Submitted in Partial Fulfillment for the Requirement of the Award of the Degree of

MASTER OF BUSSINESS ADMINISTRATION

WORK BOOK REPORT

ON

THE INDIAN PATENT ACT -1970

INSTITUTE OF MANAGEMENT TECHNOLOGY

RAJ NAGAR, GHAZIABAD (U.P.)

2010 – 2012

Submitted By:-Guided by:Sh. A K HARSH ROZALIN DASCentre head 1011000438Delhi -05 MUNIRKA DELHI-05

THE INDIAN PATENT ACT -1970

Intellectual property

Intellectual property (IP) is a term referring to a number of distinct types of creations of the mind for which a set of exclusive rights are recognized—and the corresponding fields of law. While these rights are not actually property rights, the term "Property" is used because they resemble property rights in many ways. Under intellectual property law, owners are granted certain exclusive rights to a variety of intangible assets, such as musical, literary, and artistic works; discoveries and inventions; and words, phrases, symbols, and designs. Common types of intellectual property include copyrights, trademarks, patents, industrial design rights and trade secrets in some jurisdictions.

Although many of the legal principles governing intellectual property have evolved over centuries, it was not until the 19th century that the term intellectual property began to be used, and not until the late 20th century that it became commonplace in the United States. The British Statute of Anne 1710 and the Statute of Monopolies 1623 are now seen as the origin of copyright and patent law respectively.

INTELLECTUAL PROPERTY RIGHTS IPR

IPRS is a searchable database containing public versions of U.S. Customs and Border Protection intellectual property rights recordations. Recordations can be retrieved based on simple or complex search characteristics using keywords and Boolean operators. IPRS has the added functionality of restricting searches to specific fields and record types. IPRS contains expired as well as current records and by default excludes expired records. For more information about features or how to use IPRS

TYPES OF INTELLECTUAL PROPERTY

Intellectual property refers to the right over the intellectual work and not the work itself. The work can be either artistic or commercial. The artistic works come under the category of copyright laws, while the commercial ones, also known as industrial properties, are ruled by copyrights, trademarks, industrial design rights and trade secrets. Copyright laws deal with the intellectual property of creative works like books, music, software, painting, etc. Industrial properties cover those created and used for industrial or

commercial purposes. As stated earlier, intellectual property is categorized into various types as per the nature of work. The most common types of intellectual property are copyrights, trademarks, patents, industrial design rights and trade secrets. Let us have a brief look at the different types of intellectual property.

Copyrights

A copyright is a right conferred on the owner of a literary or artistic work. It is an exclusive right to control the publication, distribution and adaptation of creative works. The right lies with the owner-cum-copyright holder for a certain period of time. As time lapses, the work can be republished or reproduced by others. Usually, the timespan of a copyright extends through the entire life of the owner and lasts up to a period of about 50 to100 years after death. In case of anonymous works, the right lasts for 95 years after publication or 120 years after the creation.

Trademarks

A trademark is a symbol, which is generally used to identify a particular product, which indicates its source. A trademark can be a combination of words, phrases, symbols, logos, designs, images or devices, used by an individual, legal entity or business organization to distinguish their products from that of others. For example, you can identify the products of Nike Inc., through their logo, which is embossed on their products. Once registered, trademarks are protected legally and the owners can sue persons who use their trademarks.

Patents

Patents are rights related to new inventions. This right is conferred on persons who invent any new machine, process, article of manufacture or composition of matter, biological discoveries, etc. In order to grant a patent, the invention should fit into the following criteria, which may differ from country to country. In general, the invention must be new, inventive and should be useful or can be applied in industries. The person who receives a patent for his invention has an exclusive right to control others from making, using, selling, or distributing the patented invention without permission. Generally, the time limit of a patent is 20 years from the date of filing the application (for the patent).

Industrial Design Rights

These rights also come under intellectual property and protect the visual design of objects that are not purely utilitarian, but have an aesthetic or ornamental value. It can refer to the creation of a shape, color, pattern or a combination of all these things. It can be an industrial commodity or a handicraft. The design can be either two-dimensional (based

on pattern, colors and lines) or three-dimensional (as per shape and surface). An industrial design right is conferred after considering factors like, novelty, originality and visual appeal. The person who has an industrial design right has the exclusive right to make or sell any objects in which the design is applicable. The right is conferred for a period of 10 to 25 years.

Trade Secrets

Trade secrets are the designs, practice, formulas, instrument, processes, recipes, patterns or ideas which are used by a company to gain economic advantage over its competitors. The owner of a trade secret does not possess any right over anyone who gains access to that secret independently, but he can prevent the use of trade secret by anyone who has learned it through the owner. For example, an employer can protect trade secrets through contracts with his employees. It differs from other types of intellectual property, because it is the responsibility of the owner to keep the secret and it is not protected through government policies. Once the trade secret is leaked, it can be used by any person.

