MODULE — | A patent is an exclusive right granted by a country to the owner of an invention to make, use, manufacture and market the invention, provided the invention satisfies certain conditions stipulated in the law. The word patent originated from the Latin word *Patene’ which means “ To open “ Characteristics/ Features of Patent 1. Exclusive right: Exclusivity of right implies that no one else can make, use, manufacture or market the invention without the consent of the patent holder, 2. Limited period : This right is available only for a limited period of time. However, the use or exploitation of a patent may be affected by other laws of the country which has awarded the patent. These laws may relate to health, safety, food, security etc. Further, existing patents in similar area may also come in the way. 3. Property right: A patent in the law is a property right and hence, can be gifted, inherited, assigned, sold or licensed. 4, Revocation As the right is conferred by the State, it can be revoked by the State under very special circumstances even if the patent has been sold or licensed or manufactured or marketed in the meantime. 5. Territorial in e: The patent right is territorial in nature and inventors/their assignees will have to file separate patent applications in countries of their interest, along with necessary fees, for obtaining patents in those countries.6. Term: A patent is an official document given to an inventor by the government allowing him to exclude anyone else from commercially exploiting his invention for a limited period which is 20 years at present. 7. Public dom: Grant of exclusive privilege to own, use or sell the method or the product patented for a limited period, stimulates new inventions of commercial utility. The price of the grant of the monopoly is the disclosure of the invention at the Patent Office, which, after the expiry of the fixed period of the monopoly, passes into the public domain 8. Incentives to individuals: By granting an exclusive right, patents provide incentives to individuals, offering them recognition for their creativity and material reward for their marketable inventions. In return for the exclusive right, the inventor has to adequately disclose the patented invention to the public, so that others can gain the new knowledge and can further develop the technology. The disclosure of the invention is thus an essential consideration in any patent granting procedure. Patentable Invention The conditions of patentability are: 1. Novelty 2. Inventive step (non- -obviousness) and 3. Industrial applicability (utility) 1. Novelty A novel invention is one, which has not been disclosed, in the prior art where prior art means everything that has been published, presented or otherwise disclosed to the public on the date of patent (The prior art includes documents in foreign languages disclosed in any format in any country of the world.) For an invention to be judged as novel, the disclosed information should not be available in the 'prior art’. This means that there should not be any prior disclosure of any information contained in the application for patent (anywhere in the public domain, cither written or in any other form, or in any language) before the date on which the application is first filed ie. the ‘priority date’ 23ieuventive Step (Non-obviousness) . compared step is a feature of an invention that involves technical advance as the taventi existing knowledge or having economic significance of both, making N non obvious( not clear) to a person skilled in art. Here definition of inventive step has been enlarged to include economic significance of the invention apart from already existing criteria for determining inventive step. A new invention must produce unexpected or surprising new results that are not anticipated by the existing technology (or prior art). A non-obvious invention is unexpected by a person with ordinary skill in the art, — For example the telephone technology created by Alexander graham bell was not obvious to audio and sound engineers of Bell’s day. An invention shall not be considered as involving an inventive step, if, having regard to the state of the art, it is obvious to a person skilled in the art. The term “obvious” means that which does not go beyond the normal progress of technology but merely follows plainly or logically from the prior art, ie. something which does not involve the exercise of any skill or ability beyond that to be expected of the person skilled in the Art. For this purpose a “person skilled in the art” should be presumed to be an ordinary practitioner aware of what was general common knowledge in the relevant art at the relevant date. In some cases the person skilled in the art may be thought of as a group or team of persons rather than as @ single person. 3. Industrial Applicability An invention is capable of industrial application if it satisfies three conditions, cumulatively: © can be made; * can be used in at least one field of activity; * can be reproduced with the same characteristics as many times as necessary. 1. An invention to be patentable must be useful. If the subject matter is devoid of utility it does not satisfy the requirement of invention. 