Module 5-part.1

PATENTS ACT,1970PATENTS ACT,1970Module:5-Part 1Module:5-Part 1

Presented By:Presented By: Deepak S GaywalaDeepak S Gaywala

Faculty Member, Faculty Member, JKPIMJKPIM

1DGJKPIMMBAIISEMIIIBELPPT

Topics:1.Introduction.2.Patentable Inventions.3.Application for Patents.4.Procedure, Renewal of lapsed Patent.5. Surrender and Revocation of Patent.6. Infringement of Patents and

Remedies.2DGJKPIMMBAIISEMIIIBELPPT

1.Introduction: 1.Introduction: What is PATENT?????What is PATENT?????

A ‘Patent’ is a grant from the A ‘Patent’ is a grant from the government which confers on the government which confers on the ‘grantee’ for a limited time period , the ‘grantee’ for a limited time period , the exclusive right of making, selling and exclusive right of making, selling and using the invention in respect of which using the invention in respect of which patent has been granted and also of patent has been granted and also of authorizing others to do so.authorizing others to do so.


Kinds of PATENTS??Kinds of PATENTS??

Utility Patent:Utility Patent:

Utility patents, the most common type, are Utility patents, the most common type, are granted to new machines, chemicals, and granted to new machines, chemicals, and processes.processes.

Design Patent:Design Patent:

Design patents are granted to protect the Design patents are granted to protect the unique appearance or design of unique appearance or design of manufactured objects, such as the surface manufactured objects, such as the surface ornamentation or overall design of the ornamentation or overall design of the object. object.


Cont(d)Cont(d)

Plant Patent:Plant Patent:

Plant patents are granted for the Plant patents are granted for the invention of new and distinct plant invention of new and distinct plant varieties, including hybrids. varieties, including hybrids.


2.An Invention to be Patentable, 2.An Invention to be Patentable, must satisfy the following three must satisfy the following three

conditions:-conditions:- It is novel ie. it is different from other similar It is novel ie. it is different from other similar

inventions in one or more of its parts. inventions in one or more of its parts.

It is useful to the society.It is useful to the society.

It is non-obvious to a person possessed of It is non-obvious to a person possessed of average skill in the art. An invention is non average skill in the art. An invention is non obvious if someone who is skilled in the field obvious if someone who is skilled in the field of the invention would consider the invention of the invention would consider the invention an unexpected or surprising development.an unexpected or surprising development.


3.Procedure for grant of PATENT3.Procedure for grant of PATENT

1.1. Filing an application for a patent .Filing an application for a patent .

2.2. Examination of application.Examination of application.

3.3. Acceptance of the application and Acceptance of the application and advertisement of such acceptance advertisement of such acceptance in the Official Gazette.in the Official Gazette.

4.4. Opposition to grant of patent.Opposition to grant of patent.

5.5. Grant and sealing of patents.Grant and sealing of patents.


1.Filing of Application [sec 7]1.Filing of Application [sec 7] Every application for a Every application for a

patent shall be for one patent shall be for one invention only and shall invention only and shall be made in the be made in the prescribed form and prescribed form and filed in the patent office.filed in the patent office.

Applicant should be the Applicant should be the true and first inventor.true and first inventor.

Every such application Every such application shall be accompanied shall be accompanied by a provisional or a by a provisional or a complete specification.complete specification.


2. Examination and Acceptance 2. Examination and Acceptance of Applications sec[12 to 24]of Applications sec[12 to 24]

Examiner make a report to Controller Examiner make a report to Controller on the following matters:on the following matters:

whether the application and the whether the application and the specification relating thereto are in specification relating thereto are in accordance with the requirements of accordance with the requirements of this Act.this Act.

Whether there is any lawful ground Whether there is any lawful ground of objection to the grant of the of objection to the grant of the Patent .Patent .

Any other matter which may be Any other matter which may be prescribedprescribed..


3.Advertisement of acceptance 3.Advertisement of acceptance of complete specification:of complete specification:

The controller shall give notice The controller shall give notice thereof to the applicant and shall thereof to the applicant and shall advertise in the Official Gazette the advertise in the Official Gazette the fact that the specification has fact that the specification has been accepted , and thereupon the been accepted , and thereupon the application and the specification application and the specification with the drawings filed in pursuance with the drawings filed in pursuance thereof shall be open to public thereof shall be open to public inspection.inspection.


