Patents

WHAT IS A PATENT- Patent, under the Act, is a grant from the Government to the inventor for a limited period of time, the exclusive right to make use, exercise and vend his invention. After the expiry of the duration of patent, anybody can make use of the invention.

WHAT IS AN INVENTION Invention means any new and useful art, process, method or manner of manufacture machine, apparatus or other article substance produced by manufacture

and includes any new and useful improvement of any of them, Therefore an invention is the creation of intellect applied to capital and labour, to produce something new and useful.

APPLICATION FOR A PATENT An application for a patent may be made by the actual inventor of the invention, or an assignee of the right to make an application or a legal representative of either. It is the person who first applies for a patent who is entitled to the grant. A prior inventor of the invention who applies subsequently will not get the patent as against the first applicant

FORM OF APPLICATION 1. An application for a patent in the prescribed form along with the prescribed fee should be led in the patent office and every application shall be for one invention only. 2. Where the application is made by virtue of assignment of right to apply, proof of such right shall be filed

3. The application shall state that the applicant is in possession of the invention and give the name of the owner claiming to be the true and first inventor and where the person so claiming is not the applicant the application shall contain a declaration that the applicant believes the person so named to be the true and first owner.

4. Every such application is to be accompanied by a provisional or complete specification. 5. Where the application is accompanied by a provisional specification, a complete specification should be filed within twelve months from the date of filing the application. If this is not done the application shall be deemed to be abandoned

6. The complete specification should fully describe the invention and the method by which it is to be carried out. It should disclose the best method of performing the invention known to the applicant and end with a claim or claims defining the scope of the invention for which protection is claimed.

PROCEDURE ON RECEIPT OF APPLICATION.The application filed is referred by the Controller to the Examiner who makes an inquiry to see whether it complies with the requirements of the Act and Rules, whether there is any lawful ground of objection of the grant of the patent, and whether the invention has already been published or claimed by some other person.

2. The examiner makes a search in the patent office for specifications of prior applications and Patents to see whether the same invention has ready been published or claimed or is the subject matter of existing or expired patens. A report is accordingly made to the Controller within 14 months form the date of reference

3. The patent office after examination of the application will communicate to the applicant the objections, if any to the grant of a patent. If the objections are not satisfactorily met the Controller of Patents after giving an opportunity of hearing to the applicant will refuse the application.

4. If the applicant satisfactorily removes the objections the controller will accept the complete specification and advertise it in the official Gazette. 5. A request for sealing the patent can be made not later than the expiration of six months from the date of publication.

RIGHTS OF A PATENTEE The owner of the "Patent", i.e. patentee is entitled to deal with such property in the same manner as owner of any other moveable property. The patentee can sell the whole or part of this property (Patent). He can also grant license to other to use the patented property. He can also assign such property to any other.

Such sale, license or assignment of such patented property naturally has to be for valuable consideration, acceptable mutually.

PERIOD OF PATENT 1. In respect of process patents relating to drugs and food, the term is five years from the date of sealing the patents or seven years from the date of the patent whichever is shorter. 2. In respect of all other patents the term is fourteen years from the date of the patent. A patent is kept alive only by paying the renewal fee from time to time

USE OF PATENTED INVENTION BY THE CENTRAL GOVERNMENT – The grant of patent confers the exclusive right of use on the patentee for commercial gain but the Act recognizes that the Central Government may use any invention even without the payment of royalty to the inventor. The idea is that the invention can be put to use for general public benefit by the government in certain circumstances when the patentee would have to forego his commercial gain in the general public interest.

SOME RESTRICTED USE OF PATENTED INVENTION PERMISSIBLE UNDER THE LAW- The essence of a patent is conferring of the exclusive right on the patentee. Yet some restricted use of a patented invention by a person other than the patentee is permissible under the law. For such instance, use of a patented invention is permissible for research or experimental purposes or for imparting knowledge or instructions to pupils.

