existing application under process with the Patent office.
2. Convention Application
Refers to the application filed by an applicant claiming priority date based on a similar application filed in one of the convention country. The applicant should file the application in an Indian Patent Office within twelve months from the date of first filing of a similar application in the convention country
The applicant of convention application shall furnish when required by the Controller, copies of specification or documents certified by the chief of the Patent Office of the convention country. A translation of the said documents has to be furnished if the same is not in English.
3. PCT International Application
In this, the applicant gains an international filing date in all the designated countries conferring the late entry (upto 31 months) to the national offices without affecting the priority date. This is the best and most comprehensive method for those applicants seeking protection for the inventions in many countries.
The Indian Patent Office is a receiving office for international applications too.
4. PCT National Phase Application
An international application, as mentioned above, can enter the national phase within 31 months from the international filing date. Called the PCT National Phase Application, this application filed before the Controller in the Indian Patent Office claims the priority and international filing date. The title, description, drawings, abstract and claims filed with the application shall be taken as the complete specification for the purposes of filing in India.
5. Application for Patent of Addition
Application for Patent of Addition comes into play when an applicant feels that his/her invention is a slight modification on the invention for which he/she has already applied for/has patent in India. There is no need to pay separate renewal fee for the patent of addition during the term of the main patent and expires along with the main patent unless it is made independent.
6. Divisional Application
In certain cases, either on his own request or on request of the Controller, when the application made by the applicant claims more than one invention, he may divide the application and file two or more applications as applicable for each of his/her invention.
The priority date for all the divisional application would be same as the one claimed by the parent application.
Aspects:-
Indian patent law tells the important aspects of Indian Patent Act, 1970. India patent Act, 1970 differentiates patentable and non-patentable inventions. It means distinction is made between invention and process of invention. Person should have been true inventor of the product in order to be eligible under Indian law. Person whom patent right has been granted is known as patentee. Patentee has monopoly right over creation, right to surrender, right to give patent to some other person. This right is given by a state in order to safeguard and protect his invention. Under Patent Act, right to prevent others from making any use, selling or distributing the invented patent without any permission from patentee. In case there is an infringement of the patentee's law then a suit may be filed for infringement.
All inventions are not patentable under the Indian Patent Act. The Indian patent act requires the invention to be new, useful and Non-obvious. Besides the invention must pass through certain parameters prescribed by government of India, such as inventions that are frivolous or claims anything obviously contrary to well established natural laws, or where primary or intended use, or commercial exploitation of invention could be contrary to public order or morality or causes serious prejudice to human, animal or plant life, or health, or to the environment or mere discovery of scientific principle or formulation of an abstract theory or discovery of any living thing or non living substances occurring in nature etc.
Classification:-
1) Ordinary Patent- The first application for patent filed in the Patent Office without claiming priority from any application or without any reference to any other application under process in the Patent office is called an ordinary application.
2) Patents of addition- Patent of addition is an application made for a patent in respect of any improvement or modification of an invention described or disclosed in the complete specification already applied for or has a patent.
In order to be patentable an improvement, should be something more than a mere workshop improvement and must independently satisfy the test of invention. The major benefit is the exemption of renewal fee so long as the main patent is renewed. A patent of addition lapses with the cessation of the main patent.
3) Conventional Patent- When an applicant files a patent application, claiming a priority date based on the same or substantially similar application filed in one or more of the convention countries, it is called a convention application. To get a convention status, an applicant should file the application before any of the patent offices within 12 months from the date of first application in the convention country.
Amendments:-
1856
THE ACT VI OF 1856 ON PROTECTION OF INVENTIONS BASED ON THE BRITISH PATENT LAW OF 1852. CERTAIN EXCLUSIVE PRIVILEGES GRANTED TO INVENTORS OF NEW MANUFACTURERS FOR A PERIOD OF 14 YEARS.
1859
THE ACT MODIFIED AS ACT XV; PATENT MONOPOLIES CALLED EXCLUSIVE PRIVILEGES (MAKING. SELLING AND USING INVENTIONS IN INDIA AND AUTHORIZING OTHERS TO DO SO FOR 14 YEARS FROM DATE OF FILING SPECIFICATION).
1872 THE PATENTS & DESIGNS PROTECTION ACT.
1883
THE PROTECTION OF INVENTIONS ACT.
1888
CONSOLIDATED AS THE INVENTIONS & DESIGNS ACT.
1911
THE INDIAN PATENTS & DESIGNS ACT.
1972
THE PATENTS ACT (ACT 39 OF 1970) CAME INTO FORCE ON 20TH APRIL 1972.
