Patent Act


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Patent Act

  1. 1. 1
  2. 2.  What is intellectual property  Meaning of Patent  Legislative Framework Patents  Patent Law - Salient Features  Safeguards in the Patent Law  Definition of patentable invention  Inventions not patentable  Documenting invention  Steps for obtaining a patent in India  Rights of product patentee  Rights of process patentee  Renewal of patent  Infringement of patent  Patent Due Diligence
  3. 3. Intellectual Property refers to creation of mind i.e. inventions, industrial designs for article, literary & artistic work, symbols etc. used in commerce
  4. 4. A Patent is an intellectual property right relating to inventions and is the grant of exclusive right, for limited period, provided by the Government to the patentee, in exchange of full disclosure of his invention, for excluding others, from making, using, selling, importing the patented product or process producing that product for those purposes.
  5. 5. The Patents Act, 1970 (as amended in 2005) The Patents Rules, 2003 (as amended in 2006) The Patent Act was amended in line with international treaty that is Trade Related Intellectual Property Rights ( TRIPS )
  6. 6.  Both product and process patent provided  Term of patent 20 years  Examination on request  Both pre-grant and post-grant opposition  Publication of applications after 18 months with facility for early publication  Substantially reduced time-lines
  7. 7.  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
  8. 8. A new product or process, involving an inventive step and capable of being made or used in an industry. Section 2(1)j
  9. 9. Section 3 and Section 4 sets out the inventions which are not patentable
  10. 10.  Invention must relates to a Process or Product or both  be new(Novel)  involves an inventive step  inventive step be Capable of industrial application  industrial application not fall under Section 3 and 4
  11. 11. i) Novelty : The matter disclosed in the specification is not published or used in India or elsewhere before the date of filing of the patent application in India. 2(1)l ii) Inventive Step: The invention is not obvious to a person skilled in the art in the light of the prior publication/ knowledge/ document.2(1)ja iii) Industrially applicable: Invention should possess utility, so that it can be made or used in an industry.
  12. 12. Section 3(a)  Frivolous inventions  Inventions contrary to well established natural laws Examples  Machine that gives more than 100% performance  Perpetual machine continue-
  13. 13. 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  continue-
  14. 14. 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 continue-
  15. 15. Section 3(b) Excludes patents on  GMOs – exploitation of which could be contrary public order or morality or prejudicial to human, animal or plant life or health or to the environment Effect : Only genetically modified micro- organisms (GMOs) which do not fall under section 3 (b) are patentable. continue-
  16. 16. Section 3 ( c )  Mere Discovery of a Scientific Principle or  formulation of an Abstract Theory or  discovery of any living thing or  discovery of non–living substance occurring in nature Examples Newton’s Laws Superconducting Phenomenon as such Property of certain material to withstand mechanical shock Discovery of micro-organism Discovery of natural gas or a mineral continue-
  17. 17. Section 3(c) Excludes patents on Naturally occurring Micro- organisms Effect Genetically modified microorganisms (GMOs) are however, patentable. continue-
  18. 18. Section3 (d) The mere discovery of a new form of a known substance which does not result in the enhancement of the known efficacy of that substance continue-
  19. 19. Section3 (d) Explanation For the purposes of this clause,  salts, esters, ethers, polymorphs,  metabolites, pure form, particle size,  isomers, mixture of isomers,  complexes, combinations and other derivatives of known substances shall be considered to be the same substance, unless they differ significantly in properties with regard to efficacy. Examples  Crystalline forms of known substance continue-
  20. 20. Section 3 (d) Explanation Effect Salts, esters, ethers, polymorphs, metabolite, pure forms, particle size, isomers, complexes, combinations and derivatives of a known substance with enhanced efficacy are patentable continue-
  21. 21. Section3 (d) Mere discovery of any new property or new use for a known substance or of the mere use of a known process, machine or apparatus, unless such known process results in a new product or employs at least one new reactant. Examples  New use of Aspirin for heart ailments,  Mere new uses of Neem continue-
  22. 22. Section 3(e) Substance obtained by mere admixture resulting only in the aggregation of the properties of the components thereof or a process for producing such substance Examples  Combiflam [Paracetamol (Antipyretic) + Brufen (analgesic)]  Solution of sugar and color additives in water to form a soft drink However, A mixture resulting into synergistic properties of mixture of ingredients however, may be patentable - Soap, Detergents, lubricants etc continue-
