PROCEDURE OF GETTING PATENT

192770888031
VRINDA SONI

JURISPRUDENCE ⚖ 192770888032
AHEEN SUBEDAR
PHARM D THIRD
YEAR
PATENT
A patent is an intellectual property rights relating to inventions and
is the grant of exclusive right for limited period by the government
to the patentee in exchange of Full disclosure of his invention for
excluding others from making, using ,selling and importing the
patented product or process producing that product for those
purposes.
The main patent rights law in India is the patent act of 1970.
It gives inventors sole rights over their innovations for a defined
period of time.
PROCEDURE FOR GETTING PATENT
A. Application for patents
B. Examination of applications (prosecution of the patent application)
C. Exclusive marketing rights
D. Opposition to grant of patent
E. Provision for secrecy
F. Grant and ceiling of patents and right conferred thereby
G. Patents of addition
H. Amendment of application and specifications
I. Restoration of lapsed patents
J. Surrender and revocation of patents
K. Register of patent
A. APPLICATION FOR PATENTS
1) Persons entitled to apply for patent. (who can apply for patent)
2) Form of application
3) Information and undertaking regarding foreign application
4) Provisional and complete specification
5) Contents of specifications
6) Priority dates of claims of a complete specification.
PATENT APPLICATION CAN BE FILED
AT ANY OF THE FOUR PATENT
OFFICES IN INDIA
Kolkata -head office
Mumbai
Delhi
Chennai
 DOCUMENTS REQUIRED
1. Application form in triplicate
2. Provisional or complete specification in triplicate .
3. Drawing in triplicate if necessary
4. models if necessary
5. abstract of the invention in triplicate
6. statement of foreign filling
7. priority document if priority date is claimed
8. declaration of inventorship where the provisional specification is followed by
complete specification or in case of convention application
9. power of attorney if filed through patent agent
10. fee in cash by local check or by DD
1) PERSONS ENTITLED TO APPLY FOR
PATENTS
(WHO CAN APPLY FOR PATENT)
I. Any person claiming to be the true and first inventor of invention.
II. By any person being the assignee of the person claiming to be the true and first
inventor in respect of the right to make such an application.
III. By the legal representative of any deceased person who immediately before his
death was entitled to make such an application
 2) FORM OF APPLICATION
I. Each application shall be for one invention only
II. should be made in prescribed form with prescribed fees filed in Patent Office
III. There should be proof of right with the application or it can be furnished within a period
of three months after filing of application
IV. Every application shall state that the applicant is in possession of the invention and shall
name the owner claiming to be the true and first inventor and where the person so
claiming is not the applicant or one of the applicants, the application shall contain a
declaration that the applicant believes the person so named to be the true and the first
inventor
3) INFORMATION AND
UNDERTAKING REGARDING
FOREIGN APPLICATION
I. When the applicant for a patent is prosecuted in any other country outside India
in respect to the same or substantially the same invention he shall file along with
his application - a statement setting out the little particulars of such
application ,the serial number and date of filling of such application and any
other particulars as may be prescribed.
II. He would keep the controller informed in writing from time to time of details of
the nature referred into the clause relating to the same or substantially the same
invention within the three months from date of such filing.
III. At anytime between the grant or reject of the patent the applicant must keep the
controller furnished with information within such period.
4) PROVISIONAL AND COMPLETE
SPECIFICATION
I. The application for a patent is accompanied by a provisional specification prior an
invention. Complete specification shall be filed within 12 months from the date of filing
provisional application if it is not filed application shall be deemed to be abandoned.
But if request is made to the controller and the prescribed fee is paid complete
specification may be filed at anytime after 12 months but within 15 months.
