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PATENTS ACT 1970

PATENT- DEFINITION

Exclusive rightfor being the true and firstinventorof a

product or process,granted by the govt. for a limited

period, to exclude othersfrom making, using, sellingor importing the patented product or process without

his consent, in exchange of full disclosure of his

invention .

Term- 20 years from the Date of Filing(S.53)

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INVENTION- Definition

Sec. 2(1)(j): Invention means a new product or

process involving an inventive step & capable

of industrial application

1. Process, method or manner of manufacture,

2. Machine, apparatus or other article,

3. Substance produced by manufacture,

And includes any new & useful improvement ofany of them.

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REQUIREMENTS OF INVENTION

NEW: that no other inventor has obtained a patent for the sameinvention.

NON-OBVIOUS that the subject matter of an invention was notobvious at the time the invention was made to a person having ordinary

skill in the art to which the said subject matter pertains.

USEFUL :that the machine, product, or process is one that can be usedin industry or commerce.

Novelty

Non-Obviousness (an inventive step) Utility (Capable of industrial application)

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NOT INVENTIONS (S.3)

:

1. An invention which is frivolous, or claims anything contrary toexisting natural laws.

2. An invention whose use would be contrary to public order or morality,

or which will be prejudicial to health or environment3. Discovery of a scientific principle or the formulation of an abstract

theory.

4. Discovery of any living thing or non living substance occurring in nature

5. Discovery of a new property or use of a known substance, unless itresults in a new product

6. A substance obtained by mere admixture7. Arrangement or rearrangement or duplication of known devices .

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NOT INVENTIONS (S.3)(contd.)

8. A method of agriculture or horticulture, seeds, etc.

9. Any process of medicinal, surgical application on human beings oranimals to render them free of disease.

10. Plants, seeds, animals and biological processes for production orpropagation of plants and animals

11. Computer program, per se, other than its application to industry orcombination with hardware (embedded software)

12. A mathematical method or a business method

13. Literary, dramatic, musical, artistic, aesthetic creation includingcinematic work or television production

14. A method of playing game, presentation of information

15. Integrated circuits16. Traditional knowledge, or aggregation of traditionally known

components

17. Atomic energy

.

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Process of Grant of Patent

1. Application (s 10)

2. Publication (S.11-A),

3. Examination (S.11-B, 12).

4. Pre-Grant Opposition (after publication and before grant)

5. Grant of patent (Notification)6. Post-Grant opposition (within an year of grant)

7. Maintenance of patent (renewal after three years-renewal fee)

8. Working of patent (Satisfactory availability of the patented product atreasonable prices-Compulsory licensing by the Controller , if required)

9. Revocation of patent (s 64- wrongfully obtained)

10.Remedies against abuse of patent

(S . 66, revocation in public interest bycentral govt.-mischievous)

11. Penalties ( S. 120- falsely representing Patented, Patent applied for-fine upto Rs 1 lakh)

12 Infringement (S.108, injunction, either damages or an account for profits)

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Process of Grant of Patent (contd.)

1. Application with complete specifications has to be submitted to Controllerof Patents.

2. The application along with an abstract ispublished after 18 months of filing,unless the applicant requests early publication

3. Applicant may apply for examination of his application within 48 months of

filing (31 months incase of applications under Patent Cooperation treaty)4. The application is then referred to an Examiner.

5. Examiner checks its legality and authenticity and reports to the Controller.

6. If there are discrepancies in the application , objections are raised whichmust be answered within an yearfrom the date of report.

7. Any one interested can object after the publication and before grant of the

patent

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Process of Grant of Patent (contd.)

8. Grant of the patent is notified in the Official Gazette,PatentOffice journalpublished every week

9. Post grant objections can be made within an year of grantofthe patent

10. Maintenance (renewal)fee has to be paid after the third year11. Lapse of the Patent on failure to renew, restoration within 18

months from the date of lapse on payment of fee

11. Controller may grant compulsory licence if the patent is not

working (product is not available in sufficient quantity atreasonable prices).