1999
ON MARCH 26, 1999 PATENTS (AMENDMENT) ACT, (1999) CAME INTO FORCE FROM 01-01-1995.
2002
THE PATENTS (AMENDMENT) ACT 2002 CAME INTO FORCE FROM 2OTH MAY 2003
2005 THE PATENTS (AMENDMENT) ACT 2005 EFFECTIVE FROM Ist JANUARY 2005
1. The first legislation in India relating to patents was the Act VI of 1856. The objective of this legislation was to encourage inventions of new and useful manufactures and to induce inventors to disclose secret of their inventions. The Act was subsequently repealed by Act IX of 1857 since it had been enacted without the approval of the British Crown . Fresh legislation for granting ‘exclusive privileges’ was introduced in 1 859 as Act XV of 1859. This legislation contained certain modifications of the earlier legislation, namely, grant of exclusive privileges to useful inventions only and extension of priority period from 6 months to 12 months. This Act excluded importers from the definition of inventor. This Act was based on the United Kingdom Act of 1852 with certain departures which include allowing assignees to make application in India and also taking prior public use or publication in India or United Kingdom for the purpose of ascertaining novelty.
2. In 1872, the Act of 1859 was consolidated to provide protection relating to designs. It was renamed as “The Patterns and Designs Protection Act” under Act XIII of 1872. The Act of 1872 was further amended in 1883 (XVI of 1883) to introduce a provision to protect novelty of the invention, which prior to making application for their protection were disclosed in the Exhibition of India. A grace period of 6 months was provided for filing such applications after the date of the opening of such Exhibition.
3. This Act remained in force for about 30 years without any change but in the year 1883, certain modifications in the patent law were made in United Kingdom and it was considered that those modifications should also be incorporated in the Indian law. In 1888, an Act was introduced to consolidate and amend the law relating to invention and designs in conformity with the amendments made in the U.K. law.
4. The Indian Patents and Designs Act, 1911, (Act II of 1911) replaced all the previous Acts. This Act brought patent administration under the management of Controller of Patents for the first time. This Act was further amended in 1920 to enter into reciprocal arrangements with UK and other countries for securing priority. In 1930, further amendments were made to incorporate, inter-alia, provisions relating to grant of secret patents, patent of addition, use of invention by Government, powers of the Controller to rectify register of patent and increase of term of the patent from 14 years to 16 years. In 1945, an amendment was made to provide for filing of provisional specification and submission of complete specification within nine months.
5. After Independence, it was felt that the Indian Patents & Designs Act, 1911 was not fulfilling its objective. It was found desirable to enact comprehensive patent law owing to substantial changes in political and economic conditions in the country. Accordingly, the Government of India constituted a committee under the Chairmanship of Justice (Dr.) Bakshi Tek Chand, a retired Judge of Lahore High Court, in 1949 to review the patent law in India in order to ensure that the patent system is conducive to the national interest.
6. The committee submitted its interim report on 4th August, 1949 with recommendations for prevention of misuse or abuse of patent right in India and suggested amendments to sections 22, 23 & 23A of the Patents & Designs Act, 1911 on the lines of the United Kingdom Acts 1919 and 1949. The committee also observed that the Patents Act should contain clear indication to ensure that food and medicine and surgical and curative devices are made available to the public at the cheapest price commensurate with giving reasonable compensation to the patentee.
7. Based on the above recommendation of the Committee, the 1911 Act was amended in 1950(Act XXXII of 1950) in relation to working of inventions and compulsory licence/revocation. Other provisions were related to endorsement of the patent with the words ‘licence of right’ on an application by the Government so that the Controller could grant licences. In 1952 (Act LXX of 1952) an amendment was made to provide compulsory licence in relation to patents in respect of food and medicines, insecticide, germicide or fungicide and a process for producing substance or any invention relating to surgical or curative devices. ress for the consideration of the bill and it was allowed to lapse.
8. In 1957, the Government of India appointed Justice N. Rajagopala Ayyangar Committee to examine the question of revision of the Patent Law and advise government accordingly. The report of the Committee, which comprised of two parts, was submitted in September, 1959. The first part dealt with general aspects of the Patent Law and the second part gave detailed note on the several clauses of the lapsed bills 1953. The first part also dealt with evils of the patent system and solution with recommendations in regards to the law. The committee recommended retention of the Patent System, despite its shortcomings. This report recommended major changes in the law which formed the basis of the introduction of the Patents Bill, 1965. This bill was introduced in the Lok Sabha on 21st September, 1965, which however lapsed. In 1967, again an amended bill was introduced which was referred to a Joint Parliamentary Committee and on the final recommendation of the Committee, the Patents Act, 1970 was passed. This Act repealed and replaced the 1911 Act so far as the patents law was concerned. However, the 1911 Act continued to be applicable to designs. Most of the provisions of the 1970 Act were brought into force on 20th April 1972 with publication of the Patent Rules, 1972.
