1.What is a patent?
Patent is an exclusive right granted by a government for an invention that is new, involves inventive step and is capable of industrial application. Section 2(1)(m) of the Indian Patent Act, 1970 defines patent as: "patent" means a patent for any invention granted under this Act.
2. What is an invention?
An invention means solution to a problem, usually technical in nature. A new product or process or modification of an already existing one qualifies for being an invention if made through human intervention, as against mere discovery of something already existing in nature. Section 2(1)(j) of the Indian Patent Act, 1970 defines invention as: "invention" means a new product or process involving an inventive step and capable of industrial application.
3.What is patentable?
An invention must meet certain requirements to satisfy the patentability criteria. These can be listed as follows:
· Patentable subject matter criteria: The Patents Act does not list the subject matter that is patentable. However it does list the subject matter that is not patentable. This is covered by Section 3 of the Patents Act and the list is as follows:
What are not inventions.—The following are not inventions within the meaning of this Act,—
(a) an invention which is frivolous or which claims anything obviously contrary to well established natural laws;
(b) an invention the primary or intended use or commercial exploitation of which could be contrary public order or morality or which causes serious prejudice to human, animal or plant life or health or to the environment;
(c) the mere discovery of a scientific principle or the formulation of an abstract theory or discovery of any living thing or non-living substance occurring in nature;
(d) 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 the mere discovery of any new property or 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. Explanation.—For the purposes of this clause, salts, esters, ethers, polymorphs, metabolites, pure form, particle size, isomers, mixtures of isomers, complexes, combinations and other derivatives of known substance shall be considered to be the same substance, unless they differ significantly in properties with regard to efficacy;
(e) a substance obtained by a mere admixture resulting only in the aggregation of the properties of the components thereof or a process for producing such substance;
(f) the mere arrangement or re-arrangement o or duplication of known devices each functioning independently of one another in a known way;
(g) Omitted by the Patents (Amendment) Act, 2002
(h) a method of agriculture or horticulture;
(i) any process for the medicinal, surgical, curative, prophylactic diagnostic, therapeutic or other treatment of human beings or any process for a similar treatment of animals to render them free of disease or to increase their economic value or that of their products.
(j)plants and animals in whole or any part thereof other than micro organisms but including seeds, varieties and species and essentially biological processes for production or propagation of plants and animals;
(k) a mathematical or business method or a computer programme per se or algorithms;
(l) a literary, dramatic, musical or artistic work or any other aesthetic creation whatsoever including cinematographic works and television productions;
(m) a mere scheme or rule or method of performing mental act or method of playing game;
(n) a presentation of information;
(o) topography of integrated circuits;
(p) an invention which in effect, is traditional knowledge or which is an aggregation or duplication of known properties of traditionally known component or components.
Novelty requirement: An invention is deemed to be new or novel if it is not a part of the prior art. Section 2(1)(l) of the Indian Patents Act, 1970 defines new invention as: "new invention" means any invention or technology which has not been anticipated by publication in any document or used in the country or elsewhere in the world before the
date of filing of patent application with complete specification, i.e., the subject matter has not fallen in public domain or that it does not form part of the state of the art.
Non-obviousness Requirement: An invention is considered to be non obvious or possess an inventive step if the features of the invention embodying the advancement are not obvious to a person skilled in the art. Section 2(1)(ja) of the Indian Patents Act, 1970 defines inventive step as: "inventive step" means a feature of an invention that involves technical advance 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.
Industrial Application requirement: An invention must be capable of being made or used in industry. Section 2(1)(ac) of the Indian Patents Act, 1970 defines capable of industrial application as: "capable of industrial application", in relation to an invention, means that the invention is capable of being made or used in an industry
Disclosure Requirement: An invention must be disclosed in a clear and succinct manner for it to be carried out by a person skilled in the same technical field. Section 10 of the Indian Patents Act, 1970 describes the disclosure procedure. Subsection 4 of section 10 reads as:
“(4) Every complete specification shall—
a) fully and particularly describe the invention and its operation or use and the method by which it is to be performed;
(b)disclose the best method of performing the invention which is known to the applicant and for which he is entitled to claim protection; and
(c)end with a claim or claims defining the scope of the invention for which protection is claimed;
(d)be accompanied by an abstract to provide technical information on the invention”
