PATENT LAW AND APPLICATION

Introduction
A Patent is a legal monopoly, which is granted for a limited time by a country to the owner of an invention. Merely to have a patent does not give the owner the rights to use or exploit the patented invention. That right may still be affected by other laws such as health and safety regulation, or the food and drugs regulation or even by other patents. The patent, in the eyes of the law, is a property right and it can be given away, inherited, sold, licensed and can even be abandoned. As it is conferred by the government, the government, in certain cases even after grant or even if it has been, in the meantime, sold or licensed, can revoke it.

A patent is a monopoly right granted to person who has invented a new and useful article or an improvement of an existing article or an improvement of an existing article or a new process of making an article. It consists of an exclusive right to manufacture the new article invented or manufacture an article according to the invented process for a limited period. During the term of patent the owner of the patent, i.e. the patentee can prevent any other person from using the potential invention. But the creation of patent is territorial in extent where it has been created by a statute.

• A Patent gives an inventor the right for a limited period to stop others from making, using, selling or importing an invention without the permission of the inventor. That is why patent is called a “negative right”
• Patents are generally concerned with functional and technical aspects of products and processes and must fulfill specific conditions to be granted.
• Most patents are for incremental improvements in known technology – evolution rather than revolution. The technology does not have to be complex.
• Patent rights are territorial; an Indian patent does not give rights outside of India.
• Patent rights last for up to 20 years in India and in most countries outside India.
• Depending on where you wish your patent to be in effect, you must apply to the appropriate body. In India, this is The Indian Patent Office. There are various Patent Offices around the world. Alternatively, a Patent Agent can apply on your behalf.

1. Legal Basis

• The Patents Act 1970, as amended by The Patents (Amendment) Act 2005.
• The Patents Rules, 2003, as amended by The (Amendment) Rules 2006.

2. Filing Application

Any person, even if he or she is a minor, may apply for a patent either alone or jointly with any other person. Such persons include the inventor, or his assignee or legal representative in the case of an ordinary application or, in the case of a priority application, the applicant in the convention country or his assignee or his legal representative. A corporate body cannot be named as an inventor. Foreigners and nationals not living in India need an address for service in India for this purpose. They may appoint a registered agent or representative whose address for service can be the address for service in India.

• Place of filing:

An application for patent must be filed at the Patent Office branch within whose territorial jurisdiction the applicant resides or has his principal place of business or domicile. A foreign applicant must file in the Patent Office branch having jurisdiction over the place where his address for service is located.

• Priority:

Priority can be claimed from the earliest corresponding application in a convention country, provided that the Indian application is filed within twelve months of the priority date. Multiple and partial priorities are allowed.

• Specification:

A priority application must be filed with a complete specification in the first instance but a non-priority application may be filed with either a provisional specification or a complete specification. Where a provisional specification is filed in the first instance, a complete specification must be filed within twelve months. Where two or more provisional specifications have been filed, the specifications may be cognated and all the subject matter may be incorporated into a single complete specification to be lodged within twelve months of the date of the earliest filed provisional specification.

• Naming of inventor(s):

As regards non-priority applications, the inventor(s) must be named in the application form i.e. form 1. As regards priority applications, a declaration as to inventorship must be filed with the application or within a maximum period of six months.

• Information of corresponding applications in other countries:

It is necessary at the time of filing a patent application in India, to inform the Controller of the details of all corresponding applications in other countries under form 3 and to undertake to keep the Controller so informed up to the grant of the Indian application. Failure to do so could result in the refusal of the application in case it is opposed, or even revocation of a patent in proceedings before the High Court.

3. Patent Examination

• Examination of application:

Both formal and substantive examinations are made by the Indian Patent Office. Examination is by request form 18.

• Procedure:

An applicant is required to meet all the objections and requirements of the Patent Office within a period of twelve months from the date of the first examination report (FER) issued by the Controller. No extension of time is permitted. If a patent application is not put in order in twelve months from the date of the FER it lapses.