2. For the purpose of utility, the element of commercial or pecuniary success. has no relation to the question of utility in patent law. 243. The usefulness of an alleged invention depends not on whether by following the directions in the Complete specification all the results not necessary for commercial success can be obtained, but on whether by such directions the effects that the application/patentee professed to produce could be obtained. 4, The meaning of usefulness is therefore useful for the purpose indicated by the applicant or Patentee whether a non-commercial utility is involved. 5. The usefulness of the invention is to be judged, by the reference to the state of things at the date of filing of the patent application, if the invention was then useful, the fact that subsequent improvement have replaced the patented invention render it obsolete and commercially of no value, does not invalidate the patent. 6. Speculation or imaginary industrial uses are not considered to satisfy the industrial application requirement. Non-Patentable Invention An invention may satisfy the condition of novelty, inventiveness and usefulness but it may not qualify for a patent. The following are not inventions within the meaning of Section 3 of the Patents Act, 1970: (a) An invention which is frivolous or which claims anything obviously contrary to well established natural laws; (b) An invention the primary or intended use or commercial exploitation of which could be contrary to public order or morality or which causes serious prejudice to human, animal or plant life or health or to the environment; (c) The mere discovery of a scientific principle or the formulation of an abstract theory or discovery of any living thing or non-living substances occurring in nature; (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 or the mere discovery of any property or mere new use for a known substance or of the mere use of a known process, machine or apparatus unless such known process 25results y clause in a new product or employs at least one new reactant; Explanation to (d) Clarifies that salts, esters, polymorphs, metabolites, pure form, particle size, isomers, mixtures of isomers, complexes, combinations and other derivatives of known substance shall be considered to be the same substance, unless they differ significantly in properties with regard to efficacy. (e) 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; (f) The mere arrangement or re-arrangement or duplication of known devices each functioning independently of one another in a known way; (g) Omitted by Patents (Amendment) Act, 2002. (h) A method of agriculture or horticulture; (i) 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; G) 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 plant sand animals, (k) a computer programme per se other than its technical application to industry or a combination with hardware; ()) A literary, dramatic, musical or artistic work or any other aesthetic creation whatsoever including cinematographic works and television productions; (m) a mere scheme or rule or method of performing mental act or method of playing game; {n) A presentation of informatio! REO 26(0) Topography of integrated circuits; (p) An invention which in effect, is traditional knowledge or which is an aggregation or duplication of known properties of traditionally known component or components. Section 4 prohibits the grant of patent in respect of an invention relating to atomic energy falling within Subsection (1) of Section 20 of the Atomic Energy Act, 1962. Section 20 of the Atomic Energy Act, 1962 contains special provision relating to inventions. Under Section 20 (1) of the Atomic Energy Act, 1962 “no patents shall be granted for inventions which in the opinion of the Central Government are useful for or relate to the production, control, use or disposal of atomic energy or the prospecting, mining, extraction, production, physical and chemical treatment, fabrication, enrichment, canning or use of any prescribed substance or radioactive substance or the ensuring of safety in atomic energy operations”. 27Types of Patent applications in India and outside India. 1. PROVISIONAL APPLICATION A provisional application is a temporary application which is filed when the invention is not finalized and is still under experimentation. Advantages of filing a provisional application + Applicant gets 12 months’ time to fully develop the invention and ascertain its market potential » Helps to establish “priority” right over the invention » Enables the applicant to use the term "patent pending” on their product » Less expensive to prepare and file the application + Enables the applicant to file International applications and claim priority within 12 months. However, in order for the patent to be granted, a provisional application must be followed by a complete specification within 12 months. Moreover, the provisional application should be sufficiently detailed and must be drafted very carefully to ensure that the priority rights are secured for your invention. 2. ORDINARY APPLICATION OR NON-PROVISIONAL APPLICATION An application for patent filed in the Patent Office without claiming any priority of application made in a convention country or without any reference to any other application under process in the office is called an ordinary application. An ordinary application must be accompanied with a complete specification and claims. 