Patents- Intellectual Property
INTELLECTUAL PROPERTY
Intellectual property is the product or creation of the mind. It is different
from other properties in term that it is intangible. Hence it needs some
different way for its protection.
INTELLECTUAL PROPERTY RIGHTS
IPR is the body of law developed to protect the creative people who have
disclosed their invention for the benefit of mankind. This protects their
invention from being copied or imitated without their consent.
THE INDIAN PATENT ACT
In India the grant of patents is governed by the
patent Act 1970 and Rules 1972.
The patents granted under the act are operative in
the whole of India.
HISTORY
The Patent Law of 1856
The Patent and Designs Act, 1911.
The Patents Act, 1970 and Rules 1972
The Patent amendment act 2005
What is a patent ?
A patent is a grant from the government which
confers on the guarantee for a limited period of time
the exclusive privilege of making, selling and using
the invention for which a patent has been granted
Purpose of getting a patent
To enjoy the exclusive rights over the invention.
The patent is to ensure commercial returns to the
inventor for the time and money spend in generating
a new product.
What can be patented?
In order to be patentable , an invention must pass four
tests;
1. The invention must fall into one of the five statutory
classes: Processes, Machines , Manufactures
Compositions of matter, and New uses of any of the
above
2. The invention must be useful
3. The invention must be novel
4. The invention must be non obvious
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
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
Compulsory license to ensure availability of drugs
at reasonable prices
Provision to deal with public health emergency
Revocation of patent in public interest and also on
security considerations
Types Of Patents
Three types of patent are granted under the
provisions of the act, namely:
1. An Ordinary Patent
2. A Patent Of Addition
3. A Patent Of Convention
A second type of classification of patent is:
1. Product Patent
2. Process Patent
Patentable Inventions
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
NEW MEANS.
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
Inventive step means
A feature of an invention that
Involves technical advance as
compared to the existing knowledge..
Industrial application means
Invention is capable of being made or used in
any kind of industry.
Section 3 exclusions
Section 3(a)
Inventions contrary to well established natural
laws
Examples
Machine that gives more than 100% performance
Perpetual machine
Section 3(b)
Commercial exploitation or primary use of
inventions, which is
Contrary to
public order or
Morality
Examples
Gambling machine,
Device for house-breaking ,
Section 3(b)
Commercial exploitation or primary use of
inventions , which
Causes serious Prejudice to
health or
human, animal, plant life or
to the environment
Examples
Biological warfare material or device,
weapons of mass destruction
Terminator gene technology,
Embryonic stem cell
Non Patentable Inventions
Inventions falling within Section 20(1) of the
Atomic Energy Act, 1962 are not patentable
Eg: Inventions relating to compounds of Uranium,
Beryllium, Thorium, Plutonium, Radium,
Graphite, Lithium and more as notified by
Central Govt. from time to time.
The Term Of Patent :
In respect of a invention claming process of
manufacture of a substance intended to be used as food
or medicine ---- 5 yrs from the date of sealing or 7 yrs
from the date of patent whichever is shorter.
In case of any other invention ---- 14 yrs from the date
of patent.
Expiry Of A Patent
A patent can expire in the following ways:
1. The patent has lived its full term.
2. The patentee has failed to pay the renewal fee.
3. The validity of the patent has been successfully
challenged by an opponent by filing an opposition
either with the patent office or with the courts.
4. As soon as the patent expires, it pass to the general
public domain and now anybody can use it without
the permission of the original inventor
STAGES FROM FILING TO
GRANT OF A PATENT
Obtaining A Patent
File an application for patent
With one of the patent offices based on territorial
jurisdiction of the place of office or residence of
the applicant /agent
Pay the required fee
Information concerning application form and details
of fee available at www.ipindia.nic.in
Guidelines for applicants also available on this
website
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
Publication
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
Examination
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 FER
A period of 1 to 3 months is available to Examiner
to submit the report to the Controller
1 months time available to Controller to vet the
Examiners report
First Examination Report (FER) containing list 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
STAGES - FILING TO GRANT OF
PATENT
FILING OF APPLICATION
PROVNL. / COMPLETE
PUBLICATION OF APPLICATION PROMPTLY AFTER 18 MONTHS FROM P.D.
REQUEST FOR EXAMINATION WITHIN 48 MONTHS FROM F.D.
EXAMINATION-ISSUE OF FER 3rd Party Representation
ALL OBJECTIONS TO BE COMPLIED WITHIN 12
MONTHS
GRANT OF PATENT
OPPOSITION
WITHIN 12 MONTHS
Decision of
Controller
Appeal
Appellate Board Revocation/Amendment
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
Rights of a patentee
1. Right to exploit the patent.
The patentee has a right to prevent 3rd parties, from exploiting
the patented invention.
2. Right to grant license.
The patentee has a power to assign rights or grant license.
3. Right to surrender.
The patentee is given the right to surrender the patent by
giving notice in prescribed manner to the controller.
4. Right to sue for infringement.
A patentee is given the right to institute proceeding for
infringement of the patent in a district court .