  23. 23. Section 3 ( e ) Effect  Substance obtained by mere admixture resulting only in the aggregation of the properties of the components thereof or  a process for producing such substance are not patentable However Synergistic formulations are patentable continue-
  24. 24. Section 3 ( f ) Mere arrangement or re-arrangement or duplication of known devices, each functioning independently of one another in a known way Examples A Bucket fitted with torch, An Umbrella with fan A Clock and radio in a single cabinet A flour-mill provided with sieving continue-
  25. 25. Section 3(h)  Method of Agriculture or Horticulture  Examples Cultivation of algae , Producing new form of a known plant, Preparation of an improved soil   However,  Agricultural Equipments are patentable continue-
  26. 26. Section 3(i) Any process for medicinal, surgical, curative, prophylactic, diagnostic, therapeutic or other treatment of human beings or a similar treatment of animals to render them free of disease or to increase their economic value or that of their products Examples  Removal of cancer tumor  Removal of dental plaque and carries  Surgical processes  Processes relating to therapy  Method of vaccination,  Blood transfusion continue-
  27. 27. Section 3(j) Plants & animals in whole or any part thereof other than micro- organisms, but including seeds, varieties an d species and essentially biological process for production or propagation of plants & animals continue-
  28. 28. Section 3(j)  Plants & animals in whole  Parts of plants & animals  Seeds  Varieties & species  Essentially biological processes for propagation or production of the animals & plants continue-
  29. 29. Section 3(j) Excludes patents on  Plants and animals in whole or any parts thereof, …… including seeds, varieties and species and essentially biological processes for production or propagation of plants and animals Examples  Clones and new varieties of plants  A process for production of plants or animals if it consists entirely of natural phenomena such as crossing or selection  Essentially biological Process continue-
  30. 30. Section 3(k) * mathematical method or * business method or * algorithms or * computer programme per se Examples  Computer program by itself or as a record on a carrier However  New calculating machine  combination of hardware and software is patentable continue-
  31. 31. Section 3(l) A literary,dramatic, musical or artistic work or any other aesthetic creation including cinematographic work and television productions These subject-matters fall under the copyright protection continue-
  32. 32. Section 3(m) A mere scheme or rule or method of performing mental act or method of playing game Examples Scheme for learning a language Method for solving a crossword puzzle, Method of learning a language Method of teaching /learning However, Novel apparatus for playing game or carrying out a scheme is patentable continue-
  33. 33. Section 3 (n) Presentation of information Examples  Any manner or method of expressing information whether by spoken words Visual display symbols diagrams Information recorded on a carrier continue-
  34. 34. Section 3 (o) Topography of integrated circuits. Examples Mask works - circuits layout continue-
  35. 35. Section 4 Inventions falling within Section 20(1) of the Atomic Energy Act, 1962 are not patentable Effect  Inventions relating to compounds of Uranium, Beryllium, Thorium, Plutonium, Radium, Graphite, Lithium and more as notified by Central Govt. from time to time are not patentable .
  36. 36.  Keep a notebook sequential numbered  Write down experiments, showing structure of invention and how these are conducted and how the invention is made out .  Keep on noting and updating the claims of the patent
  37. 37.  File an Application form in duplicate for each invention (Form 1) .(section 7,54,135 Rule 20.1 )  Provisional or complete specification in duplicate in Form 2. s.7  Information and undertaking listing the number, filing date and current status of each foreign patent application ( in case application is made in foreign country ) in duplicate for same invention s 8  Applicable fee of Rs 750 in case of individual or Rs 3000 in case of corporate . With one of the patent offices based on territorial jurisdiction of the place of office or residence of the applicant ( head office Kolkata, Madras, New Delhi , Chennai ) (r 4)
  38. 38. An Examiner after checking the formal requirements before accepting the application and the fee , issues application number and the cash receipt on the same day of filing of application
  39. 39. It is permissible to file an application for a patent accompanied by a "Provisional Specification" describing the invention. The application may, therefore, be made even before the full details of working of the invention are developed. The filing of an application for a patent disclosing the invention would secure priority date of the invention, and thereby, enable the inventor to work out the practical details of the invention .