Intellectual property has encouraged people to come up with indigenous creations, as the law protects their right over their respective works. It can also offer some economic aid to the holder of the right, through the monopoly of their creations. Thus, it is very important to respect these rights and restrain from infringing them.

Patent

A patent (pronounced / ̍ pætənt/ or / ̍ peɪtənt/ ) is a set of exclusive rights granted by a state (national government) to an inventor or their assignee for a limited period of time in exchange for a public disclosure of an invention.

The procedure for granting patents, the requirements placed on the patentee, and the extent of the exclusive rights vary widely between countries according to national laws and international agreements. Typically, however, a patent application must include one or more claims defining the invention which must be new, non-obvious, and useful or industrially applicable. In many countries, certain subject areas are excluded from patents, such as business methods and mental acts. The exclusive right granted to a patentee in most countries is the right to prevent others from making, using, selling, or distributing the patented invention without permission.[1] It is just a right to prevent others' use. A patent does not give the proprietor of the patent the right to use the patented invention, should it fall within the scope of an earlier patent.

Under the World Trade Organization's (WTO) Agreement on Trade-Related Aspects of Intellectual Property Rights, patents should be available in WTO member states for any inventions, in all fields of technology, and the term of protection available should be the minimum twenty years. Different types of patents may have varying patent terms (i.e., durations).

The term patent usually refers to a right granted to anyone who invents or discovers any new and useful process, machine, article of manufacture, or composition of matter, or any new and useful improvement thereof. The additional qualification utility patent is used in the United States to distinguish it from other types of patents (e.g. design patents) but should not be confused with utility models granted by other countries. Examples of particular species of patents for inventions include biological patents, business method patents, chemical patents and software patents.

Some other types of intellectual property rights are referred to as patents in some jurisdictions: industrial design rights are called design patents in some jurisdictions (they protect the visual design of objects that are not purely utilitarian), plant breeders' rights are sometimes called plant patents, and utility models or Gebrauchsmuster are sometimes called petty patents or innovation patents. This article relates primarily to the patent for an invention, although so-called petty patents and utility models may also be granted for inventions.

Certain grants made by the monarch in pursuance of the royal prerogative were sometimes called letters patent, which was a government notice to the public of a grant of an exclusive right to ownership and possession. These were often grants of a patent-like monopoly and predate the modern origins of the patent system. For other uses of the term patent see notably land patents, which were land grants by early state governments in the

USA, and printing patent, a precursor of modern copyright. These meanings reflect the original meaning of letters patent that had a broader scope than current usage.

THE INDIAN PATENT ACT – 1970

The Indian Patent Office is administered by the Office of the Controller General of Patents, Designs & Trade Marks (CGPDTM). This is a subordinate office of the Indian government and administers the Indian law of Patents, Designs and Trade Marks

Patent administration

The CGPDTM has five main administrative sections:

Patents Designs Trade Marks Geographical indications Patent Information System

The patent office is headquartered at Kolkata with branches in Chennai, New Delhi and Mumbai, but the CGPDTM office is in Mumbai. The office of the Patent Information System is at Nagpur.

The Controller General, who supervises the working of the Patents Act, the Designs Act, and the Trade Mark's Act, also advises the Government on matters relating to these subjects. An IAS officer, Mr. P.H.Kurian is now the Controller General. Under the CGPDTMA, a Geographical Indications Registry has been established in Chennai to administer the Geographical Indications of Goods (Registration and Protection) Act, 1999.

The Indian Patent Office has 75 Examiners, 70 Assistant Controllers, 7 Deputy Controllers, 1 Joint Controller, and 1 Senior Joint Controller, all of whom operate from four branches. Although the designations of the Controllers differ, all of them (with the exception of the Controller General) have equal authority in administering the Patents Act. The unwarranted promotion of many Examiners as Assistant Controllers has further led to an imbalance in the set-up of the Patent Office, thereby disrupting the normal functioning of the organization. Now there are more supervisors(Controllers) than workers(Examiners). Indian Patent Examiner's submit their reports to the Controllers, who have the power to either accept or reject Examiner's reports. In 2005, the Indian Patent Office examined around 14,500 patent applications. Examiner attrition seems to be issue with the Office. Despite the attrition the number of first office actions have increased from 2004-05 to 2006-07 probably due to increased output from the Office. The Controller General, Mr.P.H.Kurian, in an interview, has promised time-bound promotions to Officers and recruitment of new Examiners. This may mitigate the crisis of

lack of officers and the problem of attrition due to low pay and lack of promotion. A recent report of a concerned government official has recommended outsourcing of search in view of increased work load .

