Patents
Act, 1970
K G Krishnamurthy, Asst.Professor, MKLC, Hassan
What
is a Patent?
An
exclusive right granted by State to an inventor or his assignee for a limited
period of time in exchange for a public disclosure of an invention
A
legal document
It
is the right to prevent others from making using, selling or distributing the
patented invention without permission
Granted
to anyone who invents/ discovers any new and useful process, machine, article
of manufacture or composition of matter, or any new and useful improvement
thereof.
Goal:
to encourage the inventors to advance
the state of technology
Invention?- a new product or
process involving an inventive step and capable of industrial application
New invention ? – any invention/
technology which has not been anticipated by publication in any document or
used in any country or elsewhere in the world before the date of filing of
patent application with complete specification
-The
subject matter has not fallen in public domain in any form( written, oral or
through use)
What is patentable?
An
invention which meets three tests-
a)
it must be novel- means the invention
did not previously exist
b) it must be non-obvious – means the invention must be a significant improvement to the existing
technology
c) it must be useful –
(not for illegal/immoral purposes)
Acc.
to European Patent
Convention patents are only granted for inventions which are capable of
industrial application (including agriculture), which are new and which involve
an inventive step.
Acc.
to Indian law, patent
can be obtained only for an invention which is new and useful.
It must relate to a machine, article or
substance produced by manufacture or the process of manufacture of an article
It
may also obtained for an improvement of an article or of a process of
manufacture
Which is not
patentable?
a)
Those which are not inventions (S.3)
b)
Invention relating to atomic Energy (S.4)
Which are not
inventions
-Invention
which is frivolous
-Which is claimed
contrary to the well established natural laws
-The
primary or intended use or commercial exploitation which would be contrary to
public order or morality or which causes serious prejudice to human-being, animals or plant life
or health or to the environment
-Mere
discovery of a scientific principle or the formulation of or discovery of any
living thing or non-living substance occurring in nature
-Mere discovery of
a new form of a known substance which
does not result in enhancement of the known efficacy of the substance
-Mere
discovery of any new property or new use for a known substance
- a substance
obtained by a mere admixture resulting only in the aggregation of the
properties of the components or a process for producing such substance
-mere
arrangement/ re-arrangement or duplication of known devices each functioning
independently of one another in a known way
-a method of
agriculture/ horticulture
-any
process for the medical, surgical, curative, diagnostic, therapeutic or other
treatment of human beings or any process for treatment of animals to render
them free of desease or to increase their
economic value or their products
-plants or animals
in whole or in part (other than micro-organisms)
Example: Clones and new variety of plants are not patentable.
But process / method of preparing Genetically Modified Organisms are patentable
subject matter.
-a mathematical or
business method or a computer programme or algorithms
-literary,
dramatic, musical or artistic work or any other aesthetic creations including
cinematographic works and television productions
- mere scheme or
rule or method of performing mental act or method of playing game
-
a presentation of information
-topography of
integrated circuits
-an
invention is a traditional knowledge or
duplication of properties of traditionally known component/s
3
KINDS OF PATENTS:
1.
Product Patent
2.
Process patent
3.
Patent of the addition
Various types of
Patent Applications in India
1.
Ordinary application
2.
Convention application
3.
PCT(Patent cooperation Treaty) international application
4.
PCT National phase application
5.
Application for Patent of addition
6.
Divisional Application
Application for
patents
Who can apply?
-Any
person claiming to be true and 1st
inventor
-any
person being assignee of the inventor
-the
legal representative of any deceased inventor who was entitled to file
application
Application by
alone or jointly with other person
-separate
application for each invention
-
in the prescribed format + fee
-accompanied with
provisional specifications ( within 12 months complete specification shall be
filed)
-
submitted in Patent Office
-
verification & scrutiny by Controller
Provisional and
complete specifications:
Provisional- allows applicant to get an early application
date
Contents:
-description of invention beginning with title indicating the
subject-matter
-drawings, if required, shall be supplied (deemed to be part of
specifications)
-if
required, supplemented by model or sample illustrating the
invention
Complete specification:
a. Title
b. Abstract
c. Written
Description
d. Drawings (where
necessary)
e. Sample or Model
(if required by the examiner)
f. Enablement and
Best Mode
g. Claims and
h. Deposit
(Micro-organisms)
-CS shall be
within 150 words and title shall be not more than 15 words
Priority Date:
Priority
date is the date of first filing allotted by the patent office to an
application.
