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  1. 1. © Brain League IP Services Private Limited - 2011 1 PATENTS atents are exclusive rights given to a person in return for a full and complete disclosure of the invention for which the patent is claimed. The exclusive rights are for a limited period of time. The patent system aims at creating new inventions by providing economic incentives. The possibility of gaining commercial benefit is believed to encourage inventors to invent and investors to invest, which in turn promotes the progress of science and technology. Patent Life Cycle The objective of the Patent law is to ensure the progress of science and technology by providing exclusive rights to inventors for a limited period of time. It operates on the principle of ‘Quid Pro Quo’ or ‘Give and take’. An inventor gives an invention to the public and takes exclusive rights over it for a limited period of time. The grant of exclusive rights provides incentives to invent, invest, design around and disclose. Possibilities of commercial benefits during the period of exclusive rights encourage inventors to invent and investors to invest. Incentive to design around springs out of the efforts of competitors to work around the technology, whose access is blocked due to existence of patents. As complete disclosure of the invention is a prerequisite to the grant of a patent1 the inventor is incentivized to disclose his invention to the public in order to get a patent. These incentives operating together or individually promote the progress of science and technology. The basic objective of the patent regime as seen in the life cycle is creation of new inventions through economic incentives and enrichment of the public domain. By granting exclusive rights, the patent regime provides the aforementioned incentives, which in turn promote progress of science and technology by encouraging investment and invention through promise of financial benefits during the exclusive period. Most provisions under patent law are in one way or the other related to and affects the patent life cycle. 1 The Patents Act, 1970, Section 9, Sub section (1) P
  2. 2. © Brain League IP Services Private Limited - 2011 2 Requirements for a Patent In order to get a patent, an invention must be: i. novel; ii. non obvious; iii. useful; and iv. must fall under the patentable subject matter Subject matter In India an invention in order to be patentable should be a product or a process and should not fall under the list of exclusions. The list of exclusions includes2 : 1. A frivolous invention 2. Anything obvious or contrary to well established natural laws. E.g. A machine that can generate electricity without any source of energy 3. A mere discovery of a scientific principle 4. Formulation of an abstract theory E.g. A method of transmitting material from one brain to another is an abstract theory. To be patentable this theory has to be concretized with solid experimentation. 5. Discovery of any living thing or non-living substance occurring in nature 6. The mere arrangement or re-arrangement of known devices each functioning independently of one another. E.g. A clock and a transistor in a single cabinet 2 The Patents Act, 1970,Section 3
  3. 3. © Brain League IP Services Private Limited - 2011 3 7. A computer program per se other than its technical application to industry or a combination with hardware. E.g. Computer program for arranging numbers in an ascending order 8. An invention contrary to public order or morality 9. A method for cloning human beings 10. Invention which causes serious prejudice to human, animal or plant life or health or to the environment. E.g. A machine used for mercy killing is not patentable as it is against public morality. 11. The mere discovery of any new property or new use for a known substance E.g. The new use of the asthma drug isoproterenol to prevent cataract is not patentable. 12. A mathematical method or a business method or algorithm. E.g. A method of collecting rent from tenants is not patentable 13. A literary, dramatic, musical or artistic work or any other aesthetic creation whatsoever including cinematographic works and television productions. E.g. A book, painting, movie or music is not patentable. 14. A mere scheme or rule or method of performing mental act or method of playing games. E.g. A method of teaching is not patentable. 15. A substance obtained by a mere admixture resulting only in the aggregation of the properties of the components thereof or a process for producing such substance. E.g. An admixture of sugar syrup and some common fruit essence to produce a soft drink is not patentable. 16. A method of agriculture or horticulture. E.g. A method of grafting a rose plant is not patentable. 17. 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.
