Patent Act (India) Full Presentation for Patent Agent Examination
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PATENT AGENT EXAMINATION © Ashok Kumar 1 02-01-2011
description
A full presentation for Indian Patent Agent Examination. Its covers all topics in Patent Act which are asked in Patent Agent Examination
Transcript of Patent Act (India) Full Presentation for Patent Agent Examination
PATENT AGENT EXAMINATION
© Ashok Kumar
1 02-01-2011
• Qualifying exam u/s 126(1)(C) (ii) and Rule 110 of Patent Act (PA)
•Written Examination
1. Paper-I – Patents Act and Rules
2. Paper-II- Drafting and Interpretation of the Patent Specification and other documents. 100 Marks each
•Viva-voce 100 marks
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•Consists of questions based on timelines, forms, relevant sections and rules.
•Question forms are:
1. Fill in the blanks.
2. Match the columns
3. True or False.
4. Short Notes Writing
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• Based on real time case studies.
• Drafting a patent application based on given information on invention
• Petitions and Licensing agreement.
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It is most important to interpret the sections
and rules in simple, understandable
language rather than giving
answers in Act’s
language.
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Invention: A new Process or Product involving an inventive step and capable of Industrial application. [Sec 2 (1) (j)]
Three Essentials: 1. Novelty (New)
2. Inventiveness (Non Obviousness)
3. Capable of Industrial Application (Utility)
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An invention is new if:
1. It does not form part of state of the art (Prior Art)
2. It should not have been anticipated or disclosed through any publication or used anywhere in the world before filing. (It should not be in public domain.)
Sec 29 – Sec 34 of PA deal with instances of anticipation.
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Sec 29. Instances of NO ANTICIPATION
(1) No anticipation if published before 1st Jan 1912 in India.
(2). No anticipation if:
(a) The published matter was obtained from patentee.
(b). If the patentee learned the invention before publication and files within practicable time after that.
Proviso: Anticipation if the invention commercially worked in India before publication.
(3). No anticipation if the true and first inventor filed an application and other person in contravention of the rights of first person files other application or publishes or commercially use that invention.
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Sec 30
No Anticipation if communication of the invention is made to the Government or any person authorized by Government to investigate the invention or its merits.
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Sec 31 (a) No Anticipation if invention with inventor consent is displayed in Govt
approved exhibitions.
(b) Publication of the invention when it is displayed in SUCH exhibition.
(c) Use or publication by any third person after its display in exhibition.
(d) The description or publication by the inventor before a learned society.
NO ANTICIPATION If patent application is filed within 12 Months after display in
exhibitions/ publication otherwise ANTICAPTION. © Ashok Kumar
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No anticipation if within one year before priority date the invention is used by the patentee for trials or its working was necessary for the reason of nature of the invention.
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Sec 33.
Case of Provisional Specification:
No anticipation if invention is used after filing provisional specification.
Sec 34:
Non obstante clause: if invention is covered by Sec 29 – Sec 32, Patent Controller can not refuse to grant Patent, irrespective of any other provision in the PA.
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Section 2(1)(ja): "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.
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Section 2(l)(ac)
"capable of industrial application", in relation to an invention, means that the invention is capable of being made or used in an industry.
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Sec. 3 and 4 provides a list of inventions which can not be patented.
These include: • Inventions contrary to public health
• Inventions Contrary to public morality
• Inventions have the potential to cause harm to the public
• Traditional Knowledge
• Against known scientific principles
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Sec 3
(a) Frivolous or contrary to well established natural laws.
(b) An invention contrary to public order or morality OR prejudice to human animal or plant life or health or environment.
(c) Scientific principles or formulations or discovery of any living or non living substance occurring in nature.
(d) The mere discovery of a new form, new use, new property of a known substance or process unless this results in enhanced efficacy or in a new product or employs a new reactants.
Continue…
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Sec 3
(e) Substance obtained by mere admixture of known.
(f) Mere arrangement or re-arrangement or duplication of known devices.
(g) Omitted (A method of testing) Now this is patentable.
(h) A method of agriculture or horticulture.
(i) Methods of medical treatments of humans or similar process for animals
(j) Plants, animals, seeds, varieties, species, biological processes etc. But Micro organisms can be patented. ( Plant Varieties Protection and Farmers Rights Act 2003)
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Sec 3 (K) A mathematical or business method or a computer programme (Software) per se or algorithms. But a software in combination with hardware can be patented if it fulfill other necessary conditions.
(l) A literary, dramatic musical or artistic work, cinematographic works, television productions.
(m) A mere scheme or rule or method of performing mental act or a method of playing a game.
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Sec 3
(n) A presentation of information.
(o) Layout designs of integrated circuits (TRIPS provides a separate law for this).
(p) Traditional Knowledge
Sec 4
Inventions relating to atomic energy.
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Remember Sec 3.
Natural Order in Science of Known substances and Admixtures and Devices for
Testing of Agriculture and Medical treatment of Living organisms.
Software in literary, and mental presentation of IC and Traditional Knowledge.
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Type of Patent Applications 1. Ordinary Application, i.e., an Application which has been filed directly in the Indian
Patent Office.
2. Convention Application, either directly or through PCT route (Convention Applications, PCT Applications and National Phase Applications)
3. Divisional Application, which can result from division of a Patent Application. These are those applications which are divided out of the parent application containing plurality of distinct inventions.
4. Patent of Addition, which may be filed subsequent to the Filing of an Application for
Patent for an improvement or modification.
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1. Convention application - are those applications where one or more priorities
are claimed in respect of applications originating from the Convention
countries notified by the Central Government
2. National phase application - are those applications that enter national phase
under Patent Cooperation Treaty(PCT)
3. PCT international applications - are those applications which are filed under
Patent Cooperation Treaty(PCT)
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Sec 6. An Application may be made by following persons either alone or jointly with any other person:
1. True and first inventor
2. True and first inventor's assignee
3. Legal representative of deceased true and first inventor or his/her assignee
Person may be Government, any company or association or body of individuals.
