1. What
is the definition of a patentable invention under the
Indian Patent Law?
2. What are the unpatentable
inventions under the Indian Patent Law?
3. What are the requirements
for patentability of an invention?
4. Is there a possibility
for patent registration when the technology sought to
be covered by the Patent has been publicly known or
described in a publication before an application is
filed?
5. Can an applicant file an application in foreign language in India?
6. Is it possible to have
global or world Patent?
7. Is India a signatory to
the Paris Convention and the Patent Cooperation Treaty?
APPLICATION PROCEDURE
8. What is the application
procedure?
8.1 What is Form 1? Should
this Form necessarily contain the signatures of the
Inventors and the Applicant? If an employee invents
a new technology who should be the Applicant for Patent?
8.2 What is Form 2 or Specification?
What is the difference between Complete and Provisional
Specification?
8.3 Who will read my Patent
Specification?
8.4 What should be the contents
of the Specification?
8.5 Is there any limit on
number of pages or claims in the Specification?
EXAMINATION PROCEDURE
9.1. Is there an automatic
right to Publication and Examination once a Complete
Specification is Lodged?
9.2 Can this examination
be expedited? When does the publication take place?
9.3 What should we do after
the issuance of First Examination Report?
9.4 Is it possible to amend
the Patent Specification once filed?
9.5 What happens if the
requirements of the First Examination Report (FER) is
not complied within the stipulated time? Will the applicant
have a right of hearing and appeal?
MISCELLANEOUS
10.1 What is the term of
patent in India and when does the renewal fee become
payable?
10.2 If two or more persons
work together to make an invention, to whom will the
patent be granted?
11. Does the Indian Law
provide for Compulsory Licensing?
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1. What is the definition
of a patentable invention under the Indian Patent Law?
All inventions that
have commercial application can be covered by Patent
- “invention means a new product or process
involving an inventive step and capable of industrial
application” (Section 2(1) (j).
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2.
What are the unpatentable inventions under the Indian
Patent Law?
Sections 3 & 4
of the Patents Act, 1970 enlist the non-patentable inventions.
Section 3 reads as follows:
The following are not inventions within the meaning
of this Act,
(a) an invention which is frivolous
or which claims anything obviously contrary to well
established natural laws;
(b) an invention the primary or intended
use or commercial exploitation of which could be contrary
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 thing or non-living substance
occurring in nature] (But the dividing line between
invention and discovery is very thin a lot of it will
depend on the projection of the invention);
(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;(Explanation Derivatives of a
same substance such as salts, esters, ethers, polymorphs,
metabolites, new form particle size and other derivatives
of a known substance will be considered as the same
substance unless they defer significantly in properties
with regards to efficacy)
(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; (A synergistic admixture is patentable.
If the admixture discloses a beneficial new properties
not disclosed by the individual ingredients, the same
is patentable)
(f) the mere arrangement or re-arrangement
or duplication of known devices each functioning independently
of one another in a known way;
(g) a method of agriculture or horticulture;(Crop
protection chemical and new devices used in agricultural
of horticultural operations are patentable)
(h) any process for the medicinal,
surgical, curative, prophylactic [diagnostic, therapeutic]
or other treatment of human beings 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;
(i) plants and animals in whole or
any part thereof other than micro-organisms but including
seeds, varieties and species and essentially biological
processes for production or propagation of plants and
animals;(New plant varieties can be protected under
a different law)
(j) a mathematical or business method
or a computer program per se or algorithms;(But if the
software is responsible for causing an improved technical
effect or improves the efficacy of the existing device,
then the technical or the improved device can be patented)
(k) a literary, dramatic, musical or
artistic work or any other aesthetic creation whatsoever
including cinematographic works and television productions;(The
same can be protected under the Laws of Copyright)
(l) a mere scheme or rule or method
of performing mental act or method of playing game;
(m) a presentation of information;
(n) topography of integrated circuits;
(This can be protected under a different law)
(o) an invention which, in effect,
is traditional knowledge or which is an aggregation
or duplication of known properties of traditionally
known component or components.](But an improvement to
the traditional knowledge complying with the requirement
of novelty, utility and non-obviousness can be a subject
matter of Patent)
And 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 (33
of 1962)
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3.
What are the requirements for patentability of an invention?
1.
Novelty
2. Inventive Step
Further, “Inventive step means a feature that
makes the invention not obvious to a person skilled
in the art”. (Section 2 (1) (j)) is to be replaced
by “Inventive step means a feature of an invention
that involves technical advance as compared to the existing
knowledge or having economic significance or both and
that makes the invention not obvious to a person skilled
in the art.” (Section 2 (1) (ja))
3. Industrial Applicability
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4.
Is there a possibility for patent registration when
the technology sought to be covered by the Patent has
been publicly known or described in a publication before
an application is filed?
Novelty is crucial
for Patent protection. Usually, the novelty is lost
by:
(a) prior publication;
(b) prior public use;
(c) prior claiming (if it has been
claimed in an earlier specification.)