9. This Act remained in force for about 24 years without any change till December 1994. An ordinance effecting certain changes in the Act was issued on 31st December 1994, which ceased to operate after six months. Subsequently, another ordinance was issued in 1999. This ordinance was subsequently replaced by t he Patents (Amendment) Act, 1999 that was brought into force retrospectively from 1st January, 1995. The amended Act provided for filing of applications for product patents in the areas of drugs, pharmaceuticals and agro chemicals though such patents were not allowed.
10. The second amendment to the 1970 Act was made through the Patents (Amendment) Act, 2002 (Act 38 0f 2002). This Act came into force on 20th May 2003 with the introduction of the new Patent Rules, 2003 by replacing the earlier Patents Rules, 1972
11. The third amendment to the Patents Act 1970 was introduced through the Patents (Amendment) Ordinance, 2004 w.e.f. 1st January, 2005. This Ordinance was later replaced by the Patents (Amendment) Act 2005 (Act 15 Of 2005) on 4th April, 2005 which was brought into force from 1-1-2005.
Patent Grant Procedure:
A. FILING
1. Applicant : An application for a patent can be filed by the true and first inventor. It can also be filed the by the assignee or legal representative of the inventor. If an application is filed by the assignee, proof of assignment has to be submitted along with the application. The applicant can be national of any country.
2. Form of Application: Every application shall be accompanied by a provisional or complete specification. Provisional applications are generally filed at a stage where some experimentation is required to perfect the invention.
Filing of a provisional specification allows the applicant to get an early application date.
A Provisional Specification shall contain:
a. Title,
b. Written Description,
c. Drawings, if necessary and
d. Sample or model if required.
The complete specification shall contain:
a. Title,
b. Abstract,
c. Written Description,
d. Drawings (where necessary),
e. Sample or Model (if required by the examiner),
f. Enablement and BestMode,
g. Claims and
h. Deposit (Microorganisms)
a. Title
Title is generally a word or a phrase indicating the content of the invention.
b. Abstract
It is a short paragraph describing the invention in a precise manner.
c. Written Description
This is an important part of the specification. It contains the complete and elaborate description of the invention.
Written Description generally starts with a background of the invention. The written description explains the invention clearly and comprehensively, with the help of examples, drawings and models, where and when required.
d. Drawings
The written description might be supplemented with drawings, where and when required. The drawings should be clearly labeled.
e. Samples or Models
On initiative of the inventor or when required by the patent examiner samples or models might be submitted to the patent office. Such samples or models will provide a better understanding of the invention.
f. Enablement and Best Mode
The applicant has to enable his invention in order to allow a person with ordinary skill in the art to make and work the invention. He should not only enable, the applicant should also describe the best mode of carrying out the invention.
g. Claims
Claims define the metes and bounds of the invention. They are the most important elements in a specification.
h. Deposit
If an invention involves microorganisms, which cannot be described by writing. A sample of the microorganism has to be deposited at an internationally recognised depository. There is an internationally recognised depository at Chandigarh
A provisional specification cannot be filed if an application has been filed in a foreign country (Convention country) before the Indian filing and if the application is a PCT application. A complete specification has to be filed within twelve months (extendable to fifteen months) of filing the provisional specification. Each specification should contain only one invention. If there is more than one invention in a specification, separate applications have to be filed for each invention.
3. Priority Date
Priority date is the date of first filing allotted by the patent office to an application. If a provisional application is followed by a complete application, the priority date shall be date of filing of the provisional application. If an Indian application is filed after a foreign or PCT application, the priority date shall be the date of filing of the foreign or PCT application. If an application is divided into two applications, the priority date shall be date of filing of the parent application.
Priority date is the date of reference used by the patent to determine the newness of the invention. If the claimed invention is part of public knowledge before the priority date, it will not be eligible for a patent. Under US Law, priority date is pushed back to the date of conception for determining novelty and Non-obviousness.
4. Place of Filing
Patent Application can be filed at any of the four patent offices in India. Patent Offices are located at Kolkata, New Delhi, Chennai and Mumbai.
5. Documents to be submitted at the time of filing.
The following documents have to be submitted at the time of filing a patent application:
a. Form 1 - Application for the grant of patent.
b. Form 2 - Provisional or Complete Specification.
c. Form 3 - Statement and undertaking by the applicant.
d. Form 5 - Declaration as to inventor-ship.
e. Form 26 - Authorization of patent agent or any other person.
Priority document details have to be filed for a Convention application.
