UNIT – 2

Concept of Patent,
Process of obtaining patent,

Application, Examination and Grant of Patent,

Rights and Obligations of Patent,

Transfer of Patent Rights,
Infringement of Patent Rights

Concept of Patent-
 A patent is an exclusive right granted by the Government to the inventor to exclude others to
use, make and sell an invention is a specific period of time.
 A patent is also available for improvement in their previous Invention
 In modern terms, the patent is usually referred to as the right granted to an inventor for his
Invention of any new, useful, non-obvious process, machine, article of manufacture, or
composition of matter.
 The word “patent” is referred from a Latin term “patere” which means “to lay open,” i.e. to
make available for public inspection.
 There are three basic tests for any invention to be patentable:
 Firstly, the invention must be novel, meaning thereby that the Invention must not be in
existence.
 Secondly, the Invention must be non- obvious, i.e. the Invention must be a significant
improvement to the previous one; mere change in technology will not give the right of the
patent to the inventor.
 Thirdly, the invention must be useful in a bonafide manner, meaning thereby that the Invention
must not be solely used in any illegal work and is useful to the world in a bonafide manner.
 n invention considered as new if, on the date of filing the application, any such invention is
not known to the public in any form, i.e. oral, writing, or any other form.
 Anything shall not be termed as inventive if such a thing is already known to the public
domain.
 limited term of 20 years, which is counted from the date of filing of the patent
application.
 patent is a territorial right.
 Thus it can only be applied in the country where it has been granted.
 The Patent Cooperation Treaty (PCT) provides a way to file an international patent
application in which a patent can be filed through a single patent application in a
large number of countries.
 Under the Indian patent law, a patent can be obtained only for an invention which is new and
useful.
 invention must relate to the machine, article or substance produced by a manufacturer, or
the process of manufacture of an article
 In respect to medicine or drug and certain classes of chemicals, no patent is granted for the
substance itself even if it is new, but the process of manufacturing and substance is
patentable.
 History of Patent
 first step of the patent in India was Act VI of 1856
 main objective of the legislation was to encourage the respective inventions of new and
useful manufactures and to induce inventors to reveal their inventions and make available for
public.
 Act was repealed by Act IX of 1857
 The Indian Patent and Design Act, 1911 repealed all previous acts
 Patents Act 1970, along with the Patent Rules 1972, came into force on 20 April 1972,
replacing the Indian Patent and Design Act 1911.
 The Patents Act, 1970 was amended by the Patents (Amendment) Act, 2005 regarding
extending product patents in all areas of technology including food, medicine, chemicals and
microorganisms

What can be patented?

 Sections 3 and 4 of the Indian Patents Act, 1970 clearly mentioned the exclusions regarding
what can be patented in India.

 Patent subject:
 The most important consideration is to determine whether the Invention relates to a patent
subject matter. Sections 3 and 4 of the Patents Act list non-patentable subject matter. Unless
the Invention comes under any provision of Section 3 or 4, it means that it consists of a subject
for a patent.
 Novelty:
 Innovation is an important criterion in determining the patent potential of an invention.
Under Section 2(l) of the Patent Act, a novelty or new Invention is defined as “no invention or
technology published in any document before the date of filing of a patent application,
anywhere in the country or the world”. The complete specification, that is, the subject matter
has not fallen into the public domain or is not part of state of the art”.
 the novelty requirement basically states that an invention that should never have been
published in the public domain. It must be the newest which have no same or similar prior
arts.

 Inventive steps or non-clarity:

 Under Section 2(ja) of the Patents Act, an inventive step is defined as “the characteristic of an
invention that involves technological advancement or is of economic importance or both, as
compared to existing knowledge, and invention not obvious to a person skilled in the art.”
 This means that the invention should not be obvious to a person skilled in the same field where
the invention is concerned. It should not be inventive and obvious for a person skilled in the
same field.
 Capable of industrial application:
 Industrial applicability is defined in Section 2 (ac) of the Patents Act as “the invention is capable
of being made or used in an industry”. This basically means that the Invention cannot exist in
the abstract. It must be capable of being applied in any industry, which means that it must
have practical utility in respect of patent.

 Right to exploit patent- exclusive right to make use, exercise, sell or distribute the
patented article or substance in India, or to use or exercise the method or process if the
patent is for a person. The patentee’s rights are exercisable only during the term of the
patent.
  Right to grant license- has the discretion to transfer rights or grant licenses or enter into
some other arrangement for a consideration. A license or an assignment must be in writing
and registered with the Controller of Patents, for it to be legitimate and valid.
 Right to Surrender- has the right to surrender his patent, but before accepting the offer of
surrender, a notice of surrender is given to persons whose name is entered in the register as
having an interest in the patent and their objections, if any, considered.
 Right to sue for infringement- he patentee has a right to institute proceedings for
infringement of the patent in a District Court having jurisdiction to try the suit.