The Indian Patent Office has implemented a modernization program according to an Indian govt website. And according to this website "Efforts have been made to improve the working of the Patent Offices within the resources available and that the problem of backlog is also being attacked through 50% higher monthly target for disposal of patent applications per Examiner". Full text of Indian Patents are now available. E- Filing of Patents & Trademarks is made possible and according to an Indian Minister the first phase of the modernization comes to an end and the Indian Patent office wishes to be an International search Authority. The second phase of modernization has been proposed with the aim of achieving US patent examination efficiency among others. Patent filings during the year 2007-08 were 35000. Courtesy:- UPSC Controller.

Patent duration

Term of every patent in India is 20 years from the date of filing of patent application, irrespective of whether it is filed with provisional or complete specification. However, in case of applications filed under PCT the term of 20 years begins from International filing date (See No.41 of FAQs on Indian Patent Office website).

Geographical Indications tags

India, as a member of the World Trade Organization (WTO), enacted the Geographical Indications of Goods (Registration & Protection) Act, 1999 has come into force with effect from 15 September 2003. GIs have been defined under Article 22(1) of the WTO Agreement on Trade-Related Aspects of Intellectual Property Rights(TRIPS) Agreement as: “Indications which identify a good as originating in the territory of a member, or a region or a locality in that territory, where a given quality, reputation or characteristic of the good is essentially attributable to its geographic origin.”

The GI tag ensures that none other than those registered as authorised users (or at least those residing inside the geographic territory) are allowed to use the popular product name. Darjeeling tea became the first GI tagged product in India, in 2004-05, since then by September 2010, 132 had been added to the list, this include, Salem Fabric, Kancheepuram Silk Sarees, Madurai Sungudi Sarees, Bhavani Jamukkalam, Coimbatore wet grinders, Bikaneri bhujia from Rajasthan, Guntur Sannam chilli, Hyderabadi haleem and Gadwal sarees from Andhra Pradesh, Nashik valley wine, Mahabaleshwar strawberry and Paithani sarees from Maharashtra, Kinnauri shawl from Himachal Pradesh, Kasaragod sarees and Kuthampully sarees from Kerala, Sandur Lambani embroidery and Kasuti embroidery from Karnataka, and Banarasi Brocades and Sarees and hand-made carpet from Bhadohi in Uttar Pradesh., apart from Monsooned Malabar coffee, Monsooned Malabar Robusta Coffee and Coorg Green Cardamom, Molakalmuru sarees, bronze ware, Navalgund Durries, Mysore Ganjifa cards, Mysore silk, Mysore agarbathis (incense sticks), Bidriware (metal design), Channapatna toys, Mysore rosewood inlay,

Mysore sandalwood oil, Mysore sandal soap, Mysore traditional paintings, Coorg orange, Mysore betel leaf, Nanjangud banana, Mysore jasmine, Udupi jasmine, Hadagali jasmine and Ilkal sarees, also from Karnataka state

Criticism

Unlike EPO and USPTO, the Indian Patent Office does not provide access to Office Actions ,which however is promised soon. As per An Indian patent Attorney in a Leading IP magazine, patents which were beyond the Act were granted by the Office. The Indian Patent office seems to have unusually high grant rate (refer to page 14 of the patent office annual report for the year 2005-06 in respect of number of refused patent applications), compared to other major patent Offices (EPO annual report for 2006, p22), and indicates the complete failure of the "well established" quality assurance systems covering the patent granting procedures. The reason behind this is attributed to the fact that a majority of patent applications filed in India are PCT National Phase cases which have an International Search/Examination report. Therefore it is easy for Examiners/Controllers to decide on granting a patent for the application.This is not the case in well established Patent offices of developed countries where a majority of the applications are local(ordinary) applications. Here a search has to be carried out and based on the documents recovered during this search, the final outcome of the application is decided. Hence there can be no comparison with the number of cases examined and granted in India and abroad. Further the monthly target for Indian examiners is 10(in addition to amended applications and other responsibilities) as compared to a maximum of 5 abroad. Knowledge commission, an Indian govt appointed body has recommended measures regarding the functioning of the Office. Recently the patent grant of a pharma drug has attracted attention. It should also be noted that the Patent office has not come up with final guidelines (Manual of Patent Practice and Procedure). It is unclear whether the patent office is still revising its draft manual which is kept for public inspection since 2005. A Delhi high court judgment has found that the Indian Patent Office has followed a lowered inventive step criterion (TSM method)in respect of a cancer drug patent.

The patent office is also not enforcing the rules and regulation mentioned in the act.

According to the section 24 of patent act "The period for which an application for patent shall not ordinarily be open to public under sub-section (1) of section 11A shall be 18 month from the date of priority. The controller shall publish the application in the Journal shall ordinarily be one month from the date of expiry of said period, or one month from the date of request for publication under rule 24-A"

The rule are un-clear and there is no fixed action stated. The word "shall" is been used as a protection shield by the Patent office and has never published any of the application within one month from the date of request or expiry of said period. This is one of the examples, many more can be listed. It seems to be that Patent Office is biased.

Generally, the time taken by the Indian Patent Office (IPO) to grant a patent is around 3-4 years from the date of first filing. US Attorneys are behind USPTO to reduce the 2 years period taken by the USPTO.

