WELCOMEWELCOME TO TO

ALL DELEGATES ALL DELEGATES

ByR.Bhattacharya

AssistantAssistant Controller of Patents and DesignsController of Patents and Designs Patent Office, Mumbai

Govt. of IndiaGovt. of India

Organizational ChartOrganizational ChartCONTROLLER GENERALCONTROLLER GENERALOF PATENTS,DESIGNS AND TRADE MARKSMINISTRY OF COMMERCE AND INDUSTRY

DEPARTMENT OF INDUSTRIAL POLICY AND PROMOTION

GRANT OF PATENTSUNDER THE PATENTS

ACT, 1970 ANDREGISTRATIONOF

DESIGNS UNDER THE DESIGNS ACT,1911

DOCUMENTATION INCLUDING RERIEVAL AND

TDISSEMINATION OFINFORMATION CONTAINED

IN PATENT DOCUMENTS

REGISTRATION OFTRADE MARKS UNDER

THE TRADE ANDMERCHANDISE MARKS

ACT, 1958

PATENT OFFICEPATENT OFFICE PATENT INFORMATIONPATENT INFORMATIONSYSTEMSYSTEM

TRADE MARKS REGISTRYTRADE MARKS REGISTRY

CALCUTTACALCUTTA

NEW NEW DELHIDELHI

MADRASMADRAS

MUMBAIMUMBAI

NAGPURNAGPURAHMEDABADAHMEDABAD

CALCUTTACALCUTTA

NEW NEW DELHIDELHI

MADRASMADRAS

MUMBAIMUMBAI

The Patent Office, The Patent Office, Todi Estate, 3rd Floor, Todi Estate, 3rd Floor, Sun Mill Compound, Sun Mill Compound, Lower Parel (West), Lower Parel (West),

Mumbai – 400 013, Mumbai – 400 013,

Ph. No. 022-24924058, 24925092 Ph. No. 022-24924058, 24925092 Fax No. 022-24950622 Fax No. 022-24950622

Email: patmum@vsnl.net Email: patmum@vsnl.net Web site: www.ipindia.nic.in Web site: www.ipindia.nic.in

Knowledge

Own

Apply

Create

ProtectGenerate

Access Trade

IPRIPR

Type of Intellectual Property Type of Intellectual Property RightsRights

• Patents• Industrial Designs• Trademarks• Geographical Indications• Copyright and Related Rights• Layout-Designs (Topographies) of Integrated

Circuits• Protection of undisclosed Information• Control of Anti-Competitive Practices in

Contractual Licenses

What rights a Patent confers on the What rights a Patent confers on the patenteepatentee

If the patent is for a product :-

- the right to prevent others from

- making

- using

- offering for sale

- selling

- importing the patented product

If the patent is for a process :-

- the right to prevent others from the act of

- using the process

- using the product directly obtained by the process

- offering for sale the product directly obtained by

the process

- selling the product directly obtained by the process

- importing the product directly obtained by the process

What rights a Patent confers on the What rights a Patent confers on the patenteepatentee

Type of Patent ApplicationsType of Patent Applications

1. Ordinary application(sec. 9 & 10)

(i) application with provisional specification

(ii) application with complete specification

2. Convention application (sec. 10 & 135)

3. PCT National Phase Application (Rule 20)

What is Invention Under Section 2(1)(j)What is Invention Under Section 2(1)(j)

“Invention” means a new product or process involving an inventive step and capable of industrial application;

“inventive step” means a feature that makes the invention not obvious to a person skilled in the art;

“capable of industrial application”, in relation to an invention, means that the invention is capable of being made or used in an industry.

Non Patentable InventionsNon Patentable Inventions[Under Section 3][Under Section 3]

a) An invention which is frivolous or which claims anything obvious contrary to well established natural laws;

b) an invention the primary or intended use or commercial exploitation of which could be contrary to public order or morality or which causes serious prejudice to human, animal or plant life or health or to the environment;

c) the mere discovery of a scientific principle or the formulation of an abstract theory or discovery of any living things or non-living substance occurring in nature;

d) the mere discovery of any new property or new use for a known substance or of the mere use of a known process, machine or apparatus unless such known process results in a new product or employs at least one new reactant;

e) a substance obtained by a mere admixture resulting only in the aggregation of the properties of the components thereof or a process for producing such substance;

f) the mere arrangement or re-arrangement or duplication of known devices each functioning independently of one another in a known way;

