Patents Act, 1970

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