WIPO Training program for trainers training on Effective Intellectual Property Asset Management By MSMES

Indian Patent law, Office Procedure and Examination Practice in Indian Patent office
23rd OCTOBER 2010
Dr. K.S.Kardam Deputy. Controller of Patents & Designs The Patent Office Delhi

March 16, 2012

Outline of the Presentation

1 2 3
March 16, 2012 Background of Indian Patent Act Examination Procedure Filing Publication Time limit for publication Examination request Examination Opposition Procedure Pre- grant Post grant

Statistics

INDIAN PATENT LAW HISTORICAL DEVELOPMENT

The Act of 1856 based on UK Act Of 1852 -But withdrawn The Act of 1859, The Patterns & Designs Protection Act, of 1872 The Protection of Invention Act, of 1883 The Invention & Designs Act of 1888- Further Consolidation The Patents & Designs Act 1911 The Patents Act 1970 This Act has been amended in 1999,2002 and K.S.Kardam March 16, 2012 2005

The Patents (Amendments) Act 1999

Providing the provisions for receiving the applications for the product patent in the field of Pharmaceuticals and agro-chemicals (mail box) Provisions for the grant of EMRs for distribution and sale of pharma products on fulfillment of certain conditions Grant of EMR subject to certain conditions Deletion of sec.39- relating to permission for filing of patent application abroad

K.S.Kardam

March 16, 2012

The Patents (Amendments) Act 2002

Uniform 20 years term of patent for all inventions Scope or non-patentable inventions including traditional knowledge enlarged Deferred examination system Disclosure of source and geographical origin of biological material made compulsory Non-disclosure or wrongful disclosure of source and geographical origin of biological material made ground for opposition and revocation Provisions concerning Convention countries simplifiedGOC, UOC,IGO recognized
K.S.Kardam March 16, 2012

The Patents (Amendments) Act 2002

Anticipation by traditional knowledge ,oral or otherwise also made ground for opposition and revocation Reversal of burden of proof Bolar provisions Parallel importation Establishment of appellate board Compulsory license provisions strengthened Simplification of procedures Harmonization with PCT provisions
K.S.Kardam March 16, 2012

The Patents (Amendments) Act 2005

Product patent for inventions in all fields of technology Definitions of certain terms redefined New forms of known substances excluded in order to prevent ever-greening of patent Rationalization of opposition procedure

Introduction of pre-grant opposition by representation and Post grant opposition

Compulsory license for export purpose also if need be-to remedy anti-competitive practices Compulsory license for manufacture and export of pharmaceutical products to any country having insufficient or no manufacturing capacity
K.S.Kardam March 16, 2012

The Patents (Amendments) Act 2005

Extension of grace period to 12 months Provisions concerning review of secrecy directionsnow to be reviewed every six month instead of 12months Provisions relating to filing application abroad revised Provisions concerning Penalties strengthened Importation from any person duly authorised under law
K.S.Kardam March 16, 2012

Examination Procedure
Filing of the application

Request For Examination ( RFE)

Publication under section 11A

Pre-grant Opposition
Examination

Post-grant Opposition Grant of Patent

March 16, 2012

Filing of the Application

Physical filing at the Patent Office

Electronic filing (July 20,2007)

March 16, 2012

Where to file application (Jurisdiction)

If the applicant/first mentioned applicant (in case of joint)resides/has domicile/has place of business/has origin of invention/has service address (in case of foreign applicant) in the following states: States Jurisdiction Patent Office Delhi Patent Office Chennai Patent Office Mumbai Northern Southern Western

Rest Of India

Patent Office Kolkata

How to Apply ?

Application on form 1 Specification provisional/complete on form 2 Abstract of invention Drawings,if any Statement and undertaking of foreign filing particulars on form -3- if any Proof of rightif applicable Declaration of inventor-ship on form- 5

Contd.

Certified copies of priority documents- if applicable

Power of attorney-if applicable

Application,Specification and other documents should be either in Hindi or English language

If application discloses sequence listing of nucleotides and/or amino acids, it should be filed in electronic form

Filing of the patent application

Application for patent can be filed only on the payment of full Fee Filing fee is now charged on the basis of number of pages and number of claims made in the patent document No extra fee is charged upto 30 pages and 10 claims Different fee for natural person and legal entity

Publication

March 16, 2012

PUBLICATION

UNEXAMINED APPLICATIONS AFTER 18 MONTHS EARLY PUBLICATION ON REQUEST GRANTED PATENTS

March 16, 2012

Time limit for publication

Ordinary application: After 18 months of filing of the application Conventional applications : After 18 months from priority Applications for which secrecy directions are issued: After cessation of the secrecy directions or after 18 months whichever is later Divisional application: After18 months from priority of parent application/immediately after filing divisional application whichever is later National phase PCT application: within one month after filing of the application Patent of addition : 18 months after filing Patent of addition application whichever is later Early Publication- within one month after receiving the request
March 16, 2012