• Amendment of application:

An applicant may, of his own accord, apply to the Controller for amendment of his application or any document filed in respect thereof but such amendments must be filed by way of correction, explanation, or disclaimer. An applicant may also amend his application or specification at the instance of the examiner and file a separate divisional application(s) for the other invention(s) which will be accorded the date of filing of the complete specification of the original application or such later date as the Controller may fix. The divisional application must be filed prior to the grant of the parent application.

4. Patent Publication

Publication takes place 18 months from the date of the application. Urgent publication is possible on request on payment of fees. On and from the date of publication of application for patent and until the date of grant of a patent in respect of such application, the applicant will have the like privileges and rights as if a patent for the invention had been granted on the date of publication of the application. 11A[7]

• Pre-Grant opposition of patent application :

After publication but before the date of grant by way of representation, anyone may file opposition to the grant of a patent.

• Publication of subject matter:

The grant of an application is published in the official journal and is notified therein for post Grant opposition. A patent can be revoked within one year after grant by postgrant opposition proceedings before the Controller of Patents .

• Revocation of a patent:

It is possible on the grounds of prior publication anywhere in the world, public use or knowledge in India, lack of novelty with regard to the subject matter, obviousness, lack of inventiveness, ambiguity, insufficiency of description of the invention, fraud, false suggestion or representation that the person named as the inventor is not the true inventor, lack of utility, non-patentability of subject matter (e.g. food, drug or medicine per se, atomic energy, mere admixture, mere arrangement of known devices, process of testing, method of agriculture or horticulture, process of medicinal treatment), failure to furnish or falsity in material particulars of information regarding corresponding applications in other countries supplied to the Controller or that the invention is contrary to law or morality.

• Annuities:

Except in the case of a patent of addition, for which no annuities are payable, annual renewal fees must be paid during the life of an Indian patent, the first of such fees falling due at the end of the second year of the life of a patents granted. Renewal fees falling due during the pendency of the application are payable within a non-extendible period of three months from the date the patent is taken on record in the Register of Patents. Two or more year’s renewal fees may be paid in advance if the patentee so desires. A maximum extension of six months may be obtained on payment of the prescribed penalty fees. If the renewal fee in question is not paid within the extended period available, the patent will lapse.

• Restoration:

A lapsed patent may be restored if an application for restoration is made within one year of the date of lapsing of the patent, provided it can be shown that the lapsing of the patent was unintentional and that there was no undue delay in making the application for restoration.

• Working of patents:

Every patentee and every licensee is required to furnish within three months from the end of the calendar year in which the patent is granted, a statement as to the extent to which the invention has been worked in India on a commercial scale in the preceding year under form 27. Non filing of this statement is a criminal offence. According to Section 146(2) of the Indian Patents Act, it is mandatory to file a statement on Form 27 regarding the working or non-working of a patented invention on a commercial scale in India in the preceding year i.e. (From 1^st January 2011 till 31^st December 2011). Non-filing of such a statement will attract a penalty of Rs. 10 Lakhs.

• Compulsory licenses:

After three years from the date of sealing of a patent, an interested party may apply to the Controller for the grant of a compulsory license alleging that the reasonable requirements of the public with respect to the invention have not been satisfied or that the invention is not available at reasonable price. If the Controller is satisfied that a prima facie case for an applicant for compulsory license has been made out, he shall serve notice on the patentees who, if they so desire, may oppose the application for compulsory license.

• Marking:

It is not compulsory but advisable as otherwise damages may be difficult to recover in cases of infringement. The invention may be marked with the word “Patented” or “Patent” accompanied by the number and year of the patent.

• Infringement:

An infringement suit may be instituted by a patentee or his exclusive licensee. Every ground for revocation is available as a defense and revocation can be counter claimed in infringement proceedings. The Court may grant relief in respect of a valid claim or claims even though one or more other claims in the suit may be held to be invalid. Relief may include damages and costs as awarded by the court. A suit for injunction may be instituted and damages recovered in cases where there have been groundless threats. Any person may institute a suit for declaration as to non-infringement of a patent. Onus of proof of non-infringement lies with the defendant.

