What is a Patent?
A Patent is an exclusive right granted to a person who has
invented a new and useful article or an improvement of an existing article or a
new process of making an article. The exclusive right is to manufacture the new
process of making an article invented or manufacture an article according to
invented process for a limited period. During the term of the patent the owner
of the patent, i.e. the patentee can prevent any other person from using the
patented invention. After the expiry of the duration of the patent anybody can
make use of the invention. The invention then becomes part of the public
domain.
A Patent is creation of statute and is therefore territorial in
extent. Thus a patent granted in one country cannot be enforced in another
country unless the invention concerned is patented in that country also. (P)
What is patentable?
Invention means any new and useful:
Process, method or manner of manufacture
Machines, apparatus or a product
Substances produced by manufacture and include any new and useful
improvements of any of them and an alleged invention.
Inventions claiming substances intended for use, or capable of
being used, as food or as medicine or drug or relating to substances prepared
or produced by chemical processes (including alloys, optical glass, semi
conductors and inter-metallic compounds) are now patentable under the patent
ordinance 2004.
Who can apply for a patent?
A patent application can be filed either by true and first
inventor or his assignee, either alone or jointly with any other person.
However, legal representative of any deceased person can also make an
application for patent.
What can be patented?
An invention relating either to a product or process that is new,
involving inventive step and capable of industrial application can be patented.
However, it must not fall into the categories of inventions that are non-
patentable under section 3 and 4 of the Act.
Where can I patent it?
The decision of where to patent is a commercial decision based
upon the importance of the patented invention, the potential scope of
protection provided by the Claims of the Patent, and the likely costs involved
in securing and maintaining patent protection in any given country.
Patent protection is available in most countries so you have to decide where to
file your applications. In India, Patent application can be filed at the
Patent office of Delhi or Kolkata or Mumbai.
Does Indian Patent give protection worldwide?
Patent protection is territorial right and therefore it is
effective only within the territory of India. However, filing an application in
India enables the applicant to file a corresponding application for same
invention in convention countries, within or before expiry of twelve months
from the filing date in India. Therefore, separate patents should be obtained
in each country where the applicant requires protection of his invention in
those countries. There is no patent valid worldwide.
When an application for patent is published?
Every application for patent is published after 18 months from the
date of its filing or priority date whichever is earlier. However, following
applications are not published.
Is there any provision in the law for early publication?
Yes, the applicant can make a request for early publication in
Form 9 along with the prescribed fee. After receiving such request the Patent
Office publishes such application within a period of one month provided the
invention contained thereon does not relate to atomic energy or defense
purpose.
Can any invention be patented after publication or display in the
public exhibition?
Generally, a patent application for the invention which has been either
published or publicly displayed cannot be filed. However the Patents Act
provides a grace period of 12 months for filing of patent application from the
date of its publication in a journal or its public display in a exhibition
organized by the Government or disclosure before any learned society or published
by applicant. The details conditions are provided under Chapter VI of the Act
(Section 29-34).
Should application for patent be filed before or after,
publication of the details of the invention?
The application for patent should be filed before the publication of the
invention and till then it should not be disclosed or published. Disclosure of
invention by publication before filing of the patent application may be
detrimental to novelty of the invention as it may no longer be considered novel
due to such publication. However, under certain conditions, there is grace
period of 12 months for filing application even after publication.
Why should one patent his invention?
A1: To enjoy exclusive rights over the invention. If the inventor
does not obtain patent rights for his invention and introduces his
product/process based on his invention in the market, any body can copy his
invention and exploit it commercially. To debar others from using, selling,
offering for sale or manufacturing the inventor must obtain a patent. The
inventor can use it himself/herself, sell or licence it to profit commercially.
Patents are useful in preventing your competitors from exploiting
your invention.
You can force your competitors to design around your invention (if
that is possible) which can cost them time and money.
It may put you in a stronger position with other companies who
have Patents in which you are interested.
Customers are often impressed by 'Patented Technology' so
patenting can have a positive role to play in your marketing strategy.