  4. 4. © Brain League IP Services Private Limited - 2011 4 E.g. A method of performing a knee surgery is not patentable. 18. 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. E.g. A human clone is not patentable. 19. A presentation of information. 20. Topography of integrated circuits. 21. An invention which, in effect, is traditional knowledge or which is an aggregation or duplication of known properties of traditionally known component or components. E.g. A concoction prepared from a plant called Arogyapacha to treat liver diseases is a traditional knowledge among the Kani Tribals of Kerala and hence not patentable. 22. Invention relating to atomic energy not patentable3 . Novel The invention in order to be patentable must be novel. Novelty is seen in the light of the prior art. An invention is said to be novel when it is not anticipated by any publication in any document or used in the country or elsewhere in the world before the date of filling of the patent application. The invention should not have fallen in the public domain or form part of the state of the art. Therefore an invention will not be considered as novel if it forms part of the prior art. Prior art means all information that has been published, presented or disclosed to the public as to the state of the art in the relevant field. Example: A pen which digitally indicates the amount of ink left in it. The prior art for this invention would include a normal pen and a translucent pen. In the light of the prior art the pen which digitally indicates the amount of ink left is novel because the same is not anticipated by a normal pen or a translucent pen. 3 The Patents Act, 1970, Section 4
  5. 5. © Brain League IP Services Private Limited - 2011 5 Non obvious To be patentable an invention should be non obvious i.e. it should not be obvious to a person ordinarily skilled in the art. The test for determining non obviousness is that a person ordinarily skilled in the art should not find the invention obvious after having gone through the prior art in the relevant field. To be non-obvious the invention should have an inventive step. Inventive step means that a feature of the invention has some technical advancement over the existing knowledge in the relevant field or has some economic significance or both and due to which it is non obvious to a person skilled in the art. Example: A pen fitted with a flash light would be obvious in the light of prior art. This invention would be obvious in light of existing art such as a pencil fitted with a flash light and pens fitted with accessories. Useful Utility means that the invention should be capable of being made or used in an industry. It means that the invention should be capable of being made, used at least in one field of activity and be reproduced with the same characteristics as many times as required. For utility commercial success or pecuniary success are irrelevant. Example: A pen which digitally indicates the amount of ink left in it can be manufactured in an industry and can be repeatedly manufactured. It is there useful. Rights of a patentee4 The patent law gives a patentee the following rights: Right to make: Patent law gives a patentee the exclusive right to manufacture the patented invention. Right to use: The patentee has the exclusive right to use the patented invention and to prevent others from using it without his consent. Right to offer for sale: The patentee has the right to prevent others from making the patented invention available for sale without the consent of the patentee. 4 The Patents Act, 1970, Section 48
  6. 6. © Brain League IP Services Private Limited - 2011 6 Right to sell: The right to sell the patented invention lies with the patentee and he can prevent others from selling it without his consent Right to import the patented invention: The patentee can prevent others from importing the patented invention into the country in which the patentee has the patent. Term Patent rights are granted for twenty years and these twenty years are calculated from the date of filing5 . However in order to keep the patent alive renewal fees have to be paid at regular intervals. The non payment of renewal fees may result in the lapse of a patent. Patent Process The process of acquiring a patent involves the following steps: Filing: The patent process starts with the filing of a patent application. Patent applications are filed in a standard format as provided by the patent law. Once an application is filed it is sent for publication6 . Publication7 : Generally within 18 months of filing of a patent application it is published in the official gazette. Publication is a means of giving public notice that a patent application relating to the relevant subject has been filed. It is a means of notifying any person who is interested in opposing the patent application. Besides it forms a part of the prior art and could be used in analyzing patentability of future patent applications. Examination8 : After publication the application is examined by a Patent Examiner. The Examiner gives a first examination report in which objections if any to the patent application 5 The Patents Act, 1970, Section 53 6 The Patents Act, 1970, Section 7 , also sub clause (1),(2), (3)&(4) 7 The Patents Act, 1970, Section 11A 8 The Patents Act, 1970, Section 12
  7. 7. © Brain League IP Services Private Limited - 2011 7 are stated. The applicant has an option of amending his application or initiating proceedings with Patent Office. Grant: Once the patent application satisfies all the requirements of the patent law it will be granted9 . A certificate of the grant will be given to the applicant and an entry as to grant will be made in the Register of Patents. Opposition10 : The option of opposition is open to any interested person either before the grant of a patent but after publication or after grant of the patent. The patent law gives a set of grounds for the opposition of patents. The grounds for opposition include: Wrongful obtainment of an invention from another person Publication before priority date of the claim in the patent application A patent application over the same invention has been filed before the applicant‘s patent application Public knowledge or public use of the invention in India Obvious in the light of publication and use in India Not an invention as per the Patent Act and is not patentable in India Not enabled and the best mode is not described in the application. Supplied false information to the Patent Office Complete application not filed within 12 months of its first application in another country Wrongfully described the biological source of origin Anticipated by oral or any other form of knowledge available in local or any other indigenous community (Traditional Knowledge) The following flowchart shows the entire process of Patents in brief: 9 The Patents Act, 1970, Section 43(1) & (2) 10 The Patents Act, 1970, Section 25
  8. 8. © Brain League IP Services Private Limited - 2011 8
  9. 9. © Brain League IP Services Private Limited - 2011 9 Suggested Further Reading Indian Patent law basics Patent Law Basics Analyzing Patentability of Inventions Patent filing requirements in India Indian Patent Process Indian Patent Application Process DNA of patent search If s and buts of patent application filing Opposing grant of a patent Patent Exhaustion in India What do I do with my invention before speaking to Venture Capitalists? Is method of massage a patentable subject matter? To publish or not: Well, it depends! Patent search