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March 16, 2012

Indian Patent law, Office Procedure and

Examination Practice in

Indian Patent office

Dr. K.S.KardamDeputy. Controller of Patents & Designs

The Patent Office Delhi

23rd OCTOBER 2010

WIPO Training program for trainers

training on Effective IntellectualProperty Asset Management By MSMES



March 16, 2012

Outline of the Presentation

1

• Background of Indian Patent Act• Examination Procedure

• Filing• Publication• Time limit for publication• Examination request• Examination

2

• Opposition Procedure• Pre- grant• Post grant

3• Statistics



March 16, 2012K.S.Kardam

INDIAN PATENT LAW

HISTORICAL DEVELOPMENT

The Act of 1856 based on UK Act Of 1852 -Butwithdrawn

The Act of 1859,

The Patterns & Designs Protection Act, of 1872 The Protection of Invention Act, of 1883

The Invention & Designs Act of 1888- Further

Consolidation The Patents & Designs Act 1911

The Patents Act 1970

This Act has been amended in 1999,2002 and2005




The Patents (Amendments) Act 1999

Providing the provisions for receiving theapplications for the product patent in the field ofPharmaceuticals and agro-chemicals (mail box)

Provisions for the grant of EMRs for distribution andsale of pharma products on fulfillment of certainconditions

Grant of EMR subject to certain conditions

Deletion of sec.39- relating to permission for filing ofpatent application abroad





Uniform 20 years term of patent for all inventions

Scope or non-patentable inventions including traditionalknowledge enlarged

Deferred examination system Disclosure of source and geographical origin of

biological material made compulsory

Non-disclosure or wrongful disclosure of source andgeographical origin of biological material made groundfor opposition and revocation

Provisions concerning Convention countries simplified-GOC, UOC,IGO recognized




The Patents (Amendments) Act 2002…

Anticipation by traditional knowledge ,oral orotherwise also made ground for opposition andrevocation

Reversal of burden of proof Bolar provisions

Parallel importation

Establishment of appellate board

Compulsory license provisions strengthened Simplification of procedures

Harmonization with PCT provisions





Product patent for inventions in all fields of technology

Definitions of certain terms redefined

New forms of known substances excluded in order toprevent ever-greening of patent

Rationalization of opposition procedure Introduction of pre-grant opposition by representation and

Post – grant opposition

Compulsory license for export purpose also if need be-to

remedy anti-competitive practices Compulsory license for manufacture and export of

pharmaceutical products to any country havinginsufficient or no manufacturing capacity




The Patents (Amendments) Act 2005……

Extension of grace period to 12 months

Provisions concerning review of secrecy directions-now to be reviewed every six month instead of

12months

Provisions relating to filing application abroadrevised

Provisions concerning Penalties strengthened Importation from any person duly authorised under

law



March 16, 2012

Examination Procedure

Filing of the applicationRequest ForExamination

( RFE)

Publication under section

11A

Examination

Grant of Patent

Pre-grant Opposition

Post-grant Opposition



March 16, 2012

Electronic filing

(July 20,2007)

Physical filing at the Patent Office

Filing of the Application



Where to file application (Jurisdiction)

If the applicant/first mentioned applicant (in case of joint)-resides/has domicile/has place of business/has origin ofinvention/has service address (in case of foreignapplicant) in the following states:

States Jurisdiction

Northern Patent Office Delhi

Southern Patent Office Chennai

Western Patent Office Mumbai

Rest Of India Patent Office Kolkata



How to Apply ?

Application on form –1

Specification provisional/complete on form –2

Abstract of invention

Drawings,if any

Statement and undertaking of foreign filing particularson form -3- if any

Proof of right—if applicable Declaration of inventor-ship on form- 5



Contd….

Certified copies of priority documents- ifapplicable

Power of attorney-if applicable

Application,Specification and other documentsshould be either in Hindi or English language

If application discloses sequence listing ofnucleotides and/or amino acids, it should be filedin electronic form



Filing of the patent application

Application for patent can be filed only on thepayment of full Fee

Filing fee is now charged on the basis of

number of pages and number of claims madein the patent document

No extra fee is charged upto 30 pages and 10claims

Different fee for natural person and legal entity



Publication

March 16, 2012



March 16, 2012

PUBLICATION

UNEXAMINED APPLICATIONS

AFTER 18 MONTHS

EARLY PUBLICATION ON REQUEST

GRANTED PATENTS



March 16, 2012

Time limit for publication

Ordinary application: After 18 months of filing of theapplication

Conventional applications : After 18 months from priority

Applications for which secrecy directions are issued: After

cessation of the secrecy directions or after 18 monthswhichever is later

Divisional application: After18 months from priority of parent application/immediately after filing divisionalapplication whichever is later

National phase PCT application: within one month after

filing of the application Patent of addition : 18 months after filing Patent of addition

application whichever is later

Early Publication- within one month after receiving therequest



March 16, 2012

Publication of Patent Application

Every application shall be published after expiry of 18months from the date of filing or date of priority of theapplication except the following