B. PUBLICATION
A patent application will be published on expiry of eighteen months after the priority date. It can be published earlier, if such a request is made by the applicant. The application will not be published if directions are given for secrecy, until the term of those directions expires. It will also not be published if the application is withdrawn three months before publication date.
On publication, specification including drawings and deposits shall be open for public inspection. The rights of the patentee start from the date of publication but they cannot be enforced until after patent grant.
C. EXAMINATION
1. Request for Examination
The process of examination starts with a request for examination. The request has to be made within 36 months from the date of priority or filing. However, if secrecy directions have been given for the application, the request can be made six months after the directions are revoked or thirty six months from the date of priority or filing, if that date is later.
2. Examination
On receiving the request, the controller shall direct the patent application to the Examiner for examination. To start with, the examiner makes a formal examination by verifying the propriety and correctness of all documents filed with the application. Later, he verifies the patentability of the application. The patentability analysis includes all patentability requirements.
After confirming that the application falls within the scope of patentable subject matter, the examiner conducts a prior art search to check if there is prior art, which anticipates the invention claimed. Prior art search for anticipation includes search for anticipation by publication, filing of complete specification, etc. He then verifies the existence of inventive step, Industrial application, and Enablement and Best mode.
The examiner will give the examination report within 1 month from the date of reference by controller and that term shall not exceed three months. If the examination report is adverse, the controller sends a notice to the applicant and gives him an opportunity to correct and if necessary an opportunity of hearing. The Controller might ask the applicant to amend the application in order to proceed further. If the applicant does not make such changes, the application might be rejected.
The Controller has the power to divide the application, post date the application, substitute applicants and reject the application. An order of division will be given if the application contains more than one invention and if it is required to file separate applications for each invention. The application might be post dated to a period of six months if requested by the applicant. Substitution of inventors is generally done if the inventor has been wrongfully mentioned or if a joint inventor has not been mentioned in the application.
The controller has the power to reject the application, if the applicant does not comply with his requirements.
D. OPPOSITION
1. Pre-grant Opposition
Any person can file an opposition for grant of patent after the application has been published. Opposition may be filed on any of the following grounds:
a. Non compliance of patentability requirements.
b. Nondisclosure or Wrongful disclosure of genetic resources or traditional knowledge.
2. Post-grant Opposition
Any person can file an opposition within a period twelve months after the grant of a patent. It can be filed based on the following grounds:
a. Wrongful obtainment of the invention by the inventor.
b. Publication of the claimed invention before the priority date.
c. Sale or Import of the invention before the priority date.
d. Public use or display of the invention.
e. The invention doesn’t satisfy the patentability requirements.
f. Disclosure of false information to patent office.
g. Application for the invention is not filed within twelve months from the date of convention application.
h. Nondisclosure or wrongful disclosure of the biological source.
i. Invention is anticipated by traditional knowledge.
3. Process of Opposition
On receiving a notice of opposition, the controller notifies the patentee. He then constitutes an Opposition board to deal with the opposition. The Opposition board decides the issues after giving reasonable opportunity of hearing to both the parties. The Opposition board might invalidate the patent, require amendments or maintain the status quo. If amendments are required, they have to be made within the prescribed period in order to maintain the patent.
E. GRANT
If the application satisfies all the requirements of the patent act, the application is said to be in order for grant. An application in order for grant shall be granted expeditiously. A granted patent shall be published in the official gazette and shall be open for public inspection. Every granted patent shall be given the filing date. The patent will be valid throughout India. A granted patent gives the patent holder the exclusive right to make, use, sell, offer for sale and import the product or use the process. However, the government can make use of the patent for its own purposes or for distributing an invention relating to medicine to hospitals and dispensaries. Furthermore, any person can make use of the patent for experiment or education.
Limitations:
• An invention which claims anything obvious contrary to well established natural laws
• An invention the intended use of which can be injurious to public health
• The mere discovery of a scientific principle or the formulation of an abstract theory.
• The mere discovery of any new property of 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.
• A substance obtained by a mere admixture resulting in the aggregation of the properties of the components thereof or a process for producing such substance.
• Those which are not inventions
• Invention relating to atomic energy. 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.
Patents protect inventions and improvements to existing inventions.
Patent is a monopoly right granted by the Government to exclude others from exploiting or using a particular invention.
In India the law which govern patent right is "Indian Patent Act 1970". This exclusive monopoly granted by a Patent is provided in return for the inventor disclosing the details of the invention to the public. Therefore, the patent is a monopoly right which offers exclusivity to the patentee to exploit the invention for 20 years after which it falls to the public domain. In case of inventions relating to manufacturing of food or drugs or medicine it is for seven years from the date of patent.