II. If then the application for a patent is accompanied by a complete specification and the
applicant requests at anytime within 12 months before the acceptance of specification
direct that such specification shall be treated as a provisional specification and should
be proceeded accordingly the controller may proceed that way.
III. When a complete specification has been filed and the applicant request at anytime
before the acceptance of complete specification to cancel the provisional specification
and post-date the application to date of filing of the complete specification the
controller may do that
*A provisional patent specification is a preliminary application before filing a usual patent. It explains the
invention in a broad manner but not completely. It is the document which may be filed before a Complete
Specification in the Office of the Controller of Patents pertaining to a prospective patent .
5) CONTENTS OF SPECIFICATIONS
I. Every specification whether it is provisional or complete shall: - Describe the invention,
Begin with the title indicating the subject matter to which the invention relates, Name
nationality and address of the applicant, Shall be signed and dated at the end by the
applicant or his agent.
II. If the controller requires drawings and models may be supplied in support of the
invention disclosed it should be deemed to form part of the specification and
specification shall be constructed accordingly.
III. Every complete specification shall
IV. Fully and particularly described the invention and its operation or use and the method
by which it is to be performed disclosed the best method of performing the invention
which is known to the applicant and for which he is entitled to claim protection and
claims or claims defining the scope of invention for which protection is claimed to be
accompanied by an abstract to provide technical information on the invention and if the
applicant mentions a biological material in this specification which may not be
described in such a way as to satisfy clause if such material is not available to public
the application shall be completed by depositing the material to international
depositary authority under the Budapest treaty and fulfilling the conditions.
v. If international application designating India title description drawing abstract and
claims filed with the application shall be taken as complete specification.
VI. A complete specification which is filed after provisional specification may include
claims in respect to recent developments or addition to the invention which was
described in the provisional 1 being developments or additions in respect to which the
applicant would be entitled to make a separate application for a patent.
6) PRIORITY DATES OF CLAIMS OF
A COMPLETE SPECIFICATION
Filing of application for patrons should be completed at earliest possible date and
should not be delayed until the invention is fully developed for commercial working.
Application filled with provisional specification disclosing the essence of the nature of
invention helps to register the priority by the applicant although patent application
accompanied with provisional application does not confer any legal patent rights to
application it is however a very important document established earliest ownership
of an invention.
There shall be a priority date for each claim of complete specification there a
complete specification is filed in pursuance offer single application it should be
accompanied by provisional specification
B. EXAMINATION OF APPLICATIONS
( PROSECUTION OF THE PATENT
APPLICATION)
1) Examination of application
2) Search for anticipation by previous publication and by prior claim
3) Consideration of report of examiner by controller
4) Power of controller
5) Time for putting application in order for acceptance
6) Acceptance of complete specification
7) Advertisement of acceptance of complete specification
8) Effect of acceptance of complete specification
 1) EXAMINATION OF APPLICATION
Patent application filed in the Patent and Trademark office are given serial numbers in
chronological sequence, the filling date is also part of identification of an application.
Complete Refer to the Submits to the controller within a
Examiner makes a
specification examiner by period of 18 months from the
report
controller date of reference

