patent law in india_what,how to get it regisgtered and protected
DESCRIPTION
It describes the patent law in India and describes what comes and what does come under patent . In other words it defines what kind of inventions can be patented . In brief it contains the following topics: -What is intellectual property -Meaning of Patent -Legislative Framework Patents -Patent Law - Salient Features -Safeguards in the Patent Law -Definition of patentable invention -Inventions not patentable -Documenting invention -Steps for obtaining a patent in India -Rights of product patentee -Rights of process patentee -Renewal of patent -Infringement of patent -Patent Due DiligenceTRANSCRIPT
PATENTS _ INTELLECTUAL
PROPERTY RIGHT 1
Index What is intellectual property Meaning of Patent Legislative Framework Patents Patent Law - Salient Features Safeguards in the Patent Law Definition of patentable invention Inventions not patentable Documenting invention Steps for obtaining a patent in India Rights of product patentee Rights of process patentee Renewal of patent Infringement of patent Patent Due Diligence
What is intellectual property
Intellectual Property refers to creation of mind i.e. inventions, industrial designs for article, literary & artistic work, symbols etc. used in commerce
Meaning of Patent
A Patent is an intellectual property right relating
to inventions and
is the grant of exclusive right,
for limited period,
provided by the Government to the
patentee, in exchange of full disclosure of his invention, for excluding others,
from making, using, selling, importing the patented product or process producing that product for those purposes.
LEGISLATIVE FRAMEWORK
PATENTS The Patents Act, 1970 (as amended in
2005)
The Patents Rules, 2003 (as amended in 2006)
The Patent Act was amended in line with international treaty that is Trade Related
Intellectual Property Rights ( TRIPS )
Patent Law - Salient Features
Both product and process patent provided
Term of patent 20 years Examination on request Both pre-grant and post-grant
opposition Publication of applications after 18
months with facility for early publication Substantially reduced time-lines
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
Definition of patentable invention
A new product or process, involving
an inventive step and capable of
being made or used in an industry. Section 2(1)j
Inventions not patentable
Section 3 and Section 4 sets out the inventions which are not patentable
Patentable invention
Invention must relates to a Process or Product or both
be new(Novel)
involves an inventive step inventive step be Capable
of industrial application industrial application not fall
under Section 3 and 4
Meaning of Novelty, Inventive step and Industrial applicable
i) Novelty : The matter disclosed in the specification is not published or used in India or elsewhere before the date of filing of the patent application in India. 2(1)l
ii) Inventive Step: The invention is not obvious to a person skilled in the art in the light of the prior publication/ knowledge/ document.2(1)ja
iii) Industrially applicable: Invention should possess utility, so that it can be made or used in an industry.
Inventions not patentable
Section 3(a) Frivolous inventions Inventions contrary to well
established natural laws
Examples Machine that gives more than 100%
performance Perpetual machine
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Inventions not patentable
Section 3(b) Commercial exploitation or primary use of inventions, which isContrary to
public order or Morality
Examples Gambling machine, Device for house-breaking
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Inventions not patentable
Section 3(b) Commercial exploitation or primary use of inventions , which
Causes serious Prejudice to health or human, animal, plant life or to the environment
Examples Biological warfare material or device,
weapons of mass destruction Terminator gene technology, Embryonic stem cell
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Inventions not patentable
Section 3(b)Excludes patents on GMOs – exploitation of which could be
contrary public order or morality or prejudicial to human, animal or plant life or health or to the environment
Effect : Only genetically modified micro-organisms (GMOs) which do not fall under section 3 (b) are patentable.
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Inventions not patentable
Section 3 ( c ) Mere Discovery of a Scientific Principle or formulation of an Abstract Theory or discovery of any living thing or discovery of non–living substance occurring in
nature
ExamplesNewton’s Laws Superconducting Phenomenon as such Property of certain material to withstand mechanical shockDiscovery of micro-organism Discovery of natural gas or a mineral
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Inventions not patentable
Section 3(c)Excludes patents on
Naturally occurring Micro-organisms
Effect Genetically modified microorganisms (GMOs) are however, patentable.
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Inventions not patentable
Section3 (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
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Inventions not patentable
Section3 (d) ExplanationFor the purposes of this clause, salts, esters, ethers, polymorphs, metabolites, pure form, particle size, isomers, mixture of isomers, complexes, combinations and other derivatives of known
substances
shall be considered to be the same substance, unless they differ significantly in properties with regard to
efficacy.
