1. Basic Concepts of Patent Protection in India: Law and Practice
CS Shilpi Thapar
FCS, ACIS (UK), LLB (Spl) Certified Director
(World council For Corporate Governance, London)
&
Urvi Shah
B.A, LL.M (IPR)
Advocate and IPR Consultant
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2. Meaning and Types of Intellectual Property
Intellectual property right is an intangible right “protecting commercially valuable products of human intellect”
Copyrights and related rights
Trade Marks
Geographical Indications
Industrial Designs
Lay out Designs of Integrated Circuits
Protection of Undisclosed Information (Trade Secrets)
Patents
Plant varieties
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3. Knowledge Economies Globalization
21st Century is the labeled as the century of knowledge
Ability to create, access and use knowledge has become fundamental determinant of global competitiveness
Indispensable for companies to address to new challenges
Creativity and innovation are the new drivers of the world economy
Intellectual property can generate income through licensing , sale, commercialization of IP protected products or services that may significantly improve an enterprise’s share or raise its profit margins.
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4. Patent - Meaning
Patent is an exclusive right granted by the Government of India to the patentee of an invention for a limited period of time in lieu of full disclosure of his invention.
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5. Reasons for Patenting Inventions
Provide Exclusive rights
Strong market position
Higher returns on investments
Opportunity to license or sell the invention
Increase in negotiating power
Positive image for the Company
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6. Legislation governing the Patent Law in India
The Patent system in India is governed by the Patents Act,1970
The Patents Act was amended in the year 2005 by The Patents (Amendment) Act, 2005
The Patent rules, 2003 were also amended by the Patent (Amendment) Rules 2006
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7. Salient features under the Patents law
Both product and process patent provided
Term of patent – 20 years
Examination on request
Both pre-grant and post-grant opposition
Fast track mechanism for disposal of appeals
Provision for protection of bio-diversity and traditional knowledge
Publication of applications after 18 months with facility for early publication
Substantially reduced time-lines
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8. 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
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9. Role of the Government
To encourage innovation and investment in the research and development
Economic, Industrial and Technological development in the Country
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10. Who can apply for a patent?
An inventor or
any other person/company assigned by the inventor
A Patent is obtained by the inventor or his assignee by filing an application with the patent office in the stipulated forms as required by the Patent Act of that country.
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11. Where to apply for patents?
The four patent offices are located at Kolkata, Mumbai, Delhi and Chennai
The Application is required to be filed according to the territorial limits where the applicant or the first mentioned applicant in case of joint applicants for patent normally resides or has domicile or has a place of business or the place from where the invention actually originated.
The Appropriate office once decided in respect of any proceedings under the Act shall not ordinarily changed.
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12. Patentability of Invention
Sec.2(1)(J)
“Invention” means a new product or process involving an inventive step and capable of industrial application.
So basically the criteria for patents is -
Novelty
Inventive Step
Industrial Applicability
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13. Novelty Invention should not form a part of the global state of art.
Novelty is assessed in a global context
Novelty is determined through extensive literature and Patent searches.
Patent search is essential and critical for ascertaining novelty as most of the information reported in the patent document does not get published anywhere else.
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14. Inventive Step
The invention must not be obvious from the previously known substance.
“Inventive step” means a feature of an invention that involves technical advancement as compared to the existing knowledge or having economic significance or both and that makes the invention not obvious to a person skilled in the art.
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15. Capable of Industrial Application
Industrial Applicability means the invention must be capable of being produced or used on an Industrial scale.
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16. Non Patentable Inventions
Invention which is frivolous or contrary to the well established natural laws
Contrary to public order or mortality or which causes serious prejudice to human, animal or plant life or health or to the environment
The mere discovery of a scientific principle or the formulation of an abstract theory
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 or any new property or new use for a known substance.
A substance obtained by mere admixure
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17. The mere arrangement or rearrangement or duplication of known devices.
A method of agriculture or horticulture
A process for the medicinal, surgical, curative, prophylactic, diagnostic, therapeutic
Plants and Animals – other than microorganisms
Mathematical or Business method or a computer program
Artistic work or any other aesthetic creation
Scheme or rule or method of performing mental act
Topography of integrated circuits
Invention relating to atomic energy
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18. Term of Patent
Term of every patent will be 20 years from the date of filing of patent application
Date of patent is the date on which the application for patent is filed
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19. Types of Patent Applications
Application for ordinary Patent
- Provisional specification
- Complete Specification
Patent of Addition
Division Application
Convention Application
Application under PCT
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20. Provisional Specification
Should contain title and description of the essential features of the invention.
Need not include the manner of performing the invention.
Should not contain claims.
The Complete specification should be based on matters disclosed in the Provisional specification and should be filed within 12 months.
If Complete specification is not filed within 12 months the application is deemed to be abandoned.
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21. Complete Specification
Complete Specification shall fully describe the invention with reference to drawing, if required
It should disclose the best method known to the applicant and end with claims defining the scope of protection sought
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
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22. Contents of Complete Specification
Title: It should indicate the subject matter to which the invention relates.
