What is a patent?

A patent can be defined as a grant of exclusive rights to an inventor over his invention for a limited period of time. The exclusive rights conferred include the right to make, use, exercise, sell or distribute the invention in India. The term of a patent is twenty years, after the expiry of which, the invention would fall into the public domain. 1 What re the requirements for a patent? Patents are granted only after the satisfaction of certain requirements, which include the patentable subject-matter, utility, novelty, obviousness and specification. Patentable subject matter To be patentable, an invention should fall within the scope of patentable subject matter as defined by the patent statute. The invention must be a product or a process in order to be eligible for patent protection. With regard to medicine or drug and certain classes of chemicals no patent was granted for the product itself even if new, only the process of manufacturing the substance was patentable. After the Patents Amendment Ordinance, 2004, which commenced on January 1st, 2005, the provision relating to food, drugs and other chemicals have been omitted. Both product and process patents are now available for Food and Drugs. An invention, which is a product or process, is not eligible for a patent grant, if it falls within the scope of non patentable inventions mentioned under section 3 of the Patent Act. Industrially applicable A patent can be obtained only if an invention is industrially applicable. An invention is said to be industrially applicable, if it can be made and used in an industry.2 Novelty The invention claimed must be novel indicating that it should be new at the time of conception. Novelty of invention must be considered in the light of prior art.3 Prior art means the technology that is relevant to the invention and was publicly available at the time the invention was made. It includes prior specifications, patents, printed and published literature and other materials related to the invention. An invention is not novel if it can be anticipated in the light of prior art.
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Obviousness/Inventive step An invention should also not be obvious to a person having ordinary skill in the art to which it relates. If the invention is obvious and does not have any inventive step, it is not patentable. Existence of a prior publication of the invention in any Indian specification or in any document in India or elsewhere or public use of the invention would make an invention obvious.4 In order to be ineligible for a patent, an invention should be obvious at the time of conception of the invention and not at the time of contention of obviousness. Specification Specification is an essential part of a patent. It should consist of the subject-matter, description and at times including the drawing of the invention indicating its scope. The specification has to enable a person with ordinary skill in the art to practice and use the invention. It should also describe the best mode of performing the invention. A patent will be granted only if it satisfies all the aforementioned requirements. What does a patent grant? A patent grants exclusive rights to the patent owner. It grants the right to make, use, sell, offer for sale, and import the invention into India. Only the patent owner has the right to exercise any or all of the aforementioned rights over the invention. What is patent infringement? Infringement of a patent is the violation of the exclusive rights of the patent holder. 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. What are defenses for patent infringement? Use of a patent for research or experiment, government use, inequitable conduct, patent misuse and laches are some valid defenses for patent infringement. What can be patented: In US, any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof may have a patent granted to it, provided it satisfies all other requirements of patentability.5

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In India, an invention means a new product or a new process that involves technological advancement and/or has economic significance, which makes that new product or process nonobvious to a person who is skilled in the technology to which the product or process belongs.
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Additionally, the new product or process should be capable of being made or used in an industry
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for it to qualify as an invention.

Most of the patent offices provide a simple definition of the word invention. However, they also provide a list of exclusions, which are not considered as inventions. This list is the one that often stirs up debates.

In India, section 3 provides a list of exclusion, and the list with examples is provided below: 1. an invention which is frivolous or which claims anything obviously contrary to well established natural laws: (Ex: Perpetual motion machine)

2.

an invention the primary or intended use or commercial exploitation of which would be contrary to law or morality or which causes serious prejudice to human, animal or plan life or health or to the environment; (Ex: A method of hacking into email accounts)

3.

the mere discovery of a scientific principle or the formulation of an abstract theory or discovery of any living thing or non-living substance occurring in nature; (Ex: E = mc2)

4.

the mere discovery of any new form of a known substance which does not result in the enhancement of the known efficacy of that substance or 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 process results in a new product or employs at least one new reactant. (This exclusion has been at the forefront of most debates in the pharmaceutical sector)

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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. (Ex: Mixture of sugar and colorants in water, which only produces aggregation of properties and synergistic properties)

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the mere arrangement or re-arrangement or duplication of known devices each functioning independently of one another in a known way; (Ex: A known type of torch connected to a know type of pen. Note, both the pen and torch work independently of each other)

7.

a method of agriculture or horticulture; (Ex: a method of growing plants)

8.