Publication of Patent Application

Every application shall be published after expiry of 18 months from the date of filing or date of priority of the application except the following

Application in which secrecy direction is imposed or Abandoned under section 9(1) or Has been withdrawn before 3 months prior to expiry of 18 months

However the applicant can make specific request for early publication prior to 18 months on form 9 with prescribed fee of Rs.2500 or Rs.10000 by individual or legal entity respectively
March 16, 2012

Where published- Official Journal

This journal is published every week This has replaced gazette First issued out on 21st January 2005 Available online on Patent office website: www.ipindia.nic.in
March 16, 2012

Contents of the unexamined published patent application

(12) PATENT APPLICATION PUBLICATION (19) INDIA (22) Date of filing of Application :19/08/2008 (21) Application No.1967/DEL/2008 A (43) Publication Date : 17/04/2009 (54) Title of the invention : AN ELECTRONIC SYSTEM AND METHOD FOR PROCESSING FINANCIA DATA (71)Name of Applicant : 1)MEENA MISHRA Address of Applicant :B-1, SECTOR-41, NOIDA, (U.P) Uttar Pradesh India (72)Name of (51) International classification :G06Q20/00 Inventor : 1)MEERA MISHRA 2)SH.ANJANI KUMAR MISHRA (31) Priority Document No :NA 3)SH.VIKAS PANDEY (32) Priority Date ( :NA 33) Name of priority country :NA (86) International Application No Filing Date :NA : (87) International Publication No NA : (61) Patent of Addition to Application Number NA Filing Date :NA (62) Divisional to Application Number Filing :NA Date (57) Abstract : A system for processing financial data comprising electronically controlled multiple stages comprising an input stage, a processing stage wherein the system performs specific functions including means to calculate cert ain fixed parameters, means to generate appropriate data sheets, means to store the relevant data in the form of codes for retrieval at any later point of time, means to allow for modification of calculation parameters for different types of financial data and calculation, and means to execute the function and an output stage to generate data ready to be transmitted exported to the concerned authorities" module of software as well as on servers also either through internet or any other mode with each stage being controlled by input device, processing device and output device.

Contents of Publication under section 43(2)

March 16, 2012

Examination

March 16, 2012

Examination
Examination: Not automatic Request to be made by applicant or third parties Examination report to applicant only Fees: Rs 2500/ 10000

March 16, 2012

Request For Examination

A request for examination can be filed in form 18 within 48 months from the priority date or filing date whichever is earlier A request for examination in respect of applications filed before 1-1-2005 can be filed within the period of 48 months from the date of filing of the application instead of date of priority ( as provided prior to the Patents (amendment) Act. 2005

March 16, 2012

In case of application in which secrecy direction is imposed

Request for examination. .

48 months from priority date or date of filing or 6 months from the date of revocation of secrecy direction,whichever expires later After publication of main application 48 months from priority date or date of filing of main application or 6 months from the date of filing of divisional application , whichever is later

In case of divisional application

March 16, 2012

Formal Examination

Jurisdiction Fee Form of the documents Specification including claims and abstract Drawings Power of attorney Assignment/Endorsement Priority date and supporting document Language of the documents or their translation if language is not Hindi or English Information about corresponding foreign March 16, 2012 applications

Technical groups

All the controllers and examiners have been divided into 4 groups Groups have been constituted according to field of technology namely Chemical, Biotechnology, Electrical and electronics and Mechanical and allied engineering The applications are referred to examiners as per their field of Specialization

Applications are examined as per serial order of the request for examination
March 16, 2012

Substantive Examination

Patentable invention( sec-2(1)(j)

Novelty Inventive

step Industrial application

Is the Invention excluded under any of the provisions of section 3 and 4 Description
Sufficiency,

ambiguity, succinctness Reference of deposition of biological resources Disclosure of source of origin

Claims
Unity

of invention dependency

March 16, 2012

New (Novel) means ?

Invention should not have been

Published

in India or elsewhere. In prior public knowledge or prior public use with in India. Claimed before in any specification in India and published after the filing of the application

K.S.Kardam

March 16, 2012

Inventive Step means ?

A feature of invention that involves technical advance as compared to existing knowledge or having economic significance or both and that makes invention not obvious to a person skilled in the art

K.S.Kardam

March 16, 2012

Industrial applicable means ?

