05/15/13 1PATENTS ACT 1970PATENTS ACT 1970PATENT- DEFINITIONExclusive right for being the true and first inventor of aproduct or process, granted by the govt. for a limitedperiod, to exclude others from making, using, sellingor importing the patented product or process withouthis consent, in exchange of full disclosure of hisinvention .• Term- 20 years from the Date of Filing(S.53)
05/15/13 2INVENTION- DefinitionINVENTION- DefinitionSec. 2(1)(j): ‘Invention’ means a new product orprocess involving an inventive step & capableof industrial application –1. Process, method or manner of manufacture,2. Machine, apparatus or other article,3. Substance produced by manufacture,And includes any new & useful improvement ofany of them.
05/15/13 3REQUIREMENTS OF INVENTIONREQUIREMENTS OF INVENTION– NEW: that no other inventor has obtained a patent for the sameinvention.– NON-OBVIOUS that the subject matter of an invention was notobvious at the time the invention was made to a person having ordinaryskill in the art to which the said subject matter pertains.– USEFUL :that the machine, product, or process is one that can beused in industry or commerce. Novelty Non-Obviousness (an inventive step) Utility (Capable of industrial application)–
05/15/13 4NOT INVENTIONS (S.3)NOT INVENTIONS (S.3):1. An invention which is frivolous, or claims anything contrary toexisting natural laws.2. An invention whose use would be contrary to public order or morality,or which will be prejudicial to health or environment3. Discovery of a scientific principle or the formulation of an abstracttheory.4. Discovery of any living thing or non living substance occurring innature5. Discovery of a new property or use of a known substance, unless itresults in a new product6. A substance obtained by mere admixture7. Arrangement or rearrangement or duplication of known devices .
05/15/13 5NOT INVENTIONS (S.3)(contd.)NOT INVENTIONS (S.3)(contd.)8. A method of agriculture or horticulture, seeds, etc.9. Any process of medicinal, surgical application on human beings oranimals to render them free of disease.10. Plants, seeds, animals and biological processes for production orpropagation of plants and animals11. Computer program, per se, other than its application to industry orcombination with hardware (embedded software)12. A mathematical method or a business method13. Literary, dramatic, musical, artistic, aesthetic creation includingcinematic work or television production14. A method of playing game, presentation of information15. Integrated circuits16. Traditional knowledge, or aggregation of traditionally knowncomponents17. Atomic energy• .
05/15/13 6Process of Grant of PatentProcess of Grant of Patent1. Application (s 10)2. Publication (S.11-A),3. Examination (S.11-B, 12).4. Pre-Grant Opposition (after publication and before grant)5. Grant of patent (Notification)6. Post-Grant opposition (within an year of grant)7. Maintenance of patent (renewal after three years-renewal fee)8. Working of patent (Satisfactory availability of the patented product atreasonable prices-Compulsory licensing by the Controller , if required)9. Revocation of patent (s 64- wrongfully obtained)10. Remedies against abuse of patent (S . 66, revocation in public interest bycentral govt.-mischievous)11. Penalties ( S. 120- falsely representing ‘Patented’, ‘Patent applied for’-fine upto Rs 1 lakh)12 Infringement (S.108, injunction, either damages or an account for profits)
05/15/13 7Process of Grant of Patent (contd.)Process of Grant of Patent (contd.)1. Application with complete specifications has to be submitted to Controllerof Patents.2. The application along with an abstract is published after 18 months of filing,unless the applicant requests early publication3. Applicant may apply for examination of his application within 48 months offiling (31 months incase of applications under Patent Cooperation treaty)4. The application is then referred to an Examiner.5. Examiner checks its legality and authenticity and reports to the Controller.6. If there are discrepancies in the application , objections are raisedwhich must be answered within an year from the date of report.7. Any one interested can object after the publication and before grant of thepatent
05/15/13 8Process of Grant of Patent (contd.)Process of Grant of Patent (contd.)8. Grant of the patent is notified in the Official Gazette, PatentOffice journal published every week9. Post grant objections can be made within an year of grant ofthe patent10. Maintenance (renewal)fee has to be paid after the third year11. Lapse of the Patent on failure to renew, restoration within 18months from the date of lapse on payment of fee11. Controller may grant ‘compulsory licence’ if the patent is notworking (product is not available in sufficient quantity atreasonable prices).12. PATENTEE CAN SELL OR ASSIGN HIS PATENT TOOTHER PERSONS
05/15/13 9complete specificationcomplete specificationThe patent specification generally comprises ofthe title of the invention indicating its technicalfield, (i)prior art, (ii) draw backs in the prior art,(iii) the solution provided by the inventor toobviate the drawbacks of the prior art, (iv)concise but sufficient description of the inventionand its usefulness, (v) drawings (if any) and (vi)details of best method of its working. Thecomplete specification must contain at least oneclaim or statement of claims defining the scope ofthe invention for which protection is sought
05/15/13 10provisional specificationprovisional specificationIndian patent law follows first to file system.Provisional specification describes the nature ofthe invention to have the priority date of filing ofthe application in which the inventive idea hasbeen disclosed. It must be followed by a completespecification describing the details of theinvention along with a statement of claims within12 months after filing of the provisionalapplication. If the complete specification is notfiled within the prescribed period, the applicationis treated as abandoned
05/15/13 11Prior artPrior art• Prior art ( state of the art) is allinformation that has been disclosed to thepublic in any form about an inventionbefore a given date. Prior art includesthings like any patents related to yourinvention, any published articles aboutyour invention, and any publicdemonstrations.• If an invention has been described in priorart, a patent on that invention is not valid.