If a provisional application is followed by a
complete application, the priority date shall be date of filing of the
provisional application.
If an Indian application is filed after a
foreign or PCT application, the priority date shall be the date of filing of
the foreign or PCT application.
If an application is divided into two
applications, the priority date shall be date of filing of the parent
application.
Priority date is
the date of reference used by the patent applicant/ office to determine the newness of the invention.
If the claimed invention is part of public
knowledge before the priority date, it will not be eligible for a patent.
Under
US Law, priority date is pushed back to the date of conception for determining
novelty and Non-obviousness.
Documents to be
submitted at the time of filing
The
following documents have to be submitted at the time of filing a patent
application:
Form
1 - Application for the grant of patent.
Form
2 - Provisional or Complete Specification.
Form
3 - Statement and undertaking by the applicant.
Form
5 - Declaration as to inventorship.
Form
26 - Authorization of patent agent or any other person.
Priority
document details have to be filed for a Convention application.
PUBLICATION
A
patent application will be published on expiry of eighteen months after the priority date.
It can be published earlier, if such a request
is made by the applicant.
The
application will not be published if directions are given for secrecy, until
the term of those directions expires.
It
will also not be published if the application is withdrawn three months before
publication date.
On publication,
specification including drawings and deposits shall be open for public
inspection.
The rights of the patentee start from the date
of publication but they cannot be enforced until after patent grant.
EXAMINATION
1. Request for
Examination
The
process of examination starts with a request for examination. The request has
to be made within 36 months from the date of
priority or filing.
However, if secrecy directions have been given for the application, the request can be made six months after the directions are
revoked or thirty six months from the date of priority or filing, if that date
is later.
2. Examination
On
receiving the request, the controller shall direct the patent application to
the Examiner for examination.
To
start with, the examiner makes a formal examination by verifying the propriety and correctness of all
documents filed with the application.
Later, he verifies the patentability of the application.
The patentability analysis includes all patentability requirements.
.
After
confirming that the application falls within the scope of patentable subject matter, the examiner
conducts a prior art search to check if there is
prior art, which anticipates the invention claimed.
Prior
art search for anticipation includes search for anticipation by publication,
filing of complete specification, etc.
verifying the existence of inventive step,
Industrial application, and Enablement and Best mode.
The
examiner will give the examination report
within 1 month from the date of reference by controller and that term shall
not exceed three months.
If the examination report is adverse, the
controller sends a notice to the applicant and gives him an opportunity to
correct and if necessary an opportunity of hearing.
The
Controller may ask the applicant to amend the application in order to proceed
further.
If the applicant does not make such changes,
the application might be rejected.
The
Controller has the power to divide
the application, post date the application, substitute applicants and reject
the application.
An order of division
will be given if the application contains more than one invention and if it is
required to file separate applications for each invention.
The application might be post dated to a period of six
months if requested by the applicant.
Substitution of
inventors is generally done if
the inventor has been wrongfully mentioned or if a joint inventor has not been
mentioned in the application.
The controller has
the power to reject the application, if the applicant does not comply with his
requirements.
OPPOSITION
1.
Pre-grant Opposition
Any
person can file an opposition for grant of patent after the application has been
published.
Opposition
may be filed on any of the following grounds:
a.
Non compliance of patentability requirements.
b.
Non-disclosure or Wrongful disclosure of genetic resources or traditional
knowledge.
2. Post-grant Opposition
Any
person can file an opposition within
a period twelve months after the grant of a patent.
Grounds:
a.
Wrongful obtainment of the invention by the inventor.
b.
Publication of the claimed invention before the priority date.
c.
Sale or Import of the invention before the priority date.
d.
Public use or display of the invention.
e.
The invention doesn’t satisfy the patentability requirements.
f.
Disclosure of false information to patent office.
g.
Application for the invention is not filed within twelve months from the date
of convention application.
h.
Nondisclosure or wrongful disclosure of the biological source.
i. Invention is
anticipated by traditional knowledge.
Process of
Opposition
On
receiving a notice of opposition, the controller notifies the patentee,
then constitutes an Opposition board to deal
with the opposition.
The Opposition board decides the issues after
giving reasonable opportunity of hearing to both the parties.
The
Opposition board might invalidate the patent, require amendments or maintain
the status quo. If amendments are required, they have to be made within the
prescribed period in order to maintain the patent.
