Patent System of India

Presented byDebabrata Debbarma

MBA(SOM,NIT AGRTALA)

Intellectual Property Rights(IPR)

• Intellectual Property Rights are statutory rights once granted allows the creator(s) or owner(s) of the intellectual property to prevent others from exploiting the same commercially for a given period of time.

Governing Laws in India for IPR

• Patent Act 1970• Trade Marks Act (1958 original) 1999• The Copyright Act 1957• The Design Act 2000• Geographical Indication of Goods (Registration

and Protection) Act 1999

Invention and Innovation

• An invention means a new product or process involving an inventive step and capable of industrial application. [Section 2(1)(J) of Patent Act 1970]

• An innovation means the successful exploitation of new ideas in the form of a useful machinery or process, by any person, using his/her own intellect.

• All the inventions are the innovations and are patentable, but all the innovations are not patentable inventions.

The Patent System

• A patent is a contract between the inventor or applicant for the patent and the State, whereby the inventor or applicant gets a monopoly from the state for a certain period in return for disclosing full details of the invention.

• The patent system ensures that information on new inventions is made available for eventual public use so as to encourage technical and economic development.

Why is Patent necessary?

• To enjoy the exclusive rights over the invention: If the inventor does not get the patent rights over his invention and introduce his product/process based on his invention in the market, any body can copy his invention and exploits it commercially.

History of Patent Acts in IndiaYear Event

1856 Act for protection of inventions on the basis of British law of 1852

1859 Patent monopolies called exclusive privileges

1872 Patents and Designs Act

1883 Protection of Inventions Act 1888 Inventions and Designs Act 1911-1947 Modern patent era by Patents and Designs Act. First time an authority call Controller General of Patents appointed

1959 Justice Ayyangar’s report

1967 Patent Act bill introduced in the Parliament

1970 The Patents Act passed by the parliament

1972 The Patents Act-1970 came into force on April 20, 1972

1994 Amendment by ordinance to include Exclusive Marketing Rights (EMR’s)

1999 Amendment passed by the parliament. New patent amendment bill referred to select committee

2003- 2005 Patents Act 1970 with second amendment comes into force Patent Act 1970 (2005 Amendment) comes in to force from 1-1-2005

What is Patentable?

Patentable Subject Matter

In order to be suitable for patenting an invention must be

• Related to a process or product or both• Novel : An invention is considered to be novel if it

has not been disclosed to the public at the time that the patent application was made

• An inventive step : A feature of the invention that involves a technical advancement and an economic significance and also makes the invention not obvious to a person skilled in the art

Patentable Subject Matter (cont.)

• Capable of industrial application : Invention is capable of being used in any kind of industry

• Not fall under section 3 and 4 : It includes the following

1) Frivolous Inventions: Inventions contrary to well established natural laws. [Section 3(a)]e.g. 100% efficiency machine 2) Commercial exploitation : primary use of inventions which is contrary to public order or morality. [Section 3(b)]e.g. gambling machine.

Patentable Subject Matter (cont.)

3) Mere Discovery of a Scientific Principle or formulation of an Abstract Theory or discovery of any living thing or discovery of non–living substance occurring in nature [Section 3(c)]4) Mere arrangement or re-arrangement or duplication of known devices, each functioning independently of one another in a known way [Section3(d)]. .E.g. A bucket fitted with torch5) Inventions falling within Section 20(1) of the Atomic Energy Act, 1962 are not patentable [Section 4]

Types of Patent Applications

• Ordinary Patent Application: It is a simple application for patent without any priority claim and not being convention or National Phase Application.

• Convention Application : An applicant who files an application for patent in a convention country can make convention application in India within 12 months from the date of basic application.

• PCT- International ApplicationThe Patent Cooperation Treaty or PCT is an international agreement for filing patent applications. However, there is nothing called as a 'world patent'

The PCT application does not provide for the grant of an international patent, it simply provides a streamlined process for the patent application process in many countries at the same time.

• National Phase Application under PCT

The PCT-national phase must follow the international phase. The applicant must individually 'enter into the national phase'. i.e. file a National phase application in each county he wishes to enter.

If the applicant does not enter the national phase within the prescribed time limit, the International Application loses its effect in the designated or elected States.

• Patent of Addition

Patent of addition is an application made for a patent in respect of any improvement or modification of an invention described or disclosed in the complete specification already applied for or has a patent.

• Divisional Application

A divisional application is one which has been "divided" from an existing application.

The applicant, at any time before the grant of a patent, can file a further application on the ground that the claims disclosed in the complete specification relates to more than one invention. A divisional application is useful if a unity of invention objection is issued, in which case the second invention can be protected as a divisional application.

Stages from filing to grant of a patent

Filing a patent

• File an application for patent with one of the patent offices based on territorial jurisdiction of the place of office or residence of the applicant /agent.

• Pay the required fee• Information concerning application form and details of fee

available at www.ipindia.nic.in

Formality Check

• An Examiner immediately checks the formal requirements before accepting the application and the fee

• Issue of application number and the cash receipt is done on the same day

Publication

• Application is kept secret for a period of 18 months from the date of filing

• In 19th month, the application is published in the official journal – this journal is made available on the website weekly

• Applicant has an option to get his application published before 18 months also on request.

Request for Examination

• Application is examined on request• Request for examination can be made either

by the applicant or by a third party• A period of 48 months, from the date of filing,

is available for making request for examination

Examination

• Application is sent to an Examiner within 1 month from the date of request for examination

• Examiner undertakes examination w.r.t.– whether the claimed invention is not prohibited

for grant of patent – whether the invention meets the criteria of

patentability

Issue of FER

• A period of 1 to 3 months is available to Examiner to submit the report to the Controller

• 1 month’s time available to Controller to vet the Examiner’s report

• First Examination Report (FER) containing gist of the objections is issued within 6 months from the date of filing of request

Response from the Applicant

• 12 months’ time, from the date of issue of FER, is available to the applicant to meet the objections

• If objections are met, grant of patent is approved by the Controller – within a period of 1 month

Pre-grant Opposition

• After publication, an opposition can be filed within a period of 6 months

• Opportunity of hearing the opponent is also available

Examination of Pre-grant Opposition

• Opposition (documents) is sent to the applicant

• A period of 3 months is allowed for receipt of response

Consideration of Pre-grant Opposition

• After examining the opposition and the submissions made during the hearing, Controller may – Either reject the opposition and grant the patent – Or accept the opposition and modify/reject the

patent application

Grant of a Patent

• A certificate of patent is issued within 7 days

• Grant of patent is published in the official journal

Renewal Fee

• To be paid within 36 months from date of recording in the register [sec 142 (4) ]

• No fee for 1st and 2nd year• Renewal fee, on yearly basis, is required to be

paid for 3rd to 20th for keeping the patent in force• Delay up to six months from due date permissible

on payment of fee for extension of time • Patent lapses if renewal fee is not paid within the

prescribed period

THANK YOU