INFRINGEMENT OF THE PATENT INFRINGEMENT OF THE PATENT The right conferred by the Patent is the exclusive right to make, use, exercise, sell or distribute the invention in India. Infringement consists in the violation of any of these rights. The act expressly provides that use by a person other than the patentee, patentee’s assignee or licensee would be an infringement of the patent and as such illegal.

REMEDY FOR INFRINGEMENT OF PATENT An action for infringement must be instituted by way of a suit in any District Court or a High Court having jurisdiction to entertain the suit. The plaintiff on satisfying the court about infringement of his patent would be entitled to the following relief:

1. Interlocutory injunction 2. Damages 3. Account of profits

INTELOCUTORY INJUNCTION The Plaintiff may at the commencement of the action move for an interim injunction to restrain the defendant from committing the acts complained of until the hearing of the action or further orders. The plaintiff should make out a prima facie case and also show that the balance of convenience lies in his favour

DAMAGES In assessing the damages the important question is what is the loss sustained by the patentee. The loss must be the natural and direct consequence of the defendant’s acts. The object of damages is to compensate for loss or injury.

ACCOUNTS OF PROFITS Where a patentee claims the profits made by the unauthorised use of his patent, it is important to ascertain how much of his invention was appropriated, in order to determine what proportion of the net profits realised by the infringer was attributable to its use

PATENT FAQ What is a patent? A patent is a monopoly right granted by the government to a person who has invented a new useful articles or an improvement of an article or a new process of making an article. It consists of an exclusive right to manufacture the new article invented or manufacture an article according to the invented process for a limited period. After the expiry of the duration of patent, anybody can make use of the invention

Who can apply for a patent? i) Any person being the inventor of an invention or his assignee can apply alone or jointly with any other person. ii) Applicant of a application in a basic convention country can apply by himself or through his assignee. iii) Applicant of a basic application in a basic convention country can apply by himself or through his assignee.

What is a patentable invention? As per the Indian Patents Act,1970 invention means any new or useful - i) art, process, method or manner of manufacture ii) machine,apparatus or other article. iii) Substance produced by manufacture and includes any new and useful improvement of any of them and alleged invention.

Whether a Foreign National is competent to file patent application in India? Yes.A Foreign National residing abroad is not prohibited from making an application and obtaining the grant of patent in India.

Can a Firm or a company apply for a patent ? Yes. A Partnership firm, a Private or Public Ltd company or a Corporation can apply for a patent.But they cannot invent and therefore cannot be termed as 'inventor'. Hence such bodies can apply for patent as the assignee of the 'inventor' under the Indian Patents Act,1970.

Whether the 'prior sale' can be made before filing patent application? No. The invented article must not be put in the market for sale or be physically sold under the invoice before filing patent application in the patent office. Otherwise the invented article or process will loose novelty to create sufficient grounds for invalidating the chances of getting a patent. Hence the novelty in the invention is lost if the article is demonstrated, worked or sold.Therefore it is advisable not to commence the commercial marketing of an invented article before applying for patent.

How long does it take to grant patent ? At present on an average it takes about 4- 5 years from the date of filing application.It may be reduced in future because of computerization of Patent offices.

What is a specification ? A patent specification is a technical document describing the invention. A specification may be either provisional or complete. Provisional specification gives the initial description of an invention when the application is filed.A complete specification gives full and sufficient of an invention.

What is meant by 'term of a patent'? The term of the patent is meant for duration of the validity of the patent. i) The term of patent will be FIVE years for food, drug, medicine cases from its sealing date of seven years from the date of patent whichever is shorter. ii) The term of patent in respect of other inventions will be FOURTEEN years from the date of patent (i.e. date of filing complete specification).

Is it possible to take legal action for 'infringement of patent' during the pendency of a patent application? No. It is not possible to initiate legal action against the infringers during the pendency of patent application patent is a statutory right granted by the government.It will take minimum of 4 to 5 years for examination of patent application and then only it will be decided ' whether to grant a patent or not'. Till then it will be called as 'invention' only. Until the statutory right is conferred upon the applicant for his invention, the question of infringement will not arise. Further there is no common law rights like that of 'passing off' in trademark matters for the patent applicants.