Patents are often a good 'keep off the grass' warning to other
businesses. Many competitors are now more aware of Patents and the consequences
of being found to be infringing a Patent.
How can one find out that an invention is already patented?
The person concerned can perform a preliminary search on Patent
Office website in the Indian patent data base of granted patent or Patent
Office journal published every week or by making search in the documents kept
in the Patent Office Search and Reference Room, which contains Indian patents
arranged according to international patent classification system as well in
serial number. It is open to the general public from Monday to Friday, except
Gazetted holidays. The public can also conduct search free of charge on the
website of Patent Office. The person concerned can also make a request for such
information under section 153 of the Act.
Patentable Inventions:
Invention means a new product or process involving inventive step
and capable of industrial application. Not all inventions are patentable. For
an invention to be patentable, it must be new, useful and non-obvious.
Invention means a new product or process involving inventive step and capable
of industrial application. Inventive step is defined as a feature of an
invention that involves technical advance as compared to the existing knowledge
or having economic significance or both and that makes the invention not
obvious to the person skilled in the art. The national laws of a number of
countries prescribe limitations on the patentability of inventions. As for
example, the Indian law declares that Inventions which are frivolous or which
claim anything obviously contrary to well established natural laws as not
patentable. Inventions, the commercial exploitation of which could be contrary
to public order or morality or which cause serious prejudice to human, animal
or plant life or health or to the environment are also declared as
non-patentable. Similarly there are several other specific categories of
inventions, which are declared as non-patentable in India.
Not Patentable Inventions:
The following are not invention within the meaning of this Act,-
an invention which is frivolous or which claims anything obviously
contrary to well established natural laws;
an invention the primary or intended use or commercial
exploitation of which could be contrary public order or morality or which
causes serious prejudice to human, animal or plant life or health or to the
environment;
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;
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 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.
Explanation.- For the purposes of this clause, salts, esters
ethers, polymorphs, metabolites, pure form, particle size, isomer, mixtures of
isomers, complexes, combinations and other derivatives of known substance shall
be considered to be the same substance, unless thy differ significantly in
properties with regard to efficacy.
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;
the mere arrangement or re-arrangement or duplication of known
devices each functioning independently of one another in a known way;
a method of agriculture or horticulture;
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.
plants and animals in whole or any part thereof other than
microorganisms but including seeds, varieties and species and essentially
biological processes for production or propagation of plants and animals;
a mathematical or business method or a computer program per se or
algorithms;
a literary, dramatic, musical or artistic work or any other
aesthetic creation whatsoever including cinematographic works and television
production;
a mere scheme or rule or method of performing mental act or method
of playing game;
a presentation of information;
Topography of integrated circuits;
an invention which in effect, is traditional knowledge or which is
an aggregation or duplication of known properties of traditionally known
component or components.
What technology is protectable under a patent?
The invention must be new, useful, and non-obvious. Typically
inventions are aesthetic designs, functional items, functional methods, or
asexually reproduced plants.
Can I keep some information about my invention a secret?
There is a requirement that the invention be completely disclosed.
Failure to disclose will invalidate the resulting patent. One cannot maintain
information important to the patent as trade secret if the information was
known as of the filing date.
What rights does a patent provide?
The right to prohibit (see previous question) does not
automatically include the right for the inventor to make, use, sell, import
and/or offer the invention for sale. Anyone is free, however, to engage in such
activities unless there is a law prohibiting it.
Up to what extent the inventor has to disclose his/her invention
to get a patent?
A10: An inventor has to disclose his/her invention in such a
manner that any person, other than the inventor, skilled in the art should be
able to work the invention.
How to prepare Patent Specification?
A patent specification can be prepared by the applicant himself or
his registered and authorized agent. The patent specification generally
comprises of the title of the invention indicating its technical field, prior
art, draw backs in the prior art, the solution provided by the inventor to
obviate the drawbacks of the prior art, a concise but sufficient description of
the invention and its usefulness, drawings (if Any) and details of best method
of its working. The complete specification must contain at least one claim or
statement of claims defining the scope of the invention for which protection is
sought for.
What is a provisional specification?