In early January this year Sai had carried a post on a public notice issued by the Patent Office, under Section 146 of the Patents Act, requesting all patentees to furnish statements, by 31st of March, 2010, in the format prescribed by Form 27 on how their patents were being worked in India. Form 27 is available on the Patent Office website over here and requires the patentee to furnish the following information:

(i)Is the patent being worked in India?(ii)If not then in that what are the reasons for not working it in India?(iii)The quantum and value of sales of the patented article and most importantly whether the patentees are manufacturing the article in India or whether they are importing the product from foreign countries.(iv) The licences and sub-licences granted for the manufacture of the patented article.(v)A statement on whether public requirement has been adequately met to the fullest extent possible at a reasonable price.

While there have been pertinent questions raised in a guest post by Mr. Feroz Ali, on the need for the patent office to request for such information the greater apprehension amongst the pharmaceutical industry should be the fact that the first ever granted pharmaceutical patents are crossing the three-years limit, under Section 84 of the Indian Patents Act, thereby allowing for compulsory licensing provisions to be invoked by the domestic generic pharmaceutical industry. The information collected by the Patent Office will go a long way in helping generic pharmaceutical companies determining which patents are 'ripe' for compulsory licensing. Some leading generic pharmaceutical companies like Cipla have stated in no uncertain terms in their annual reports that all life-saving pharmaceutical patents should be automatically compulsory licensed for a suitable royalty. It can therefore be expected that they will file CL applications by the end of the year.

The relevance of 'local working requirements' in the compulsory licensing debate: The relevance of this debate on the local working requirements, is that most of big PhRMA's manufacturing happens in its home countries, with very few of them having any local manufacturing capacity in India. Therefore if the Patents Act, 1970 is interpreted to require local working, all most all pharmaceutical patents granted to foreign manufacturers are liable for compulsory licensing. The main issues which need to be examined in this context are threefold and are as follows:

(i)Whether a 'local working' requirement is TRIPs compatible?(ii)Whether the Indian Patent Act requires patents to be 'locally worked'?(iii)The economics of the international trade in pharmaceutical products and whether a

'local working' requirement would result in the lowest possible prices for the consumers?

(i) Whether a 'local working' requirement is TRIPs compatible?At first glance TRIPs seems to provide a straight forward answer, to the question of 'local working', in Article 27.1. Although Article 27 is titled 'Patentable Subject Matter' it concludes by stating that patent rights will be enjoyed without discrimination as to whether a product is imported or produced locally. It would seem that this would obviate the need for a debate on the subject but things are seldom so simple when it comes to real life. An excellent article authored by Paul Champ & Amir Attaran which is published in the Yale Journal of International Law (YJIL) provides an in-depth look into the question of TRIPs compatibility. In the YJIL article the authors go through the entire negotiating history of the TRIPs agreement and point out how the same is inconclusive in establishing whether or not the member states actually wanted the insertion of a 'local working requirement'. The authors then end the paper by examining the local working requirement from the perspective of Articles 30 & 31 of TRIPs and conclude that Articles 30 & 31 of TRIPs permit members states to maintain a 'local working' requirement. Articles 30 & 31 of TRIPs are the same provisions used by developing countries to defend the presence of compulsory licensing provisions in their intellectual property laws.In the year 2000 the Dispute Settlement Body (DSB) of the WTO had a chance to clarify this question when the U.S.A filed a complaint against Brazil for having a local working requirement in its patent law. At that time India had joined the dispute as an interested party. Unfortunately for the U.S.A. it turned out that one of their legislation had a similar provision for local working of all federally funded innovations. As a result the U.S.A. beat a hasty retreat and withdrew from the dispute, reserving its right to re-start the litigation. The relevant WTO documents can be accessed here.

(ii) Whether the Indian Patent Act requires patents to be 'locally worked'?Section 84 (c) of the Patent Act states a compulsory license may be granted if the applicant can prove that the patentee has worked the patent invention in the territory of India. Although the Act is silent on the definition of 'working' it does lay down certain other provisions from which it can be determined as to whether or not local working is required:The two provisions that touch on the topic of local working/importation are:

(i)Section 83 (b) [General principles applicable to working of patented inventions] that they [patents] are not granted merely to enable patentees to enjoy a monopoly for the importation of the patented article;

(ii)Section 84 (7)(e) [Defining when the Reasonable Requirements of the public are not met] if the working of the patented invention in the territory of India on a commercial scale is being prevented or hindered by the importation from abroad of the patented article.

The first provision i.e. S. 83 (b) is quite unique for an Indian legislation since it is clearing not binding and is more in the nature of a guiding principle. If the provision was

meant to be binding Parliament would have drafted the language of the same to reflect the rigidity of the provision. Such non-binding, merely guiding principles of law are not entirely alien to Indian law. The Constitution of India has a set of Directive Principles of State Policy which lays out the socio-economic goals for the country but which are not binding and are therefore non-justiciable.