Examples Crystalline forms of known substance
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Inventions not patentable
Section 3 (d) Explanation
Effect Salts, esters, ethers, polymorphs, metabolite, pure
forms, particle size, isomers, complexes, combinations and derivatives of a known substance with enhanced efficacy are patentable
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Inventions not patentable
Section3 (d) 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.
Examples New use of Aspirin for heart ailments, Mere new uses of Neem
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Inventions not patentable
Section 3(e)
Substance obtained by mere admixture resulting only in the aggregation of the properties of the components thereof or a process for producing such substance
Examples Combiflam [Paracetamol (Antipyretic) + Brufen
(analgesic)] Solution of sugar and color additives in water to form
a soft drink However,A mixture resulting into synergistic properties of mixture of ingredients however, may be patentable - Soap, Detergents, lubricants etc
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Inventions not patentable
Section 3 ( e )
Effect Substance obtained by mere admixture resulting
only in the aggregation of the properties of the components thereof or
a process for producing such substance
are not patentable
However Synergistic formulations are patentable
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Inventions not patentable
Section 3 ( f )Mere arrangement or re-arrangement or duplication of known devices, each functioning independently of one another in a known way
Examples A Bucket fitted with torch, An Umbrella with fan A Clock and radio in a single
cabinet A flour-mill provided with sieving
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Inventions not patentable
Section 3(h) Method of Agriculture or Horticulture
ExamplesCultivation of algae , Producing new form of a known plant, Preparation of an improved soil
However, Agricultural Equipments are patentable
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Inventions not patentable
Section 3(i) Any process for medicinal, surgical, curative, prophylactic, diagnostic, therapeutic or other treatment of human beings or a similar treatment of animals to render them free of disease or to increase their economic value or that of their products
Examples Removal of cancer tumor Removal of dental plaque and carries Surgical processes Processes relating to therapy
Method of vaccination,
Blood transfusion
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Inventions not patentable
Section 3(j) Plants & animals in whole or any part
thereof other than micro- organisms, but including seeds, varieties an d species and essentially biological process for production or propagation of plants & animals
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Inventions not patentable
Section 3(j) Plants & animals in whole Parts of plants & animals Seeds Varieties & species Essentially biological processes
for propagation or production of the animals & plants
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Inventions not patentable
Section 3(j)Excludes patents on Plants and animals in whole or any parts
thereof, …… including seeds, varieties and species and essentially biological processes for production or propagation of plants and animals
Examples Clones and new varieties of plants A process for production of plants or animals if it consists
entirely of natural phenomena such as crossing or selection Essentially biological Process
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Inventions not patentable
Section 3(k) * mathematical method or * business method or * algorithms or * computer programme per se
ExamplesComputer program by itself or as a record on a carrier
However New calculating machine combination of hardware and software is patentable
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Inventions not patentable
Section 3(l) A literary,dramatic, musical or artistic work or any other aesthetic creation including cinematographic work and television productions
These subject-matters fall under the copyright protection
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Inventions not patentable
Section 3(m) A mere scheme or rule or method of performing mental act or method of playing game
ExamplesScheme for learning a language Method for solving a crossword puzzle, Method of learning a language Method of teaching /learning
However,Novel apparatus for playing game or carrying out a scheme is patentable
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Inventions not patentable
Section 3 (n)Presentation of information
Examples Any manner or method of expressing
information whether by spoken words Visual display symbols diagrams
Information recorded on a carrier
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Inventions not patentable
Section 3 (o)Topography of integrated
circuits.
ExamplesMask works - circuits layout
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Not patentable invention
Section 4 Inventions falling within Section 20(1) of the Atomic Energy Act, 1962 are not patentable
Effect Inventions relating to compounds of Uranium, Beryllium, Thorium, Plutonium, Radium, Graphite, Lithium and more as notified by Central Govt. from time to time are not patentable .
Documenting invention
Keep a notebook sequential numbered
Write down experiments, showing structure of invention and how these are conducted and how the invention is made out .
Keep on noting and updating the
claims of the patent
Steps for obtaining a
patent in India
Application for patent File an Application form in duplicate for each
invention (Form 1) .(section 7,54,135 Rule 20.1 ) Provisional or complete specification in
duplicate in Form 2. s.7 Information and undertaking listing the number,
filing date and current status of each foreign patent application ( in case application is made in foreign country ) in duplicate for same invention s 8
Applicable fee of Rs 750 in case of individual or Rs 3000 in case of corporate . With one of the patent offices based on territorial jurisdiction of the place of office or residence of the applicant ( head office Kolkata, Madras, New Delhi , Chennai ) (r 4)
Granting of application number
An Examiner after checking the formal requirements before accepting the application and the fee , issues application number and the cash receipt on the same day of filing of application
Provisional Specifications
It is permissible to file an application for a patent accompanied by a "Provisional Specification" describing the invention.