Indian Patent Law follows first to file system. Provisional
specification describes the nature of the invention to have the priority date
of filing of the application in which the inventive idea has been disclosed. It
must be followed by a complete specification describing the details of the
invention along with a statement of claims within 12 months after filing of the
provisional application. If the complete specification is not filed within the
prescribed period, the application is treated as deemed to have been abandoned.
Is it necessary to file a provisional application?
Generally, an application filed with provisional specification is
known as provisional application which is useful in establishing a priority
date for your invention. Moreover, filing of a provisional application is
useful as it gives sufficient time to the applicant to assess and evaluate the
market potential of his invention before filing complete specification.
However, it is not necessary to file an application with provisional
specification and one can file application directly with complete
specification.
What is "Patent Pending" and "Patent Applied
for"?
The terms "Patent Pending" and "Patent Applied
For" are used to inform the public that an application for a patent has
been filed. Patent protection does not start until the actual grant of a
patent. Marking of an article as patented, when it is not, is illegal and
subject to penalty.
How useful is the marking of a product with "patent
pending" or "patent applied for" before the grant?
Marking of a product with the words “patent pending” or “Patent
applied for” after filing of the application for patent serve as a notice to
the public that an application for patent is pending with the Patent Office but
there is no legal significance of these words. The infringement action can be
initiated only after the patent is granted.
Is it possible to file International Patent Application under
Patent Cooperation Treaty (PCT) in India?
Yes, It is possible to file an international application known as
PCT application in India in the Patent Offices located at Kolkata, Chennai,
Mumbai and Delhi. All these offices act as Receiving Office (RO) for
International application.
What is the Patent Cooperation Treaty (PCT)?
The PCT is an international treaty, administered by the World
Intellectual Property Organization (WIPO), between more than 125 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 Office’s) 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.
International Preliminary Examination:
an “International Preliminary Examining Authority (IPEA)” (one of
the world’s major patent Offices), at your request, carries out an additional
patentability analysis, 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.
What can be patent in India? Which are Patentable Inventions?
An invention relating either to a product or process that is new,
involving inventive step and capable of industrial application can be patented.
However, it must not fall into the categories of inventions that are non-
patentable under section 3 and 4 of the Act.
Definition of invention:
According to Indian Patent Law:
Section 2(1) (j): ‘Invention’ means a new product or process
involving an inventive step and capable of industrial application. Section
2(1)(ja) : ‘Inventive step’ means a feature of an invention that involves
technical advance as compared to the existing knowledge or having economic
significance or both and that makes the invention not obvious to a person
skilled in the art. Section 2(1)(jl): ‘New invention’ means any invention or
technology which has not been anticipated by publication in any document or
used in the country or elsewhere in the world before the date of filing of
patent application with complete specification, i.e. the subject-matter has not
fallen in public domain or that it does not form part of the state of the art.
The word ‘invention’ is an abstract concept defining a situation which cannot
be explained in terms of known things. It derives its meaning from the
context or circumstances in which it is used.
Patentable Inventions:
According to Indian Patent Law:
Definition of invention: Section 2(1) (j): ‘Invention’ means a new
product or process involving an inventive step and capable of industrial
application.Section 2(1)(ja) : ‘Inventive step’ means a feature of an invention
that involves technical advance as compared to the existing knowledge or having
economic significance or both and that makes the invention not obvious to a
person skilled in the art.Section 2(1)(jl): ‘New invention’ means any invention
or technology which has not been anticipated by publication in any document or
used in the country or elsewhere in the world before the date of filing of
patent application with complete specification, i.e. the subject-matter has not
fallen in public domain or that it does not form part of the state of the art.The
word ‘invention’ is an abstract concept defining a situation which cannot be
explained in terms of known things.It derives its meaning from the context or
circumstances in which it is used.
When should an application for a patent be filed?
Filing of an application for a patent should be completed at the
earliest possible date and should not be delayed until the invention is fully
developed for commercial working. A provisional application can be filed with a
brief synopsis disclosing the essence or the nature of the invention.
What is the term for patent?
In India, generally the term for patent is twenty years.