  40. 40. If the provisional specification is filed, it must be followed by the complete specification within 12 months.(Form 2). s9 Complete specification shall fully describe the invention with reference to drawing, if required, disclosing the best method known to the applicant and end with Claim/Claims defining the scope of protection sought.
  41. 41.  The specification must be written in such a manner that person of ordinary skill in the relevant field, to which the invention pertains, can understand the invention.  Normally, it should contain the following matter- s9  Title of invention, sufficiently indicating the subject matter of invention  Detailed description of the invention with reference to drawing/examples,  Operation or use of the invention  Best method of performing the invention,  Claim(s)defining the scope of invention ,  Abstract to provide technological information of invention
  42. 42.  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
  43. 43.  The publication includes the particulars of the date of the application, application number, name and address of the applicant along with the abstract.  The applications for patent are not open for public inspection before publication.
  44. 44.  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
  45. 45.  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
  46. 46.  A period of 1 to 3 months is available to Examiner to submit the report to the Controller  1 month’s time available to Controller to vet the Examiner’s report  First Examination Report (FER) containing gist of the objections is issued within 6 months from the date of filing of request
  47. 47.  Application or complete specification should be amended in order to meet the objections within a period of 12 months from the date of First Examination Report (FER).  If objections are met, grant of patent is approved by the Controller – within a period of 1 month
  48. 48.  Where an application for a patent has been published but a patent has not been granted, any person may, in writing represent by way of opposition to the Controller against the grant of any Patent with in period of six months of publication .  Opportunity of hearing the opponent is also available
  49. 49.  -specification has been published before the priority date of the claim  -publicly known or publicly used in India before the priority date of that claim.  - being a claim of which the priority date is earlier than that of the applicant's claim;  - that the invention so far as claimed in any claim of the complete specification is obvious 
  50. 50.  - that the subject of any claim of the complete specification is not an invention within the meaning of this Act  - that the complete specification does not sufficiently and clearly describe the invention  that in the case of convention application, the application was not made within twelve months from the date of the first application for protection for the invention made in a convention country by the applicant or a person from whom he derives title. 
  51. 51.  that the complete specification does not disclose or wrongly mentions the source or geographical origin of biological material used for the invention.  -that the invention so far as claimed in any claim of the complete specification is anticipated having regard to the knowledge, oral or otherwise, available within any local or indigenous community in India or elsewhere.
  52. 52.  Opposition (documents) is sent to the applicant.  A period of 3 months is allowed for receipt of response from the applicant .
  53. 53.  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
  54. 54.  A certificate of patent is issued within 7 days  Grant of patent is published in the official journal
  55. 55. Term of every patent will be 20 years from the date of filing of patent application, irrespective of whether it is filed with provisional or complete specification. Date of patent is the date on which the application for patent is filed.
  56. 56. Any interested person can file notice of opposition (along with written statement and evidence, if any) anytime after the grant of Patent but before the expiry of a period of one year from the date of publication of grant of a Patent in the Patent Office Journal.
  57. 57. Where a patent covers a product, the grant of patent gives the patentee the exclusive right to prevent others from performing, without authorisation, the act of making, using, offering for sale, selling or importing that product for the above purpose.
  58. 58. Where a patent covers a process, the patentee has the exclusive right to exclude others from performing, without his authorization, the act of using that process, using and offering for sale, selling or importing for those purposes, the product obtained directly by that process in India.
  59. 59. To keep the patent in force, renewal fee is to be paid every year. Application for restoration of a patent that lapses due to non- payment of renewal fees must be made within 18 months of lapse
  60. 60.  “Infringement” of a patent occurs when a person makes, uses, sells, or imports an invention without the permission of the patent owner.
  61. 61.  Patents only cover those products or processes described by the claims  An infringing product or process must have each element of the claim  The accused product or process may have more than required by the claim
  62. 62. 1. Patent searches on relevant product lines of primary competitors 2. Compare proposed new product or process to any relevant patents or competitor products 3. If necessary, search for prior art