Assignee means the person to whom inventor assigns his invention. (Sec 2 (1) (b)
Legal Representative – any person who in law represents the estate of a deceased person. (Sec 2 (1) (k)
6 Months time limits for filing proof of an assignee or legal representative. (Rule 10)
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Sec 20(4), Rule 35
If the applicant dies before the grant of patent, a request may be made by Assignee, legal representative, survivors or a person by operation of law on Form 6.
Form 6 – Claim or Request regarding any change in applicant for Patent.
Fees: Rs. 500 – Natural Person
Rs. 2000 – Legal Entity.
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Territorial jurisdiction (Sec 74, Rule 4)
i) Place of residence, domicile or business of the applicant
(first mentioned applicant in the case of joint applicants).
ii) Place from where the invention actually originated.
iii) Address for service in India given by the applicant, when the
Applicant has no place of business or domicile in India.
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4 Offices in India
1. Mumbai : (Western and middle India) MP, Chattisgarh, Gujrat, Goa, Daman and Diu, Dadra Nagar Haveli
2. Delhi: (North India states) J&K, Punjab, Himachal Pradesh, Haryana, Chandigarh, UP, Uttrakhand Delhi, Rajasthan.
3. Chennai: (South 4 states): AP, Karnataka, Kerala, Tamil Nadu and Pondicherry
4. Kolkata: (Head Office) Rest of India – Eastern States, Bihar, Orissa, Bengal, Assam.
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Sec 7 (1) Every application for a patent shall be made on Form 1 and shall be for one invention only.
Every person under this section shall name a person claiming to be true and first inventor and state that an applicant is in a possession of the invention.
International Application deemed to be an application if a corresponding application is filed before Controller of India.
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Natural Person 1000
- Multiple of 1000 in case of every multiple priority.
- 100 (each sheet -in addition to 30)
- 200 (for each claim in addition to 10)
Legal Entity 4000
- Multiple of 4000 in case of every multiple priority.
- 400 (each sheet -in addition to 30)
- 800 (for each claim in addition to 10)
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For Patent in India: 1. Form 1 – Patent Application
2. Form 2 – Specification
3. Form 5 - Declaration as to inventor ship
4. Proof of Right (Assignment, Legal Representative etc.) to make an application either in Form 1 or by separate application within 6 Months.
5. Form 26 - The authorization of an agent.
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For convention application
• Priority Particulars of the application filed in the convention country
For national phase application
• Particulars for filing Patent Cooperation Treaty (PCT ) National
Phase Applications (NPA)
For divisional application
• Particulars of original application- number and date of filing
For patent of addition
• Particulars of main application/ patent number and date of filing
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Sec 10(6) and Rule 13 (6)
If the inventors are not Applicants
Then
Applicants are required to file declaration that the applicants believe that person so named as the true and first inventor.
In case the applicant is himself inventor, there is no need to file the declaration.
The Declaration must be filed in Form 5.
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Form 5- Declaration as to Inventorship
NO FEE with this Form.
This form must be filed at the time
of filing completer specification.
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Section 8 Rule 12 If there is filing of patent applications in Foreign Countries, then the applicants has to submit detailed particulars – Date of filing, Publication Number, Status of Applications, Country name etc.
Required to file undertaking – From time to time, he will keep the controller informed in writing about the detailed particulars of patent applications in other countries.
The controller may require the applicant to furnish other details – novelty, patentability in other countries with in 6 Months.
Form 3 is used for filing statement and Undertaking by the applicants.
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If after filing of the application, the applicant assigns the rights of his invention by written assignment to other person (Claimant), then the claimant may make an application with original assignment or agreement on Form 6 for substitution of his name.
Fee is Rs. 500 (Individual) or Rs. 2000 (others).
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Provisional Specification: which doesn’t contain claims.
It is filed when the invention is not complete or is at preliminary stage at the time of filing the application and requires further development.
Sec 9 (1): Filing of complete specification within 12 Months after filing provisional specification.
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The contents of the complete specification should be fairly based on the contents of the provisional specification.
If any new matter is found in complete specification, then the priority date will be the date on which the complete specification is filed.
If a specification is filed as complete but the applicants later finds that he left some important part, then within 12 months, he can request the Controller to treat the original specification as provisional.
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Form 2 – Specification
Fees: No Fees
For Natural Person
Rs 100 for every sheet in addition to 30
Rs. 200 For every claim in addition to 10
For Legal Entity
Rs. 400 for every sheet in addition to 30
Rs. 800 for every claim in addition to 10.
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The Patent Office provides the facility to file a Patent Application online.
For e-filing, applicant /agent must have a digital signature. For the first time, applicant /agent has to register as new user and has to create login ID and password on the Patent office portal.
A preliminary Software (Client Software) has to be downloaded from Patent office site and has to be installed on the applicant/ agent computer. With the help of said software, an XML file gets generated and all the relevant documents (i.e. Form 1, Form 2, Form 3, etc.) in soft copy have to be uploaded. An Application number and receipt gets generated after successful uploading.
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Any Application, notice or other document may be tendered by hand or sent by a letter addressed to the Controller at the appropriate Office or to concerned person through post or registered post or speed post or courier service or by electronic transmission duly authenticated.
. In case of delay in receipt of a document or a communication sent by the Patent office to a party, the delay in transmitting or resubmitting a document to the Patent office or doing any act by the party may be condoned by the Controller if a petition for such condoning of delay is made by the party to the Controller immediately after the receipt of the document or a communication along with a statement regarding the circumstances of the fact and evidence in support of the statement:
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All documents and copies of documents to be furnished shall be written or typewritten or printed either in Hindi or in English language on a White paper of a size A4 with a margin of at least 4 centimeters on the top and left hand part and 3 centimeters on the bottom and right hand part thereof.
It is desirable that the documents are prepared with lines spacing of 1 1/2 or double space in non-script type font (e.g., Aria!, Times Roman, or Courier), preferably in a font size of 12.
