Patent Regulations in India

8/8/2019 Patent Regulations in India

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Patent RegulationsIn India


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INTRODUCTION

A patent is a set of exclusive rights granted by a state (national

government) to an inventor or their assignee for a limited period of

time in exchange for a public disclosure of an invention.

The procedure for granting patents, the requirements placed on the

patentee, and the extent of the exclusive rights vary widelybetween countries according to national laws and international

agreements.

Typically, however, a patent application must include one or more

claims defining the invention which must be new, non-obvious, and

useful orindustrially applicable. In many countries, certain subjectareas are excluded from patents, such as business methods and

mental acts.

The exclusive right granted to a patentee in most countries is the

right to prevent others from making, using, selling, or distributing

the patented invention without permission.


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REGULATORY BOARD OF

INDIA

Patent law in India is being regulated by Indian Patent and Trade Mark Office.

Controller GeneralofPatents, Designs & Trade Marks

Bhoudhik Sampada Bhavan,Near Antop Hill Head Post Office,

S.M. Road, Antop Hill, Mumbai-400037,Phones : 022-24132735, Fax : 022-24123322

Territorial Jurisdiction of Appropriate Office of Indian Patent Office for the Applicants

Mumbai - The States of Maharashtra, Gujarat, MadhyaPradesh, Goa and Chhattisgarhand the Union Territories of Daman and Diu & Dadra and Nagar Haveli

Chennai - The States of Andhra Pradesh, Karnataka, Kerala, Tamil Nadu and theUnion Territories of Pondicherry and Lakshadweep

New Delhi - The States of Haryana, Himachal Pradesh,Jammu and Kashmir, Punjab,Rajasthan, Uttar Pradesh, Uttaranchal, Delhi and the Union Territory of

Chandigarh

Kolkatta - The rest of India


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PATENT REGULATIONS IN

INDIA

LEGISLATION - The Patent system in India is governed by the Patents Act, 1970 (No39 of 1970) & The Patents Rules 1972, effective from April 20,1972.

ADMINISTRATION - The Patent Office, under the Ministry of Commerce & Industry,Department of Industrial Policy & Promotion, has been established to administer thevarious provisions of the Patents Law relating to the grant of Patents & The Designs

Law, relating to the registration of Industrial Designs.

MEMBERSHIP OF INTERNATIONAL TREATIES WIPO, WTO, Paris Convention,Patent Co-operation Treaty.

WHO CAN APPLY - Application may be made, either alone or jointly with another, bythe inventor, assignee, legal representative of deceased inventor or assignee. Theinventor is entitled to be mentioned in the patent if he applies to do so.

PATENTABLE INVENTIONS - An invention means any new and useful art, process,method or manner of manufacture; machine, apparatus or other article; or substance

produced by manufacture, and includes any new and useful improvement of any ofthem, and an alleged invention.

WHAT IS NOT PATENTABLE


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Contd

EXAMINATION & PUBLICATION 15

months

OPPOSITION 4 months

GRANT OR SEALING OF PATENT -payment of sealing fee within 6 months from the date of

advertisement. However, it is extendable by three months.

REGISTER OF PATENTS - Patents can beinspected or extract from it can be obtained on payment of prescribed fee.

Register of Patents contains full details of the Patent which include Patent

number, the names and addresses of the patentee; notification ofassignment etc.; renewals, particulars in respect of proprietorship of

patent etc.

RIGHTS OF PATENTEE

APPROPRIATE OFFICE FOR FILING AN

APPLICATION


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TYPES OF LICENSING IN

PATENTS

COMPULSORY LICENSEIf a company is interested in manufacturing a product that is under patent, it has

to prove that the reasonable requirement of the public for the product has not

been satisfied, or the particular product is not available at a reasonable price. In

such a case, the company is allowed to apply for a 'compulsory licence' after

three years of the grant of the original patent.

On failure to work a patent within three years from the date of its sealing, aninterested party may file petition for grant of a compulsory license.

LICENSE OF RIGHTEvery patent for an invention relating to a method or process for manufacture of

substances intended for use, or capable of being used, as food, medicines, or

drugs, or relating to substances prepared or produced by chemical process

(including alloys, optical glass, semi-conductors and inter-metallic compounds)shall be deemed to be endorsed "Licenses of Right" from the date of expiry of

three years from the date of sealing the patent.


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PRACTICAL ASPECTS

WORKING

ASSIGNMENT

LICENSE

DURATION

RESTORATION

RENEWAL FEE

DURATION

RESTORATION

RENEWAL FEE


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PATENT DATA VERIFICATION

IN INDIA: A CASE STUDY SITUATION

Mere payment of the renewal fee at the patent office is not sufficient to

enable the maintenance of the patent. It is vital to ensure that the

payment is made with the correct details to avoid either of the two

scenarios:

a. Patents becoming lapse; or

b. Payments being made twice over during the same year.

The likelihood of an incorrect annuity payment arises if any of the following

information (apart from the patent number) is missing/incorrect:

Complete application number.

Date of filing (as the term of payment is calculated from this date).

Accurate date of recordal, as the first set of annuity fee payment after

grant is calculated from this date; and

The details of the preceding year's payment, since it is the previous

year's payment that allows the current year annuity to be paid.

SOLUTION

Having Indian Companies with prolific experience at maintaining IP

portfolios step in is a viable solution to meet data verification needs for

annuity and patent maintenance. It is advisable that a corporation

through such agencies get the complete data verification done atleast

once for all the patents in their portfolio.


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CHALLENGES

Accurate calculation of the various points in the timeline [i.e. annuity fee

payment deadline, total number of extensions (if applicable), extended due

dates, restoration deadline etc.].

Timely delivery of the verification reports.

ADDRESSING THE CHALLENGES

User-friendly reporting structure that is indicative of:

the patent number

patent application number

date of filing

date of grant

date of recordal

complete name and address of the patentee

title of the invention

details of the previous annuity payments

next due date

information about the extension of time, if applicable

lapsed/ceased date

restoration deadline (if applicable) and others.


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BENEFIT

The detriment that may come about owing to a flaw in the information

regarding the patent may have consequences as grave as the lapse

of a patent. Conducting a Data Verification exercise vide the

Inspection of Register of Patents prior to making the payment brings

down the risk of such a loss of patent or a wrongful payment being

made to the minimum.

CASE IN POINT

a. Annuity due dates for forthcoming payments.

b. Patents which were in the extension period and the deadline in

that respect.

c. Patents which had surpassed the extension period.

d. Patents for which a restoration application could be filed and the

deadline for the same.

e. Patents which had surpassed the restoration period and had

consequently lapsed.

f. Applicable deadlines after extension in each of the scenario.


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Thanking You..

DeepakB

anageShashank Tyagi

Sunny Jain

Patent Regulations in India

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