3. CONVENTION APPLICATION An application for patent filed in the Patent Office, claiming a priority date based on the same or substantially similar application filed in one or more of the convention countries, is called a convention application. In order to get convention status, an applicant should file the application in the Indian Patent Office within 12 months from the date of first filing of a similar application in the convention country. 4, PCT INTERNATIONAL APPLICATION A PCT Application is an international application governed by the Patent Cooperation Treaty, and can be validated in upto 142 countries. ES 28Advantages of filing a PCT Application » A single international patent application can be filed in order to seek protection for an invention in up to 142 countries throughout the world » The priority date obtained by filing a PCT application is internationally recognized, and has an effect in each of the countries designated. + _ It gives the application 30/31 months to enter into various countries from the international filing date or the priority date, and therefore gives the applicant more time to assess the viability of the invention. + Delays the expenses associated with applying for a patent in various countries , Provides an International Search Report citing prior art, which gives an indication to the applicant whether the invention is novel and innovative. + Provides an option for requesting an International Preliminary Examination Report, the report containing an opinion on the patentability of the invention. + The International Search Report and International Preliminary Examination Report, allows the applicant to make more informed choices early in the patent process, and to amend the application to deal with any conflicting material, before the major expenses of the national phase of the patent process begin. + It also gives the applicant a fair idea on the patentability of the invention before incurring charges for filing and prosecuting the application in each country. 5, PCT NATIONAL PHASE APPLICATION When an international application is made according to PCT designating India, an applicant can file the national phase application in India within 31 months from the international filing date or the priority date (whichever is earlier). 6. PATENT OF ADDITION When an applicant feels that he has come across an invention which is a slight modification of the invention for which he has already applied for or has obtained patent, the applicant can go for patent of addition if the invention does not involve a substantial inventive step. There is no need to pay separate renewal fee for the patent of addition during the term of the main patent and it expires along with the main patent. 7. DIVISIONAL APPLICATION When an application made by applicant claims more than one invention, the applicant on his own or to meet the official objection may divide the application and file two or more applications, as applicable for each of the inventions. This type of application, divided out of the parent one, is called a Divisional Application. The priority date for all the divisional applications will be same as that claimed by the Parent Application (Ante-dating)1. FILING OF THE APPLICATION ‘On the date the application is filed, it is numbered. 2, MEETING PROCEDURAL OBJECTIONS Generally within a month of filing the application, the Patent Office sends a preliminary objection letter, which has to be complied with within a specified time limit. 3. PUBLICATION OF THE APPLICATION The application is published in the Official Gazette and is open to public after eighteen months from the date of filing of application or the date of priority of the application, whichever is earlier. An application for earlier publication could be filed by the applicant. 4, REQUEST FOR EXAMINATION A request for examination to be filed by the applicant or any other interested person within 36 months from the date of priority or filing of the patent application, whichever is earlier. . 5. PRE-GRANT OPPOSITION Within 3 months from the date of publication or before the grant of patent whichever is later - any person may file opposition on limited grounds. Opposition is considered only when request for examination filed, 6. FIRST EXAMINATION REPORT The Examiner of Patents is required to issue a First Examination Report, within one month but not exceeding three months from the date of the reference. This Report raises various substantive and procedural objections. SSS 307. MEETING THE OFFICIAL OBJECTIONS ihe applicant has to comply with the objections to put the application in order for eeplance within 6 months from the date of the Report. This period could be extended by another three months by filing an application to that effect. 8. GRANT OF THE PATENT Oe pPlicant complies with objections raised in the First Statement of »jections within 6 months (extendable by 3 months) from the date of First Statement. Else the application is deemed to have been abandoned. 