The second provision i.e. S. 84 (7)(e) is a sub-clause to the Section which defines the circumstances in which the law deems the reasonable requirements of the public to have not been met. According to this Section the reasonable requirement of the public are deemed to have not been met when the working of the patented invention in the territory of India on a commercial scale is being prevented or hindered by the importation from abroad of the patented article. My reading of this provision suggests that this provision will kick in only those circumstances when a CL applicant can establish that the sole reason for the inadequate availability of the patented invention within India is the fact that it is being imported i.e. to say the process of importation is in itself leading to the shortage of the patented invention in India. The process of importation could be impeded by a variety of reasons such as natural disasters, socio-economic reasons in the exporting country, political reasons such as sanctions imposed by a foreign country wherein the manufacturing plants of the patentee are situated. To very briefly summarize this point – Section 84(7)(e) will not kick in, in those cases where importation is not hindering the working of the patented invention in India either in terms of cost or availability. Instead S. 84(7)(e) will kick in only in those circumstances when the process of importation is preventing or hindering the working of the product within India in terms of cost or availability. The test therefore lies in whether or not, there lies a direct co-relation, between the cost/availability of the product and the fact that the same is imported. Therefore a pharmaceutical company which imports the patented product into India from Europe or the U.S.A. and sells the same in India cannot be held to have not met the reasonable requirements of the Indian public unless a CL applicant can prove that the process of importation is adversely affecting the working of the product in terms of either cost or availability.

(iii) The economics of the international trade in pharmaceutical products and whether a 'local working' requirement would result in the lowest possible prices for the consumers?

There is one basic economic concept that is relevant to the discussion on whether a 'local working' requirement is in the best interests of the consumers and that is the concept of 'economies of scale'.

Economies of scale: This concept basically refers to the advantages that accrue to a business and the consumer if the business were to manufacture a product on a large scale. Basically a company achieves economies of scale when its per unit cost decreases for every extra unit manufactured. This usually happens due to the increase in manufacturing capacity which in turn facilitates the more efficient use of resources. To give a simple example – if a company were to manufacture 100 units of a product it would have to price each unit at a cost which would be higher than if it were to manufacture 1000 units in order to make similar profits.

Economies of scale applies in particular to the pharmaceutical industry. Take for example Cipla, which is one of India's largest pharmaceutical companies. With a mere 8 manufacturing plants, located in India, Cipla is able to sell products worth Rs. 5000 crores (including exports of Rs.2743 crores to over 180 countries worldwide). It is presumable that foreign pharmaceutical companies which have already established their manufacturing plants in their home countries will be able to achieve similar economies of scale with their existing plants. To establish new plants in India just to meet local working requirement will disrupt the economies of scale that they are able to achieve through their present manufacturing plants. If in case these economies of scale were to be disrupted the cost per unit would escalate. In short a 'local working requirement' under the Patent Act would in fact lead to an increase in the cost of patent pharmaceutical products in India.

Conclusion: The local working requirements of the Indian Patent Act are therefore malleable to meet the conditions of the day. The suitability of using such a requirement to facilitate the transfer of technology to India is questionable. Ultimately transfer of technology depends on a whole range of factors and not simply a statutory requirement.

History

In 500 BC, in the Greek city of Sybaris (located in what is now southern Italy), "encouragement was held out to all who should discover any new refinement in luxury, the profits arising from which were secured to the inventor by patent for the space of a year."

The Florentine architect Filippo Brunelleschi received a three-year patent for a barge with hoisting gear, that carried marble along the Arno River in 1421. In 1449, King Henry VI granted the first patent with a license of 20 years to John of Utynam for introducing the making of colored glass to England.

Patents in the modern sense originated in 1474, when the Republic of Venice enacted a decree that new and inventive devices, once put into practice, had to be communicated to the Republic to obtain the right to prevent others from using them.

England followed with the Statute of Monopolies in 1623 under King James I, which declared that patents could only be granted for "projects of new invention." During the reign of Queen Anne (1702–14), the lawyers of the English Court developed the requirement that a written description of the invention must be submitted. The patent system in many other countries, including Australia, is based on British law and can be traced back to the Statute of Monopolies.

In France, patents were granted by the monarchy and by other institutions like the "Maison du Roi". The Academy examined novelty. Examinations were generally done in secret with no requirement to publish a description of the invention. Actual use of the invention was deemed adequate disclosure to the public. The modern French patent

system was created during the Revolution in 1791. Patents were granted without examination since inventor's right was considered as a natural one .

In the United States, during the so-called colonial period and Articles of Confederation years (1778–89), several states adopted patent systems of their own. The first Congress adopted a Patent Act, in 1790, and the first patent was issued under this Act on July 31, 1790 (to Samuel Hopkins of Vermont for a potash production technique).