Is it mandatory to obtain prior permission from the Patent Office
to file application for patent outside India or abroad?
Generally speaking, it is not necessary to obtain prior permission
from the Patent Office to file patent application abroad under following
circumstances.
Applicant is not Indian resident and invention is originated
abroad about.
If the applicant is Indian resident, a patent application has been
filed in India and six weeks period is over from that date.
The invention does not belong to Atomic Energy or defense purpose.
In other circumstances, the prior permission is required. For further details
kindly refer to section 39 of the Patents Act, 1970.
Under what circumstances, it is necessary to obtain a prior
permission from the Patent Office?
The person is required to take prior permission from the Patent
Office under following circumstances.
The applicant is Indian resident and invention is originated in
India,
Applicant does not wish to file patent application in India prior
to filing abroad.
If the applicant is Indian resident, a patent application has been
filed in India and six weeks period is not yet over from that date
The invention relates to atomic energy or defense purpose.
Is it essential to deposit biological material in the
international depository authority?
If the invention uses a biological material which is new, it is essential to
deposit the same in the International Depository Authority (IDA) prior to the
filing of the application in India in order to supplement the description. The
description in the specification should contain the name and address of the
International Depository Authority and, date and number of deposition of
Biological material. If such biological material is already known, in such case
it is not essential to deposit the same.
Is there any International Depository Authority in India?
Yes, there is an International Depository Authority in India
located at Chandigarh which is known as Institute of Microbial Technology
(IMTECH).
Can patent rights be transferred? The
proprietor of a patent or its registered grantee can assign, license or
mortgage the patent for any consideration. This power is wide enough to include
transfer of patent rights in whole or in part, or a licensing of patent whether
exclusively to one person or several persons. The creation of any interest in a
patent, including assignment, license or mortgage is not valid unless it
satisfies the following requirements: 1. The assignment, mortgage or license is
reduced to writing in a document and embodies all the terms and conditions
between the parties. 2. The application for the registration of the document is
filed within six months of its execution.
What is considered as the date of patent?
The date of patent is the priority date, which is the date on
which first application (provisional / Complete / PCT) filed disclosing the
invention. However, the date of publication is also important because it is
from this date that the legal protection of an invention disclosed in the
patent takes effect. The term of the patent is counted from this date of
application.
What is the nature of information needed while consulting a patent
attorney?
An explanation of the history of the invention, where you got the
idea from, how you developed it, any early failures and possibly prototypes,
with all your laboratory note books, etc., if possible. This will help the
patent agent to explain the inventive step which is necessary for obtaining the
patent. It also increases his or her understanding of the invention so as to
maximize the skill with which he or she can draft claims and specifications for
it.
What you think is the most inventive element or most useful
aspect, together with what other similar prior inventions you know of or have
developed the idea from or improved upon. If you have developed an improved
version of your competitor's products, admit it; be totally honest. It is vital
to be such so that the patent agent can describe your invention properly while
drafting the application and avoid excessive claims which might be struck down.
Drawings if any, which may illustrate the invention, should be
attached.
What are advantages of Patent to Inventor and/or Applicant?
To the inventor a patent system confers certain definite
advantages. The incentive for technological innovations is monetary reward. It
is not compulsory for an invention to be patented. An inventor may use his
invention secretly for as long as he can keep it secret. But the chances of
keeping the formula secret are meager especially when he has to engage workmen
to carry out the invention. In the case of machines or apparatus it is
well-night impossible to keep the invention secret since knowledge of the invention
may be obtained by dismantling the machine. If other people start manufacturing
the article by independent discovery or by pilferage of the secret, the
original inventor has no effective legal remedy. There is also the danger of a
competitor taking out a patent for the article and suing the secret user for
infringement. On the other hand, if a patent is obtained for the invention the
patentee gets the exclusive right to use the invention for a definite period,
which right can be lawfully enforced against infringers. If he has not the
financial resources to work the patent, he can get monetary reward by granting
licences to others or by assigning the patent.
Is patent application once filed is examined automatically?
The patent application is not examined automatically after its
filing. The examination is done only after receipt of the request of
examination either from the applicant or from third party.