9. POST-GRANT OPPOSITION Within 1 year from the date of publication of grant of a patent, any person interested may file an Opposition on the grounds enlisted in Section 25(3). Surrender of Patent * Notice to the Controller Section 63 entitles the patentee to offer to surrender his patent, at any time by giving notice to the Controller. * Notice of opposition Any person interested may, within the prescribed. period after such publication, give notice of opposition to the Controller and where such notice in given the Controller shall notify the patentee. * Controller order If the Controller is satisfied after hearing the patentee and any opponent, if desirous of being heard, that the patent may properly be surrendered, he may accept the offer and order revoke the patent. Revocation of patent 1, Grounds Any Interested person including the government can file a petition on any of the grounds specified for revocation of a patent under Section 64 of the Patents Act. Section 64 dealing with revocation of patents stipulates that a patent, whether granted before or after the commencement of this Act, may, be revoked one petition of any person interested or of the Central Government by this Appellate Board or on a counterclaim in a suit for infringement of the patent by the High Court. 2. Serve a notice A notice of any petition for revocation of a patent under this section shall be served on all persons appearing from the register to be proprietors of that patent or to have shares or interests therein and it shall not be necessary to serve a notice on any other person. 313. Revocation of Patent in Public Interest As per section 66 of the Patents ae hers the Central Government is of opinion that a patent or the mode in the public, it ma se i is mischievous to the State or generally prejudicial to a declaration : 'Yy, alter giving the patentee an opportunity to be heard, make ‘0 that effect in the Official Gazette and thereupon the patent shall be deemed to be revoked. Revocation of Patents for Non Working Controller can make an order to revoke a patent for non working if the reasonable requirements of the public are not still met after the grant of compulsory license. According to section 85 of the Patents Act where, in respect of a patent, a compulsory license has been granted, the Central Government or any person interested may, after the expiration of two years from the date of the order granting the first compulsory licence, apply to the Controller for an order revoking the patent on the ground that the patented invention has not been worked in the territory of India or that reasonable requirements of the public with respect to the patented invention has not been satisfied or that the patented invention is not available to the public at a reasonably affordable price. Central Government order Section 65 deals with revocation of patent and amendment of complete specification on directions of the Government in cases relating to atomic energy. Section 65 as amended by Patents (Amendment) Act, 200Sprovides that where at any time after grant of a patent, the Central Government is satisfied that a patent is foran invention relating to atomic energy for which no patent can be granted under sub- section (1) of section 20 of the Atomic Energy Act, 1962, it may direct the Controller to revoke the patent, and thereupon the Controller, after giving notice, to the patentee and every other person whose name has been entered in the register as having an interest in the patent, and after giving them an opportunity of being heard, may revoke the patent. Sub-section 2 empowers the Controller may allow the patentee to amend the complete specification in such manner as he considers necessary instead of revoking the patent. . Notice of opposition Under Rule 87 of the Patents Rules, 1970 the Controller is required to publish the notice of an offer given under section 63. Any person interested may, within three months from the date of publication of the notice, give notice of opposition to the Controller in Form 14 in duplicate. The procedure specified in rules 57 to 63 relating to the filing of written statement, reply statement, leaving evidence, hearing and costs shall, so far as may be, apply to the hearing of the opposition under section 63 as they apply to the hearing in opposition proceeding. 327. Controller order If the Controller accepts the patentee’s offer to surrender the patent, he may direct the patentee to return the patent, and on receipt of such patent, the Controller shall by order revoke it and publish the revocation of the patent. Restoration of Patents 1. Application for the restoration Section 60 provides that where a patent has ceased to have effect by reason of failure to pay any renewal fee within the period prescribed under section 53 or within period as may be allowed under section 142(4),the patentee or his legal representative and where the patent was held by two or more persons jointly, then with the leave of the Controller one or more of them without joining the others, may within eighteen months from the date on which the patent ceased to have effect, make an application for the restoration of the patent. 