Patents: Fundamentals, filing
and granting procedures
Mohd Imran
Aligarh Muslim University,
Aligarh
Patents
● Protect inventions
● Inventions-Novel, Useful & Non-obvious
● Term of Protection-20 Years
● Product & Process patents-Indian Position
● Availability- National & International Protection
● Rights - Not absolute
● Tools of business
● The entire Mach 3 system of Gillette, protected by 35 patents, cost $35 billion just
to bring to market
[See Company Profile of Gillette
-[www.managementparadise.com/.../221340-companyprofile-gillette.html last visited
Subject Matter of Patent
Protection & TRIPS Obligations
Article 27: TRIPS Agreement :Patentable Subject Matter
1) Subject to the provisions of paragraphs 2 and 3, patents shall be
available for any inventions, whether products or processes, in all
fields of technology, provided that they are new, involve an
inventive step and are capable of industrial application.
Subject to paragraph 4 of Article 65, paragraph 8 of Article 70
and paragraph 3 of this Article, patents shall be available and
patent rights enjoyable without discrimination as to the place of
invention, the field of technology and whether products are
imported or locally produced.
Subject Matter of Patent
Protection & TRIPS Obligations
2) Members may exclude from patentability inventions, the prevention
within their territory of the commercial exploitation of which is necessary
to protect ordre public or morality, including to protect human, animal or
plant life or health or to avoid serious prejudice to the environment,
provided that such exclusion is not made merely because the
exploitation is prohibited by their law.
3) Members may also exclude from patentability:
(a) diagnostic, therapeutic and surgical methods for the treatment of
humans or animals;
(b) plants and animals other than micro-organisms, and essentially
biological processes for the production of plants or animals other
than non-biological and microbiological processes. However,
Members shall provide for the protection of plant varieties either by
patents or by an effective sui generis system or by any combination
thereof. The provisions of this subparagraph shall be reviewed four
years after the date of entry into force of the WTO Agreement.
Position under the Patents
Act,1970
● "invention" means a new product or process involving an
inventive step and capable of industrial application
[Sec.2(1)[(j)]
● "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 [Sec.2(1)(ja) ]
Position under the Patents
Act,1970
● "new invention" means any invention or technology which
has not been anticipated by publication in any document or
used in the country or elsewhere in the world before the date
of filing of patent application with complete specification, i.e.
the subject matter has not fallen in public domain or that it
does not form part of the state of the art [Sec.2(1)(l)]
● "patentee" means the person for the time being entered on
the register as the grantee or proprietor of the patent
[Sec.2(1)(p) ]
● "true and first inventor" does not include either the first
importer of an invention into India, or a person to whom an
invention is first communicated from outside India
[Sec.2(1)(y) ]
Inventions Not
Patentable
•Sec.3. What are not inventions?
•Frivolous inventions, those obviously contrary to well established natural
laws, contrary to public order or morality or which causes serious prejudice
to human, animal or plant life or health or to the environment, 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, a
method of agriculture or horticulture, 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, 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; a
mathematical or business method or a computer program per se or
algorithms etc.
•Sec.4. Inventions relating to atomic energy not patentable
•Almost similar to Art.27(2) & (3) of TRIPS
Law and Regulations
• Pantent Act, 1970 • Patent Rules, 2003
• Amended in 1999 • Amended in 2005
• Amended in 2002 • Amended in 2006
• Amended in 2005 • Amended in 2012
• Amended in 2013
• Amended in 2014
• Amended in 2016
• Amended in 2018
• Amended in 2020
• Amended in 2021
Legislative Measures
-Patents
l From 1.1.1995
•Mail-Box for pharmaceutical and agrochemicals products
•Exclusive Marketing Rights
l From 1.1.2000
•Patent term increased to 20 years
•Definition of invention – inclusion of inventive step
•Reversal of burden of proof – on the infringer
•Mandatory compulsory licence provision for food, drugs and chemicals removed (License
of Right)
•Right of patentee (importation also included)
l From 1.1.2005
l Product patents for food, chemical and pharmaceutical We have met our
international commitments
Patent Law – Salient
Features
● Both product and process patent provided
● Term of patent – 20 years
● Examination on request
● Both pre-grant and post-grant opposition
● Fast track mechanism for disposal of appeals - IPAB
● Provision for protection of bio-diversity and traditional
knowledge
● Publication of applications after 18 months with facility for
early publication
● Substantially reduced time-lines
Safeguards in the patent law
● Section 3(d) -restricts patenting of a range of incremental drug
claims, is among the most prominent examples of an
anti-evergreening provision built into a developing country's
postTRIPS patent laws. (Novartis Judgment,2012)
● Compulsory license to ensure availability of drugs at reasonable
prices (NATCo v.Bayer)
● Provision to deal with public - Health Health-
Emergency - Extreme Urgency (Sec.92)
● Revocation of patent in public interest and also on security
considerations
● Secrecy Directions
General Principles applicable to
working of patented inventions
● (a) that patents are granted to encourage inventions and to secure
that the inventions are worked in India on a commercial scale and
to the fullest extent that is reasonably practicable without undue
delay;
● (b) that they are not granted merely to enable patentees to enjoy a
monopoly for the importation of the patented article;
● (c) that the protection and enforcement of patent rights contribute
to the promotion of technological innovation and to the transfer and
dissemination of technology, to the mutual advantage of producers
and users of technological knowledge and in a manner conducive
to social and economic welfare, and to a balance of rights and
obligations;
General principles applicable to
working of patented inventions (S.83)
(d) that patents granted do not impede protection of public health and
nutrition and should act as instrument to promote public interest
specially in sectors of vital importance for socio-economic and
technological development of India;
(e) that patents granted do not in any way prohibit Central Government
in taking measures to protect public health;
(f) that the patent right is not abused by the patentee or person
deriving title or interest on patent from the patentee, and the
patentee or a person deriving title or interest on patent from the
patentee does not resort to practices which unreasonably restrain
trade or adversely affect the international transfer of technology;
and
(g) that patents are granted to make the benefit of the patented
invention available at reasonably affordable prices to the public.