2) search for anticipation by previous publication and prior claim (prior art).
[what an examiner does] Investigates if it has been Investigates if there is any other claim
anticipated by publication Of any other complete specification
He reviews patent
before the date of filing of published on or after the date of
application for compliance
applicants complete applicants complete specification.
with formal requirements
specification.

When the complete specification

Investigate if it has been anticipated by is amended before it has been
publication in India or elsewhere in any
accepted the amended
document other than those mentioned in
the subsection before the date of filing
specification shall be examined
of applicants complete specification and investigated in like manner as
the original specification
3) consideration of report of examiner by controller

I. When the controller feels the report is adverse to the applicant or it requires any
amendment by the controller to ensure compliance with provisions of this act, before
proceeding to dispose the application he shall communicate the list of objections with the
applicant and hear the applicant within a period of one month from the date of
communication.
4) powers of controller
1. If he feels that the application does not comply with the act he made a great
demanded application or refuse to proceed with the application or require more
specification or drawing for his satisfaction.
2. He may order for division of application if he feels that it relates to more than one
invention.
3. He may order the application to be postdated but no application shall be postdated to
a date later than six months from the actual date.
4. In case of anticipation means the invention is too similar to the previous invention to be
considered novel- may refuse to accept unless the Comptroller is satisfied with the
amendment.
 5) In case of a potential infringement, a reference to that patent shall be inserted in
the applicants complete specification by the way of notice to public. If
▪ if in the proceedings before the court or the controller it does prove that that the
claim is not infringed by any working of the applicant’s invention the controller may
delete the reference to other patent and proceed.
6) Make orders regarding substitution of applicant.
▪ When applicant or one of the applicant makes a claim in written agreement that if
the patent were then granted it be entitled to the interest of the new applicant or to
an undivided share of the patent and the further provisions shall precede in the
name of claimant or in the names of the claimants.
(7) Time for putting application in order for acceptance.
When the controller forwards the first statement of objection to the applicant the
applicant in a period 15 months shall meet the amendment up to the satisfaction of
the controller however this total. Can be extended up to 18 months if the applicant
makes a request to the court.
8) acceptance of complete specification
(9) advertisement of acceptance of complete specification in the Official Gazette
10) effect of acceptance of complete specification.
C. EXCLUSIVE MARKETING RIGHTS
1) Application for grant of a patent shall be made to the controller in form 1
algorithm with the fees as in first schedule
2) Application for grant of exclusive right
3) Controller to refer application
4) Report of examiner
5) Grant of exclusive rights
6) Compulsory licenses
 Applicant

with fees

In form
along
27
Makes a report and
Controller passes the report to
controller within 90 days
period from the date of
such reference

Official Gazette
and authority of Examiner Controller
central
government
Approved Rejected
Grant exclusive rights
Compulsory licenses
There is a provision for compulsory licensing of an article substance covered under
the exclusive marketing rights if the government finds that it is essential that it should
also be sold by a person other than the holder of exclusive marketing rights.
An application to the controller for an order under section 84,89 and 97 shall be in
form 18 or 20.
The central government may by notification in the Official Gazette and at anytime
after the exclusive right to the sale or distribution of the substance or article has been
granted direct in the public interest and for reasons to be stated that the said article
or substance shall be sold at a price determined by an authority specified by it in this
behalf.
At anytime after the expiration of three years from the date of sealing of patent any
person interested may make an application to the controller.
D. OPPOSITION TO GRANT OF
PATENT
1) Opposition to grant of patent
2) Diffusion of patent without opposition
3) Mention of inventor as such in patent
1) opposition to grant of patent
Notice of opposition must be filled within four months of notification in The Gazette
Extension of one month is available but must be applied for before expiry of initial
per month.
There are specific grounds that can be raised in an opposition proceeding.
2) refusal of patent without opposition
3) mention of invented as such in patent
E. PROVISIONS FOR SECRECY
1) Secrecy directions relating to invention relevant for defence purpose
2) secrecy directions to be periodically reviewed
3) Consequences of secrecy direction
4) revocation of secrecy direction and extension of time
5) finality of orders of Comptroller and central government
1. Secrecy direction relating to invention relevant for defense purposes
when the controller feels that the invention is one of a class notified to him by the
central government as 11 for defense purposes he may give directions for prohibiting
or restricting the publication of information with respect to invention or prohibit or
restrict the communication of such information to any person or class of persons per
person specified in their direction.
He should consider whether the publication of the invention would be prejudicial to
the defence of India.
*harmful to someone or something; detrimental.
2. Secrecy directions to be periodically reviewed at intervals not exceeding
12 months.
3) consequence of secrecy direction
Provided that the application may subject to directions, controller may proceed up to
the stage of acceptance of complete specification but the acceptance shall not be
advertised nor the specification published and no patent shall be granted in
pursuance of the application.
If during the continuance in force of direction any use of the invention is made by or
on behalf or to the order of the government the provisions shall apply in relation to
that they use as if the patent had been granted for the invention.
If it appears to the central government that the applicant for patent has suffered
hardship by any reason of continuance in force of the direction the central
government may make to him such payment by way of solatium as appears to the
central government to be reasonable having regard to the nobility and utility of the
invention and the purpose for which it is designated and to any other relevant
circumstances.
4) revocation of secrecy direction and extension of time
5) finality of orders of Comptroller and central government
All orders of the controller giving direction as to secrecy as well as all orders of the
central government under this chapter shall be final and shall not be called in
question in any court on any ground whatsoever.
 F. GRANT AND CEILING OF PATENT
AND RIGHTS CONFERRED THEREBY
1) Grant and ceiling of patent
2) amendment of patent graded to deceased applicant
3) date of patent
4) form extent and effect of patent
5) conditions for the grant of patent
6) rights of patentees
7) rights of Co owners of patent
8) power of controller to give direction to Co owners
9) grant of patent to true and first inventor where it has been obtained by another in fraud
of him
10) term of patent
 Application has not Application has not
Complete
been opposed and been refused by
specification has controller by virtue of
time for filling a
been accepted any power vested in
position has expired
him by this act