2. Procedure for Disposal of Applications for Restoration of Lapsed Patents Section 61 provides that if, after hearing the applicant in cases where the applicant so desires or the Controller thinks fit, the Controller is prima facie satisfied that the failure to pay the renewal fee was unintentional and that there has been no undue delay in the making of the application, he shall publish the application in the prescribed manner; and within the prescribed period, any person interested may give notice to the Controller of opposition thereto on either or both of the following grounds that (a) The failure to pay the renewal fee was not unintentional; or (b) There has been undue delay in the making of the application. If notice of opposition is given within the prescribed period aforesaid, the Controller shall notify the applicant, and shall give to him and to the opponent an opportunity to be heard before deciding the case. If no notice of opposition is given within the prescribed period aforesaid or if in the case of opposition, the decision of the Controller is in favor of the applicant, the Controller shall, upon payment of any unpaid renewal fee and such additional fee as may be prescribed, restore the patent and any patent of addition specified in the application which has ceased to have effect on the cesser of that patent. 333. Rights. of Patentees of Lapsed Patents which have been Restored. Shall ben Provides that where a patent is restored, the rights of the patentee . »ject to such conditions as may be prescribed and to such other conditions as the Controller thinks fit to impose for the protection OF hoapensation of persons who may have begun to avail themselves of, of ave taken definite steps by contract or otherwise to avail themselves of, the patented invention between the date when the patent ceased to have effect and the date of the publication of the application for restoration of the patent. No suit or other proceeding shall be commenced or prosecuted in respect of an infringement of a patent committed between the date on which the patent ceased to have effect and the date of the publication of the application for restoration of the patent. 4. Procedure for Restoration of Patents Rule 84 requires that an application for the restoration of a patent under section 60 be made in Form 15.Where the Controller is satisfied that a prima facie case for the restoration of any patent has not been made out, he shall intimate the applicant accordingly and unless the applicant makes a request to be heard in the matter within one month from the date of such intimation, the Controller shall refuse the application. Where applicant requests for a hearing within the time prescribed and the Controller, after giving the applicant such a hearing, is prima facie satisfied that the failure to pay the renewal fees was unintentional, he shall publish the application. Controller decision Rule 86 dealing with payment of unpaid renewal fees provides that where the Controller decides in favour of the applicant, the applicant shall pay the unpaid renewal fees and the additional fee as specifiel in the First Schedule, within a month from the date of the order of the Controller allowing the application for restoration, The Controller has been put under obligation to publish his decision. Infringement of Patents Patent infringement means the violation of the exclusive rights of the patent holder. As discussed earlier, patent rights are the exclusive rights granted by the Government to an inventor over his invention for alimited period of time. In other words, if any person exercises the exclusive rights of the patent holder without the patent owner's authorization then that person is liable for patent infringement. 34Unlike the Design law, the Patents law does not specify as to what would constitute infringement of a patented product or process. However, the following acts when committed without the consent of the patentee shall amount to infringement: (i) Making, using, offering for sale, selling, importing the patented product; (ii) Using the patented process, or using, offering for sale, selling or importing the product directly obtained by that process There are three basic types of patent infringements: a) Direct Infringement Direct patent infringement is the most obvious and the most common form of patent infringement. Basically, direct patent infringement occurs when a product that is substantially close to a patented product or invention is marketed, sold, or used commercially without permission from the owner of the patented product or invention. b) Indirect Infringement and contributory infringement Indirect patent infringement suggests that there was some amount of deceit or accidental patent infringement in the incident. For instance, A holds a patent for a device and B manufactures a device which is substantially similar to the A’s device. B is supplied with a product from another person C to facilitate manufacturing of the B’s device. If the device so manufactured by B infringes upon A’s patent, then the person C indirectly infringes A's patent. Further, if such a product is knowingly sold or supplied, it may lead to “contributory infringement”. In the above example, if the person C knowingly supplies the product to B then the infringement is construed as contributory infringement. 