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Fee payable under the Act may either be paid in cash or through electronic means or may be sent by bank draft or cheque payable to the Controller of Patents and drawn on a schedules bank at the place where the appropriate office is situated.
Where a fee is payable in respect of a document, the entire fee shall accompany the document.
In case an application processed by a natural person is fully or partially transferred to a person other than a natural person, the difference fee(s) shall be paid by the new applicant with the request for transfer.
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1. Title: The subject matter to which the invention relates. Manual of Patent Practice and Procedure (MPPP) provides guidelines that the title should not use worlds like patent, inventor name, fancy words, words of other languages, abbreviation etc.
2. Field of the invention: e.g. the following invention relates to the process (product).
3. State of the art in the field: describe the status of the invention with respect to present day knowledge in the field, Patents granted in the particular field, literature etc.
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4. Object of the invention: It describes the problem associated with the prior art followed by the solution to the technical problem which the present invention provides.
It clearly brings out he necessity for carrying out the invention which addresses the issue of obviousness and renders the invention as inventive and non- obvious over the existing technology
It starts with like this…. “It’s the object of the invention…..”,
“…… The further object of the invention is …….”
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5. Statement of the Invention: It should give the distinguishing and novel feature of the invention for which the protection is sought .
It starts like
“Accordingly the invention provides an apparatus…..”
“There is also provided a method for performing……”
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6. Detailed description of the invention: It provides the complete detail about the invention. A person who has ordinary knowledge of the art should carry out the invention after reading this description.
The disclosure of the source and geographical origin is mandatory. If the application describes some biological material, then such a material should be submitted to the International Depository Authority before filing the application and the reference should be made within 3 months after filing.
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7. Claims describes the boundaries of the protection sought. The claim should relate to only single invention or to the group of invention which are related to each other by a single inventive concept. Sec 10 (5).
The object of the claims is to define with precision, conciseness and accuracy the monopoly claimed.
What is not claimed is considered to be disclaimed and comes in pubic domain.
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Sec 16.
An applicant before grant of patent, may
1. On his own or
2. As a remedy of the objection raised by Controller on the ground of having more than one invention in one application
File a further application in respect of an invention disclosed in the provisional or complete specification already filed.
Further application must be accompanied by a complete specification, but not including any matter, which was not included in the first application.
The controller may require amendment so that both the complete specification have different specifications. Date of filing for divisional application remains the same.
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Sec 54.
A patent of addition may be filed in respect of any improvement in or modification of an invention described or disclosed in the complete specification of main patent application.
The patent of addition can be granted only after the grant of patent for main invention.
A patent of addition can not granted unless it is filed on or after main patent application.
An independent patent may also be converted to a patent of addition upon request made be the patentee to the Controller on the grounds that the invention is improvement or modification of another invention.
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Sec 55.
The term of the patent of addition is equal to the term of main patent or the term of main patent which is not expired if the patent of addition is given later.
If main patent is revoked, then the patent of addition may be converted to an independent patent upon request with a fees of Rs 6000 ( Natural person Rs. 1500) for the remaining period of revoked patent. Other fee for converted independent patent will be paid in the same manner as of main patent
No renewal fee is payable for patent of Addition,
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Sec 56.
The Controller shall not refuse to grant that the invention in patent of addition does not involve inventive step or is obvious due to the main invention.
For determining novelty in the patent of application, the complete specification of main patent will be considered.
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Sec 11 (2) and Sec 11 (3A): One Provisional Specification followed be one complete specification within 12 Months and Complete specification is based on provisional specification.
A provisional patent application is filed on 1 Jan 2007.
Complete specification is filed on 1 Jan 2008
The subject matter of claims is fairly based on the matter disclosed in provisional specification.
Priority date of the claim of complete specification shall be 1 Jan 2007.
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Sec 11 (3) (a): Two provisional specification followed by one complete specification based on claims given in both provisional specification.
First provisional patent application is filed on 1 Jan 2007.
Second provisional patent application is filed on 1 March 2007.
Complete specification is filed on 1 Jan 2008
Priority date of the claims in complete specification based on first provisional specification shall be 1 Jan 2007.
Priority date of the claims in complete specification based on Second provisional specification shall be 1 March 2007.
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Sec 11 (3) (b): Two provisional specification followed by one complete specification based on claims partly given in both provisional specification.
First provisional patent application is filed on 1 Jan 2007.
Second provisional patent application is filed on 1 March 2007.
Complete specification is filed on 1 Jan 2008
Priority date of the claims in complete specification partly based on both provisional specification shall be 1 March 2007.
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Sec 11 (4): Divisional Patent Application
First provisional patent application is filed on 1 Jan 2006.
Complete specification is filed on 1 Jan 2007.
Divisional patent application is filed on 1 Jan 2008
Priority date of the claims of Divisional patent application shall be Jan 1 2006 if the subject matter of the claim is based on the first provisional specification.
Priority date of the claims of Divisional patent application shall be Jan 1 2007 if the subject matter of the claim is based on the complete provisional specification.
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Sec 11(5) Where under the provisional of Sec 11, for any claim there are two or more priority dates, then the earliest priority date will be the date of priority for that claim. Sec 11 (6) Where the provisions under Sec 11 do not apply, then subject to Sec 137, the date of priority shall be date of filing complete specification. Sec 11 (8) A claim shall not be invalidated by only of: 1. The publication or use of the claim/ invention after priority date 2. The grant of another patent claiming the same invention, in a claim of the same or
a later priority date.
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Sec 35.
The controller may give direction for prohibiting or restricting the publication of the inventions relevant for defense purposes as notified by Central Govt.
The controller shall give notice to the applicant and Central Govt of such invention and Central Govt upon consideration if found the invention not prejudiced, the controller shall revoke the direction of prohibition or restriction of the invention.
If Controller do not give any direction then Central Govt may, before grant of patent, notify the controller to prohibit the invention and The Controller shall act accordingly.