4.Opposition to Grant of Patent 4.Opposition to Grant of Patent sec[25]sec[25]

Applicant or the person under or through whom he Applicant or the person under or through whom he claims, wrongfully obtained the invention .claims, wrongfully obtained the invention .

Invention was publicly known or publicly used in Invention was publicly known or publicly used in India before the priority date of the claim.India before the priority date of the claim.

Where the claim made by an inventor is no more Where the claim made by an inventor is no more than an individual design, not an invention.than an individual design, not an invention.

If the language used by the patentee is obscure If the language used by the patentee is obscure and ambiguous, no patent can be granted.and ambiguous, no patent can be granted.

That the complete specification does not That the complete specification does not sufficiently and clearly describe the invention .sufficiently and clearly describe the invention .


5.Grant and Sealing of Patents 5.Grant and Sealing of Patents sec[43]sec[43]

The application has not The application has not been opposed under been opposed under sec 25 and the time for sec 25 and the time for the filing of the the filing of the opposition has expired.opposition has expired.

The application has The application has been opposed and the been opposed and the opposition has been opposition has been finally decided in finally decided in favour of the applicant; favour of the applicant; oror

The application has not The application has not been refused by the been refused by the Controller by the virtue Controller by the virtue of any power vested in of any power vested in him by this Act.him by this Act.


Grant of Patent of Addition

1.What is patent of addition?A patent of addition is a patent for

improvement in or modification of the main invention described or disclosed in the complete satisfaction.

A patent of addition can be only in relation to a main invention.


2.When a patent of addition is granted?Where an applicant has applied for a

patent for invention or is patentee in respect thereof, and he makes an application for a patent in respect of any improvement in or modification of the main invention, the controller may grant the patent for the improvement or modification of main invention as a patent of addition.


3. What should be the date filing application for the addition to main patent?

No patent of addition shall be granted unless the date of filing of the application was the same as or later than date of filing of the application in respect of the main invention.


4. What should be the period of patent of addition:

A patent of addition shall be granted for a term equal to that of patent for the main invention, or so much thereof as has not expired.

If the patent for main invention is revoked, the Court or the Controller, as the case may be, on request made to him by the patentee, may order that patent of addition shall become an independent patent for the remainder of the term for the patent for the main invention. Thereupon, the patent of addition shall continue in force as an independent patent.


5. Renewal fee for patent of addition: No renewal fees shall be payable in

respect of patent of addition. However, if any such patent becomes an independent patent, the same fees shall thereafter be payable, upon the same dates, as if the patent had been originally granted as an independent patent.


6. Validity of patents of addition: Cannot be refused for any ground such as invention claimed in complete specification does not involve any inventive step or that the invention ought to have been the subject of an independent patent.


4. Procedure for renewal/restoration of lapsed Patents

4.1: Where a patent has ceased to have effect by reason of failure to pay any renewal fee at the expiration of second year from the date of patent or of any succeeding year, or within such period as may be allowed, the patentee or his legal representative, with the leave of the controller may, within 18 months from the date on which the patent ceased to have effect, make an application in the prescribed form for the restoration of the patent.


4.2: An application for restoration shall contain a statement, verified fully setting out the circumstances which led to failure to pay the prescribed fee. The Controller may require from the applicant such further evidence as he may think necessary.


4.3: If the Controller is satisfied that a prima facie case for the restoration of patent has not been made out, he shall intimate the applicant accordingly and unless within one month from the date of such intimation, the applicant requests to be heard in the matter, the Controller shall refuse the application.


4.4: If after hearing the applicant, the Controller is prima facie satisfied that the failure to pay renewal fee was unintentional and that there has been no delay in making of the application, the Controller shall publish the application.

Within two months from the date of advertisement, any person interested may give notice to the Controller of opposition thereto in the prescribed form on either or both of the following grounds:


1.that the failure to pay the renewal fee was not unintentional, or

2. that there has been undue delay in the making of the application.

If the notice of opposition is given, the Controller shall notify the applicant and shall give to him and the opponent an opportunity to be heard before he decides the case.


If no notice of opposition is given, or if in the case of opposition, the decision is in the favour of the applicant, then upon payment by the applicant of any unpaid renewal fee and such additional fee as specified in the First Schedule within one month from the date of order of the Controller allowing application for restoration, the Controller shall restore the patent and any patent of addition specified in the application which has ceased to have effect.


The Controller may require that an entry shall be made in the register of any document. The Controller shall publish his decision.