Invention should be capable of being made or used in an industry to result some tangible technical results

K.S.Kardam

March 16, 2012

Inventions Not Patentable-1

Frivolous & obviously contrary to natural law Contrary to law,morality Injurious to public health Use or commercial exploitation is contrary to public order or morality Causing serious prejudice to human,animal or plant life or health or to the environment
K.S.Kardam March 16, 2012

Inventions Not Patentable-2

Mere discovery of scientific principle or formulation of abstract theory Discovery of living or non living substances occurring in nature Mere discovery of new form of known substance which does not result in the enhancement of the known efficacy of that substance However, salt, esters, polymorphs, metabolites, pure forms, isomers ,complexes etc, shall be considered to be the same unless they differ significantly in properties with regard to efficacy
K.S.Kardam March 16, 2012

Inventions Not Patentable-3

Mere discovery of new property New use of known substance , process, machine, apparatus. Mere admixtures resulting in the aggregation of properties Mere arrangement and rearrangement of known devices. Method of agriculture or horticulture

K.S.Kardam March 16, 2012

Inventions Not Patentable-4

Process for any medicinal, surgical, curative, prophylactic, diagnostic or therapeutic treatment of human being or animal.
Plant & animals or their parts

Seeds, varieties and species and essentially biological process for the production or propagation of plants and animals A mathematical or business method or a computer programme per se or algorithms
Literary,dramatic,musical or artistic/cinematography works and television productions or any other aesthetic creation. K.S.Kardam March 16, 2012

Inventions Not Patentable-5

Scheme or rule method of performing mental act or method of playing game Presentation of information Topography of integrated circuit Traditional knowledge or aggregation or duplication of known properties of traditionally known components

K.S.Kardam

March 16, 2012

Inventions Not Patentable-6

Inventions falling within the scope of Sec. (1) of Sub-sec. 20 of Atomic Energy Act, 1962-For
Example : Inventions relating to Compounds of Uranium, Beryllium, Thorium, Plutonium, Radium, Graphite, Lithium and more as notified by Central Govt. from time to time

K.S.Kardam

March 16, 2012

Novelty Search

Indian Patents Since 1912 DWPI(DELPHION) STN Questel

QPAT And

QWEB MMS and NPL E- Journals

EPOQUENET(Since April 2009)

March 16, 2012

Time to comply with the Requirements

12 months from the date of issue of First Examination Report (FER) This time limit is not extendable

March 16, 2012

OPPOSITION
Pre-grant opposition by representation

Post grant opposition

March 16, 2012

Pre-grant Opposition by representation

It can be filed by any person Within SIX months from the date of publication of the application under sec.11A Or before the grant of patent Note: date of patent is the date when the controller grant patent by generating the patent number with date!!!! Date of patent however in no case is the date of publication of grant of patent

Grounds for Opposition

Wrongful obtaining Prior publication Prior claiming Prior public knowledge or use in India Obviousness or lack of inventive step Not an invention or not patentable under the Act

Grounds for Opposition.

Insufficiency of description Failure to disclose the information regarding corresponding foreign application or furnishing false information Failure to file convention application within twelve months from the date of first application made in the convention country

Grounds for Opposition.

Non-disclosure or wrongful mentioning of the source and geographical origin of biological material used in the invention Anticipation of invention by knowledge, oral or otherwise available within any local or indigenous community in India or elsewhere No account will be taken for personal document or secret trial or secret use

Pre-grant opposition
Request for examination is filed REPRESENTATI ON

NO

YES

FORWARDED TO THE APPLICANT 3 Months

REPLY AND EVIDENCE OF APPLICANT

Copy of reply given to the opponent if requested

Patent granted

HEARING

Application refused

Post-grant Opposition

Any time but before expiry of one year from the date of publication of the grant of patent By interested person only By giving a notice of opposition to the Controller On the prescribed grounds only The grounds are same as under pre-grant opposition No provision for extension of time to file notice of opposition

Procedure for Post grant Opposition

Grant of patent Notification Notice of opp.

Reply Evd. by opp. Further Evd. If any

Reply statement& Evd.by applicant

F.W.S.& Evd. By opp.

Recommendations of OPPOSITION BOARD

Appointment of hearing

Hearing
Revoked

Patent Cont

Decision

Patent Applications filed

40000
35000

35,218 28940 24505 17466 12613

30000 25000 20000

15000

10000 11466

4824 5000
0 1999- 2002-032003-042004-052005-062006-072007-08 2000

March 16, 2012

Patents granted
16000 14000 12000 10000 8000 6000 4000 2000 0 2001-02 2002-03 2003-04 2004-05 2005-06 2006-07 2007-08
March 16, 2012

15.262

7539 4320 1318 1379 2469 1911

THE FEE SCHEDULE

On what payable

Form 2 4 9 18 18 6 7 -15

Individual 1000 100 200

1000/2000/3000

Company 4000 400 800

4000/8000/1200

Prov./Comp spec. PAGES EXCEEDING 30 CLAIMS EXCEEDING 10

*Request for extension of time REQUEST FOR EARLY PUBLICATION

2500 2500 3500 1500 1000 1000 1500 1500

10000 10000 14000 2000 6000 4000 4000 6000

Request for Examination EXPRESS REQUEST FOR EXAMN.

*Change of Applicant *Notice of Opposition *Certified Copy\Certificate *On a petition *Restoration of lapsed patent

RENEWAL FEES

3rd to 6th Year(per year)

6th to 10th Yeardo-11th to 15th Year---do--16th to 20th year----do---

500
1500 3000 5000
March 16, 2012

2000
6000 12000 20000

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