Sec 36 The secrecy direction shall be reviewed every six months or on a request made by applicant. If invention is published or patented in a foreign country, then Controller may revoke the direction.
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Sec 37. If the directions were issued by controller for prohibiting or restricting the publication of an invention, then the Controller can not pass an order refusing to grant the patent for the same invention.
No appeal against the order of Controller for prohibiting or restricting the publication of an invention.
Where complete specification is filed in prohibited invention, then The Govt may use the invention as per Sec 100, 101 and 103.
In case of hardship to the applicant, the Govt may make reasonable payment to him by way of solatium.
No renewal fee during which prohibition direction are in force .
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Sec 38
When the direction for secrecy is revoked then the controller may extent the time periods for any step to be taken or act to be done in relation to the applications or patent.
Sec 39
Any Indian resident who wishes to file a patent application abroad, has to first file the application in India at least 6 weeks before filing abroad.
If he wishes to file an application abroad first, then he is required to take permission from the Controller by filing a request on Form 25 along with a fee of Rs. 4000.
This section is not applicable in case of a person resident outside of India.
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Sec 39.
The Controller shall dispose off every application within a period of 21 days from the date of such request.
The applicant can not file the patent application in a foreign country when Controller has directed to prohibit the publication of that invention.
Sec 40.
In case of any contravention of any directions as imposed under Sec 39, then application deemed to have been abandoned and the patent granted if any shall be liable to be revoked under section 64.
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Sec 45.
The date of the patent shall be the date on which the application for patent was filed.
The date of every patent is entered in the register of patent.
Sec 11A (7) Proviso:
The rights of the patentee in respect of applications made before 1st January 2005 shall accrue from the date of grant of patent.
In case of application for patent which are filed after 1st January 2005 the rights of the patentee shall accrue from the date on which the application is published, provided that the applicant shall not be able to institute the proceedings before the date of grant of patent.
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Sec 62(2):
If the patent has ceased to have an effect then the patentee shall not be entitled to institute the proceedings for infringement committed between the date on which the patent ceased to have an effect and the date of publication for restoration of the patent.
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Sec 11A (1): Patent application is published after the expiry of 18 Months from the date of filing the application.
Sec 11A (2): For an early publication an applicant may request the Controller in Form 9 along with a fee of Rs. 10,000.
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Request for early publication.
Fee:
Rs. 2500 for natural person
Rs. 10000 for Legal Entity.
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India follows the system of deferred examination according to which the application is not examined automatically.
To initiate examination of the application the applicant has to make a request to the Controller after the patent application is published.
Sec 11B (1): After the application is published the applicant has to make Request For Examination (RFE) within 48 Months from the date of filing priority application or from the date of filing the application which ever is earlier.
The request has to be filed in Form 18 along with a payment of fee of Rs. 10000.
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In the national Phase, PCT applications are examined only after the expiry of 31 months from the date of priority.
Rule 24 (4) (ii) If the applicant wishes to commence the processing of application before the expiry of 31 months then he must file express request for examination in Form 18 along with a fee of Rs. 14000. (Rs. 3500 in case of Natural person)
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Request for Examination
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Rule 24B (iii)
The RFE for the application on which secrecy directions have been imposed must be made within 48 months from the date of priority or from the date of filing an application or six months from the date of revocation of secrecy directions, whichever is later.
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Rule 24B (iii)
The RFE must be made within 48 months from the date of priority
or 48 months from the date of filing divisional patent application whichever is later.
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Sec 12 (1) and Rule 24B (2) (i)
Once the RFE has been made by the applicant, Controller refers the application, specification and other documents to the examiner ordinarily within one month from the date of publication of the patent application or one month from the date of RFE whichever is later.
The examiner makes report on:
a. Whether the application, specification and other document are in accordance with the requirement of the Act.
b. Whether the invention is patentable.
Sec 12 (2) and Rule 24B (2) (ii): the examiner makes the report the Controller within one month but not exceeding three months from the date of reference.
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Rule 24B (2) (iii)
The controller shall dispose off the report of the examiner ordinarily within one month from the date of receipt of such report.
If no objection, patent is granted.
Sec 14 and Rule 24B(3): if there is any objection the Controller forwards the first Examination Report (FER) to the applicant/ patent agent within 6 months from the date on which RFE has been filed or within six months from the date of publication, whichever is later.
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Sec 21 and Rule 24B(4)
An applicant has to comply with the requirements imposed on him within a period of 12 months from the date on which FER is forwarded to him.
An application for a patent shall be deemed to have been abandoned, unless within 12 months period the applicant has complied with such requirements.
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Sec 43:
Where an application is found in order of grant, then the patent is granted as expeditiously as possible with the seal of patent office.
The date on which the patent is granted is registered in the register of patents.
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Sec. 142 (4) Where 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 paid within a period of three months from the date of the recording of the patent in the register.
If a patent is granted before the expiry of two years from the date of filing of application, the first renewal fee becomes due in respect of the third year. However, the renewal fee shall be paid before the expiry of second year.
Rule 80. To keep the patent in force a renewal fee should be paid at an expiration of second year from the date of patent or of any succeeding year. This period may be extended for a max of 6 months with a request on Form 4 and Rs. 1200 per months.
A patent ceases to have an effect if the applicant fails to pay the renewal fee within the specified time.
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Rs. 2000/- for each year for 3rd, 4th, 5th and 6th year. Total = Rs. 8000/-
Rs. 6000/- for each year for 7th, 8th, 9th, and 10th year. Total = Rs. 24000/-
Rs. 12000/- for each year for 11th, 12th, 13th, 14th and 15th year. Total = 60000/-
Rs. 20000/ for each year for 16th, 17th, 18th, 19th and 20th year. Total = Rs. 100000/-
Total Fees: Rs. 1,92,000/-
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Sec 60 and Rule 84 (1)
Where the application has ceased to have and effect due to non payment of renewal fee, the applicant may file and application in form 15 along with the payment of a fee of Rs. 6000 for restoration of lapsed patent within 18 months from the date of such cessation.