While filing a patent for your invention, there are several critical aspects to be followed especially in drafting the claims, which define the scope of the invention. Drafting patent specification is an art by itself, and requires the expertise of skilled professionals in this field.
Under these Acts, there are six types of patent applications in India :
1. Ordinary Application
2. Convention Application
3. PCT International Application
4. PCT National Phase Application
5. Application for Patent of Addition
6. Divisional Application
1. Ordinary Application
It refers to a patent application which doesn’t claim any priority of application made or without reference to any other existing application under process with the Patent office.
2. Convention Application
Refers to the application filed by an applicant claiming priority date based on a similar application filed in one of the convention country. The applicant should file the application in an Indian Patent Office within twelve months from the date of first filing of a similar application in the convention country
The applicant of convention application shall furnish when required by the Controller, copies of specification or documents certified by the chief of the Patent Office of the convention country. A translation of the said documents has to be furnished if the same is not in English.
3. PCT International Application
In this, the applicant gains an international filing date in all the designated countries conferring the late entry (upto 31 months) to the national offices without affecting the priority date. This is the best and most comprehensive method for those applicants seeking protection for the inventions in many countries.
The Indian Patent Office is a receiving office for international applications too.
4. PCT National Phase Application
An international application, as mentioned above, can enter the national phase within 31 months from the international filing date. Called the PCT National Phase Application, this application filed before the Controller in the Indian Patent Office claims the priority and international filing date. The title, description, drawings, abstract and claims filed with the application shall be taken as the complete specification for the purposes of filing in India.
5. Application for Patent of Addition
Application for Patent of Addition comes into play when an applicant feels that his/her invention is a slight modification on the invention for which he/she has already applied for/has patent in India. There is no need to pay separate renewal fee for the patent of addition during the term of the main patent and expires along with the main patent unless it is made independent.
6. Divisional Application
In certain cases, either on his own request or on request of the Controller, when the application made by the applicant claims more than one invention, he may divide the application and file two or more applications as applicable for each of his/her invention.
The priority date for all the divisional application would be same as the one claimed by the parent application.
Aspects:-
Indian patent law tells the important aspects of Indian Patent Act, 1970. India patent Act, 1970 differentiates patentable and non-patentable inventions. It means distinction is made between invention and process of invention. Person should have been true inventor of the product in order to be eligible under Indian law. Person whom patent right has been granted is known as patentee. Patentee has monopoly right over creation, right to surrender, right to give patent to some other person. This right is given by a state in order to safeguard and protect his invention. Under Patent Act, right to prevent others from making any use, selling or distributing the invented patent without any permission from patentee. In case there is an infringement of the patentee's law then a suit may be filed for infringement.
All inventions are not patentable under the Indian Patent Act. The Indian patent act requires the invention to be new, useful and Non-obvious. Besides the invention must pass through certain parameters prescribed by government of India, such as inventions that are frivolous or claims anything obviously contrary to well established natural laws, or where primary or intended use, or commercial exploitation of invention could be contrary to public order or morality or causes serious prejudice to human, animal or plant life, or health, or to the environment or mere discovery of scientific principle or formulation of an abstract theory or discovery of any living thing or non living substances occurring in nature etc.
Classification:-
1) Ordinary Patent- The first application for patent filed in the Patent Office without claiming priority from any application or without any reference to any other application under process in the Patent office is called an ordinary application.
2) Patents of addition- Patent of addition is an application made for a patent in respect of any improvement or modification of an invention described or disclosed in the complete specification already applied for or has a patent.
In order to be patentable an improvement, should be something more than a mere workshop improvement and must independently satisfy the test of invention. The major benefit is the exemption of renewal fee so long as the main patent is renewed. A patent of addition lapses with the cessation of the main patent.
3) Conventional Patent- When an applicant files a patent application, claiming a priority date based on the same or substantially similar application filed in one or more of the convention countries, it is called a convention application. To get a convention status, an applicant should file the application before any of the patent offices within 12 months from the date of first application in the convention country.
Amendments:-
1856
THE ACT VI OF 1856 ON PROTECTION OF INVENTIONS BASED ON THE BRITISH PATENT LAW OF 1852. CERTAIN EXCLUSIVE PRIVILEGES GRANTED TO INVENTORS OF NEW MANUFACTURERS FOR A PERIOD OF 14 YEARS.
1859
THE ACT MODIFIED AS ACT XV; PATENT MONOPOLIES CALLED EXCLUSIVE PRIVILEGES (MAKING. SELLING AND USING INVENTIONS IN INDIA AND AUTHORIZING OTHERS TO DO SO FOR 14 YEARS FROM DATE OF FILING SPECIFICATION).