35Remedies for infringement of patents (Offences &Penalties) SI.No NATURE OF OFFENCE PUNISHMENT Contravention of Secrecy directions given | Imprisonment up to two 1 under section 35 by Controller Prohibiting | years or fine or both the publication or communication of information relating to defense purpose | 2, | falsification of entry in the register and| Imprisonment up to two “| tendering such entries in evidence years or fine or both 3. _| Unauthorized claim of patent rights. Fine up to rupees one lakh | 4 | Wrongful use of words “patent office “ on| Imprisonment up to six) "| place or document months orfine or both _| | Refusal or failure to supply information| Fine up to rupees Ten lakh | 5. | required under sec 100(5) and sec 146 | regarding working of parent | Practice by unregistered patent agent In case of first offence fine upto to rupees one lakh, 6. in case of second or subsequent offence upto rupees five lakh.Different Prescribed forms used in patent Act |. Application for Grant of Patent — Form 01 2. Provisional/Complete Form 02 Specification 3. Statement and Undertaking Form 03 Under Section 8 4. Request for Extension of Time Form 04 5. Declaration as to Inventorship Form 05 6. Claim or Request Regarding any Form 06 ‘Change in Applicant for Patent 7, Notice of Opposition Form 07 8. Representation for Opposition to Form 07(A) Grant of Patent 9, Claim or Request Regarding Form 08 Mention of Inventor as Such ina Patent 10. Notice of Opposition Form 07 11. Representation for Opposition to Form 07(A) Grant of Patent 12. Claim or Request Regarding Form 08 Mention of Inventor as Such in a Patent 13. Request for Publication Form 9 14, Application for Amendment of — Form 10 Patent 15, Application for Direction of The Form 11 37Controller 16. Request for Grant of Patent Form 12 Under Section 26(1) and 52(2) 17. Application for Amendment of — Form 13 The Application for Patent/Complete Specification 18. Notice of Opposition to Form 14 Amendment / Restoration / Surrender 19. Application for Restoration of Form 15 Patent 20. Application for Restoration of Form 16 Title/Interest 21. Application for Compulsory Form 17 License 22. Request/Express Request for Form 18 Examination of Application for Patent 23. Application for Revocation ofa Form 19 Patent for Non Working, 24. Application for Revision of Form 20 Terms And Conditions of License 25. Request for Termination of Form 21 ‘Compulsory License 26. Application Registration of Form 22 Patent Agent SSS 3327. Application for The Registration of Name in The Register of Patent Agents 28. Application for Review/setting Aside Controller Decision/Order 29. Request for Permission for Making Patent Application Outside 30. Authorization of a Patent Agent/Or any Person in a Matter or Proceeding Under The Act 31. Statement Regarding the Working of the Patented Invention on Commercial Scale in India 32. To Be Submitted By Small Entity / Startup 33. Request For Expedited Examination Of Application For Patent 34, Request For Withdrawal Of The Application For Patent 35. To Be Used When No Other Form Is Prescribed Form 23 Form 24 Form 25 Form 26 Form 27 Form 28 Form 28(A) Form 29 Form 30 39PATENT AGENTS The work relating to drafting of specifications, making of application for a patent, subsequent correspondence with the Patent office on the objections raised, representing the applicants case at the hearings, filing opposition and defending application against opposition is entrusted to a qualified Patent Agent. The Controller maintains a register to be called the ‘register of patent agents’ in which there will be entered the names, address and other relevant particular as may be prescribed of all persons qualified to have their names so entered according to section 126. According to rule 4 such register has to be maintained at the Head Office of the Patent Office, Calcutta. The register will contain the name, nationality address of the principal place of business, branch office address and. other relevant particular as may be prescribed, if any, the qualification and the date of registration of entry as Patent agent. Qualifications for Registration as Patent Agents According to Section 126 a person will be qualified to have his name entered in the register of patent agents if he fulfils the following conditions, namely: (a) He/she is a citizen of India; (b) He/she has completed the age of 21 years; (c) He/she has obtained a degree in Science, Engineering or Technology from any University established under the law for the time being in force in the territory of India or possesses such other equivalent qualifications as the Central Government may specify in this behalf, and, in addition, - (i) has passed the qualifying examination prescribed for the purpose; or (ii) has, for a total period of not less than ten years, functioned either as an examiner or discharged the functions of the Controller under section 73,or both, but ceased to hold any such capacity at the time of making the application for registration; (d) He has paid such fee as may be prescribed. i et 40Disqualification for Registration as a Patent Agent Rule 114 provides for conditions for disqualification of a person from registration as Patent Agent. As per Rule 114, a person will not be eligible to be registered as a patent agent, if he- (i) Has been adjudged by a competent court to be of unsound mind; (ii) Is an undercharged insolvent;. (iii) Being a discharged insolvent, has obtained from the court a certificate to the effect that his insolvency was caused by misfortune without any misconduct on his part, (iv) Has been convicted by a competent court, whether within or outside India of an offence to undergo a term of imprisonment, unless the offence of which he has been convicted has been pardoned or unless on an application made by him, the Central Government has, by order in this behalf, removed the disability; (v) Being a legal practitioner has been guilty of professional misconduct; or (vi) Being a chartered accountant has been guilty of negligence or misconduct.