Non Patentable InventionsNon Patentable Inventions[Under Section 3][Under Section 3]

g) ----- Section 3(g) of the Patents Act,1970 has been omitted;

h) a method of agriculture or horticulture;

i) any process for the medicinal, surgical, curative, prophylactic, diagnostic, therapeutic or other treatment of human being or any process for a similar treatment of animals to render them free of disease or to increase their economic value or that of their products;

Non Patentable InventionNon Patentable Invention[Under Section 3][Under Section 3]

m) a mere scheme or rule or method of performing mental act or method of playing game;

n) a presentation of information;

o) topography of integrated circuits;

p) an invention which, in effect, is traditional knowledge or which is an aggregation or duplication of known properties of traditionally known component or components’.

Non Patentable InventionsNon Patentable Inventions[Under Section 3][Under Section 3]

Atomic Energy Related Inventions Not Atomic Energy Related Inventions Not PatentablePatentable ( (Under Section 4Under Section 4))

No patent shall be granted in respect of an invention relating to Atomic energy falling within sub section (1) of section 20 of the Atomic Energy Act, 1962.

e.g. Inventions relating to compounds of Uranium, Beryllium, Thorium, Plutonium, Radium, Graphite, Lithium and more as notified by Central Government from time to time.

Product Product per se per se Claims - Not Claims - Not PatentablePatentable

[Under Section 5(1)][Under Section 5(1)]

(a) claiming substances intended for use or capable of being used as food or as medicine or drug or

(b) relating to substances prepared or produced by chemical processes (including alloys, optical glass, semiconductors and intermetallic compounds),

Only process of manufacture of above substances is patentable‘Explanation – For the purpose of this section “chemical

processes” include biochemical, biotechnological and microbiological processes’.

Product Product per se per se Claim Under Claim Under Section 5(2)Section 5(2)

Notwithstanding anything contained in Sub Section (I), a claim for patent of an invention for a substance itself intended for use, or capable of being used, as medicine or drug, except the medicine or drug, specified under sub-clause (v) of clause (l) of sub section (I) of section 2, may be made and shall be dealt, without prejudice to the other provision of this Act, in the manner provided in Chapter IVA. (i.e. grant of Exclusive Marketing Right).

Patent Grant ProcedurePatent Grant ProcedureFiling of patent application

Publication after 18 months Request for examination

Examination: Acceptance or Refusal

Notification of acceptance in the Gazette of India

GRANT OF A PATENT

Opposition to grant of patent

Grant of patents of be subject to certain conditions

The grant of a patent under this Act shall be subject to the condition that -

1.any machine, apparatus or other article in respect of which the patent is granted or any article made by using a process in respect of which the patent is granted, may be imported or made by or on behalf of the Government for the purpose merely of its own use;

2.any process in respect of which the patent is granted may be used by or on behalf of the Government for the purpose merely of its own use;

4.in the case of a patent in respect of any medicine or drug, the medicine or drug may be imported by the Government for the purpose merely of its own use or for distribution in anydispensary, hospital or other medical institution maintained byor on behalf of the Government or any other dispensary,hospital or other medical institution which the CentralGovernment may, having regard to the public service that suchdispensary, hospital or medical institution renders, specify inthis behalf by notification in the Official Gazette.

3.any machine, apparatus or other article in respect of which the patent is granted or any article made by the use of the process in respect of which the patent is granted, may be made or used, and any process in respect of which the patent is granted may be used, by any person, for the purpose merely of experiment or research including the imparting of instructions to pupils; and

Sr. No.

On what payable From No.

Natural Person(s)

Fees for other than natural Person(s)

1 Application for Patent 1 Rs. 750/- Rs. 3000/-

2 Examination 19 Rs. 1000/- Rs. 3000/-

3 Sealing 9 Rs. 1500/- Rs. 5000/-

Indian Patent Applications FeesIndian Patent Applications Fees

Sr. No.

