Patent prosecution seminar

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PATENT PROCEDURE PATENT PROCEDURE PRESENTED BY, PRESENTED BY, Rehamath Unnisa, Rehamath Unnisa, M.Pharm(Pharmacolog M.Pharm(Pharmacolog y y ) )

Transcript of Patent prosecution seminar

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PATENT PATENT PROCEDUREPROCEDURE

PRESENTED BY,PRESENTED BY,Rehamath Unnisa,Rehamath Unnisa,

M.Pharm(PharmacologM.Pharm(Pharmacologyy))

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PATENTPATENT

Patent is “the exclusive right to use or Patent is “the exclusive right to use or exercise an invention granted to a person exercise an invention granted to a person for a limited period in consideration of the for a limited period in consideration of the disclosure of the invention”.disclosure of the invention”.

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Filing of Patent application

Publication

18 months

Request for Examination(Express Examination Possible)

within 48 months from the date of priority

Issue of Examination Report

within 6 months from the request

Request for Early Publication any time before 18 months

Pre Grant Opposition

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Reply to Examination Report

Grant

Post Grant Opposition

within 12 months from the date of grant of patent

Granting & Sealing of Patent

compliance within 12 months from the date of issue of examination report

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PATENT PROCEDUREPATENT PROCEDURE

Application for patentsApplication for patents : An application for an invention may be made by any : An application for an invention may be made by any of the following persons -of the following persons -

any person claiming to be true and first inventor of the inventionany person claiming to be true and first inventor of the invention

any assignee of such inventionany assignee of such invention

the legal representatives of any deceased person who could be either the first the legal representatives of any deceased person who could be either the first true inventor or the assignee.true inventor or the assignee.

Every application should be in a prescribed form & filed in the patent Every application should be in a prescribed form & filed in the patent officeoffice

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There are two types of specificationsThere are two types of specifications

Provisional specificationProvisional specification Complete specificationComplete specification

Every specification, whether provisional or complete should Every specification, whether provisional or complete should describe the inventiondescribe the invention

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Provisional specificationProvisional specification, it should give sufficient description to , it should give sufficient description to indicate the subject matter like in the case of complete indicate the subject matter like in the case of complete specification beginning with the title.specification beginning with the title.

The basic objective of the provisional specification is to get the The basic objective of the provisional specification is to get the advantage of a prior date of the patent.advantage of a prior date of the patent.

Applicant gets max. of 12months with in which he can file the Applicant gets max. of 12months with in which he can file the complete specificationcomplete specification

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► Every complete specification shouldEvery complete specification should : :

fully and particularly describe the invention and its operation and use and the fully and particularly describe the invention and its operation and use and the method etc.,method etc.,

disclose the best method of performing the invention, anddisclose the best method of performing the invention, and

end with a claim or claims defining the scope of the invention for which end with a claim or claims defining the scope of the invention for which protection is claimed.protection is claimed.

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APPLICATION BY CONVENTIONAL COUNTRIESAPPLICATION BY CONVENTIONAL COUNTRIES

This application is made for the protection of patent in other countries. This application is made for the protection of patent in other countries.

After the amendment of 1972 act, Central Government declared United After the amendment of 1972 act, Central Government declared United kingdom, New Zealand, Erie, Ceylon, Canada & Australia as kingdom, New Zealand, Erie, Ceylon, Canada & Australia as conventional countries.conventional countries.

Where a person had made an application for patent in respect of an Where a person had made an application for patent in respect of an invention in a convention country referred as invention in a convention country referred as basic applicationbasic application..

That person or legal representative or assignee of that person should That person or legal representative or assignee of that person should make an application with in 12 months in India, prior to the date of basic make an application with in 12 months in India, prior to the date of basic application.application.

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Examination of applications:Examination of applications:

When the complete specification has been filed in respect of an When the complete specification has been filed in respect of an application for a patent, the application along with the specification application for a patent, the application along with the specification should be referred by controller to an examiner.should be referred by controller to an examiner.

The examination or search of the specification is done by the examiners The examination or search of the specification is done by the examiners in the patent office on a reference by the controller.in the patent office on a reference by the controller.

