Authorities under the Patent Act.ppt

1. Authorities under the Patent Act

2. • The Office of the Controller General of
Patents, Designs and Trade
Marks (CGPDTM) generally known as
the Indian Patent Office, is an agency under
the Department for Promotion of Industry and
Internal Trade which administers the Indian
law of Patents, Designs and Trade Marks

3. History
• On 28 February 1856, the Government of India
promulgated legislation to grant what was then termed
as "exclusive privileges for the encouragement of
inventions of new manufactures". On 3 March 1856, a
civil engineer, George Alfred DePenning petitioned the
Government of India for grant of exclusive privileges
for his invention —
• "An Efficient Punkah Pulling Machine he submitted the
Specifications for his invention along with drawings to
illustrate its working. These were accepted and the
invention was granted the first ever Intellectual
Property protection in India.

4. Amendments to the Patents Act &
Rules
• Amendments (in 1999, 2002, 2005) were
necessitated by India's obligations under TRIPS,
allowing product patents in drugs and chemicals.
A pre-grant representation in addition to the
existing post-grant opposition has been re-
introduced.[4] A provision of later amendments
was on software patent-ability, which was later
withdrawn in another amendment in 2005. The
amendment in 2012[5] focused on change in
marks of Patent Agent Examination.[6]

5. • Indian Patent Rules were amended in 2003, 2005, 2006,
2012, 2013, 2014, 2016, 2018, 2019 and 2020. The 2006
amendment of rules introduced reduced time lines and a
fee structure based on specification size and number of
claims, in addition to a basic fee. Indian Patent amendment
rules 2012 was for amendments in criteria for patent agent
exam qualification. Gazette Notification of Patent
(Amendments) Rules 2013 has made necessary provisions
for recognising Patent office as Examining authority and
Searching authority[7] on international level for filing,
searching and examination of patent along with necessary
fees. Patent amendment rules 2014 introduced a third
category of applicant for small entities and revised the
basic fee for filing a patent application.

6. • Patent amendment rule 2016 implemented on 16 May
2016, and introduced such as electronic communication to
applicant/agent, and applicant can withdrawn their
application using Form-29, and majorly introduced for the
expedited examination for startup companies, and the
timeline to put the grant of applicant has been reduced
from 12 months to 6 months. In addition, video conference
has been introduced for hearing the patent
matters.[9] Patent amendment rules 2019 introduced a
patent agent shall submit all documents only by electronic
transmission duly authenticated. Further, fee reductions for
small entity, and fast track examination for specific
applicants including female were introduced in 2019.

7. Patent administration
• The CGPDTM reports to the Department for Promotion
of Industry and Internal Trade (DPIIT) under
the Ministry of Commerce and Industry and has five
main administrative sections:[11]
• Patent Office
• Designs Registry
• Trademarks Registry
• Geographical indications Registry
• Rajiv Gandhi National Institute of Intellectual Property
Management (NIIPM)
• Patent Information System

8. • The patent office is headquartered at Kolkata with branches
in Chennai, New Delhi and Mumbai, but the office of the
CGPDTM is in Mumbai. The office of the Patent Information
System and National Institute for Intellectual Property
Management is at Nagpur.[12] The Controller General (CG),
who supervises the administration of the Patents Act, the
Designs Act, and the Trade Marks Act, also advises the
Government on matters relating to these subjects. Shri.
Unnat P. Pandit is the current CG and took charge on April
2022. Under the office of CGPDTM, a Geographical
Indications Registry has been established in Chennai to
administer the Geographical Indications of Goods
(Registration and Protection) Act, 1999.

9. • The Indian Patent Office has 526 Patent Examiners, 97 Assistant
Controllers, 42 Deputy Controllers, 1 Joint Controller, and 1 Senior
Joint Controller, all of whom operate from four branches. Although
the designations of the Controllers differ, all of them (with the
exception of the Controller General) have equal authority in
administering the Patents Act. An Indian Patent Examiner is
mandated to search for prior art and for objections under any other
ground as provided in the Patent's Act, then to report to the
Controller, who has the power to either accept or reject Examiners'
reports. Unlike the system at the USPTO /EPO/JPO, Examiners at
IPO have only recommending power and the controllers are
empowered by statute either to accept or refuse their
recommendations. Examiners' reports to the Controller are not
open to the public unless courts allow it (section 144 of the Patents
Act). A Parliamentary committee has recommended repealing S144

10. Patent duration
• Term of every patent in India is 20 years from the date
of filing of patent application, irrespective of whether it
is filed with provisional or complete specification.
However, in case of applications filed under PCT the
term of 20 years begins from the International filing
date accorded under PCT.[16]
• Since the rights granted by an Indian Patent Office
extends only throughout the territory of the India and
ceases to have effect in a foreign country, an inventor
who wishes patent protection in another country must
apply for a patent in a specific country (according to its
law) either through :PCT route or through conventional
filing of application.

11. Patent Renewal and Restoration of Lapsed
Patent
• In order to keep the patent rights for the entire
period, India's Patent Act has made it mandatory
for the patent holders to pay a renewal
fee.[17] Once the patent is granted the patentee
does not need to pay a renewal or maintenance
fee for the first two years. The first renewal fee
will be payable from the third year
onwards.[18] The patentee is also given a choice to
pay the whole fees at a time or they can pay it
every year.[19] If in case the patent is not renewed
by the company or individual, the patent ceases
to exist and will be moved to the public domain

12. General Powers Of Controller Of Patent In India
• he General Powers of Controller of Patent in India are
prescribed under the Patent Act, 1970, and the Patent
Rules, 2003. The Controller of Patent under the
provisions prescribed under the Patent Act, 1970 and
Patent Rules, 2003, has to accordingly work and
comply with the norms specified. The main officer
responsible for the administration of the Patent system
in India is the Controller of Patent appointed under the
Patent Act, 1970. The General Powers of Controller of
Patent is kept wide to ensure the best delivery of
services to the common people applying for Patent
Registration in India.

13. Meaning Of Controller Under The Patent Act, 1970
• Controller referred to Section 73(1) of the Act means the Controller
General of Patents, Designs and Trademarks. The Government
appoints the as per Section 3 of the Trademarks Act, 1999[1], the
Controller General of Patents, Designs and Trademarks is appointed.
The person so appointed under the Trademarks Act, 1999, by the
Government will be the Controller of Patents for the purposes of
the Patents Act, 1970. The Central Government is also authorized
to appoint examiners and other required officers with designations
as the government deems fit. The officers so appointed by the
Central Government should discharge their duties, under the
directions and superintendence and of the Controller General of
Patents, Designs and Trademarks, and such functions of the
Controller of Patent under the Patent Act, 1970, as he/she may
authorize in writing from time to time, by special or general order.

14. General Powers Of Controller Of Patent Under The
Patent Act, 1970

15. territorial jurisdiction for patent applicants
• An application for a patent in India must be
filed before the Patent Office having
appropriate jurisdiction. The jurisdiction of the
relevant office is determined based on one of
three criteria, as follows:
• The place of residence, domicile or business of
the applicant (or the first mentioned
applicant, in case there are joint applicants),
or
• The place from where an invention actually