Any patent of addition which is to be restored should also be specified.
The application should contain the statement, duly verified fully setting out the circumstances which led to the failure to pay prescribed fee.
Sec 61 and Rule 84 (3): After giving an opportunity of hearing to an applicant the Controller is satisfied that failure to pay the renewal fee was unintentional and there was no undue delay in making the application, he shall publish the application.
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Rule 85: Any person interested (Opponent) may within two months form the date of publication of the application, give a notice of opposition on form 14 with a fee of Rs. 6000.
Further procedure is followed as specified in Rule 57 – 63.
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Rule 57 and 58: Opponent give notice in Form 14 and send a written statement of interest and facts to Controller and patentee.
Rule 58: Patentee gives reply within 2 months
Rule 59: Opponent deliver copy of statement with evidence within one month.
Rule 60: No further evidence by both parties except with the leave of Controller.
Rule 62: Controller fix a date and time and give notice to each party at least 10 days before.
Rule 62: Any party desirous of hearing will give notice to Controller with a fee of Rs. 6000.
Any other publication may be relied after giving min 5 days notice to all.
Controller decide the opposition after hearing all parties.
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Rule: 61: If the Controller decides in favour of applicant then he shall restore the patent and the patent of addition on payment of unpaid renewable fee and additional fee of Rs. 12000.
Rule 63: If upon receiving the notice of opposition, applicant desires to withdraw the patent, the Controller may decide whether to award the cost to the opponent . As per fourth Schedule max cost may be awarded is Rs. 6000.
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Sec 63 and Rule 87
A patentee may offer to surrender a patent at any time after the patent is granted by giving a notice to Controller along with a fee of Rs. 6000.
The Controller will publishes this offer in the official journal. The procedure of the opposition will be as per Rule 57 – 63.
After hearing both the parties the Controller accepts the patentee’s offer to surrender the patent, he shall upon receipt of the patent, publish the revocation of patent.
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Sec 57: The applicant may request the Controller in Form 13 for amendment of the patent either before or after the grant of the patent.
The amendment may be in Complete Specification or in other related document.
The application should state the nature of amendment and full particulars of the reasons for which the application is made.
The amendment may also include the priority date of the claim.
Sec 59: Any amendment shall be in the form of disclaimer, correction or explanation. The amendment made should be such that it does not lead to increase the scope of the invention.
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If any amendment is made after grant of the Patent, then the Controller shall publish the application.
Rule 81: The person interested (Opponent) may oppose to such amendment by giving notice to the Controller within 3 months from the date of the publication. The procedure specified rule 57 – 63 should be followed.
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The applicant files patent applicant in his home country, followed by filing the patent application within a period of 12 months in all the other countries of his interest where he intends to protect his invention.
The invention is searched by all the countries and separate similar processes followed by all the countries for the patent of the invention.
Traditional Patent system is not favourable to the applicant who seeks to protect invention in multiple countries.
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Patent Cooperation Treaty (PCT) is a special agreement under Paris Convention which is open only to states which are party to Paris Convention (1883).
India became member of PCT on 7 December 1998.
142 members of PCT as of 24 December 2009
PCT has been administered by WIPO.
It does not provide for the grant of patent, it presents a mechanism by which an applicant is required to make only a single patent application, which is then searched by at least on elected International Searching Authority (ISA) and examined by at least one elected International Preliminary Examining Authority (IPEA).
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International Phase: The phase before the entry of International Patent Application in Designated countries. During this phase the International Patent Application is published, searched and examined.
International Searching Authority (ISA): ISA is searching authority which the applicant elects for carrying out International search on his invention at 16 Months from the date of priority. USPTO, EP, CN etc.
International Search Report (ISR) is generated by ISA and contains prior art references. The applicant also receives Written Opinion of Searching Authority (WOSA)
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Every International Patent Application is published after the expiry of 18 months from the date of filing or date of priority.
The applicant may demand examination of patent application through Ch II within 3 months from the date of transmittal of international search report or within 22 months from the priority date whichever expires later.
If the examination is not demanded the applicant must enter national phase in countries through Ch I namely brazil, Switzerland, Finland, Luxembourg, Sweden Tanzania, Uganda, Serbia and Zambia within 20 months from the date of priority and
in all other countries within 30/31 months from the date of priority.
National Phase: This is the phase when International patent Application enters in the countries of interest where one wish to protect his inventions.
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Starting – File patent application in India
12 Months – File complete specification and PCT application at Indian Patent Office as
receiving office.
16 Months – International Search Report is generated
18 Months - International Publication
19 Months - Demand Examination
•NO Demad Examination – Chapter I ( 20/ 30 Months National Phase)
•Demand Examination – Chapter II ( 30/31 Months National Phase)
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International Preliminary Examining Authority (IPEA)
This is elected by the applicants to carry out examination of their patent application.
IPEA generates International Preliminary Report on Patentability (IPRB) which contains examiner’s report on patentability o the subject matter.
When an examination is demanded, the contracting states for which the examination is demanded are called Elected Offices.
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Fees for filing PCT applications
Transmittal Fee: To be paid within one month from the date of receiving PCT application by receiving office
Rs. 8000 for legal entity
Rs. 2000 for natural person.
International filing fee: payable within one month
The receiving office collet it for International bureau.
Up to: 30 Sheets $1210 ( as on Jan 1, 2009)
For each extra sheet over 30: $15
The fees is reduced by 75% in case of natural person citizen of India.
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Search Fee
To be payable to the receiving office.
EP as ISA : $2410
USPTO as ISA :$1800
International Preliminary Examination Fee: to be payable within one month from the date of receipt of demand by IPEA or 22 months from the priority date whichever expires later.
EP as IPEA: Euro 1675
US as IPEA: $600
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For dealing with the International bureau of World Intellectual Property organisation, International Searching Authorities and International Preliminary Examination Authorities the appropriate Office shall be the head office of Patent Office at Kolkata.