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The examination may be divided in to two types:The examination may be divided in to two types:

Formal examination,Formal examination, which determines the application complies with which determines the application complies with the prescribed form, fee, particulars to be furnished and documents to the prescribed form, fee, particulars to be furnished and documents to be submitted; andbe submitted; and

Substantive ExaminationSubstantive Examination,, which determines whether the matter is an which determines whether the matter is an invention and whether the specification requirements under the act are invention and whether the specification requirements under the act are compiled with. compiled with.

This includes a search to determine prior use, prior claims ,prior This includes a search to determine prior use, prior claims ,prior publication and prior public working.publication and prior public working.

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The examiner to whom the application is referred by the controller should examine the test of definition of invention i.e. novelty, and utility by the national standards.

Then the test of inventiveness or non-obviousness is followed.

After examination, the examiner make report to the controller with in 18 months from the date of reference.

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Effect of examination and investigation and validity of patent

Examination or investigation or any report or any other consequent thereon.

Grant of patent in any manner does not guarantee the validity of the patent.

It provides that a patent whether granted before or after the commencement of the Act, may, on the petition of any person interested or of the central government or infringement of the patent, be revoked by High court, such that any claim of complete specification is not an invention.

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THE CONTOLLER HAVE FOLLOWING POWERS :THE CONTOLLER HAVE FOLLOWING POWERS :

Power to make orders respecting division of applicationPower to make orders respecting division of application

Power to make orders respecting dating of applicationPower to make orders respecting dating of application

Powers of controller in cases of anticipation.Powers of controller in cases of anticipation.

Powers in case of potential infringement.Powers in case of potential infringement.

Power to make orders regarding the substitution of application etc.Power to make orders regarding the substitution of application etc.

Acceptance of complete specification.Acceptance of complete specification.

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Opposition to grant of PatentOpposition to grant of Patent► Once the complete specification is accepted & it is advertised in the Gazette, Once the complete specification is accepted & it is advertised in the Gazette,

stating the reasons for such an acceptance.stating the reasons for such an acceptance.

► It will be open to the public to oppose the grant if any reasonable grounds It will be open to the public to oppose the grant if any reasonable grounds exist like:exist like:

Wrongful obtaining of the invention by the applicant or any person claiming through Wrongful obtaining of the invention by the applicant or any person claiming through him;him;

Publication of the invention before the date of claim;Publication of the invention before the date of claim;

The invention claim of the complete specification is publicly known or publicly used The invention claim of the complete specification is publicly known or publicly used in India before the priority date of that claim;in India before the priority date of that claim;

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Already a similar complete specification was already claimed with Already a similar complete specification was already claimed with priority date earlier than that of the applicant’s claim;priority date earlier than that of the applicant’s claim;

the claimed invention does not involve is obvious & clearly does not the claimed invention does not involve is obvious & clearly does not invoke any inventive step;invoke any inventive step;

The subject matter of any claim of the complete specification is not an The subject matter of any claim of the complete specification is not an invention under the act or it is not patentable under the act;invention under the act or it is not patentable under the act;

the complete specification does not sufficiently & clearly describe the the complete specification does not sufficiently & clearly describe the invention or method by which it is to be performed;invention or method by which it is to be performed;

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The applicant has failed to disclose to the controller the information required by The applicant has failed to disclose to the controller the information required by section 8 i.e. information and undertaking regarding foreign applications or has section 8 i.e. information and undertaking regarding foreign applications or has furnished the information false to his knowledge; furnished the information false to his knowledge;

In case of a convention application, the application was not made within 12 In case of a convention application, the application was not made within 12 months from the date of the application for protection for the invention made in months from the date of the application for protection for the invention made in a convection country by the applicant or a person from whom he derives title, a convection country by the applicant or a person from whom he derives title, but on no other ground. but on no other ground.

At any time , four months from the date of advertisement, the person can At any time , four months from the date of advertisement, the person can oppose the acceptance of complete specification, by giving notice to the oppose the acceptance of complete specification, by giving notice to the controller.controller.

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A person can oppose the application on above grounds, by giving notice of A person can oppose the application on above grounds, by giving notice of opposition to the controller.opposition to the controller.

The controller, notify the applicant & provide opportunity of hearing before The controller, notify the applicant & provide opportunity of hearing before deciding the case.deciding the case.

If he finds , any opposition that the invention claimed in any of claim of If he finds , any opposition that the invention claimed in any of claim of complete specification was obtained from the opponent, he may direct the complete specification was obtained from the opponent, he may direct the application shall proceed in name of opponent.application shall proceed in name of opponent.