4. What are the rights granted by a patent?
The right granted by a patent is the right to exclude unauthorized persons from commercially using the invention and in India it lasts for 20 years from the date of filing. Section 48 of the Patents Act, 1970 deals with the rights of patentees and reads as:
"Rights of patentees.—Subject to the other provisions contained in this Act and the conditions specified in section 47, a patent granted under this Act shall confer upon the patentee—
(a) where the subject matter of the patent is a product, the exclusive right to prevent third parties, who do not have his consent, from the act of making, using, offering for sale, selling or importing for those purposes that product in India;
(b) where the subject matter of the patent is a process, the exclusive right to prevent third parties, who do not have his consent, from the act of using that process, and from the act of using, offering for sale, selling or importing for those purposes the product obtained directly by that process in India"
5. What are the exceptions to the rights of patentee?
Exceptions to the rights of patentees are delineated in section 47 of the Patents Act that reads as:
“Grant of patents to be subject to certain conditions.—The grant of a patent under this Act shall be subject to the condition that—
(1) any machine, apparatus or other article in respect of which the patent is granted or any article made by using a process in respect of which the patent is granted, may be imported or made by or on behalf of the Government for the purpose merely of its own use;
(2) any process in respect of which the patent is granted may be used by or on behalf of the Government for the purpose merely of its own use;
(3) any machine, apparatus or other article in respect of which the patent is granted or any article made by the use of the process in respect of which the patent is granted, may be made or used, and any process in respect of which the patent is granted may be used, by any person, for the purpose merely of experiment or research including the imparting of instructions to pupils; and
(4) in the case of a patent in respect of any medicine or drug, the medicine or drug may be imported by the Government for the purpose merely of its own use or for distribution in any dispensary, hospital or other medical institution maintained by or on behalf of the Government or any other dispensary, hospital or other medical institution which the Central Government may, having regard to the public service that such dispensary, hospital or medical institution renders, specify in this behalf by notification in the Official Gazette”.
6.How to get a patent application?
An invention is written as a patent application and filed at the Indian Patent Office along with the prescribed forms and prescribed fees.
7. Where to file a patent application in India?
India’s patent office has four branches in Kolkata, Mumbai, Delhi and Chennai. Each patent office has jurisdiction over some states. An application can be filed in any one of them. The criteria to determine the appropriate patent office where the patent application should be filed depends on the place of residence or business of the applicant, place where the invention originated or the address of service in India if there is no place of business or domicile in India. A foreign applicant is required to give an address for service in India if there is no place of business or domicile in India.
8.What is the procedure for filing patent application in India?
An application for patent can be made by completing and submitting a set of forms along with the prescribed fees with the Indian Patent Office (IPO). To file an application the following information or documentation is required:
- Application for grant of patent in the prescribed format along with the prescribed fees. The official filing fees is a fixed amount for a specification that is 30 pages long and consists of 10 claims. Additional official fees is payable for every extra page in addition to 30 and for every extra claim in addition to 10. Every application must be for one invention only. On filing, the application will be accorded date and a serial number.
- Complete specification in the prescribed format. The specification must describe the best method of performing an invention.
- The applicant has a choice of filing a provisional application first if he is not fully ready with the invention. Based on this a complete specification can be filed within 12 months of filing the provisional application.
- In an application for a patent made by virtue of an assignment of the right to apply for a patent for the invention, a proof of right to make the application needs to be submitted. The proof of right is either an endorsement at the end of the application for grant of patent or a separate assignment. The proof of right may be submitted within six months of the date of filing the application in India.
- Statement and undertaking regarding foreign applications. Such information may be submitted, in the prescribed format, within six months of filing application in India.
- Declaration as to the inventorship of the invention in the prescribed format along with the application. This may be submitted within one month’s time from the date of filing of the application if extension of time is sought in the prescribed format along with the prescribed fees.
- Power of Authority in the prescribed format. This can be filed subsequent to the filing of application. In cases where a General Power of Attorney from the applicant has already been filed, a copy attested by the agent/attorney can be filed for subsequent filing.
-If the application pertains to any biological material obtained from India, it is required to submit permission from the National Biodiversity Authority. This may be done any time before the grant of the patent.