Once the receiving office receives the PCT application, it shall transmit one copy of an application as a record to International Bureau of WIPO and another copy as a search copy to ISA.
Till the time the PCT application does not enter national phase , it can be withdrawn by the applicant upon request.
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The third amendment to the patent act in 2005 incorporated the provisions for post grant opposition. Before that there was no provision of post grant opposition.
Pre-grant Opposition Sec 25(1) and Rule 55
Anytime after the patent application is published but before its grant, any person may oppose the grant of patent in writing. Such written representation shall include the statement setting out the ground upon which he bases his application and evidence if any in support of representation along with the request of hearing of so desired.
Rule 55(1) The Controller shall not consider the representation if the RFE has not been filed.
Besides the written representation, RFE can be filed by any person including opponent.
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If the RFE has been filed by the person other than the patent applicant then the Controller will only inform such person that the examination of the application has ben initiated, but will not send him the list of objections on that application.
Rule 55 (1A) : No patent can be granted before six months from the date of publication of an invention.
Rule 55 (3): If the Controller is of opinion that the application and the specification need to be amended, he shall notify the patent applicant.
Rule 55 (4): The patent applicant may contest the opposition within three months from the date of notification which shall contain the statement and evidence fully setting out the facts
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Rule 55(5): The Controller shall consider the statements and evidence given to him by the patent applicant and he than decide whether to grant the patent as such or refuse to grant a patent or require amendment to the complete specification to the satisfaction of the Controller. Rule 55(6): The Controller shall decide the case ordinarily within one month. The filing of pre-grant opposition does not require giving any notice of opposition by the opponent to the Controller. The opponent files only written representation. Thereafter the proceedings of the pre-grant opposition are ex-parte. The opponent is just required to furnish to the Controller the facts supporting documents and the grounds upon which he basis his opposition. The patent applicant is also not given an opportunity of being heard, but he can make use of Sec 80 through which he can use discretionary power of Controller to get the opportunity of being heard before handing out decision. The act does not provide any appeal to any party against the decision of Controller.
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Grounds of Opposition:
1. The applicant obtained the invention from the person who has filed pre-grant application or through whom he claims.
2. The invention claimed in any claim of the complete specification has been published before the priority date in any document in India or elsewhere. But this is subject to Sec 29(2) If it is published without the consent of the inventor.
3. Secret Prior Art: The invention claimed in Patent application “A” is also claimed in “B”. B has priority date earlier than A and published on or after the filing date of A. B is secret Prior Art and A may be opposed on the basis of claim in B.
4. The invention claimed is publicly used or known in India before the priority date of the complete specification. But If the patent applicant proves that the invention was used in India before the priority date of the patent application merely for the purposes of reasonable trials in accordance with Sec 29(2).
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5. The invention is obvious over the existing prior art and does not involve an inventive step.
6. The invention claimed is not an invention under Sec 3 and Sec 4.
7. The complete specification does not clearly and sufficiently describe the invention or the best method of performance.
8. The inventor has failed in providing information regarding foreign filing u/s 8.
9. The complete specification was not filed within one year from the date of filing of provisional specification.
10. Does not clearly mention origin or geographical source in biological material.
11. The invention is not novel in respect of traditional knowledge in India.
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Section 55 (2) and Rule 55A
Any person interested (opponent) may oppose to the grant of the patent within one year from the date of publication of the grant of the patent by giving notice to the Controller in Form 7 along with a fee of Rs. 6,000/-
The notice shall include a statement, in duplicate stating the interest of the person and the grounds upon which he relies.
The procedure of opposition in Post Grant patent will remain the same as given in Rule 52 – 63.
Grounds of Opposition for interesting person are same as in the case of pre-grant opposition.
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Comparison between Pre and Post Grant Opposition:
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Pre – Grant Opposition Post – Grant Opposition
1. Can be filed by any person Can be filed by only person interested
2. Can be filed any time after the publication of application but before its grant.
Can be filed within 1 year from the date of publication of the grant of patent.
3. Opposition cab be made by a way of a written representation.
Notice of opposition is given to the Controller in Form 7.
4. Decisions of the Controller can not be appealed to the Appellate Board.
Decisions of the Controller can be appealed to the Appellate Board.
5. No fee for filing pre-grant opposition. Fee of Rs. 6,000/- with the notice of opposition.
6. The applicant is not a party to the proceedings. The applicant is a party to the proceedings.
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Comparison between Pre and Post Grant Opposition:
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Pre – Grant Opposition Post – Grant Opposition
8. The opponent is given an opportunity of being heard based on the discretion of the Controller.
The opponent is given an opportunity of being heard as matter of right.
9. No cost is awarded to the opponent if he patent applicant withdraws his application after opposition.
Cost may be awarded to the Opponent if the patent applicant withdraws his application after opposition.
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Sec 64.
The patent may be revoked anytime during the life of patent by any person interested.
If the opponent was not successful in opposing the patent under pre-grant or post –grant opposition , he shall have a chance to again revoke the patent under Sec 64.
The person interested may file a petition for revocation to the Appellate Board u/s 117D. The High court shall entertain the revocation proceedings only in case of counter claim made by the alleged infringer.
The Central Govt. may also file petition in High Court for revocation if the patentee is not using the invention for the purpose of government.
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Grounds for Revocation of Patent: 1. The invention claimed in another valid patent of earlier priority date. 2. The patent has been granted to an ineligible person. 3. The patent was wrongfully obtained in contravention to the rights of the petitioner. 4. The invention claimed is not an invention u/s 3 and 4. 5. The invention claimed in any claim of the complete specification has been published or used
before the priority date in any document in India or elsewhere. But this is subject to Sec 29(2) If it is published without the consent of the inventor.
6. Secret Prior Art: The invention claimed in Patent application “A” is also claimed in “B”. B has priority date earlier than A and published on or after the filing date of A. B is secret Prior Art and A may be opposed on the basis of claim in B.