12. PATENTEE CAN SELL OR ASSIGN HIS PATENT TOOTHER PERSONS

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complete specificationThe patent specification generally comprises of the title ofthe invention indicating its technical field, (i)prior art,

(ii) draw backs in the prior art,

(iii) the solution provided by the inventor to remove the

drawbacks of the prior art,(iv) concise but sufficient description of the invention and

its usefulness,

(v) drawings (if any) and

(vi) details of best method of its working. The completespecification must contain at least one claim orstatement of claims defining the scope of the inventionfor which protection is sought

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provisional specification

Indian patent law follows first to filesystem. Provisional specification describes thenature of the invention to have the priority date

of filing of the application in which the inventiveidea has been disclosed. It must be followed by acomplete specification describing the details ofthe invention along with a statement of claimswithin 12 months after filing of the provisional

application. If the complete specification is notfiled within the prescribed period, the applicationis treated as abandoned

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Prior art

Prior art ( state of the art) is allinformation that has been disclosed to thepublic in any form about an invention

before a given date. Prior art includesthings like any patents related to yourinvention, any published articles aboutyour invention, and any public

demonstrations. If an invention has been described in prior

art, a patent on that invention is not valid.

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Prior art searchHow can one find out that an invention isalready patented?

A preliminary search can be made on:1. Patent Office website, the Indian patent data

base of granted patents, or2. Patent Office journalpublished every week, or3. Search in the documents kept in the Patent

Office Search and Reference Room, whichcontains Indian patents arranged according to

international patent classification system.4. One can also make a request for informationregarding any patent under section 153 of theAct

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Priority Dates of Claims ofComplete Specification (s.11)

Priority date of the claim is the date of filing ofspecifications-provisional or complete, whereinthe matter on which the claim is fairly based wasfirst disclosed. Controller can order post-datingor ante-dating of a claim under section 9, 17 and16 depending upon when he thinks the matterwas actually first disclosed.

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PUBLICATION Every application for patent is published

after 18 months from the date of its filingor priority date whichever is earlier,except where there is a secrecy

direction. Applicant can make a request for earlypublication with the prescribed fee. Afterreceiving such request the Patent Officepublishes such application within a periodof one month provided the invention doesnot relate to atomic energy or defencepurpose.

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EXAMINATION

The patent application is examined only onrequest.

The request for examination can be filed within a

period of 48 months from the date of priority ordate of filing of the application whichever isearlier.

Request for examination before expiry of 31months can be made in respect of theapplications filed under Patent CooperationTreaty known as National Phase applications bypayment of the prescribed fee.

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First Examination Report (FER)

After examination, the Patent office issuesan examination report to the applicantwhich is generally known as FirstExamination Report (FER). Applicantshould comply with the requirementswithin a period oftwelve months from thedate of FER. If the application is in order,the patent is granted and a letter patent is

issued to the applicant. However, if thereis a pre-grant opposition, the applicanthas to defend his claim.

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PATENT INFRINGEMENT

A patent is not infringed until provenotherwise

onus or burden of provinginfringement is on the patent owner

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Infringement- Jurisdiction, Burden of Proof

Jurisdiction-District Court (S.104)

If the defendant makes a counter claim forrevocation of the patent, the case is

transferred to the High Court Burden of Proof (104-A): If the patenteefirst proves that the product is identicalthen if the subject matter is a process, the

court may direct the defendant to provethat the process used by him to obtain theproduct was different.

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Relief in Suits for Infringement (S 108)

Injunction

Either damages or an account of profits,

at the option of the plaintiff

Seizure, forfeiture or destruction ofinfringing goods, as the Court deems fit

[Infringement of patent is not an offence.No criminal action is possible]

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COMPULSORY LICENSE After 3 years of patent, anyone can request a

license from the govt. on these grounds

That the reasonable requirements of the

public with respect to the patented inventionhave not been satisfied

That the patented invention is not available

to the public at reasonably affordable price

Export of pharmaceuticals to poor countries