The application may, therefore, be made even before the full details of working of the invention are developed. The filing of an application for a patent disclosing the invention would secure priority date of the invention, and thereby, enable the inventor to work out the practical details of the invention .
Complete Specifications
If the provisional specification is filed, it must be followed by the complete specification within 12 months.(Form 2). s9
Complete specification shall fully describe the invention with reference to drawing, if required, disclosing the best method known to the applicant and end with Claim/Claims defining the scope of protection sought.
Complete Specifications
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.
Normally, it should contain the following matter- s9 Title of invention, sufficiently indicating the subject matter
of invention Detailed description of the invention with reference to
drawing/examples, Operation or use of the invention Best method of performing the invention, Claim(s)defining the scope of invention , Abstract to provide technological information of invention
Publication of application
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
Publication of Application
The publication includes the particulars of the date of the application, application number, name and address of the applicant along with the abstract.
The applications for patent are not open for public inspection before publication.
Examination of Application
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
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
Issue of First Examination Report
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
Meeting the objections of Examination Report
Application or complete specification should be amended in order to meet the objections within a period of 12 months from the date of First Examination Report (FER).
If objections are met, grant of patent is approved by the Controller – within a period of 1 month
Pre- Grant Opposition to the patent
Where an application for a patent has been published but a patent has not been granted, any person may, in writing represent by way of opposition to the Controller against the grant of any Patent with in period of six months of publication .
Opportunity of hearing the opponent is also available
Main Grounds of Opposition
-specification has been published before the priority date of the claim
-publicly known or publicly used in India before the priority date of that claim.
- being a claim of which the priority date is earlier than that of the applicant's claim;
- that the invention so far as claimed in any
claim of the complete specification is obvious Continue
Main Grounds of Opposition
- that the subject of any claim of the complete specification
is not an invention within the meaning of this Act
- that the complete specification does not sufficiently
and clearly describe the invention
that in the case of convention application, the application was not made within twelve months from the date of the first application for protection for the invention made in a convention country by the applicant or a person from whom he derives title.
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Main Grounds of Opposition
that the complete specification does not disclose or wrongly mentions the source or geographical origin of biological material used for the invention.
-that the invention so far as claimed in any claim of the complete specification is anticipated having regard to the knowledge, oral or otherwise, available within any local or indigenous community in India or elsewhere.
Examination of Pre-grant Oppositions
Opposition (documents) is sent to the applicant.
A period of 3 months is allowed for receipt of response from the applicant .
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
Grant of a Patent
A certificate of patent is issued within 7 days
Grant of patent is published in the official journal
Terms of patent
Term of every patent will be 20 years from the date of filing of patent application, irrespective of whether it is filed with provisional or complete specification.
Date of patent is the date on which the application for patent is filed.
Post-grant opposition to the patent
Any interested person can file notice of opposition (along with written statement and evidence, if any) anytime after the grant of Patent but before the expiry of a period of one year from the date of publication of grant of a Patent in the Patent Office Journal.
Rights of product patentee
Where a patent covers a product, the grant of patent gives the patentee the exclusive right to prevent others from performing, without authorisation, the act of making, using, offering for sale, selling or importing that product for the above purpose.
Rights of process patentee
Where a patent covers a process, the patentee has the exclusive right to exclude others from performing, without his authorization, the act of using that process, using and offering for sale, selling or importing for those purposes, the product obtained directly by that process in India.
Renewal of patent
To keep the patent in force, renewal fee is to be paid every year. Application for restoration of a patent that lapses due to non-payment of renewal fees must be made within 18 months of lapse
Patent Infringement
“Infringement” of a patent occurs when a person makes, uses, sells, or imports an invention without the permission of the patent owner.
Patent Infringement
Patents only cover those products or processes described by the claims
An infringing product or process must have each element of the claim
The accused product or process may have more than required by the claim
Patent Due Diligence
1. Patent searches on relevant product lines of primary competitors
2. Compare proposed new product or process to any relevant patents or competitor products
3. If necessary, search for prior art