1872 THE PATENTS & DESIGNS PROTECTION ACT.
1883
THE PROTECTION OF INVENTIONS ACT.
1888
CONSOLIDATED AS THE INVENTIONS & DESIGNS ACT.
1911
THE INDIAN PATENTS & DESIGNS ACT.
1972
THE PATENTS ACT (ACT 39 OF 1970) CAME INTO FORCE ON 20TH APRIL 1972.
1999
ON MARCH 26, 1999 PATENTS (AMENDMENT) ACT, (1999) CAME INTO FORCE FROM 01-01-1995.
2002
THE PATENTS (AMENDMENT) ACT 2002 CAME INTO FORCE FROM 2OTH MAY 2003
2005 THE PATENTS (AMENDMENT) ACT 2005 EFFECTIVE FROM Ist JANUARY 2005
1. The first legislation in India relating to patents was the Act VI of 1856. The objective of this legislation was to encourage inventions of new and useful manufactures and to induce inventors to disclose secret of their inventions. The Act was subsequently repealed by Act IX of 1857 since it had been enacted without the approval of the British Crown . Fresh legislation for granting ‘exclusive privileges’ was introduced in 1 859 as Act XV of 1859. This legislation contained certain modifications of the earlier legislation, namely, grant of exclusive privileges to useful inventions only and extension of priority period from 6 months to 12 months. This Act excluded importers from the definition of inventor. This Act was based on the United Kingdom Act of 1852 with certain departures which include allowing assignees to make application in India and also taking prior public use or publication in India or United Kingdom for the purpose of ascertaining novelty.
2. In 1872, the Act of 1859 was consolidated to provide protection relating to designs. It was renamed as “The Patterns and Designs Protection Act” under Act XIII of 1872. The Act of 1872 was further amended in 1883 (XVI of 1883) to introduce a provision to protect novelty of the invention, which prior to making application for their protection were disclosed in the Exhibition of India. A grace period of 6 months was provided for filing such applications after the date of the opening of such Exhibition.
3. This Act remained in force for about 30 years without any change but in the year 1883, certain modifications in the patent law were made in United Kingdom and it was considered that those modifications should also be incorporated in the Indian law. In 1888, an Act was introduced to consolidate and amend the law relating to invention and designs in conformity with the amendments made in the U.K. law.
4. The Indian Patents and Designs Act, 1911, (Act II of 1911) replaced all the previous Acts. This Act brought patent administration under the management of Controller of Patents for the first time. This Act was further amended in 1920 to enter into reciprocal arrangements with UK and other countries for securing priority. In 1930, further amendments were made to incorporate, inter-alia, provisions relating to grant of secret patents, patent of addition, use of invention by Government, powers of the Controller to rectify register of patent and increase of term of the patent from 14 years to 16 years. In 1945, an amendment was made to provide for filing of provisional specification and submission of complete specification within nine months.
5. After Independence, it was felt that the Indian Patents & Designs Act, 1911 was not fulfilling its objective. It was found desirable to enact comprehensive patent law owing to substantial changes in political and economic conditions in the country. Accordingly, the Government of India constituted a committee under the Chairmanship of Justice (Dr.) Bakshi Tek Chand, a retired Judge of Lahore High Court, in 1949 to review the patent law in India in order to ensure that the patent system is conducive to the national interest.
6. The committee submitted its interim report on 4th August, 1949 with recommendations for prevention of misuse or abuse of patent right in India and suggested amendments to sections 22, 23 & 23A of the Patents & Designs Act, 1911 on the lines of the United Kingdom Acts 1919 and 1949. The committee also observed that the Patents Act should contain clear indication to ensure that food and medicine and surgical and curative devices are made available to the public at the cheapest price commensurate with giving reasonable compensation to the patentee.
7. Based on the above recommendation of the Committee, the 1911 Act was amended in 1950(Act XXXII of 1950) in relation to working of inventions and compulsory licence/revocation. Other provisions were related to endorsement of the patent with the words ‘licence of right’ on an application by the Government so that the Controller could grant licences. In 1952 (Act LXX of 1952) an amendment was made to provide compulsory licence in relation to patents in respect of food and medicines, insecticide, germicide or fungicide and a process for producing substance or any invention relating to surgical or curative devices. ress for the consideration of the bill and it was allowed to lapse.