7. The invention claimed is publicly used or known in India before the priority date of the complete specification. But If the patent applicant proves that the invention was used in India before the priority date of the patent application merely for the purposes of reasonable trials in accordance with Sec 29(2). © Ashok Kumar
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8. The invention is obvious over the existing prior art and does not involve an inventive step.
9. The invention patented is not useful.
10. The complete specification does not clearly and sufficiently describe the invention or the best method of performance.
11. The complete specification was not filed within one year from the date of filing of provisional specification.
12. Does not clearly mention origin or geographical source in biological material.
13. The invention is not novel in respect of traditional knowledge in India.
14. The scope of any claim of the complete specification is not sufficiently and clearly defined.
15. The patent was obtained by false representation or suggestion.
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16. The applicant filed application abroad in contravention of Sec 35.
17. The applicant filed application abroad without approval from Controller u/s 39.
18. The amendments made by fraud or misrepresentation.
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Provisions in Patent Act to secure the Public Health:
A. Information to Controller relating to working of Patented invention:
1. Sec 146 an Rule 131: The Controller may in writing give notice to patentee/ Licensee to furnish information regarding commercial working of invention within 2 months in Form 27. The information may be provided in intervals of not less than 6 months.
2. Sec 122: Any person fails to provide information will be punished with fine which may extend to Rs. 10 Lac or 6 months imprisonment.
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B. Compulsory License
Sec 84 and Rule 96:
Anytime after 3 years from date of Patent any person interested may make an application fro the grant of compulsory license on the grounds that:
1. The reasonable requirement of the public relating to patented invention has not been met.
2. The patented article is not available to the public at a reasonably affordable price. (While determining reasonably affordable price, the court shall consider the research and development expenditure and profit)
3. The patented invention is not worked in the territory of India.
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B. Compulsory License
An application for the grant of compulsory license may be made in Form 17 with a fee of Rs. 6000/- and a statement of applicant’s interest and the facts upon which he basis his application.
Sec 84(2): An application may also be made by a person who is already a holder of license under the patent.
No person shall be estopped of stating: 1. That the reasonable requirements of the public have not been met
2. That the patented article is not available to the public at a reasonable price and
3. That the Patented invention is not worked in India.
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B. Compulsory License
Sec 84 (6): The Controller shall consider the following points before granting compulsory license:
1. Nature of invention, time since patent granted and efforts made by patentee to make full use of invention.
2. The ability of the applicant to make use of the invention for public advantage.
3. The financial capacity of the applicant to make use of the invention.
4. Whether the applicant has made reasonable efforts ( 6 Months) to negotiate with the patentee for getting the license.
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B. Compulsory License
Defences by the Patentee for Non Woking of Patented Invention:
1. In order to work the invention in India, there is requirement to import special tools and specially skilled labor which is no available. There is serious practical obstacles in the way of its working.
2. Because of the existence of other patents in India, any working of his invention shall be an infringement with respect to the other existing patent.
If a person is not able to work his own patented invention because of some other patent which has been assigned to other, then subject to Sec 91 he can request the Controller to grant him the license with respect to other patent.
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B. Compulsory License
Sec 87(7) (e) provides various circumstances which the Controller shall consider to find out whether the reasonable requirements of the public have been met.
1. Patentee refused to grant a license and as a result existing trade or industry or development, commercial activities in India prejudiced/ discriminated.
2. The patentee imposed conditions by which hire, sale, purchase of the product is not protected by the patent.
3. The patentee imposed conditions which coerce packaging, exclusive grant back, prevention to the challenges of the validity of the patent.
4. The patented article is not worked in India on commercial scale to the fullest extent.
5. The patentee is importing the product from abroad instead of making it in India.
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B. Compulsory License
The burden of proof is on the applicant and not on the patentee in Compulsory license.
Licensing of Related Patents
Sec 91:
Application for grant of license of another patent for making use of one’s own patent in Form 17 with a Fee of Rs. 6000/-. The applicant has to set out terms and conditions of the License. The controller has to see the licensing issues of other patent.
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Procedure of Granting Compulsory License: Rule 87, 98 and 62 1. Application for the grant of CL in Form 17 with fee of Rs. 6000/-
2. Controller shall check whether a prima facie case has been made out.
3. If NO, Refuse to grant the CL or notify the applicant for hearing.
4. If YES, direct the applicant to serve a copy of the application to patentee. Also publish the application.
5. Patentee to file opposition in Form 14 with Fee of Rs. 6000/- within 2 months . If NO opposition, Controller grant the CL.
6. Parties make request for hearing. If No request of hearing, Controller may grant or refuse CL.
7. After Hearing, Controller may revise terms and conditions of existing CL or refuse to revise.
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Terms and Conditions for CL
1. Reasonable royalty and remuneration to the patentee
2. Exclusive and non-assignable license.
3. Availability of the invention at an affordable price.
4. CL for predominantly Indian Market, but there may be export.
5. In Semi Conductor Technology, CL for public non commercial use.
6. In case of anti competitive practice, the licensee may be permitted to export.
7. Invention to be worked to the fullest extent.
8. License for the balance term of the license.
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Revisions of Terms and Condition of CL
Sec 88(4) Rule 100 and Rule 101.
Application after 12 months of CL in Form 20 with fee of Rs. 6000/-.
The procedure is similar to the procedure followed in granting CL.
Termination of CL
Sec 94 and Rule 102: Application in From 21 with a fee of Rs. 6000/- for termination of CL on the grounds that the circumstances which gave rise to grant of compulsory license does not exist and are unlikely to recur.
Revocation of CL: After 2 years of CL, any person interested may make an application in Form 19 with a fee of Rs. 6000/- on the ground the reasonable requirement of public have not been met, or invention is not available to the public at reasonable price.
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National Emergency
Sec 92: Under Circumstances:
1. National Emergency
2. Extreme urgency
3. Public non commercial use or
4. If the Central Govt is satisfied that it is necessary to grant a compulsory license, in respect to patent in force,
Shall notify in the official Gazette.
Any person may apply in Form 17 with a fee of Rs. 6000/- for CL. The Controller shall set the terms and conditions for CL.