- The geographical origin of any biological material used in the specification needs to be indicated.
- If biological material is deposited with an International Depository Authority, it is necessary to include its details in the specification that includes the name and address of the depository institution and date and number of the deposit of the material. For international applications such reference may be made within 3 months from the date of filing.
9. What is the procedure for filing patent applications outside India?
There are two routes for applying abroad:
1. Convention Route: An Indian national can apply to any of the 173 countries that are party to the Paris Convention for the Protection of Intellectual Property (called the Paris Convention in short and the countries are called Convention Countries) within 12 months of applying in India and claim priority of the earliest filed application in India. This way the applicant has the choice of entering several countries within a year’s time of filing in India.
2. Patent Cooperation Treaty (PCT) Route: This is another way of applying in a foreign country and PCT is administered by the International Bureau (IB) of the World Intellectual Property Organization (WIPO). It begins with the International Phase and ends with the National Phase. The application filed in the International Phase is called the International Application (IA) and filing of this application makes the applicant eligible to enter 143 other countries that are signatories to the PCT via this application. There are three ways in which an Indian applicant can apply to IB:
I) File in India first and after six weeks and within 12 months of such filing, file the PCT International Application (IA) with India as the receiving office. If IA is filed within six weeks of filing in India, permission u/s 39 has to be taken from the Indian Patent Office.
II) File the IA at the Indian Patent Office as the receiving office. For this permission u/s 39 has to be taken first from the Indian Patent Office.
III) File the IA directly at the IB. For this permission u/s 39 has to be taken first from the Indian Patent Office.
If the last two options have been exercised, the applicant can enter India via National Phase Application within 31 months of the date of priority. This deadline is not extendable. The applicant can enter 143 other countries at the end of 30/31 months from the date of earliest priority. The date of filing the International Application is reckoned as the filing date in India.
10. When is the patent application published?
At the end of eighteen months from the date of priority the application gets published. It is possible to expedite publication on request in the prescribed format along with the prescribed fees. The publication will have the following particulars:
- Application Number
- Date of Filing
- Title of Invention
- Publication Date
- International Patent Classification
- Name and address of the applicant
- Name of the inventor(s)
- Priority details like priority document number, date, country etc.
- Number of Claims
- Drawings (if any)
After publication, the details of the specification and drawings filed with the application are open to public on the Indian Patent Office’s website. A patentee can claim damages from the date of publication of the application. However, the patentee can institute a suit for infringement only after a patent is granted.
11. What is the process for examination of patent application?
Request for examination can be filed within 48 months of the date of priority in the prescribed format along with the prescribed fees. The Controller issues a First Examination Report (FER) that may contain objections to the grant of a patent. If the applicant fails to respond to the FER within 12 months of the date of issuance of FER, the application is deemed to have been abandoned.
The process of examination can be expedited for a PCT application before the expiry of 31 months by applying in the prescribed format along with the prescribed fees.
12. What are the different means for opposing a patent?
- Pre-grant opposition: There is provision for opposing a published application by submitting in writing to the Controller of Patents. There is no official fee for this procedure. However, it is necessary that a request for examination has already been filed for the application. It may be noted that no patent is granted before the expiry of six months before the grant.
- Post-grant opposition: Any patent can be opposed by an interested person within one year of the publication of grant of patent in a prescribed format along with prescribed fees. A successful opposition results in revocation of patent.
13. How much time does it takes for grant of patent?
Patent is granted after successfully complying with the examiner’s objections and successfully contesting pregrant opposition, if any. It normally takes 4-5 years for a patent to be granted.
14. What is the process for renewal of patent?
To keep a patent in force renewal fees is payable at the expiration of second year from the date of the patent or of any succeeding year. In other words renewal fee has to be every year up to the completion of 20 years. Renewal fees can be paid beyond the due date within a period of 6 prescribed fees. If a patent is granted later than two years from the date of filing of the application, the fees which have become due in the meantime may be made within a period of 3 months from the date of recording the patent in the register. This time is also extendable by 6 months as described earlier.
15. What is the term of validity of a patent?
The term of the patent is 20 years from the date of filing of the application. In case of PCT applications it is 20 years from the date of filing of the International Application under PCT.