Why one should go for a getting a patent

You have a great idea for an invention or product. Do you need to hire a lawyer to apply for a patent? In most cases, the answer is "no." You can do it yourself, and save thousands of dollars on attorneys' fees.

Filing a Patent Without an Attorney

Thousands of inventors have successfully navigated the patent system on their own. In fact, federal law requires patent examiners at the U.S. Patent and Trademark Office (USPTO) to help individual inventors who apply for patents without a lawyer's help.

To obtain a patent, you need to:

make sure your invention qualifies for a patent, and be able to describe all aspects of your invention.

These aren't "legal" skills, and learning them is no different than learning any other skill, whether it's auto repair, deck installation or gourmet cooking. Some steps are easy, others are more difficult. But by taking the process one step at a time, you can acquire a patent.

Steps to Filing a Patent Application

Here's a quick look at the basic steps you need to take before filing a patent application. Nothing about the process requires a lawyer -- there's no court, no judge, no "legal" research. The USPTO has specific rules, but you can follow them just as you would a recipe in a cookbook.

1. Keep a Careful Record of Your Invention

Record every step of the invention process in a notebook. Describe and diagram every aspect and every modification of the invention, including how you came up with the idea for it. Depending on the invention, you may also need to build and test a prototype. Document all of these efforts. Sign and date each entry and have two reliable witnesses sign as well.

2. Make Sure Your Invention Qualifies for Patent Protection

You cannot get a patent just on an idea. You must show how your invention works and your invention must be new. This means it must be different in some important way from all previous inventions. It also cannot be for sale or be known about for more than a year before you apply for a patent. To learn more, see Qualifying for a Patent FAQ.

3. Assess the Commercial Potential of Your Invention

Applying for a patent is a business decision. Even without a patent attorney or the use of professionally prepared patent drawings, it costs approximately $1,500 in fees to file and obtain a patent from the USPTO. Before you spend the time and money to file a patent application, you need to research the market you hope to enter and decide whether it's worth the outlay of funds.

4. Do a Thorough Patent Search

To make sure your invention is new, you need to search all the earlier developments in your field. This involves searching U.S. (and sometimes foreign) patents, as well as other publications like scientific and technical journals, to find related inventions.

Although patent searching is time consuming, it can be mastered with practice. Even if you decide to hire a professional later on in the process, you know the most about your invention, so you are the best person to start the search.

You can start your research on the Internet, but you may also want to visit a Patent and Trademark Depository Library, where you can search earlier patents and get help from a librarian. For more information, see Patent Searching Online.

When you search, you will certainly find other inventions that are similar to yours. In your application, you should show how your invention improves upon or is different from these earlier developments.

5. Prepare and File an Application With the USPTO

When you file with the USPTO, you can either file a full-blown regular patent application (RPA) or a provisional patent application (PPA).

Provisional patent application (PPA): A PPA is not an actual application for the patent itself. Filing a PPA simply allows you to claim patent pending status for the invention and involves only a small fraction of the work and cost of a regular patent application.

All that is required to file a PPA is a fee of $110 ($220 for large companies), a detailed description of the invention, telling how to make and use it, and an informal drawing. Then, you must file an RPA within a year of filing the PPA. If you don't, you can no longer claim the PPA filing date. To learn more about why you might want to file a PPA, see the article  Basics of Provisional Patent Applications.

Nolo's Online Provisional Patent Application service gives you plain-English advice as we take you through the steps to create your own PPA. We complete the required government forms, file your application, and then send you the completed PPA, detailed instructions, four essential agreements, and the book What Every Inventor Needs to Know About Business & Taxes, by Stephen Fishman (Nolo). To learn more about this service, see Nolo's Online Provisional Patent Application FAQ.

Regular patent application (RPA): Filing an RPA -- a regular patent application -- starts the examination process at the USPTO that's necessary for getting the actual patent. To learn what's involved in preparing a regular application, see Understanding Patent Applications.

What can be patented

The patent law specifies the general field of subject matter that can be patented and the conditions under which a patent may be obtained.

In the language of the statute, any person who “invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent,” subject to the conditions and requirements of the law. The word “process” is defined by law as a process, act or method, and primarily includes industrial or technical processes. The term “machine” used in the statute needs no explanation. The term “manufacture” refers to articles which are made, and includes all manufactured articles. The term “composition of matter” relates to chemical compositions and may include mixtures of ingredients as well as new chemical compounds. These classes of subject matter taken together include practically everything which is made by man and the processes for making the products.

The Atomic Energy Act of 1954 excludes the patenting of inventions useful solely in the utilization of special nuclear material or atomic energy for atomic weapons.

The patent law specifies that the subject matter must be “useful.” The term “useful” in this connection refers to the condition that the subject matter has a useful purpose and also includes operativeness, that is, a machine which will not operate to perform the intended purpose would not be called useful, and therefore would not be granted a patent.