Patent shall be granted to applicant , in case

of joint application granted to applicants
jointly and the controller shall cost the patent
to be sealed with the seal of the Patent
Office and the date on which the patent is
sealed and shall be entered in the register
 After the patent has been Before the patent was sealed the
sealed if the controller is controller may amend the patent by
satisfied that the person substituting the name for that person the
whom the patent was name of person to whom the patent ought
granted has died to have been granted and patent shall be
deemed always to have had effect

3) Date of patent

▪▪ every patent shall be dated as the date on which the complete specification was filed
date of every patent shall be entered in the register.

4) Some extend an effect of patent

▪▪ Every patent shall be in the form specified in schedule 3 and shall have effect throughout India.
A patent shall be granted for one invention only
5) Conditions for the grant of patent
the grant of patent under this act shall be subjected to condition that any machine or
apparatus for which the patent is granted is made by using the process in respect to
which the patent is granted may be imported or made by or on behalf of the
government for the purpose merely for its own use.
In case of a patent in respect to any medicine or drug the medicine or drug may be
imported by the government for the purpose merely for its own use or for the
distribution in any dispensary hospital or other government medical institution
maintained by or on behalf of the government or any other dispensary hospital or
other medical institution which the central government may having regard to the
public service that such dispensary hospital or medical institution renders specified in
this behalf by notification in the Official Gazette.
6) Rights of patentees
A patent granted shall confer on the patent is exclusive right by himself his agents or
licenses to make use exercise sell or distribute the invention in India.
7) Rights of Co owners of patent
Entitled to an equal undivided share in the patent.
Each of those persons shall be entitled by himself or his agents to make use exercise
and sell the patented invention for his own benefit without accounting to the other
person or persons.
A license under the patent shall not be granted and a share in the patent shall not
be assigned by one of such persons except with the consent of the other person or
persons.
When a patented article is sold by one or two or more person registered as grantee
or proprietor of the patent the purchaser and any person claiming through him shall
be entitled to deal with the article in the same manner as if the article had been sold
by a sole patentee.
 8) Power off controller to give directions to owners
▪ When two or more persons are registered as grantee or proprietor of a patent the
controller may upon application made to him in prescribed manner by any of these
person gives the directions in accordance with application as to the sale or lease of
the patent or interest there in the grant of license under the patent or exercise of any
right under section 50F7 in relation with their two as he things fit.
▪ If any person registered as grantor proprietor of a patient the controller may upon
application made to him in prescribed manner by any of such person give directions
empowering any person to execute that instrument or to do that thing in the name
and on behalf of the person in default.
▪ No direction shall be given under this section so as to affect the mutual rights or
obligations of trustees or of the legal representative of a deceased person out of
their rights or obligation as such or which is inconsistent with the terms of any
agreement between the persons registered as grantee or proprietor of the patent.
 9) Grant of patent to true and first inventor where it has been
obtained by another in fraud of him.
If there was a fraud instead of revoking the patent complete specification is to be amended
by exclusion of a claim of the fraud.
10) Term of patent
▪ Every patent granted under this act shall:
▪ In respect of an invention claiming the method or process of manufacture of a substance
where the substance is intended for use or is capable of being used as food or as a
medicine or drug be five years from the date of sealing of patent or seven years from the
date of patent whichever period Is shorter.
▪ According to patent act 2002, 20 years from the date of filing a patent shall cease to have
effect notwithstanding any therein or in this act on expiration of the period prescribed for
the payment of any renewal fee if that fee is not paid within the prescribed. Or within the
period has extended under this section the period prescribed for the patent of any renewal
fee shall be extended to such. Not being more than six months longer than the prescribed.
As may be specified in a request made to the controller if the request is made on the
renewal fee and the prescribed additional fee paid before expiration of the period so
specified.
G. PATENTS OF ADDITION
Patents of addition
i. subject to the provisions contained in this section, where an application is made
for a patent in respect of any improvement in or modification of an invention
described or disclosed.
ii. a patent shall not be granted as a patent of addition unless the date of filing of
the complete specification was the same as or later than the date of filing of the
complete specification in respect of the main invention.
iii. a patent of addition shall not be sealed before the sealing of the patent for the
main invention.
TERMS OF PATENTS OF ADDITION