Field of the Invention: It shows the scope of the invention.
State of prior Art: It should indicate the state of technology in the field of invention with reference to experiments going on in the field, patents and pending patent applications.
Object of the Invention: The purpose of this part is to clearly bring out the necessity of the invention.
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23. Statement of Invention: The description should include a statement of invention before giving the details of the invention and method of performing it.
Description: It contains fully and particularly describes the invention and its operation or use and the method by which it is to be performed.
Drawings: No special illustration of drawings required but it should be mentioned in the specification itself.
Biological material: If biological material is mentioned in the specification and there is a requirement for deposition of biological material then it should deposit at depository institution and the date and number of the deposits of the material at the institution should be mentioned in the specification.
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24. Claims should relate to a single invention.
Scope and/or Ambit of the Invention: This part of the specification should bring out the areas of application of the invention and the preferable use of the invention.
Claims: The claim defines the boundaries of the legal protection sought by the patent. Its object is to define clearly with conciseness, precision and accuracy the monopoly claimed.
Claims should relate to a single invention.
Claims should be clear and concise.
Claims should be supported by description.
Principal claim should define all essential novel features.
Preferred features may be given in the subordinate claims.
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25. -Principal claim – most preferred embodiment
-Subsidiary claims – alternate embodiment of the invention
-Independent claims – an invention supplementary to the principal claim
-Dependent claims – minute aspects and optional features
-Omnibus claims – To get an integral protection of what is described in the specification and drawings.
Abstract – It should not be more than 150 words. It should contain a concise summary of the matter contained in the specification, indicate the technical field, technical problem its solution and the use of the invention. If it contains drawings it must be illustrated in the abstract.
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26. Procedure after filing till grant
Filing of Patent Application
If the Applicant wishes earlier publication then he may file Request for publication before eighteen months from the date of filing of application or the date of priority
(not mandatory)
Publication of Patent Application
Request for examination after publication of the application should be made within 36 months from the date of priority of the Application or from the date of filing of the Application
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27. Issuance of Examination Report
Reply on examination report should be given within 6 months from the date of first statement of objection is issued to the applicant to comply with the requirements.
Grant of Patent
Renewal of Patent
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28. Explanation of the Stages
File an application for patent
With one of the patent offices based on territorial jurisdiction of the place of office or residence of the applicant /agent
Pay the required fee
Information concerning application form and details of fee available at
Guidelines for applicants also available on this website
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29. Formality Check
An Examiner checks the formal requirements before accepting the application and the fee – this is done immediately
Issue of application number and the cash receipt – this is done the same day
In case of receipt of application by post, cash receipt, application number is sent by post within 2-3 days
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30. Publication
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
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31. Request for Examination
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
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32. 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
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33. Issue of FER
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
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34. Response from the Applicant
12 months’ time, from the date of issue of FER, is available to the applicant to meet the objections
If objections are met, grant of patent is approved by the Controller – within a period of 1 month
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35. Examination of Pre-grant Opposition
Opposition (documents) is sent to the applicant
A period of 3 months is allowed for receipt of response
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36. 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
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37. Pre-grant Opposition
After publication, an opposition can be filed within a period of 6 months
Opportunity of hearing the opponent is also available
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38. A certificate of patent is issued within 7 days
Grant of a Patent
A certificate of patent is issued within 7 days
Grant of patent is published in the official journal
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39. Renewal Fee
To be paid within 3+6 months from date of recording in the register [sec 142 (4) ]
No fee for 1st and 2nd year
Renewal fee, on yearly basis, is required to be paid for 3rd to 20th for keeping the patent in force
Delay upto six months from due date permissible on payment of fee for extension of time
Patent lapses if renewal fee is not paid within the prescribed period
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40. General information required to fill forms
Name (s), Address (es) and nationality (ies) of the
Applicant (s)
Name (s), Address (es) and nationality (ies) of the Inventor(s)
If the Applicant is not the inventor:
Relevant information explaining how the Applicant acquired the right to the invention for our preparation of a statement which has to be filed with the Patent office.
Eg. The Applicant is the assignee of the invention or the Applicant the employer of the inventor etc
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41. Common Mistakes If you do not patent - Somebody else might patent them
- Competitors will take advantage
Possibilities to license, sell or transfer technology will be affected
First to file system is employed – therefore a patent application should be filed promptly after conceiving the invention
Do not publish invention in news papers or scientific and technical journals, before applying for patents. Publication of an invention, even by the inventor himself would constitute a bar for subsequent patenting of it.
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42. Do not wait until inventions are fully developed for commercial working, before applying for patents. It is advisable to apply for a patent as soon as the inventor’s idea of the nature of invention has taken a definite shape.
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43. For any Legal Assistance
Contact us:
Shilpi Thapar & Associates
Company Secretaries
1204, Matrix, Nr. Vodafone House
Prahladnagar Corporate Road
Off. S.G Highway
Ahmedabad
Telefax: ,
id:
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44. Thank you
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