Scope of Patentability Under
The PatentsUnder
Scope of Patentability Act the Patents
Invention means a new product or process involving an inventive step
Act [Sec.2(1)(J)]
and capable of industrial application
Invention must
● relates to a Process or Product or both
● be new (Novel)
● involves an inventive step
● be Capable of industrial application
● not fall under Section 3 and 4
Invention must not be
Published in India or elsewhere
In prior public knowledge or prior public use with in India
Claimed before in any specification in India
Filing of Application
12M
Complete Spec Provisional Spec
Pre Grant Opposition
Publication (18M)
Stages from filing
(anytime before grant)
Request for Exam (48M)
to grant of a
Examination Report
patent
12M
Y Objections N Refused
Complied?
Grant of Patent
12M Post Grant Opposition
Appeal
Controller Decision
F A
?
Grant Revoked IPAB
Formality Check
● An Examiner checks the formal requirements
before accepting the application and the fee – this
is done immediately
● Issue of application number and the cash receipt –
this is done the same day
● In case of receipt of application by post, cash
receipt, application number is sent by post within
2-3 days
Publicatio
n
Application is kept secret for a period of 18 months from
the date of filing
•In 19th month, the application is published in the official
journal – this journal is made available on the website
weekly
•Applicant has an option to get his application published
before 18 months also
•In that case, application is published within one month of
the request
Request for
Examination
● Application is examined on request
● Request for examination can be made either by the
applicant or by a third party
● A period of 48 months, from the date of filing, is
available for making request for examination
Examinatio
n
● Application is sent to an Examiner within 1
month from the date of request for
examination
● Examiner undertakes examination w.r.t.
● whether the claimed invention is not prohibited
for grant of patent
● whether the invention meets the criteria of
patentability
Issue of First Examination Report (FER)
● A period of 1 to 3 months is available to
Examiner to submit the report to the
Controller
● 1 month’s time available to Controller to vet the
Examiner’s report
● FER containing gist of the objections is issued
within 6 months from the date of filing of request
Response from the applicant
● 12 months’ time, from the date of
issue of FER, is available to the
applicant to meet the objections
● If objections are met, grant of patent is
approved by the Controller – within a
period of 1 month
Pre-grant opposition
● After publication, an opposition can
be filed within a period of 6 months
● Opportunity of hearing the opponent
is also available
Examination of Pre-grant
Opposition
● Opposition (documents) is sent to
the applicant
● A period of 3 months is allowed for
receipt of response
Consideration of Pre-grant
Opposition
● After examining the opposition and the
submissions made during the hearing,
Controller may
● Either reject the opposition and grant the patent
● Or accept the opposition and modify/reject the
patent application
● This is to be done within a period of 1
month from the date of completion of
opposition proceedings
Grant of a
patent
* A certificate of patent is issued within 7 days
* Grant of patent is published in the official journal ●
More than 2 lakhs Patent Applications are pending at
the Indian Patent Office [by the end of July 2015]
● Based on statistics provided, Delhi patent office tops
the list with 83,291 pending requests of
examinations. Mumbai patent office is having the
least number of pending cases at 28,100. Chennai
and Kolkata patent offices are the second and third
with 74,390 and 40,558 pending cases for disposal.
Renewal
Fee
● To be paid within 3+6 months from date of recording
in the register [Sec 142 (4) ]
● No fee for 1st and 2nd year
● Renewal fee, on yearly basis, is required to be paid
for 3rd to 20th for keeping the patent in force
● Delay upto six months from due date permissible on
payment of fee for extension of time
● Patent lapses if renewal fee is not paid within the
prescribed period
Sources of Patent Information system
in India
•Office of the Controller General of Patents, Designs & Trade Marks,
Boudhik Sampada Bhavan, Near Antop Hill Post
Office,S.M.Road,Antop Hill, Mumbai – 400 037 Phone: (91)(22)
24123311, Fax : (91)(22) 24123322 E-mail: cgpdtm@nic.in
•National Informatics Center, Patent & Info..Division,A Block, GO
Complex,Lodhi Road, New Delhi-110003
•Patent Mgmt. Dvsn,CSIR,14,Sansad Vihar Marg, Spl. Institutional Area, New Delhi-110067
•National Chemical Laboratory,NICHEM/NCL,Pune-411 008
National Research&Dev.Council(NRDC),20-22,Zamroodhpur,Kailash Colony, New Delhi-110048
•Patent Information System (PIS),CGO Complex, C Block, Seminary
Hills,Nagpur-440006
Website: www.ipindia.nic.in
11/21/2016 www.patentoffice.nic.in
Challenges to the Indian Patent System
•Issues in Patent Administration
•Compulsory Licences
l Patentability Criteria
•Patent validity- As per the provision of section 13(4) of
the Patents act, the grant of patents by the patent
authority does not confirm the validity of a patent and
as such no liabilities are incurred by the central
government or any agencies thereof
•Petty Patents or Utility Model of Patents
•Awareness and capacity of stakeholders
•Academic patents
QUESTIONS?
For further information pl. contact at
E-mail: imrankhan2085@gmail.com