5. Patents and Computer Software

It is possible to patent programs for computers which, when run on a computer produce a “technical effect or includes hardware” . However, if a program does not produce a technical effect when run on a computer it is unlikely to be patentable. A technical effect is generally an improvement in technology and needs to be in an area of technology, which is patentable.

For instance, an improved program for translating between Japanese and English is not patentable because linguistics is a mental process, not a technical field. On the other hand, a program, which speeds up image enhancement, may be patentable because it produces a technical improvement in a technical area.

Some countries, such as the USA, which may be a large potential market for your software, have a more liberal approach to software patenting and often grant patents for software, which would be excluded in India and other countries.

Deciding whether or not a particular computer program is patentable is a complex issue and advice from a Patent Agent may help to determine which is the most effective form of protection available.

Patent Registration Requirements: Filing a Patent Application in India

Requirements (to be sent to patent agent) for filing patent application in India

• Authorization of agent.
• Specifications in English.
• Sets of drawings.
• Priority document if priority is to be claimed (i.e. certified copy of the specification as originally filed). In case the priority document is not in English, it must be accompanied by an attested or certified English translation thereof.
• Full name, address, occupation and nationality of both the inventor and the applicant ( if an assignee) and full name, address, occupation and nationality of the applicant in the convention country, should be given.
• Details of all corresponding applications in other countries.
• Proof of the applicant’s right to make the application within three months from the filing of the application.
• Declaration as to inventorship, signed by the applicant where priority has been claimed or where complete specification is filed after a provisional specification; can be filed within three months of filing of application or complete specification.
• Application Form 1 duly completed and signed along with
  • the full name of the inventor and / or the applicant
  • the name and designation of the person signing on behalf of the applicant
  • Addresses and nationalities of all the inventors, applicants and also of the applicants in the convention country (if different from India) and
  • Date of filing of the basic application in the convention country.

How can you protect your invention in several countries?

You have a few options. For example:

(a) you can file separate patent applications at the same time in all of the countries in which you would like to protect your invention (for some countries, regional patents may be available);

(b) you can file a patent application in a Paris Convention country (one of the Member States of the Paris Convention for the Protection of Industrial Property),and then file separate patent applications in other Paris Convention countries within 12 months from the filing date of that first patent application, giving you the benefit in all those countries of the filing date of the first application;

(c) you can file an application under the PCT, which is simpler, easier and more cost-effective than either (a) or (b).

What is the Patent Cooperation Treaty (PCT)?

The PCT is an international treaty, administered by the World Intellectual Property Organization (WIPO), between more than 140 Paris Convention countries. The PCT makes it possible to seek patent protection for an invention simultaneously in each of a large number of countries by filing a single “international” patent application instead of filing several separate national or regional patent applications. The granting of patents remains under the control of the national or regional patent Offices in what is called the “national phase”. Briefly, an outline of the PCT procedure includes the following steps:

Filing: you file an international application, complying with the PCT formality requirements, in one language, and you pay one set of fees.

International Search: an “International Searching Authority (ISA)” (one of the world’s major patent Offices) identifies the published documents which may have an influence on whether your invention is patentable and establishes an opinion on your invention’s potential patentability.

International Publication: as soon as possible after the expiration of 18 months from the earliest filing date, the content of your international application is disclosed to the world.

Supplementary International Search (optional): an ISA which is willing to carry out supplementary searches and which did not carry out the main search, identifies published documents which may not have been searched by the ISA which carried out the main search because of the diversity of prior art in different languages and different technical fields.

International Preliminary Examination (optional): one of the ISAs, at your request, carries out an additional patentability analysis, after international publication, usually on an amended version of your application.

National Phase: after the end of the PCT procedure, you start to pursue the grant of your patents directly before the national (or regional) patent Offices of the countries in which you want to obtain them.

Conclusion:

India is signatory to patent corporation treaty therefore the applicant can take the benefit of PCT, for filing the international application. The Indian and PCT applications filed at patent offices according tot their jurisdiction. The application should be filed by authorized agent called patent agent. The procedure for filing of patent in India is given under Patent Act 1970 and also in Patent Rules 2003 and the said all the procedure is explained above.

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