Provisions relating to CL will be applicable in case of CL u/s 92.
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Article 31(f) of TRIPS: If member country allows CL, then it will be only for domestic market and not for export.
Para 6 of Doha Declaration of TRIPS (2003): allows export of pharma products to the countries with least or no manufacturing capacity. Such countires has to make a notification to the Council for TRIPS.
But in case of Least Developed Countries (LDC) No need to make this notification.
The exporting country shall ensure that the pharma products so made should be packed with distinguished label and should not be diverted to other markets.
The exporting country will also pay adequate remuneration to the patentee.
Canada uses for the first time this provision for supplying TriAvir to Rawanda.
CL under these provision can be given for 2 years at a time and can be renewed for an interval of 2 years.
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India incorporated Sec 92A to give effect of Doha declaration in 2005.
CL u/s 92A can only be granted if:
1. The importing country has also granted compulsory license or
2. By notification has allowed importation of patented pharma patent from India.
This condition shall not apply in case of LDCs, but LDC,s has to notify the council of
WTO about this.
U/s 92A, an applicant may make an application in Form 17 with a fee of Rs. 6000/-
for CL.
Pharma products include ingredient and diagnostic kits. The Licensee has to pay adequate remuneration to the patentee.
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Sec 73: The Controller General of Patent Designs and Trademarks is also the Controller of Patents.
The Controller delegates the functions to other officers and may withdraw the delegated function to himself or to other officer.
Sec 117A (4): An aggrieved party can appeal to the Appellate Board against the decisions of the Controller within 3 months.
Sec 77 and Rule 130: The Controller has powers of civil court in following: 1. Summoning and enforcing attendance
2. Discovery and production of documents and Receiving evidence on affidavits.
3. Issuing Commission for examination of witnesses and documents.
4. Awarding Costs
5. Reviewing his own decisions on application made in Form 24 with a fee of Rs. 4000/- within one month.
6. Setting aside an order of ex-parte on application in Form 24 within one month.
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Sec 78 and Rule 122: Power to correct clerical errors on request by any interested person or on his own.
Sec 80 and Rule 129: Discretionary powers for Hearing on request.
Sec 81: Power to extend time or condone delay.
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Information relating to abstracts, decisions of the Controller, and full text of granted patent is available on patentoffice.nic.in
The patent office publishes the Official Gazette every week.
Patent Register ( Sec 67) contains all information relating to Patents.
Sec 72: Inspection of Register of Patents – Fee Rs. 800/-
Certified copies: Rs. 4000/-
Duplicate Certificate of Patent: Sec 154 and Rule 132: Reissue Fee Rs. 4000/-
Information relating to processing of Patent: Sec 153, Fee Rs. 1200/-
Sec 144: Reports of Examination can not be accessed except on order of Court.
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Any use of the patented invention, without the consent of the patentee, shall amount to an infringement.
Sec 48 confers upon patentee the right to exclude a third party from making, importing, using, offering for sale or selling the patented invention. So if a third party violate the right conferred upon the patentee, then it shall be considered as infringement.
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1. Government Use
Sec 100: An invention can be used before or after grant of patent by Central Govt. or any authorised person by it in writing. The authorization of Central Govt. may be before or after use of the invention.
The patentee can be paid adequate remuneration. Central Govt will notify the patentee from time to time regarding the use of the invention, except in National emergency or extreme emergency.
Sec 47 (1) and (2): The Central Govt. may import patented product or use it for work or for its own use.
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2. Research Exemption: Sec 47(3): Any person may use or make the patented invention merely for the purposes of the experiment or research including and imparting instructions to students.
Any commercial use parallel to research or experiment or research will amount to infringement.
3. Sec 47(4): A patented medicine may be imported by Govt for its own use or for distributing in its hospitals, dispensaries which are notified in the official Gazette. The term “ manufacture” is not used in this provision.
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4. Sec 49: Use of Patented invention on Foreign Vessels coming to India and use patented invention on board on such ship or vessel will not be an infringement.
5. Bolar Exemption: Sec 107A(a)
The patented invention may be used, constructed, made or imported for the reasons solely related to the development and submission of information to regulatory authority of India or elsewhere.
In India the imported research can be sold for commercial gains which was meant for submission of information to regulatory authority of India or elsewhere. This is covered under Sec 107A(a).
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Import of Patented Products in India
Sec 48 says that if any third party imports a patented invention, then it shall amount to an act of infringement.
But Sec 107 A(b) says that no infringement if the patented invention is imported from that country which duly authorizes the person under the law to produce and sell or distribute the product. Here person means company, firm, association also.
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Sec 104: A patent holder can file the infringement case in District Court or in High Court. If there is any counter claim, then the case can be filed only in a High Court.
The infringement case can be filed in the court in whose jurisdiction:
1. Where infringement happened or
2. Where the patentee resides, works, have business or have office.
The infringement case can be filed within 3 years in the court from the date of infringement.
Sec 109: An infringement case can also be filed by Licensee
Sec 110: The Licensee may call upon patentee to file infringement case and can file the same case after 2 months when patentee does not take any action.
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The suit for infringement can only be brought once the patent has been granted. If the court decides in favour of the patentee then the patentee can also claim damages in respect of infringements which were committed between the date of publication of patent application and its grant.
Reliefs by Court in infringement cases:
1. Injunction
2. Damages
3. An account of profits
4. Seizure, forfeiture, or destroy the goods.
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Intellectual Property Appellate Board (IPAB) is established u/s 83 of Trade Marks Act 1999.
Sec 117A(4): The decisions of the Controller or the Central Govt can be appealed to the IPAB within 3 months from the date of decision.
The orders of Central Govt in relation to inventions relevant to defence purpose and the order of Controller regarding secrecy and revocation of patent related to atomic energy u/s 65 are not appealable. Controller Decision in pre-grant opposition is not appealable.
IPAB sits in Chennai, Kolkata, Mumbai, Delhi and Ahmadabad.
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