(i) a patent of addition shall not be granted for a term equal to that of the patent
for the main invention, or so much thereof as has not expired and shall remain in
force during that term or until the previous cesser of the patent for the main invention.
(ii) no renewal fee shall be payable in respect of a patent of addition.
VALIDITY OF PATENTS OF ADDITION
(i) the grant of a patent of addition shall not be refused on the ground that the
invention claimed in the complete specification does not involve any inventive step
having regard to any publication.
(H) AMENDMENT OF APPLICATION
AND SPECIFICATIONS
1. Amendment of application and specification before controller
2. Amendment of specification before high court
3. Supplementary provisions as to amendment of application or
specification
I. RESTORATION OF LAPSED PATENTS
(i) Application for restoration of lapsed patents
where a patent has ceased to have effect by reason of failure to pay any renewal fee
within the prescribed period, the patentee or his legal representative, with the leave of the
controller, one or more of them without joining the others may within one year from the date
on which the patent ceased to have effect, make an application for the restoration of the
patent.
(ii) Procedure for disposal of application for restoration of
lapsed patents-
if after hearing the applicant, the controller is satisfied that the failure to pay the renewal
fee was unintentional or no undue delay in the making of application, he shall advertise the
application in a prescribed manner, and within the prescribed period any person interested
may give notice to the controller of opposition .
J. SURRENDER AND REVOCATION
OF PATENTS
1. SURRENDER OF PATENTS-
A patentee may, at any time by giving notice in the prescribed (Form-33)
manner to the controller, offer to surrender his patent.
(i) Where such an offer is made, the controller shall advertise the offer in
the prescribed (official-Gazette)Manner, and also notify every person
other than the patentee whose name appears in the register as having an
interest in the patent.(iii) Any person interested may, within the prescribed
period (3 months) after such advertisement, give notice to the controller of
opposition to the surrender and where any such notice is given the
controller shall notify the patentee.(iv) If the controller is satisfied after
hearing the patentee and any opponent, that the patent may properly be
surrenderal, he may accept the offer and, by order, revoke patent.
2. REVOCATION OF PATENTS

3. REVOCATION OF PATENT OR AMENDMENT OF

COMPLETE SPECIFICATION ON THE DIRECTIONS FROM
CENTRAL
GOVERNMENT IN CASES RELATING TO ATOMIC
ENERGY

4. REVOKATION OF PATENT IN PUBLIC INTEREST

K. REGISTER OF PATENT
1. Register of patents and particulars to be entered
2. Assignments not to be valid unless in writing and registered
3. Registration of assignments
4. Power of registered grantee or proprietor to deal with patent-
the person or persons registered as grantee or proprietor of a patent shall have
power to assign, grant licenses under, or otherwise deal with, the patent and to
give effectual receipts for any consideration for any such assignment, License or
dealing.
5. RECTIFICATION OF REGISTER BY
HIGH COURT
6. REGISTER TO BE OPEN FOR
INSPECTION
THANKYOU