Obligations of patentee
 Government use of patents: may be used or even acquired by the Government, for its use
only; it is to be understood that the Government may also restrict or prohibit the usage of
the patent under specific circumstances.
 Compulsory licenses: the patent is not worked satisfactorily to meet the reasonable
requirements of the public, at a reasonable price, the Controller may grant compulsory
licenses to any applicant to work the patent.
 Revocation of patent: A patent may be revoked in cases where there has been no work or
unsatisfactory result to the demand of the public in respect of the patented invention.
 Invention for defence purposes: Such patents may be subject to certain secrecy
provisions, i.e. publication of the Invention may be restricted or prohibited by directions of
Controller.
 Restored Patents: Once lapsed, a patent may be restored, provided that few limitations are
imposed on the right of the patentee. When the infringement was made between the period
of the date of infringement and the date of the advertisement of the application for
reinstatement, the patent has no authority to take action for infringement.

Procedure of Patent
 Step 1: Write about inventions (idea or concept) with each and every detail.
Collect all information about your Invention such as:

1. Field of Invention
2. What does the Invention describe
3. How does it work
4. Benefits of Invention
If you worked on the Invention and during the research and development phase, you should have
some call lab records which are duly signed with the date by you and the concerned authority.

 Step 2: It must involve a diagram, drawing and sketch explains the Invention
Drawings and drawings should be designed so that the visual work can be better explained with the
invention work. They play an important role in patent applications.

 Step 3: To check whether the Invention is patentable subject or not.

Not all inventions can be patentable, as per the Indian Patent Act there are some inventions which
have not been declared patentable (inventions are not patentable).
  Step 4: Patent Discovery
The next step will be to find out if your Invention meets all patent criteria as per the Indian Patent
Act-

1. The invention must be novel.

2. The Invention must be non- obvious.
3. The Invention must have industrial applications.

 Step 5: File Patent Application

If you are at a very early stage in research and development for your Invention, then you can go for
a provisional application. It offers the following benefits:

1. Filing date.
2. 12 months time for filing full specification.
3. Lesser cost.
After filing a provisional application, you secure the filing date, which is very important in the patent
world. You get 12 months to come up with the complete specification; your patent application will be
removed at the end of 12 months.

When you have completed the required documents and your research work is at a level where you
can have prototypes and experimental results to prove your inventive move; you can file the
complete specification with the patent application.

Filing the provisional specification is an optional step if you are in the stage where you have complete
knowledge about your Invention you can go straight to the full specification.

 Step 6: Publication of the application

Upon filing the complete specification along with the application for the patent, the application is
published 18 months after the first filing.

If you do not wish to wait until the expiration of 18 months from the filing date to publish your patent
application, an initial publication request may be made with the prescribed fee. The patent application
is usually published early as a one-month form request.

 Step 7: Request for Examination

The patent application is scrutinized only after receiving a request for an RFE examination. After
receiving this request, the Controller gives your patent application to a patent examiner who
examines the patent application such as the various patent eligibility criteria:

The examiner makes the first examination report of the patent application upon a review for the
above conditions. This is called patent prosecution. Everything that happens for a patent application
before the grant of a patent is usually called patent prosecution.

The first examination report submitted to the Controller by the examiner usually includes prior art
(existing documents prior to the filing date) that are similar to the claimed invention and is also
reported to the patent applicant.
  Step 8: Answer the objections
Most patent applicants will receive some type of objections based on the examination report. The
best thing is to analyze the examination report with the patent professional (patent agent) and react
to the objections in the examination report.

This is an opportunity for an investor to communicate his novelty over the prior art in examination
reports. Inventors and patent agents create and send a test response that tries to prove that their
Invention is indeed patentable and meets all patent criteria.

 Step 9: clearance of objections

The Controller and the patent applicant is connected for ensuring that all objections raised regarding
the invention or application is resolved and the inventor has a fair chance to prove his point and
establish novelty and inventive steps on other existing arts.

Upon receiving a patent application in order for grant, it is the first grant for a patent applicant.

 Step 10:
Once all patent requirements are met, the application will be placed for the grant. The grant of a
patent is notified in the Patent Journal, which is published periodically.

Transfer of Patent Rights

 There are three main ways in which a patent can be transferred from one person (the patentee) to another: by granting
a license, by assignment, or by transmission.

 A patent license is permission granted by the patentee to another person or company to make, use, or sell the patented
invention

Infringement of intellectual property

 infringement of intellectual property rights which has an edge over civil remedy. Further, Criminal Remedies are
been also excreted into equal rights.

At the end it sustains the very principal of rule of that the law eventually protects the rights and provides equal
remedy for the presentation of the same and hence the welfare state is achieved. IP laws in India are governed
and protected under the Patents Act, 1970; Trademarks Act, 1999; Copyrights Act, 1957; Designs Act, 2001 etc.
Civil and Criminal remedies mentioned under these acts are of utmost importance for the IP rights enforcement.

In this context, the principal function of the judiciary is to provide legal remedies against infringement of personal
and property rights of persons. Infringement of intellectual property rights is considered as tortious invasion of
property. The courts in India have the power to grant reliefs in cases pertaining to the violation and/or
infringement of intellectual property rights.