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; (Ex: process of carrying out a surgery. Note: processes in this case are not considered inventions. However, systems and apparatuses are still considered as patentable subject matter)

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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 plants and animals; (Ex: Cloning of animals)

10. a mathematical or business method or a computer program per se or algorithms; (this exclusion has been debated to great lengths. The debate is essentially because of the computer program per se exclusion. Note that, not all software related inventions are considered as computer program per se. Hence, the debate is relating to what should be considered as computer program per se, and what should not be)

11. a literary, dramatic, musical or artistic work or any other aesthetic creation whatsoever including cinematographic works and television productions; (Ex: movies, poems etc.)

12. a mere scheme or rule or method of performing mental act or method of playing game; (Ex: Method of playing chess)

13. a presentation of information;8 (Ex: Presenting information in the form of a graph)

14. topography of integrated circuits; (Can seek protection under Semiconductor Integrated Circuit Lay-out Designs Act)9

15. an invention which in effect, is traditional knowledge or which is an aggregation or duplication of known properties of traditionally known component or componenets. (Usage of Nilgiri oil for reducing aches)

Some of the exclusions are straightforward; however, a few are debatable (section 3(d) and 3(k)). Similar to India, most of the countries have provided with a list of exclusions. Some of the exclusions put forth by other countries may be similar to the ones provided above. It is important to be aware of the exclusion set forth by a country you are interested in before deciding on the patent specification drafting and filing strategy.10

A patent application can be filed at any of the four patent offices in India (Kolkata, Delhi, Mumbai or Chennai). The patent application passes through the following stages: A. Filing B. Publication C. Examination D. Opposition E. Grant

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A. Filing

1. Applicant : An application for a patent can be filed by the true and first inventor. It can also be filed by the assignee or legal representative of the inventor. If an application is filed by the assignee, proof of assignment has to be submitted along with the application. The applicant can be national of any country.

2. Form of Application: Every application shall be accompanied by a provisional or complete specification. Provisional applications are generally filed at a stage where some experimentation is required to perfect the invention. Filing of a provisional specification allows the applicant to get an early application date. A Provisional Specification shall contain: a. Title, b. Written Description, c. Drawings, if necessary and d. Sample or model if required. The complete specification shall contain: a. Title, b. Abstract, c. Written Description, d. Drawings (where necessary), e. Sample or Model (if required by the examiner), f. Enablement and BestMode, g. Claims and h. Deposit (Microorganisms)

a. Title Title is generally a word or a phrase indicating the content of the invention.11

b. Abstract It is a short paragraph describing the invention in a precise manner.

c. Written Description This is an important part of the specification. It contains the complete and elaborate description of the invention. Written Description generally starts with a background of the invention. The written description explains the invention clearly and comprehensively, with the help of examples, drawings and models, where and when required.

d. Drawings The written description might be supplemented with drawings, where and when required. The drawings should be clearly labeled.

e. Samples or Models On initiative of the inventor or when required by the patent examiner samples or models might be submitted to the patent office12. Such samples or models will provide a better understanding of the invention.

f. Enablement and Best Mode The applicant has to enable his invention in order to allow a person with ordinary skill in the art to make and work the invention. He should not only enable, the applicant should also describe the best mode of carrying out the invention.
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g. Claims Claims define the metes and bounds of the invention. They are the most important elements in a specification.

h. Deposit If an invention involves microorganisms, which cannot be described by writing, a sample of the microorganism has to be deposited at an internationally recognized depository. There is an internationally recognized depository at Chandigarh A provisional specification cannot be filed if an application has been filed in a foreign country (Convention country) before the Indian filing and if the application is a PCT application. The Patent Cooperation Treaty or PCT is an international agreement for filing patent applications having effect in up to 117 countries. A complete specification has to be filed within twelve months (extendable to fifteen months) of filing the provisional specification. Each specification should contain only one invention. If there is more than one invention in a specification, separate applications have to be filed for each invention.

3. Priority Date Priority date is the date of first filing allotted by the patent office to an application. If a provisional application is followed by a complete application, the priority date shall be date of filing of the provisional application. If an Indian application is filed after a foreign or PCT application, the priority date shall be the date of filing of the foreign or PCT application. If an application is divided into two applications, the priority date shall be date of filing of the parent application.13

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Priority date is the date of reference used by the patent office to determine the newness of the invention. If the claimed invention is part of public knowledge before the priority date, it will not be eligible for a patent. Under US Law, priority date is pushed back to the date of conception for determining novelty and Non-obviousness.