8. In 1957, the Government of India appointed Justice N. Rajagopala Ayyangar Committee to examine the question of revision of the Patent Law and advise government accordingly. The report of the Committee, which comprised of two parts, was submitted in September, 1959. The first part dealt with general aspects of the Patent Law and the second part gave detailed note on the several clauses of the lapsed bills 1953. The first part also dealt with evils of the patent system and solution with recommendations in regards to the law. The committee recommended retention of the Patent System, despite its shortcomings. This report recommended major changes in the law which formed the basis of the introduction of the Patents Bill, 1965. This bill was introduced in the Lok Sabha on 21st September, 1965, which however lapsed. In 1967, again an amended bill was introduced which was referred to a Joint Parliamentary Committee and on the final recommendation of the Committee, the Patents Act, 1970 was passed. This Act repealed and replaced the 1911 Act so far as the patents law was concerned. However, the 1911 Act continued to be applicable to designs. Most of the provisions of the 1970 Act were brought into force on 20th April 1972 with publication of the Patent Rules, 1972.
9. This Act remained in force for about 24 years without any change till December 1994. An ordinance effecting certain changes in the Act was issued on 31st December 1994, which ceased to operate after six months. Subsequently, another ordinance was issued in 1999. This ordinance was subsequently replaced by t he Patents (Amendment) Act, 1999 that was brought into force retrospectively from 1st January, 1995. The amended Act provided for filing of applications for product patents in the areas of drugs, pharmaceuticals and agro chemicals though such patents were not allowed.
10. The second amendment to the 1970 Act was made through the Patents (Amendment) Act, 2002 (Act 38 0f 2002). This Act came into force on 20th May 2003 with the introduction of the new Patent Rules, 2003 by replacing the earlier Patents Rules, 1972
11. The third amendment to the Patents Act 1970 was introduced through the Patents (Amendment) Ordinance, 2004 w.e.f. 1st January, 2005. This Ordinance was later replaced by the Patents (Amendment) Act 2005 (Act 15 Of 2005) on 4th April, 2005 which was brought into force from 1-1-2005.
Patent Grant Procedure:
A. FILING
1. Applicant : An application for a patent can be filed by the true and first inventor. It can also be filed the by the assignee or legal representative of the inventor. If an application is filed by the assignee, proof of assignment has to be submitted along with the application. The applicant can be national of any country.
2. Form of Application: Every application shall be accompanied by a provisional or complete specification. Provisional applications are generally filed at a stage where some experimentation is required to perfect the invention.
Filing of a provisional specification allows the applicant to get an early application date.
A Provisional Specification shall contain:
a. Title,
b. Written Description,
c. Drawings, if necessary and
d. Sample or model if required.
The complete specification shall contain:
a. Title,
b. Abstract,
c. Written Description,
d. Drawings (where necessary),
e. Sample or Model (if required by the examiner),
f. Enablement and BestMode,
g. Claims and
h. Deposit (Microorganisms)
a. Title
Title is generally a word or a phrase indicating the content of the invention.
b. Abstract
It is a short paragraph describing the invention in a precise manner.
c. Written Description
This is an important part of the specification. It contains the complete and elaborate description of the invention.
Written Description generally starts with a background of the invention. The written description explains the invention clearly and comprehensively, with the help of examples, drawings and models, where and when required.
d. Drawings
The written description might be supplemented with drawings, where and when required. The drawings should be clearly labeled.
e. Samples or Models
On initiative of the inventor or when required by the patent examiner samples or models might be submitted to the patent office. Such samples or models will provide a better understanding of the invention.
f. Enablement and Best Mode
The applicant has to enable his invention in order to allow a person with ordinary skill in the art to make and work the invention. He should not only enable, the applicant should also describe the best mode of carrying out the invention.
g. Claims
Claims define the metes and bounds of the invention. They are the most important elements in a specification.
h. Deposit
If an invention involves microorganisms, which cannot be described by writing. A sample of the microorganism has to be deposited at an internationally recognised depository. There is an internationally recognised depository at Chandigarh
A provisional specification cannot be filed if an application has been filed in a foreign country (Convention country) before the Indian filing and if the application is a PCT application. A complete specification has to be filed within twelve months (extendable to fifteen months) of filing the provisional specification. Each specification should contain only one invention. If there is more than one invention in a specification, separate applications have to be filed for each invention.
3. Priority Date
Priority date is the date of first filing allotted by the patent office to an application. If a provisional application is followed by a complete application, the priority date shall be date of filing of the provisional application. If an Indian application is filed after a foreign or PCT application, the priority date shall be the date of filing of the foreign or PCT application. If an application is divided into two applications, the priority date shall be date of filing of the parent application.
Priority date is the date of reference used by the patent to determine the newness of the invention. If the claimed invention is part of public knowledge before the priority date, it will not be eligible for a patent. Under US Law, priority date is pushed back to the date of conception for determining novelty and Non-obviousness.