Interpretations of the statute by the courts have defined the limits of the field of subject matter which can be patented, thus it has been held that the laws of nature, physical phenomena and abstract ideas are not patentable subject matter.

A patent cannot be obtained upon a mere idea or suggestion. The patent is granted upon the new machine, manufacture, etc., as has been said, and not upon the idea or suggestion of the new machine. A complete description of the actual machine or other subject matter for which a patent is sought is required.

Patents apply to inventions and processes and cannot protect logos or concepts. The type of inventions that can be patented is large and includes the following:

A new product A new process of manufacturing An improvement to an existing product or process A new method or process relating to the testing or control of an existing

manufacturing process Improvements in computer technology New chemical compounds or compositions

To qualify for a patent, an invention must meet certain criteria relating to novelty, inventiveness and utility. In short, it must be new. It should also have an industrial application and contain an inventive step that is ‘non-obvious’.

Patent or Trade Secret

Before applying for a patent it is important to decide whether a particular innovation should be protected by a patent or retained as a trade secret. An invention can not have patent protection and be kept secret. Part of the patent process is publishing a complete description of the invention.

For example, if a food processor invents a new low cost, energy efficient refrigeration process for freezing vegetables they have to decide whether to patent the process or keep it secret. Patenting it will give them a window of opportunity to decrease costs relative to competitors and they can either pass this on to customers in the hope of increasing market share or create a higher margin on goods to increase profits.

Alternatively, the company could choose to keep the new process a trade secret. By doing so the process would have no legal protection but the company could extend their competitive advantage for longer than the patent period, e.g. 20 years, providing the new process remains secret. By keeping the process secret the company runs the risk of a competing company discovering the same process which they could then patent and have exclusive rights over. This could mean that the original inventors may not be able to use the process without buying the patent or license to use it from the competing company.

An inventor may also choose not to patent a process but focus resources on marketing the invention while continuing to refine it to stay ahead of competitors

Advantages and Disadvantages of Patents

Benefits gained by patent protection include:

The patent holder has exclusive commercial rights to use and license the invention.

Legal action can be taken against anyone who tries to use the invention without the patent holders consent.

The existence of the patent may be enough to deter would-be infringers. The patent can be sold.

Drawbacks of patent protection include:

A full description of the invention is published and can be viewed by anyone applying to the appropriate patent administration office.

After the exclusive patent period other people or businesses can freely use the invention without needing permission from or making a payment to the inventor.

The cost of the patent may out-weigh the financial advantages of the invention. Inventors may choose to capitalise on inventions that could benefit the wider

public, such as a new low carbon emitting energy source, rather than allowing the inventions to be used widely.

Buying and Selling Patents

A patent is a business asset that can be bought, sold, transferred or licensed like most other property. They can be sold at any time during the specified exclusivity period. Some inventors do not actually manufacture their patented inventions but rather trade and profit from licensing their patents to others. For example, a person could enjoy inventing new machinery but not have the resources or interest in manufacturing the products for sale to the public. Benefit can still be gained from their inventions by selling or licensing the new machinery to others to manufacture.

On the other hand, a business may not have the expertise or resources to create inventions and are willing to purchase inventions from inventors. Buying a patent or the license to use a patented innovation may be more cost effective for some companies than running a research and development department.

What can not be patented

What can not be patented? An invention which claims anything obvious contrary to well established natural laws; An invention the intended use of which can be injurious to public health; The mere discovery of a scientific principle or the formulation of an abstract theory; The mere discovery of any new property of 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; 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; The mere arrangement or re-arrangement or duplication of known devices each functioning independently of one another in a known way; A method or process of testing, applicable during the process of manufacture for rendering the machine, apparatus or other equipment more efficient or for the improvement or restoration of the existing machine, apparatus or other equipment or for the improvement or control of manufacture; A method of agriculture or horticulture; Any process for the medicinal, surgical, curative, prophylactic or other treatment of human beings or any process for a similar treatment of animals or plants to render them free of disease or to increase their economic value or that of their products. Inventions relating to atomic energy. What can not be patented?

Laws of nature Physical phenomena Abstract ideas Literary, dramatic, musical, and artistic works (these can be Copyright

protected). Go to the Copyright Office . Inventions which are:

Not useful (such as perpetual motion machines); or Offensive to public morality

Procedure for grant of patent

To apply for a patent, the applicant should file the application in the prescribed form, along with the requisite fee at the Patent Office. The application should be accompanied by a provisional or complete specification (description of the invention). The provisional specification need not be full and specific, and has to merely contain the general description of the invention, its application and anticipated results. The object of the provisional specification is to fix the priority date of the patent. The complete specification should be filed within a specified period of filing the application, otherwise the application will be deemed to be abandoned. The application is thereafter examined by the Examiner of Patents to check the following:

-          whether it complies with the requirements of the Patent Act and Rules;

-          whether there is any lawful ground for objection to grant of patent; and

-          whether the invention has already been published or claimed by another person.