On what payable For Natural Person(s)

(In rupees)

For other than Natural Person(s) (In rupees)

1 Renewal fee for 3rd year 600 3200

2 Renewal fee for 4th year 600 3200

3 Renewal fee for 5th year 600 3200

4 Renewal fee for 6th year 600 3200

5 Renewal fee for 7th year 1500 4500

6 Renewal fee for 8th year 1500 4500

7 Renewal fee for 9th year 1500 4500

8 Renewal fee for 10th year 1500 4500

9 Renewal fee for 11th year 3500 10000

10 Renewal fee for 12th year 3500 10000

11 Renewal fee for 1 3th year 3500 10000

12 Renewal fee for 14th year 3500 10000

13 Renewal fee for 15th year 3500 10000

14 Renewal fee for 16th year 5000 15000

15 Renewal fee for 17th year 5000 15000

16 Renewal fee for 18th year 5000 15000

17 Renewal fee for 19th year 5000 15000

18 Renewal fee for 20th year 5000 15000

Indian Patent Renewal FeesIndian Patent Renewal Fees

Sr. No.

Country Local Filing Foreign Filing

1 Australia 9196 34125

2 Austria 2506 75985

3 Brazil 2655 29451

4 Canada 3316 45938

5 China 11698 41016

6 Finland 3262 61556

7 Germany 56757 98338

8 India 1660 6632

9 Japan 340861 60390

10 Korea 68446 45548

11 Mexico 389 30305

12 United Kingdom 25269 164084

13 United states of America 111883 111536

Worldwide FilingWorldwide Filing

Case studyCase study(i) Honeywell in 1993 won $96 million damages from(i) Honeywell in 1993 won $96 million damages from Minolta for infringement Minolta for infringement of Honeywell's auto-focusof Honeywell's auto-focus technology for cameras. This judgement was technology for cameras. This judgement was effectively effectively used by Honeywell to make several licensing deals withused by Honeywell to make several licensing deals with other other camera manufacturers which brought in an additional $400 million. This camera manufacturers which brought in an additional $400 million. This demonstrates the spillover effects of demonstrates the spillover effects of confirmed confirmed and established knowledge and established knowledge ownership.ownership.

(ii) Polaroid vs Eastman Kodak continues to be a(ii) Polaroid vs Eastman Kodak continues to be a historic judgement in 1990 historic judgement in 1990 when Polaroid won overwhen Polaroid won over $900 $900 million million as compensation from Kodak for as compensation from Kodak for infringement ofinfringement of its patents related to instant cameras. $454 million wasits patents related to instant cameras. $454 million was awarded as compensation and $455 million was addedawarded as compensation and $455 million was added as interest. Kodak is as interest. Kodak is also known to have moved out ofalso known to have moved out of the instant camera market after the case. the instant camera market after the case. This illustrates the potentially disastrous impact on a Corporate for infringing This illustrates the potentially disastrous impact on a Corporate for infringing someone else's IPR.someone else's IPR.

((iiiiii) Fonar vs General Electric is an example demonstrating that size of a ) Fonar vs General Electric is an example demonstrating that size of a fifirm rm does not necessarily matterdoes not necessarily matter while enforcing IPR. Fonar had while enforcing IPR. Fonar had fifiled several led several patents inpatents in 1970s related to magnetic resonance imaging techniques1970s related to magnetic resonance imaging techniques and and machines for in situ and non-evasive detection ofmachines for in situ and non-evasive detection of cancer and diseases in cancer and diseases in living bodies. Subsequentlyliving bodies. Subsequently General Electric and Hitachi entered this market. General Electric and Hitachi entered this market. FonarFonar fi filed infringement suits against these companies. Hitachiled infringement suits against these companies. Hitachi settled out of settled out of court . As the end of the suit, GE wascourt . As the end of the suit, GE was ordered to pay $128.7 million to Fonar. ordered to pay $128.7 million to Fonar. InterestinglyInterestingly Fonar's annual revenue is only $17 million. FonarFonar's annual revenue is only $17 million. Fonar claimed it lost claimed it lost proprofifits corresponding to 600 MRI machines it could have sold if GE had not ts corresponding to 600 MRI machines it could have sold if GE had not infringed itsinfringed its patents. The Jury concluded that, inter alia, Fonar couldpatents. The Jury concluded that, inter alia, Fonar could have have sold 75 machines and therefore awarded them lostsold 75 machines and therefore awarded them lost proprofifits for 75 machines @ ts for 75 machines @ $371,000 per machine and$371,000 per machine and royalty for 575 machines @ $65,000 per royalty for 575 machines @ $65,000 per machine.machine.