However Section 31 and 32 provide that if the disclosure
is before a scientific body or an exhibition notified
by the Union Government, then, within twelve months
from such publication or display, a patent application
can be made.
A non-commercial experimental use does not defeat novelty.
But, it is always better to apply for a patent first
and publish or exhibit the product after patent application.
If such publication or display had occurred prior to
the application, contact a patent attorney immediately
to know whether an application can be made notwithstanding
the disclosure.
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5.
Can an applicant file an application in foreign language?
An application can be filed in India either in English or Hindi.
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6.
Is it possible to have global or world Patent?
No, patenting is a
matter that falls within the domestic jurisdiction of
a State. However, Article 27 of the WTO TRIPS agreement
establishes ‘international minimum standard
in patent protection.’ Paris Convention on
protection of Industrial Property, 1883 confers on all
the Applicants irrespective of Nationality, among other
things (a) a right to national treatment; (b) right
of priority.
Patent Co-operation Treaty (PCT) facilitates filing
of a single application that can be deemed as an application
for all member states of PCT. National application
in India has to be filed within 31 months of PCT Application.
Grant of Patent in pursuant of the PCT National Phase
Application is still left to the discretion of Local
Patent Office.
International filings have to be made within 12
months of the filing of the Domestic Application.
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7.
Is India a signatory to the Paris Convention and the
Patent Corporation Treaty?
Yes.
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8.
What is the application procedure?
An application for
patent has to be made in Form 1 (duplicate)
and shall be accompanied by prescribed fee (Rs. 1000/-
for individual and Rs. 4000/- for artificial legal entities),
Form 2 (provisional or complete specification)
and Form 3 (a declaration and undertaking
regarding the foreign patent filings of the same invention).
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8.1 What
is Form 1? Should this Form necessarily contain the
signatures of the Inventors and the Applicant? If an
employee invents a new technology who should be the
Applicant for Patent?
If an invention originates
in the course of Contract of Employment (in the absence
of a contract to the contrary) the technology vests
with the employer and he should be shown to be Applicant
for Patent.
Form 1 need not have the signature of Inventors for
the initial filing. If the initial filing is made without
the signature of the inventors, subsequently, From 1
duly signed by the inventor must be logged with the
Patent Office within six months of the Application.
If the Applicant is a Company, Form 1 must be signed
by the Company Secretary or a Director or any Authorized
Signatory who has been specifically authorized to represent
the Company by means of a Resolution passed by the Board
of Directors of the Company.
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8.2 What
is Form 2 or Specification? What is the difference between
Complete and Provisional Specification?
Specification is the
most important document in the entire Patenting procedure.
We strongly recommend that you consult an Attorney before
finalizing the specification. There are two types of
specification provisional and complete.
Provisional Specification is logged to achieve earliest
priority date. When the inventive concept is in its
formative stages, and a lot of final details of the
invention have to be worked out in future, it is better
to log a provisional specification. On the other hand,
if every thing about the invention is known and the
invention can be commercialized or marketed the next
day, it is better to log the complete specification
straight away.
If a provisional specification is followed by a Complete
Specification, the Applicant will also have to log the
declaration of inventorship as in Form 5.
If a Complete Specification is not logged within
12 months of logging the Provisional Specification,
the Patent Application will be deemed to have been abandoned.
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8.3 Who
will read my Patent Specification?
A good specification
is Legal, Technical and Commercial Document. To begin
with, the Specification would be read by the "Examiner"
in Patent Office who would normally be a person skilled
in the art or the field of the invention. However, during
the later stages the Specification would be read by
(a) the Controller of Patents
(b) Investment Banker
(c) Lending Banker
(d) A Judge
Hence, it must be comprehensible even for those who
are not so skilled in the area of invention.
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8.4
What should be the contents of the Specification?
Adopt the following
format while preparing the Specification.
(a) Title of the invention.
(b) Area of the Invention.
(c) Background of the invention.
(d) Summary of the invention.
(e) Explanation about the drawings.
Law does not compel you to submit drawings. But
remember a good drawing can save you from pages of written
description.
(f) Detailed description of the invention.
(g) Claims. This is the most important
part in a Patent Specification. Please always consult
an Attorney before drafting the claim.
(h) Abstract.
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8.5
Is there any limit on number of pages or claims in the
Specification?
Even though there is
no limit to the number of pages in the specifications,
it is better to be precise. The official fee will depend
upon number of pages and the claims.
The fee for application having 30 pages including drawings
for 10 claims with single priority is Rs. 1,000/- for
individuals and Rs. 4,000/- for artificial legal persons.
For each additional sheet beyond 30 and additional fee
Rs. 100/- per sheet for individuals and Rs. 400/- for
artificial legal persons become payable.
For each additional claim beyond 10 claims an additional
fee of Rs. 200/- per claim for individuals and Rs. 800/-
for artificial legal persons become payable.