 Objections, if any are communicated to the applicant and such objections generally relate to the drafting of the specification or any speculation as to anticipation about prior claims. These objections can, in many cases, be overcome by suitably amending the description of the invention or the claims or by inserting a reference to a prior specification number. If the objections are not answered satisfactorily, the Controller of Patents may refuse to grant patent after giving a hearing to the applicant. If the objections are satisfactorily handled, the Controller of Patents publishes the specification in the Official Gazette. An interested party may give notice of opposition of such advertisement. The notice of opposition is forwarded to the applicant, the reply to which is to be filed within three months. Thereafter both parties are heard and the matter decided. Once the application is accepted, the patent is granted expeditiously and the date on which patent is granted shall be entered in the register.

Who can apply for a patent :

If you're the creator of a brand new invention, you could just be sitting on a goldmine--especially if your invention appeals to the consumer market. Your first order of business is to acquire patent protection for your invention so that others cannot take the methods, processes or technologies that you've used and incorporate them into a competing invention. But first, it's important to make sure that your invention is patentable. This begins with understanding federal patent law and what types of inventions it protects

According to the law, only the inventor may apply for a patent, with certain exceptions. If a person who is not the inventor should apply for a patent, the patent, if it were obtained, would be invalid. The person applying in such a case who falsely states that he/she is the inventor would also be subject to criminal penalties. If the inventor is dead, the application may be made by legal representatives, that is, the administrator or executor of the estate. If the inventor is insane, the application for patent may be made by a guardian. If an inventor refuses to apply for a patent or cannot be found, a joint inventor or a person

having a proprietary interest in the invention may apply on behalf of the non-signing inventor.

If two or more persons make an invention jointly, they apply for a patent as joint inventors. A person who makes a financial contribution is not a joint inventor and cannot be joined in the application as an inventor. It is possible to correct an innocent mistake in erroneously omitting an inventor or in erroneously naming a person as an inventor.

Officers and employees of the Patent and Trademark Office are prohibited by law from applying for a patent or acquiring, directly or indirectly, except by inheritance or bequest, any patent or any right or interest in any patent.

The Term Of Patent

Under the current patent law, the term of patent is 20 years from the claimed filing date or 17 years from the issued date. The term of patent is the time period during which it can be maintained in force. It is expressed in number of years either from filing date of patent application or from date of grant of patent.

In most patent laws the renewal fees and the maintenance fees should be paid regularly to keep the patent in force, or else the patent gets lapsed before its term.

The term of patent may be curtailed by judgment of court, where the patent or claim is said invalid under the relevant law and hence not enforceable. The term of protection of patents shall not end before the expiration of period of twenty years from the filing date. There are other patents whose term may vary; a good example is the design patents have a term period of 14 years.

The term of patent as in the Indian Patent Act,1970 are for process patents related to substances intended or capable of being used as food medicine or drugs – 5 years from the date of sealing of patent or seven years from the date of the patent whichever period is shorter. The intension was that all inventions in the field of medicines and drugs should pass through public domain in not more than seven years.

A patent shall cease to have effect not withstanding anything therein or in this act on the expiration of the period prescribed for the payment of any renewal fee, if that fee is not paid with that period as extended under the Indian patent act.

The period for the payment of any renewal fee shall be extended not more than six months as specified in a request made by the controller if the request is made and the renewal fee and the prescribed additional fee paid before the expiration of the period specified.

The term of patents protection may also be affected by specific multi-lateral, international agreements. The term of patent may be extended for periods longer than 20 years because of delayed response to an application request of patent, exceeding three years to consider

a patent application and delays due to secrecy order or appeal. Time extension can be received equal to the amount of delay.

When Does a Patent Expire

A patent may expire 17 years after its application if said application was filed by the 7th of June 1995 and the patent was issued before the 8th of June 1978. However, if the patent application was filed by the 7th of June 1995 and the patent was issued after the 8th of June 1978, then the patent expires either after 17 years from the date of issuance or 20 years from the earliest filing of the application, whichever is farther into the future. If a patent application is filed after the 7th of June 1995, then it expires exactly 20 years after its filing date. These laws apply only the US under the General Agreement on Tariffs and Trade. Countries may have different patent laws that consist of varying patent expiration dates.

In an effort to bridge the gap between US businesses and international businesses, the Patent and Trademark Office changed the patent expiration dates in order to match the typical 20-year term given by other countries. This was agreed upon by the US and other countries during the Uruguay round of the General Agreement on Tariffs and Trade on the 8th of December 1994.

The varying patent expiration dates aforementioned are part of the mechanisms that Congress provided in order to transition into the new patent expiration date. Patent laws also stipulated a maintenance fee for a utility patent as part of the conditions of patent expiration. Conditions in patent expiration also include a maximum of 5 years due to marketing delay or FDA regulation.