When the request for examination can be filed?
The request for examination can be filed within a period of 48
months from the date of priority or date of filing of the application whichever
is earlier. For more details kindly refer to rule 24B of the Patents Rules 2003
as amended up to 2006.
What happens to a patent application once it is examined?
After examination, the Patent office issues an examination report to the
applicant which is generally known as First Examination Report (FER).
Thereafter the applicant is required to comply with the requirements within a
period of twelve months from the date of FER. In case, the application is found
to be in order for grant, the patent is granted, provided there is no pre-grant
opposition is filed or pending. A letter patent is issued to the applicant.
However, in case a pre-grant opposition is pending, the further action is taken
after disposition of the pre-grant opposition.
What happens when applicant is not able to meet the requirement
within the prescribed time?
If the applicant is not able to comply with or meet the requirement within 12
months, or does not submit the documents which were sent to him for compliance
within the said period, the application is deemed to have been abandoned.
Is there provision for extension beyond time limit of 12 months?
There is no provision for extension of time beyond the period of
12 months.
Does applicant get an opportunity of being heard before his
application is refused?
If applicant has not complied with the requirements within the prescribed time,
and no request for hearing has been made by the applicant, the controller may
not provide the opportunity of being heard. However the Controller shall
provide an opportunity of being heard to the applicant before refusing his
application if a request for such hearing has been made by the applicant at
least 10 days in advance before expiry of the statutory period.
What are the various stages involved in the grant of patent?
After filing the application for the grant of patent, a request
for examination is required to be made by the applicant or by third party and
thereafter it is taken up for examination by the Patent office. Usually, the
First Examination Report is issued and the applicant is given an opportunity to
correct the deficiencies in order to meet the objections raised in the said
report. The applicant must comply with the requirements within the prescribed
time otherwise his application would be treated as deemed to have been
abandoned. When all the requirements are met, the patent is granted and
notified in the Patent office Journal. However before the grant of patent and
after the publication of application, any person can make a representation for
pre-grant opposition.
What is time limit for filing the representation for pre-grant opposition?
A representation for pre-grant opposition can be filed within six
months from the date of publication of the application u/s 11A or before the
grant of patent. The grounds on which the representation can be filed are
provided u/s 25(1) of the Patents Act 1970.
Is there any fee for filing such representation for pre-grant
opposition?
There is no fee for filing representation for pre-grant opposition? This can be
filed by any person.
What are the grounds for filing representation for pre-grant
opposition?
The grounds for filing post-grant opposition are contained in section 25(1) of
the Patents Act 1970.
Is it possible to file pre-grant opposition even though there is
no request for examination filed?
Yes, it is possible to file representation for pre-grant opposition
even though there is no request for examination has been filed. However, the
representation will be considered only when a request for examination is
received within the prescribed period.
What is the time limit for filing post-grant opposition in the
patent office?
The time for filing post-grant opposition is 12 months from the
date of publication of the grant of patent in the official journal of the
patent office.
Is there any fee for filing post-grant opposition?
The post grant opposition has to be filed in the prescribed form 7
along with prescribed fees of Rs.1500 for natural person and Rs.6000 for person
other than natural person. The post grant opposition has to be filed by the
person interested and not by any other person.
What are the grounds for filing the post grant opposition?
The grounds for filing post-grant opposition are contained in
section 25(2) of the Patents Act 1970.
What are obligations of the patentee after the grant of patent?
After the grant of patent, every patentee has to maintain the patent by paying
renewal fee every year as prescribed in the schedule I. For first two years,
there is no renewal fee. The renewal fee is payable from 3rd year onwards. In
case the renewal fee is not paid the patent will be ceased.
Can the patentee pay renewal fee at a time or has to pay every
year?
The patentee has choice to pay the renewal fees every year or he
can pay in lump sum as well.
When a patent can be restored after its cessation?
A request for restoration of patent can be filed within 18 months
from the date of cessation of patent along with the prescribed fee. After
receipt of the request the matter is notified in the official journal for
further processing of the request.
Posted in: FAQ-PATENTS
