Patent Grant Procedure

AMRENDRA KR. AJIT

Assistant Professor of Law

National Law University Odisha, Cuttack

Patent Grant Procedure (In Brief)

Filing of PATENT APPLICATION

EXAMINATION & NOVELTY SEARCH

ACCEPTANCE OR REFUSAL

NOTIFICATION OF “ACCEPTANCE” IN THE GAZETTE OF INDIA (part III section 2)

OPPOSITION (if any)

GRANT OF A PATENT

RELEVENT PROVISIONS

• THE PATENT ACT, 1970 Chapter lll = Application for patent

Chapter lV = Publication and examination of applications Chapter V = Opposition proceedings to grant of patents Chapter Vlll = Grant of patents and rights conferred thereby

Person entitled to apply(sec.6) -the true and first inventor of the invention -

the assignee of the person claiming to be the true and first inventor

-the legal representative of any deceased

person.

-by any person being the assignee of the person claiming to be the true and first inventor

An application under may be made by any of the persons referred; either alone or jointly with any other person

• Every application for a patent shall be for one invention only

• Application under PCT shall be deemed to be an application under The Patent Act .

• Every application shall state that the applicant is in possession of the invention and shall name the person claiming to be the true and first inventor

• Every such application (not being a convention application or an application filed under the PCT) shall be accompanied by a provisional or a complete specification.

SPECIFICATIONS• General Meaning- Specification means a detailed description of

how something is, or should be made.• Legal Meaning- -A patent specification is a unilateral

statement by the patentee, -in words of his own choosing, addressed to

those likely to have a practical interest in the subject matter of his invention,

-by which he informs them what he claims to be the essential features of the new product or process for which the patent grant him a monopoly.

Types- There are two types of specifications i) provisional specification ii) complete specificationSec. 9 deals with provisional and complete specification. -Where an application for a patent (not an

international application) is accompanied by a provisional specification, a complete specification shall be filed within twelve months from the date of filing of the application, and if the complete specification is not so filed the application shall be deemed to be abandoned:

Contents of specifications

• Title of invention-

Every specification, whether provisional or complete, shall describe the invention and shall begin with a title sufficiently indicating the subject-matter to which the invention relates.

• Field of invention-• Background of invention (Prior art)• Object of invention

• Shall describe the invention

• First page of every specification shall also give name, address, & Nationality of the applicant and end with a preamble.

• Shall be drawn in Form-2

-Detailed description of the invention with reference to the accompanying drawings, and it form part of the provisional and/or complete specification.

-A model or sample of the invention shall be furnished only when required by the controller, but such sample shall not be deemed to form part of the specification

-Advantages and or uses of the invention -Claims -Filing date of specification determines the priority date.(Sec.11)

PUBLICATION AND EXAMINATION OF APPLICATIONS (CHAP. – IV)

• Sec. 11A.• Ordinarily, an application for patent shall not be open

to public before the expiry of 18 months from the date of filing of application .

• The applicant may make a request for an early publication before the expiry of 18 months after depositing the prescribed fees.(Form-9).

• Every application for patent shall be published after the expiry of 18 months; except in cases-

i) where secrecy direction (invention relating to defence) is imposed u/s 35.

ii) where appln. has been abandoned. iii) where appln. has been withdrawn three months

prior to expiry of 18 months.

The applicant or any interested person, after the publication, shall make request for examination of the application, within 48 months from the date of priority.

NO REQUEST----- NO EXAMINATION ------ TREATED AS

WITHDRAWN BY THE APPLICANT

• Examination Of Application. (s.12)

After request, the Controller shall referred the relevant document to an examiner.

Search of prior art (s.13)

-anticipation by previous publication

-anticipation by prior claim.

Consideration of Report of examiner by Controller (s.14)

Where the report of the Examiner received by the Controller is adverse to the applicant or requires any amendment ,the Controller shall communicate the gist of the objections to the applicant.

Power of Controller in cases of anticipations. (18)

Where it appears to the Controller that the invention so far as claimed in any claim of the complete specification has been anticipated ,

he may refuse to accept the complete specification .

• Except- the applicant i) shows to the satisfaction of the Controller that the

priority date of the claim of his complete specification is not later than the date on which the relevant document was published; or

ii) amends his complete specification to the satisfaction of the Controller.

Time for putting application in order for acceptance (sec.21)

An application for a patent shall be deemed to have been abandoned unless within 12 months from the date of first statement of objections, the applicant has complied with all the requirements imposed on him by or under this Act, whether in connection with the complete specification or otherwise in relation to the application.

OPPOSITION PROCEEDINGS TO GRANT OF PATENT (Chap. V)

• Opposition to the patent (sec.25)• Sec.25(1) says ,after the publication of

application and before granting of patent, any person may ,in writing, represent by way of opposition to the controller.

The grounds of opposition may be…. a) the applicant for the patent wrongfully

obtained the invention or any part thereof from him ,

b) the invention so far as claimed in any claim of the complete specification has been published before the priority date of the claim

• c) if the same invention has been claimed in a specification, which is published on or after priority date (PD) of the applicant’s claim and the PD is earlier than claimant.

• d) if invention is the prior art of India • e) the invention so far as claimed in any

claim of the complete specification is obvious and clearly does not involve any inventive step,

• f) the subject of any claim of the complete specification is not an invention within the meaning of this Act

• g) the complete specification does not sufficiently and clearly describe the invention or the method by which it is to be performed .

• h) applicant has failed to disclose to the Controller the information required by section 8 (application for other countries) or has furnished the information which in any material particular was false to his knowledge;

• i) in the case of a convention application, the application was not made within twelve months from the date of the first application for protection for the invention made in a convention country by the applicant or a person from whom he derives title;

• J) the complete spe. does not disclose or wrongly mentions the source or geographical origin of biological material used for invention.

• k) invention is anticipated or prior art of elsewhere(i.e. outside of India ).

NO OTHER GROUND OF OPPOSITION• Sec.25(2) deals with opposition

proceeding in post-grant patent.• It says that after the granting of patent but

before the expiry of a period of one year from the date of publication of the grant of a patent, any person interested may give notice of the opposition to the controller.

The grounds are same as pre-grant opposition.

• The Controller shall notify the patentee about opposition notice in post-grant opposition .

• The Controller shall constitute a Board i.e. called the Opposition Board.

• On receipt of the recommendation of the Opposition Board and giving an an opportunity of being heard to both the parties ; the Controller shall order either

-to maintain, or -to amend, or -to revoke the patent.

• Chapter VI deals with anticipation

-anticipation by previous publication

-anticipation by previous communication to Government

-anticipation by public display, etc.

-anticipation by public working

-anticipation by use and publication after provisional specification

This chapter deals only those conditions, which don’t form the part of anticipation.

• Chapter VII deals with secrecy provision for certain inventions.

• Chapter VIII talks about grant of patent and right conferred thereby.

• Sec.43 says that where an application for the patent –

-has not been refused by the controller, and

-has not been found to be in contravention of any of the provision of the Act,

then patent shall be granted as expeditiously as possible.

• Date of patent (sec.45)- -date on which the application was filed. Form and extent of patent (sec.46) -every patent shall be in the prescribed form and

shall have effect throughout India - a patent shall be granted for one invention only. Grant of patents of be subject to certain

conditions (sec.47) use of patent by the governmentTERM OF PATENT (Sec.53) -the term of every patent granted under this Act

shall be twenty years from the date of filing of the application for the patent.

THANKS