4. Place of Filing A Patent application can be filed at any of the four patent offices in India. Patent Offices are located at Kolkata, New Delhi, Chennai and Mumbai.

5. Documents to be submitted at the time of filing. The following documents have to be submitted at the time of filing a patent application: a. Form 1 - Application for the grant of patent. b. Form 2 - Provisional or Complete Specification. c. Form 3 - Statement and undertaking by the applicant. d. Form 5 - Declaration as to inventorship. e. Form 26 - Authorization of patent agent or any other person. Priority document details have to be filed for a Convention application.

B. PUBLICATION A patent application will be published on expiry of eighteen months after the priority date. It can be published earlier, if such a request is made by the applicant. The application will not be published if directions are given for secrecy, until the term of those directions expire.

It will also not be published if the application is withdrawn three months before publication date. 14On publication, specification including drawings and deposits shall be open for public inspection.

The rights of the patentee start from the date of publication but they cannot be enforced until after patent grant.

C. EXAMINATION

1. Request for Examination The process of examination starts with a request for examination. The request has to be made within 36 months from the date of priority or filing. However, if secrecy directions have been given for the application, the request can be made six months after the directions are revoked or thirty six months from the date of priority or filing, if that date is later.

2. Examination On receiving the request, the controller shall direct the patent application to the Examiner for examination. To start with, the examiner makes a formal examination by verifying the propriety and correctness of all documents filed with the application. Later, he verifies the patentability of the application. The patentability analysis includes all patentability requirements. After confirming that the application falls within the scope of patentable subject matter, the examiner conducts a prior art search to check if there is prior art, which anticipates the invention claimed. 15 Prior art search for anticipation includes search for anticipation by publication, filing of complete specification, etc. He then verifies the existence of inventive step, Industrial application, and Enablement and Best mode.
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The examiner will give the examination report within 1 month from the date of reference by controller and that term shall not exceed three months. If the examination report is adverse, the controller sends a notice to the applicant and gives him an opportunity to correct and if necessary an opportunity of hearing. The Controller might ask the applicant to amend the application in order to proceed further. If the applicant does not make such changes, the application might be rejected. The Controller has the power to divide the application, post date the application, substitute applicants and reject the application. An order of division will be given if the application contains more than one invention and if it is required to file separate applications for each invention. The application might be post dated to a period of six months if requested by the applicant. Substitution of inventors is generally done if the inventor has been wrongfully mentioned or if a joint inventor has not been mentioned in the application. The controller has the power to reject the application, if the applicant does not comply with his requirements.

D. OPPOSITION 1. Pre-grant Opposition Any person can file an opposition for grant of patent after the application has been published. Opposition may be filed on any of the following grounds: a. Non compliance of patentability requirements. b. Nondisclosure or Wrongful disclosure of genetic resources or traditional knowledge. 2. Post-grant Opposition Any person can file an opposition within a period of twelve months after the grant of a patent. It can be filed based on the following grounds: a. Wrongful obtainment of the invention by the inventor. b. Publication of the claimed invention before the priority date. c. Sale or Import of the invention before the priority date. d. Public use or display of the invention.

e. The invention doesnt satisfy the patentability requirements. f. Disclosure of false information to patent office. g. Application for the invention is not filed within twelve months from the date of convention application.16 h. Nondisclosure or wrongful disclosure of the biological source. i. Invention is anticipated by traditional knowledge.

3. Process of Opposition On receiving a notice of opposition, the controller notifies the patentee. He then constitutes an Opposition board to deal with the opposition. The Opposition board decides the issues after giving reasonable opportunity of hearing to both the parties. The Opposition board might invalidate the patent, require amendments or maintain the status quo. If amendments are required, they have to be made within the prescribed period in order to maintain the patent.

E. GRANT If the application satisfies all the requirements of the patent act, the application is said to be in order for grant. An application in order for grant shall be granted expeditiously. A granted patent shall be published in the official gazette and shall be open for public inspection. Every granted patent shall be given the filing date. 17 The patent will be valid throughout India. A granted patent gives the patent holder the exclusive right to make, use, sell, offer for sale and import the product or use the process. However, the government can make use of the patent for its own purposes or for distributing an invention relating to medicine to hospitals and dispensaries. Furthermore, any person can make use of the patent for experiment or education.

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