05/15/13 12Prior art searchPrior art searchHow can one find out that an invention isalready patented?• A preliminary search can be made on:1. Patent Office website, the Indian patent database of granted patents, or2. Patent Office journal published every week, or3. Search in the documents kept in the PatentOffice Search and Reference Room, whichcontains Indian patents arranged according tointernational patent classification system.4. One can also make a request for informationregarding any patent under section 153 of theAct
05/15/13 13Priority Dates of Claims ofPriority Dates of Claims ofComplete Specification (s.11)Complete Specification (s.11)• Priority date of the claim is the dateof filing of specifications-provisionalor complete, wherein the matter onwhich the claim is fairly based wasfirst disclosed. Controller can orderpost-dating or ante-dating of a claimunder section 9, 17 and 16depending upon when he thinks thematter was actually first disclosed.
05/15/13 14PUBLICATIONPUBLICATION• Every application for patent is publishedafter 18 months from the date of its filingor priority date whichever is earlier, exceptwhere there is a secrecy direction.• Applicant can make a request for earlypublication with the prescribed fee. Afterreceiving such request the Patent Officepublishes such application within a periodof one month provided the invention doesnot relate to atomic energy or defencepurpose.
05/15/13 15EXAMINATIONEXAMINATION• The patent application is examined only onrequest.• The request for examination can be filed within aperiod of 48 months from the date of priority ordate of filing of the application whichever isearlier.• Request for examination before expiry of 31months can be made in respect of theapplications filed under Patent Cooperation Treatyknown as National Phase applications by paymentof the prescribed fee.
05/15/13 16First Examination Report (FER)First Examination Report (FER)After examination, the Patent office issuesan examination report to the applicantwhich is generally known as FirstExamination Report (FER). Applicantshould comply with the requirementswithin a period of twelve months from thedate of FER. If the application is in order,the patent is granted and a letter patent isissued to the applicant. However, if thereis a pre-grant opposition, the applicant hasto defend his claim.
05/15/13 17PATENT INFRINGEMENTPATENT INFRINGEMENT• A patent is not infringed until provenotherwise• onus or burden of provinginfringement is on the patent owner
05/15/13 18Infringement- Jurisdiction, Burden of ProofInfringement- Jurisdiction, Burden of Proof• Jurisdiction-District Court (S.104)• If the defendant makes a counter claim forrevocation of the patent, the case istransferred to the High Court• Burden of Proof (104-A): If the patenteefirst proves that the product is identicalthen if the subject matter is a process, thecourt may direct the defendant to provethat the process used by him to obtain theproduct was different.
05/15/13 19Relief in Suits for Infringement (S 108)Relief in Suits for Infringement (S 108)• Injunction• Either ‘damages’ or an ‘account of profits’,at the option of the plaintiff• Seizure, forfeiture or destruction ofinfringing goods, as the Court deems fit[Infringement of patent is not an offence.No criminal action is possible]
05/15/13 20COMPULSORY LICENSECOMPULSORY LICENSE• After 3 years of patent, anyone can request alicense from the govt. on these grounds– That the reasonable requirements of thepublic with respect to the patented inventionhave not been satisfied– That the patented invention is not availableto the public at reasonably affordable price– Export of pharmaceuticals to poor countries