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9.1
Is there an automatic right to Publication and Examination
once a Complete Specification is Lodged?
There is an automatic
right to Publication. The application gets published
after 18 months from the date of filing of application
or the date of priority of the application, whichever
is earlier.
The Applicant has to specifically request for Examination
after the publication of the Specification in the Patent
Office Gazette, by paying prescribed fee. If the Examination
is not requested within 48 months of the Priority Date,
the Application will be deemed to have been abandoned.
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9.2
Can this examination be expedited? When does the publication
take place?
Normally publication
of the application is done after 18 months from the
date of filing of application or from the date of priority
of the application, whichever is earlier. An applicant
can request for examination only after publication.
Request for expedited publication can be made in Form
9 by paying the prescribed fee of Rs. 2,500/- for individuals
and Rs. 10,000 for companies.
Thereafter, request for examination has to be made in
Form 18 with a prescribed fee of Rs. 2,500/- for individuals
and Rs. 10,000/- for companies.
The Express Request for Examination for National phase
applications is possible on further payment of official
fee of Rs. 1,000/- for individuals and Rs. 4,000/- for
companies.
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9.3 What
should we do after the issuance of First Examination
Report?
Usually, the First
Examination Report will comprise many objections from
the Patent Office. All the requirements of the Report
would have to be complied within 1 Year from the date
of the issuance of the First Examination Report.
In between, the Patent Office may issue further Official
Actions if warranted by circumstances. If the requirements
of the Examination Report are not complied within 1
year, then the application is deemed to be abandoned
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9.4
Is it possible to amend the Patent Specification once
filed?
The Patents Act, 1970
considers 2 types of amendments. After the receipt of
the First Examination Report, amendments may be made
to comply with the requirements of the Report. These
are involuntary amendments made at the instance of the
Patent Office and the same can be done free of cost.
In addition, voluntary amendments are also possible
by filing Form 13 on payment of the prescribed fee.
Voluntary amendments can be made either before or after
the grant of the Patent.
However, amendments cannot be made for the purpose of
increase in the scope of the claims or for incorporating
additional disclosure.
The prescribed fee for amendment before grant is Rs.
500/- for individuals and Rs. 2,000/- for companies.
The prescribed fee for amendment after grant is Rs.
1,000/- for individuals and Rs. 4,000/- for companies.
Minor amendments for changing the name, address of the
applicant and address for service can be effected on
payment of reduced fee of Rs. 200 for individuals and
Rs. 800/- for companies.
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9.5
What happens if the requirements of the First Examination
Report (FER) is not complied within the stipulated time?
Will the applicant have a right of hearing and appeal?
If the requirements
of the FER are not completed within the stipulated time,
the application is deemed to have been abandoned. In
case of abandonment, the Controller does not pass any
speaking order but merely informs the applicant that
the application has been abandoned. In such a case,
the applicant does not have any right of appeal, but
the aggrieved applicant can either file a Review Petition
under Rule 130 of the Patent Rules before the Controller
of the Patent or file a Writ petition under Art.226
of the Constitution.
Under the Patents Act, there is no automatic right of
hearing before the rejection of the Patent application.
If an applicant is very keen to have an oral hearing,
he must specifically request for hearing. If the Controller
rejects the application, even after hearing, the applicant
can file an appeal within 90 days to the Intellectual
Property Appellate Tribunal (IPAT) within 90 days of
the order of rejection. As on date, the jurisdiction
to hear patent appeal has not yet been conferred on
IPAT and hence, the High Courts within whose jurisdiction
the Patent Office is located are empowered to entertain
Miscellaneous Appeal.
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10.1
What is the term of patent in India and when does the
renewal fee become payable?
A patent is valid for
20 years from the date of filing of the application.
In case of International applications filed under Patent
Cooperation Treaty designating India, the term of the
patent is 20 years from the international filing date.
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10.2
If two or more persons work together to make an invention,
to whom will the patent be granted?
If each had a share
in the ideas forming the invention as defined in the
claims - even if only as to one claim, they are joint
inventors and a patent will be issued to them jointly
on the basis of a proper patent application.
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11.
Does the Indian Law provide for Compulsory Licensing?
Yes. Indian Laws on
Compulsory licensing are fair reasonable and/ or inconformity
with the Paris Convention and WTO TRIPS agreement. Under
Indian Law, any person interested may make an application
for grant of Compulsory licence after 3 years from the
date of the grant of the patent. A compulsory license
can only be granted:
a. if the reasonable requirement of
the public (domestic and foreign) have not been satisfied;
b. if the Patented Invention is not
available to the public at a reasonable price;
c. if the Patented invention worked
in India.
Thus it follows that if a Patentee is meeting the local
demand for a patent at a reasonable cost, he can successfully
prevent compulsory licensing.
In addition, in the case of a national emergency or
extreme urgency for the purpose of preventing major
disease like AIDS, Tuberculosis, malaria or other epidemics,
the Controller can permit compulsory licensing irrespective
of the above three conditions.
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