Application in which secrecy direction is imposed or

Abandoned under section 9(1) or

Has been withdrawn before 3 months prior to expiry of 18months

However the applicant can make specific request for

early publication prior to 18 months on form 9 withprescribed fee of Rs.2500 or Rs.10000 by individual orlegal entity respectively



March 16, 2012

Where published- Official Journal

This journal is published

every week

This has replaced gazetteFirst issued out on 21st

January 2005

Available online onPatent office website:

www.ipindia.nic.in

http://www.ipindia.nic.in/

http://www.ipindia.nic.in/



Contents of the unexaminedpublished patent application

(12) PATENT APPLICATION PUBLICATION

(19) INDIA

(22) Date of filing of Application :19/08/2008

(21) Application No.1967/DEL/2008 A

(43) Publication Date : 17/04/2009

(54) Title of the invention : AN ELECTRONIC SYSTEM AND METHOD FOR PROCESSING FINANCIA DATA

(51) International classification

(31) Priority Document No

(32) Priority Date (

33) Name of priority country

(86) International Application No Filing Date

(87) International Publication No

(61) Patent of Addition to Application Number

Filing Date

(62) Divisional to Application Number Filing

Date

:G06Q20/00

:NA

:NA

:NA

:NA :

NA :

NA

:NA

:NA

(71)Name of Applicant : 1)MEENA MISHRA Address of Applicant

:B-1, SECTOR-41, NOIDA, (U.P) Uttar Pradesh India (72)Name of

Inventor : 1)MEERA MISHRA 2)SH.ANJANI KUMAR MISHRA

3)SH.VIKAS PANDEY

(57) Abstract : A system for processing financial data comprising electronically controlled multiple stages comprising an input stage, a

processing stage wherein the system performs specific functions including means to calculate cert ain fixed parameters, means to generate

appropriate data sheets, means to store the relevant data in the form of codes for retrieval at any later point of time, means to allow for

modification of calculation parameters for different types of financial data and calculation, and means to execute the function and an output stage

to generate data ready to be transmitted exported to the concerned authorities" module of software as well as on servers also either through

internet or any other mode with each stage being controlled by input device, processing device and output device.



March 16, 2012

Contents of Publication

under section 43(2)



Examination

March 16, 2012



March 16, 2012

Examination

Examination: Not automatic

Request to be made by applicant or thirdparties

Examination report to applicant only

Fees: Rs 2500/ 10000



March 16, 2012

Request For Examination

A request for examination can be filed in form 18within 48 months from the priority date or filing datewhichever is earlier

A request for examination in respect of applications

filed before 1-1-2005 can be filed within the period of48 months from the date of filing of the applicationinstead of date of priority ( as provided prior to thePatents (amendment) Act. 2005

Request for



March 16, 2012

Request forexamination…….

. In case of application in which secrecy direction isimposed

48 months from priority date or date of filing or

6 months from the date of revocation of secrecy

direction,whichever expires later In case of divisional application-

After publication of main application

48 months from priority date or date of filing of main

application or 6 months from the date of filing of divisional

application , whichever is later



March 16, 2012

Formal Examination

Jurisdiction Fee Form of the documents

Specification including claims and abstract Drawings Power of attorney Assignment/Endorsement

Priority date and supporting document Language of the documents or their translation

if language is not Hindi or English Information about corresponding foreign

applications



Technical groups

March 16, 2012

All the controllers and examiners have beendivided into 4 groups

Groups have been constituted according to field

of technology namely Chemical, Biotechnology,Electrical and electronics and Mechanicaland allied engineering

The applications are referred to examiners as

per their field of Specialization Applications are examined as per serial

order of the request for examination



March 16, 2012

Substantive Examination

Patentable invention( sec-2(1)(j)Novelty Inventive step Industrial application

Is the Invention excluded under any of theprovisions of section 3 and 4

Description Sufficiency, ambiguity, succinctnessReference of deposition of biological resourcesDisclosure of source of origin

ClaimsUnity of invention dependency




New (Novel) means ?

Invention should not have been Published in India or elsewhere.

In prior public knowledge or prior public use with

in India.Claimed before in any specification in India and

published after the filing of the application




A feature of invention that involvestechnical advance as compared to

existing knowledge or having

economic significance or both andthat makes invention not obvious to a

person skilled in the art

Inventive Step means ?




Invention should be capable of beingmade or used in an industry to result

some tangible technical results

Industrial applicable means ?




Inventions Not Patentable-1

Frivolous & obviously contrary to naturallaw

Contrary to law,morality

Injurious to public health

Use or commercial exploitation is contraryto public order or morality

Causing serious prejudice to human,animalor plant life or health or to the environment





Mere discovery of scientific principle or formulation ofabstract theory

Discovery of living or non living substances occurringin nature

Mere discovery of new form of known substancewhich does not result in the enhancement of theknown efficacy of that substance

However, salt,

esters, polymorphs, metabolites, pureforms, isomers ,complexes etc, shall be considered tobe the same unless they differ significantly inproperties with regard to efficacy




Mere discovery of new property

New use of known substance , process,machine, apparatus.