The controller may also refuse to grant patent without opposition, if he finds that The controller may also refuse to grant patent without opposition, if he finds that the invention was already published & dated on or after the 1the invention was already published & dated on or after the 1stst January 1912. January 1912.

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Granting & Sealing of patentGranting & Sealing of patent

► Here complete specification in pursuance of an application has been accepted Here complete specification in pursuance of an application has been accepted in following cases like :in following cases like :

► The application has not been opposed within the time prescribedThe application has not been opposed within the time prescribed

► The application has been opposed it has been decided in favour of the The application has been opposed it has been decided in favour of the applicantapplicant

► The application has not been refused by the controller by virtue of any power The application has not been refused by the controller by virtue of any power vested himvested him

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The controller should direct the Patent to be sealed with the seal of the The controller should direct the Patent to be sealed with the seal of the patent office & date of sealing should be entered in the register.patent office & date of sealing should be entered in the register.

Request for the sealing of the Patent could be made not later than the Request for the sealing of the Patent could be made not later than the expiration of 6 months from the date of advertisement of the expiration of 6 months from the date of advertisement of the acceptance of the complete specification, in following cases :acceptance of the complete specification, in following cases :

_ pendency of litigation before the controller or the High court_ pendency of litigation before the controller or the High court

_ on the date of applicant or one of them_ on the date of applicant or one of them

This period can be extended by maximum of 3 months.This period can be extended by maximum of 3 months.

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Once the patent has been sealed in pursuance of an application ,at Once the patent has been sealed in pursuance of an application ,at any time after that the controller may amend the patent by any time after that the controller may amend the patent by substituting other person’s name, if he is satisfied that –substituting other person’s name, if he is satisfied that –

_ the patentee has died_ the patentee has died

_ in case of patentee being a body corporate, it has ceased to exist, _ in case of patentee being a body corporate, it has ceased to exist, before the patent is sealed before the patent is sealed

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Conditions to which patents are grantedConditions to which patents are granted

Import & manufacture by Government for its own useImport & manufacture by Government for its own use

Use for experiment, research & teachingUse for experiment, research & teaching

In case of drugs & medicinesIn case of drugs & medicines

So the Government enjoys vast powers in respect of the patented articles, So the Government enjoys vast powers in respect of the patented articles, goods, processes & medicinal drugs to use them for its own use & for public goods, processes & medicinal drugs to use them for its own use & for public purpose.purpose.

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PATENTABLE – NON PATENTABLEPATENTABLE – NON PATENTABLE

The living entity of artificial origin such as micro-organism, vaccines are The living entity of artificial origin such as micro-organism, vaccines are considered patentable.considered patentable.

The biological materials such as organs, tissues, cells, viruses etc. and process The biological materials such as organs, tissues, cells, viruses etc. and process of preparing thereof are not patentable under Section 3 (c).of preparing thereof are not patentable under Section 3 (c).

The biological material such as recombinant DNA, Plasmids and processes of The biological material such as recombinant DNA, Plasmids and processes of manufacturing thereof are patentable provided they are produced by substantive manufacturing thereof are patentable provided they are produced by substantive human intervention.human intervention.

Gene sequences, DNA sequences without having disclosed their functions are Gene sequences, DNA sequences without having disclosed their functions are not patentable for lack of inventive step and industrial application.not patentable for lack of inventive step and industrial application.

The processes relating to micro-organisms or producing chemical substances The processes relating to micro-organisms or producing chemical substances using such micro-organisms are patentable.using such micro-organisms are patentable.

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Essentially biological processes for the production of plants and animals such as Essentially biological processes for the production of plants and animals such as method of crossing or breeding etc. are not patentable.method of crossing or breeding etc. are not patentable.

Any biological material and method of making the same which is capable of Any biological material and method of making the same which is capable of causing serious prejudice to human, animal or plant lives or health or to the causing serious prejudice to human, animal or plant lives or health or to the environment including the use of those would be contrary to public order and environment including the use of those would be contrary to public order and morality are not patentable such as terminator gene technology.morality are not patentable such as terminator gene technology.

The processes for cloning human beings or animals, processes for modifying the germ line, genetic identity of human beings or animals, uses of human or animal embryos for any purpose are not patentable as they are against public order and morality.

In case of use of biological material in the invention disclosed in the patent application the source or geographical origin of such material is required to be mentioned in the specification.

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