GRANT
If
the application satisfies all the requirements of the patent act, the
application is said to be in order for grant. An application in order for grant
shall be granted expeditiously. A granted patent shall be published in the
official gazette and shall be open for public inspection.
Every granted patent shall be given the filing
date.
The patent will be valid throughout India.
A granted patent gives the patent holder the
exclusive right to make, use, sell, offer for sale and import the product or
use the process. However, the government can make use of the patent for its own
purposes or for distributing an invention relating to medicine to hospitals and
dispensaries.
Furthermore, any person can make use of the
patent for experiment or education.
Assignments
A
patentee may assign the whole or any part of the patent rights to the whole of
India or any part thereof.
Three kinds of assignments: legal assignment,
equitable assignment and mortgages.
An
assignment of an existing patent is a legal assignment where the assignee may
enter his name as the patent owner.
A
certain share given to another person is called an equitable assignment and
a mortgage is when patent rights are wholly or
partly transferred to obtain money.
Licenses
A
patentee may, by a license, permit others to make, use, or exercise, the
invention which otherwise would not be allowed.
The license should be in writing and the terms
of which must be given in the application filed with the Controller.
A
license maybe given in express terms or implied from the circumstances. An
exclusive license excludes all other persons including the patentee from the
use of invention In a limited license the limitation may arise as to persons,
time, place, manufacture, use or sale.
STATUTORY
REMEDIES:
1.
COMPULSORY LICENSE
2.
LICENSE OF RIGHT
3.
RESTORATION OF PATENT
Compulsory
Licenses and Government use of inventions
On
failure to work a patent within three years from the date of its sealing, an
interested party may file petition for grant of a compulsory license
Under
certain circumstances like when reasonable requirements are not satisfied, a
very high royalty is quoted, when a patent cannot work without another related
patent or on notification by the Central government, the Controller can grant a license to
an interested person. (S.82)
The
Central or State government can use for a purpose of its own all patented
inventions or processes either with or without royalty.
LICENSE OF RIGHT (S.84)
Every patent for an invention relating to a
method or process for manufacture of substances intended for use, or capable of
being used, as food, medicines, or drugs, or relating to substances prepared or
produced by chemical process (including alloys, optical glass, semi-conductors
and inter-metallic compounds) shall be deemed to be endorsed "Licenses of Right" from the date of
expiry of three years from the date of sealing the patent.
Revocation of a
patent (S.86)
A
patent may be revoked by various modes, viz.,
- in the public interest by the Government or
relating to atomic energy by Controller.
-
for non-working.
-
noncompliance with the requirements for use of an invention or
-
on petition by a person interested on various specified grounds.
A
patentee may at any time offer to surrender his patent by giving notice to the
Controller, whom after hearing the parties may revoke the patent
Patent enforcement
and Infringement of patents
Infringement
of a patent is the violation of the exclusive rights of the patentee.
Determination
of infringement depends on the scope of exclusive rights of the patentee,
whether the infringer’s acts amount to making, using, selling or distributing a
product or using a method and if in fact the acts amount to an infringement.
The burden of proof is on the patent owner for proving infringement.
Defenses
The
defendant in a suit for infringement may plead one or more defenses. He can
claim the patent owner is not entitled to sue for infringement or deny any
infringement.
Any leave or license, express or implied, to
use the invention does not amount to infringement and where infringement is
invalid on certain grounds.
Acts
done in connection with government use, experiment, research, education and
falling within the scope of innocent infringement or done after failure to pay renewal fee or before the
date of amendment of the specification do not amount to infringement.
A defendant may also counter claim for
revocation of patent.
Remedies
Injunctions
act as a preventive relief to the patentees.
The
patent owner at the start of a trial can request for an interim injunction in
order to restrain the infringer from continuing the infringement to prevent
further losses.
Permanent injunction is given based on the
merits of the case at the end of the trial.
A
patent owner is entitled to the relief of damages as compensation to the
patentee and not punishment to the infringer.
The patent owner may also opt for the account
of profits where he has to prove use of invention and the amount of profit
derived from such illegal use.
ESTABLISHMENT
OF PATENT ADMINISTRATION IN INDIA
Hierarchy of Officers
in Patent office
Controller
General of Patents, Designs, Trademarks & GI
Examiners
of Patents & Designs
Assistant
Controller of Patents & Designs
Deputy
Controller of Patents & Designs
Joint
Controller of Patents & Designs
Senior
Joint Controller of Patents & Designs