Mere admixtures resulting in theaggregation of properties

Mere arrangement and rearrangement ofknown devices.

Method of agriculture or horticulture





Process for any medicinal, surgical, curative,prophylactic, diagnostic or therapeutic treatment ofhuman being or animal.

Plant & animals or their parts Seeds, varieties and species and essentially biological

process for the production or propagation of plants andanimals

A mathematical or business method or a computerprogramme per se or algorithms

Literary,dramatic,musical or artistic/cinematographyworks and television productions or any other aestheticcreation.






Scheme or rule

method of performing mental act or method ofplaying game

Presentation of information Topography of integrated circuit

Traditional knowledge or aggregation orduplication of known properties of traditionally

known components





Inventions falling within the scope of Sec. (1) ofSub-sec. 20 of Atomic Energy Act, 1962-For

Example : Inventions relating to Compounds of -

Uranium, Beryllium, Thorium, Plutonium, Radium,Graphite, Lithium and more as notified by Central

Govt. from time to time



Novelty Search

March 16, 2012

Indian Patents Since 1912 DWPI(DELPHION) STN

QuestelQPAT And QWEBMMS and NPL

E- Journals

• EPOQUENET(Since April 2009)

Ti l i h



March 16, 2012

Time to comply withthe Requirements

12 months from the date of issue of FirstExamination Report (FER)

This time limit is not extendable



OPPOSITION

March 16, 2012

Post –grant opposition

Pre-grant opposition by representation

Pre grant Opposition by



Pre-grant Opposition byrepresentation

It can be filed by any person

Within SIX months from the date of publication ofthe application under sec.11A Or

before the grant of patent

Note: date of patent is the date when thecontroller grant patent by generating the patent

number with date!!!! Date of patent however in no case is the date

of publication of grant of patent



Grounds for Opposition

Wrongful obtaining

Prior publication

Prior claiming

Prior public knowledge or use in India

Obviousness or lack of inventive step

Not an invention or not patentable under the

Act



Grounds for Opposition….

Insufficiency of description

Failure to disclose the information regardingcorresponding foreign application or furnishing

false information Failure to file convention application within

twelve months from the date of first application

made in the convention country



Grounds for Opposition….

Non-disclosure or wrongful mentioning of thesource and geographical origin of biological

material used in the invention Anticipation of invention by knowledge, oral or

otherwise available within any local orindigenous community in India or elsewhere

No account will be taken for personaldocument or secret trial or secret use



Pre-grant opposition

REPRESENTATION

FORWARDED TO

THE APPLICANT

REPLY ANDEVIDENCE OF

APPLICANT

HEARING

Copy of reply givento the opponent if

requested

Patent grantedApplication

refused

Request forexamination is

filed

YESNO

3 Months



Post-grant Opposition

Any time but before expiry of one year from thedate of publication of the grant of patent

By interested person only

By giving a notice of opposition to the Controller On the prescribed grounds only

The grounds are same as under pre-grant

opposition No provision for extension of time to file notice

of opposition

P d f



Procedure forPost grant Opposition

NotificationGrant of patent Notice of opp.

Reply Evd. by opp.Reply statement&

Evd.by applicantF.W.S.& Evd. By opp.

Further Evd. If any

Appointment

of hearing

Hearing

Decision RevokedPatent Cont

Recommendations of

OPPOSITION BOARD



Patent Applications filed

0

5000

10000

15000

20000

25000

30000

35000

40000

1999-

2000

2002-032003-042004-052005-062006-072007-08

March 16, 2012

4824

11466

12613

17466

24505

28940

35,218



Patents granted

0

2000

4000

6000

8000

10000

12000

14000

16000

2001-02 2002-03 2003-04 2004-05 2005-06 2006-07 2007-08

March 16, 2012

1318 1379 2469 1911

4320

7539

15.262

THE FEE SCHEDULE



March 16, 2012

THE FEE SCHEDULEOn what payable

Prov./Comp spec.

PAGES EXCEEDING 30

CLAIMS EXCEEDING 10

*Request for extension of time

REQUEST FOR EARLY PUBLICATION

Request for Examination

EXPRESS REQUEST FOR EXAMN.

*Change of Applicant

*Notice of Opposition*Certified Copy\Certificate

*On a petition

*Restoration of lapsed patent

Form

2

-

-

4

9

18

18

6

7

--

15

Individual

1000

100

200

1000/2000/3000

2500

2500

3500

15001000

1000

1500

1500

Company

4000

400

800

4000/8000/1200

10000

10000

14000

20006000

4000

4000

6000

RENEWAL FEES3rd to 6th Year(per year)

6th to 10th Year—do--

11th to 15th Year---do---

16th to 20th year----do---

500

1500

3000

5000

2000

6000

12000

20000



March 16, 2012

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