4. Place of Filing
Patent Application can be filed at any of the four patent offices in India. Patent Offices are located at Kolkata, New Delhi, Chennai and Mumbai.
5. Documents to be submitted at the time of filing.
The following documents have to be submitted at the time of filing a patent application:
a. Form 1 - Application for the grant of patent.
b. Form 2 - Provisional or Complete Specification.
c. Form 3 - Statement and undertaking by the applicant.
d. Form 5 - Declaration as to inventor-ship.
e. Form 26 - Authorization of patent agent or any other person.
Priority document details have to be filed for a Convention application.
B. PUBLICATION
A patent application will be published on expiry of eighteen months after the priority date. It can be published earlier, if such a request is made by the applicant. The application will not be published if directions are given for secrecy, until the term of those directions expires. It will also not be published if the application is withdrawn three months before publication date.
On publication, specification including drawings and deposits shall be open for public inspection. The rights of the patentee start from the date of publication but they cannot be enforced until after patent grant.
C. EXAMINATION
1. Request for Examination
The process of examination starts with a request for examination. The request has to be made within 36 months from the date of priority or filing. However, if secrecy directions have been given for the application, the request can be made six months after the directions are revoked or thirty six months from the date of priority or filing, if that date is later.
2. Examination
On receiving the request, the controller shall direct the patent application to the Examiner for examination. To start with, the examiner makes a formal examination by verifying the propriety and correctness of all documents filed with the application. Later, he verifies the patentability of the application. The patentability analysis includes all patentability requirements.
After confirming that the application falls within the scope of patentable subject matter, the examiner conducts a prior art search to check if there is prior art, which anticipates the invention claimed. Prior art search for anticipation includes search for anticipation by publication, filing of complete specification, etc. He then verifies the existence of inventive step, Industrial application, and Enablement and Best mode.
The examiner will give the examination report within 1 month from the date of reference by controller and that term shall not exceed three months. If the examination report is adverse, the controller sends a notice to the applicant and gives him an opportunity to correct and if necessary an opportunity of hearing. The Controller might ask the applicant to amend the application in order to proceed further. If the applicant does not make such changes, the application might be rejected.
The Controller has the power to divide the application, post date the application, substitute applicants and reject the application. An order of division will be given if the application contains more than one invention and if it is required to file separate applications for each invention. The application might be post dated to a period of six months if requested by the applicant. Substitution of inventors is generally done if the inventor has been wrongfully mentioned or if a joint inventor has not been mentioned in the application.
The controller has the power to reject the application, if the applicant does not comply with his requirements.
D. OPPOSITION
1. Pre-grant Opposition
Any person can file an opposition for grant of patent after the application has been published. Opposition may be filed on any of the following grounds:
a. Non compliance of patentability requirements.
b. Nondisclosure or Wrongful disclosure of genetic resources or traditional knowledge.
2. Post-grant Opposition
Any person can file an opposition within a period twelve months after the grant of a patent. It can be filed based on the following grounds:
a. Wrongful obtainment of the invention by the inventor.
b. Publication of the claimed invention before the priority date.
c. Sale or Import of the invention before the priority date.
d. Public use or display of the invention.
e. The invention doesn’t satisfy the patentability requirements.
f. Disclosure of false information to patent office.
g. Application for the invention is not filed within twelve months from the date of convention application.
h. Nondisclosure or wrongful disclosure of the biological source.
i. Invention is anticipated by traditional knowledge.
3. Process of Opposition
On receiving a notice of opposition, the controller notifies the patentee. He then constitutes an Opposition board to deal with the opposition. The Opposition board decides the issues after giving reasonable opportunity of hearing to both the parties. The Opposition board might invalidate the patent, require amendments or maintain the status quo. If amendments are required, they have to be made within the prescribed period in order to maintain the patent.
E. GRANT
If the application satisfies all the requirements of the patent act, the application is said to be in order for grant. An application in order for grant shall be granted expeditiously. A granted patent shall be published in the official gazette and shall be open for public inspection. Every granted patent shall be given the filing date. The patent will be valid throughout India. A granted patent gives the patent holder the exclusive right to make, use, sell, offer for sale and import the product or use the process. However, the government can make use of the patent for its own purposes or for distributing an invention relating to medicine to hospitals and dispensaries. Furthermore, any person can make use of the patent for experiment or education.
Limitations:
• An invention which claims anything obvious contrary to well established natural laws
• An invention the intended use of which can be injurious to public health
• The mere discovery of a scientific principle or the formulation of an abstract theory.
• The mere discovery of any new property of 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.
• A substance obtained by a mere admixture resulting in the aggregation of the properties of the components thereof or a process for producing such substance.
• Those which are not inventions
• Invention relating to atomic energy. 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.
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