4.5: Rights of patentees on restoration of leased patents:

Subject to protection or compensation of persons availing patented invention under contract from the date patent ceased to have effect and the date of the advertisement of the application for the restoration of the patent.


5.Surrender and Revocation of Patents

5.1: Surrender of Patents: 1. At any time by giving notice in the

prescribed form to the Controller, the patentee may offer to surrender his patent. Where such an offer is made, the Controller shall publish the notice of an offer and shall notify every person having an interest in the patent.


2. Any person interested may, within three months from the date of such application give notice of opposition to the surrender in the prescribed form.

3. Where any such notice is given, the Controller shall notify the patentee. If the controller is satisfied, after hearing the patentee and any opponent and if the Controller accepts the patentee’s offer to surrender the patent, he may direct the patentee to return the patent and on receipt of such patent, the Controller shall revoke it and publish the revocation of the patent.


5.2: Revocation of Patents: On petition, of any person interested,

or of the Central Government by the appellate board or on counter claim in a suit for infringement of the patent by the High Court, the patent may be revoked on the following grounds:


1. Invention earlier claimed.2. Patentee not entitled to apply.3. Patent wrongfully obtained.4. Subject claim not an invention.5. Claims not new.6. Invention is obvious and not an

inventive step.7. Invention not useful.


8. Invention not sufficiently and fairly described.

9. Claim not sufficiently and clearly defined.

10. False suggestion.11. Claim not patentable.12. Invention secretly used before priority

date of claim.13. Failure to disclose information.


14. Contravened secrecy.15. Amendment obtained by fraud.16. Wrong mentions.17. Invention was anticipated.18. Mischievous to State or prejudicial to

public.19. Requirements of public not satisfied.20. Patent has expired.21. Patent relating to atomic energy.


6.Remedies for Infringement of 6.Remedies for Infringement of PatentsPatents

Reliefs in suit for infringement.Reliefs in suit for infringement. Right of licensee under sec84 to Right of licensee under sec84 to

take proceedings against take proceedings against infringements.infringements.

Jurisdiction of CourtJurisdiction of Court :No suit for a :No suit for a declaration under sec 105 for declaration under sec 105 for infringement of a patent shall be infringement of a patent shall be instituted in any court inferior to a instituted in any court inferior to a district court .district court .


Cont(d)Cont(d)

Power of Courts to grant relief in Power of Courts to grant relief in cases of groundless threats of cases of groundless threats of infringement proceedings:infringement proceedings:

Where a person threatens any other Where a person threatens any other person by communication oral or in writing person by communication oral or in writing with proceedings for infringement of a with proceedings for infringement of a patent ,any person aggrieved thereby may patent ,any person aggrieved thereby may bring a suit against him .bring a suit against him .


7. Miscellaneous:Penalties sec[118-124]7. Miscellaneous:Penalties sec[118-124]

Falsification of entries in Falsification of entries in register etc.- register etc.- imprisonment upto 2 imprisonment upto 2 years or fine or both.years or fine or both.

Unauthorized claim of Unauthorized claim of Patent Rights-fine upto Patent Rights-fine upto Rs.500.Rs.500.

In case of offences by In case of offences by companies.companies.

Refusal or failure to Refusal or failure to supply information to supply information to Central Govt. or Central Govt. or controller-imprisonment controller-imprisonment upto 6 month or fine or upto 6 month or fine or both.both.


PATENTS ACT,1970PATENTS ACT,1970Module:5-Part 1Module:5-Part 1


Assignment:Assignment:

Figures in the bracket indicate the marks.Figures in the bracket indicate the marks.

Q.1. What are patentable Inventions and Q.1. What are patentable Inventions and Non-patentable inventions? (10)Non-patentable inventions? (10)

Q.2. What is meant by patent? Explain the Q.2. What is meant by patent? Explain the procedure to be followed for grant of procedure to be followed for grant of patent? (10)patent? (10)


Q.3. What is meant by patent? When is Q.3. What is meant by patent? When is patent said to have been infringed? patent said to have been infringed? What are the remedies available in What are the remedies available in case of infringement of patent? case of infringement of patent? (10) (10)

Q.4. Explain the following:Q.4. Explain the following:

1.1. Agreement of Patent (4)Agreement of Patent (4)

Q.5. Distinguish the following:Q.5. Distinguish the following:

Patent and Copyright (4)Patent and Copyright (4)37DGJKPIMMBAIISEMIIIBELPPT


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Module 5-part.1