PATENTS

PATENTS
What is a patent?
Patent is a grant for an invention by the government to the
Inventor in exchange for full disclosure of the invention to
debar others to exploit the invention for commercial
success for a limited period within the geographical
boundaries.

Advantages:
Scientific & technological knowledge not kept secret.
Publication of details stimulates other inventive minds.
Rewards the inventive mind by giving the patentee a
legal monopoly to make use of his invention to his
economic benefit.
Each country has its own patent laws and one must file
application in each country where the patent protection is

Laws and Regulations in India

Patents Act,
1970
Amended in
1999
2002
2005

Patents
Rules,
2003
Amended in
2005

What is an INVENTION?
An invention must relate to a PROCESS or PRODUCT or both
and satisfy the
following conditions:

NOVELTY
INVENTIVENESS
/
NON
OBVIOUSNESS
INDUSTRIAL
APPLICATION

Must not be published previously.

Must not be in prior public
knowledge or prior public use.
It must involve an inventive step not
obvious to a person skilled in the
art.
Must be capable of being made or
used in any industry.
Patent not granted for an invention
devoid of utility.

What CANT be patented?

Frivolous inventions & inventions contrary to well established natural
laws.
Machines that give more than 100% performance.
Intended use of invention is contrary to law/morality or injurious to
public health.
Gambling machine
Device for house breaking
Biological warfare material, weapons of mass destruction.
Laws of nature/Mere discovery of scientific principles/Formulation of
abstract theory.
Wind, gravity, Newtons laws, Raman effect
Discovery of any living or non living substance occurring in nature.
Discovery of microorganisms.
Discovery of natural gas or a mineral.

What CANT be patented?

Substance obtained by mere admixture (Only aggregation of
properties)
Combiflam [Paracetamol (Antipyretic) + Brufen (analgesic)]
However, synergistic formulations are patentable.

Mere arrangement or rearrangement of known devices .

A clock and radio in single cabinet.
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.
New use of Asprin for heart ailments
Mere new uses of Neem.

Inventions relating to atomic energy

Stages : From Filing To Grant Of Patent

FILING OF APPLICATION
(Provisional / Complete Specification)
PUBLICATION OF APPLICATION
REQUEST FOR EXAMINATION

If P. S. is filed, C. S. to be filed within 12 months.

PROMPTLY AFTER 18 MONTHS

WITHIN 48 MONTHS

EXAMINATION-ISSUE OF FER

3rd Party Representation

ALL OBJECTIONS TO BE COMPLIED WITHIN 12 MONTHS

GRANT OF PATENT
WITHIN 12 MONTHS

POST GRANTOPPOSITION

Decision of
Controller
Appeal

Appellate Board

Revocation/Amendment

Stages : From Filing To Grant Of Patent

File an application for patent
With one of the patent offices based on territorial
jurisdiction of the place of
office or residence of the
applicant /agent.
Pay the required fee.
Information concerning application form and details of fee
available at www.ipindia.nic.in

Patent Specifications
There are two types of patent documents usually known as PATENT
SPECIFICATIONS:
Provisional Specification
Complete Specification
Usually filed to establish
priority of invention.

When
invention
is
at
conceptual stage and delay is
expected in submitting full
description.
Has to be followed by
complete specification.
Improvements effected during
course of development of details
of
the
invention
can
be
incorporated in the complete
specification.

The
inventor
can
test
commercial possibilities, can
abandon the application if not

Has to be filed within 12 months

from date of filing of provisional
specification.
CS should satisfy the following
conditions:
1. Full description of invention,
its operation or use & the method
by which it is to be performed.
2. Disclose the best method of
per-forming the invention for
which the applicant is entitled to
claim protection.
3. End with a claim or claims
defining the scope of the
invention for which protection is

Publication

Application
is kept
secret for a
period of 18
months
from the
date of
filing

In 19th
month, the
application
is published
in the
official
journal
this is made
available on
the website
weekly

Applicant
has an
option to
get his
application
published
before 18
months.

In that case,
application
is published
within one
month of
the request

Request For Examination

Application is examined on request.
Request for examination can be made
either by the applicant or by a third
party.
A period of 48 months, from the date
of filing, is available for making request
for examination.

Examination
Examiner
undertakes
examination
with respect
to :

Application is
sent to an
examiner within
1 month from
the date of
request for
examination

Whether the claimed

invention is not prohibited
for grant of patent

Whether the invention meets

the criteria of patentability

Issue Of FER & Applicants response

A period of 1 to 3 months is available to examiner to
submit the report to the Controller
1 months time available to Controller to vet the
examiners report
First Examination Report (FER) containing gist of
the objections is issued within 6 months from the
date of filing of request
12 months time, from the date of issue of FER, is
available to the applicant to meet the objections
If objections are met, grant of patent is approved
by the Controller within a period of 1 month

Pre - & Post - Grant Opposition

Patent Dispute Resolution Platforms

Grant of Patent In India

Once approved, a certificate of patent is issued within 7 days.
Grant of patent is published in the official journal.

Revocation Of Patent
Revocation of patent is cancellation of the patent grant.
Once the patent is granted by the controller, if any person
desires to cancel the patent then he has to file a revocation
petition before the High Court.
The grounds for such a petition have been mentions under
Section 64 of Patents Act

Patent Term

Any patent which is granted will be valid for a maximum term

of 20 years from the date of filing or priority, whichever is
earlier.
However, to keep the patent active for the said 20 years, the
patent should be renewed every year.

Renewal Fee
To be paid within 3+6 months from date of
recording in the register [sec 142 (4) ].
No fee for 1st and 2nd year.
Renewal fee, on yearly basis, is required to be
paid for 3rd to 20th for keeping the patent in force.
Delay upto six months from due date permissible
on payment of fee for extension of time .
Patent lapses and becomes public property if
renewal fee is not paid within the prescribed period.
Thereafter, it cannot be re-patented as novelty of
invention is lost.

Infringement

An infringement
may occur where
the accused
infringer has
made, used, sold,
offered to sell, or
imported a
patented
invention without
the consent of
the owner.

A patent is infringed
even if it infringes a
single
independent
claim in a patent.

TYPE
S

OF
INFRINGEME
NT

INDIRE
CT
To actively encourage
another to make, use, or
sell a patented invention
without permission.

CONTRIBUTORY

DIRECT
To make, use, or sell
the patented
invention without
permission from the
patentee.

Knowingly sell or supply a

part or
component of the patented
invention to another.

INDUCED
Act of actively inducing
another to infringe a
patent.

Is It Possible To Get a World Wide Patent?

In the current state of the international patent system,

no.

There is no one patent that covers every country in the world, or

even a large number of the countries of the world. The patent system
is still a territorial system; in order to be protected in a particular
country, you have to be granted a patent in that country.
However, there is an international agreement administered by WIPO
called the Patent Cooperation Treaty (PCT), for the filing,
searching, publication and examination of international applications.
The PCT makes it easier to obtain patents in the Contracting States
by providing for the filing of one international application, which may
be subsequently prosecuted in the different designated
national or regional Offices of States party to the PCT. However,
even under the PCT, the granting of patents is left to those
designated Offices.