patent act

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PATENTS ACT 1970PATENTS ACT 1970
PATENT- DEFINITION
Exclusive right for being the true and first inventor of a
product or process, granted by the govt. for a limited
period, to exclude others from making, using, selling
or importing the patented product or process without
his consent, in exchange of full disclosure of his
invention .
• Term- 20 years from the Date of Filing(S.53)

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INVENTION- DefinitionINVENTION- Definition
Sec. 2(1)(j): ‘Invention’ means a new product or
process involving an inventive step & capable
of industrial application –
1. Process, method or manner of manufacture,
2. Machine, apparatus or other article,
3. Substance produced by manufacture,
And includes any new & useful improvement of
any of them.

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REQUIREMENTS OF INVENTIONREQUIREMENTS OF INVENTION
– NEW: that no other inventor has obtained a patent for the same
invention.
– NON-OBVIOUS that the subject matter of an invention was not
obvious at the time the invention was made to a person having ordinary
skill in the art to which the said subject matter pertains.
– USEFUL :that the machine, product, or process is one that can be
used in industry or commerce.
 Novelty
 Non-Obviousness (an inventive step)
 Utility (Capable of industrial application)
–

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NOT INVENTIONS (S.3)NOT INVENTIONS (S.3)
:
1. An invention which is frivolous, or claims anything contrary to
existing natural laws.
2. An invention whose use would be contrary to public order or morality,
or which will be prejudicial to health or environment
3. Discovery of a scientific principle or the formulation of an abstract
theory.
4. Discovery of any living thing or non living substance occurring in
nature
5. Discovery of a new property or use of a known substance, unless it
results in a new product
6. A substance obtained by mere admixture
7. Arrangement or rearrangement or duplication of known devices .

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NOT INVENTIONS (S.3)(contd.)NOT INVENTIONS (S.3)(contd.)
8. A method of agriculture or horticulture, seeds, etc.
9. Any process of medicinal, surgical application on human beings or
animals to render them free of disease.
10. Plants, seeds, animals and biological processes for production or
propagation of plants and animals
11. Computer program, per se, other than its application to industry or
combination with hardware (embedded software)
12. A mathematical method or a business method
13. Literary, dramatic, musical, artistic, aesthetic creation including
cinematic work or television production
14. A method of playing game, presentation of information
15. Integrated circuits
16. Traditional knowledge, or aggregation of traditionally known
components
17. Atomic energy
• .

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Process of Grant of PatentProcess of Grant of Patent
1. Application (s 10)
2. Publication (S.11-A),
3. Examination (S.11-B, 12).
4. Pre-Grant Opposition (after publication and before grant)
5. Grant of patent (Notification)
6. Post-Grant opposition (within an year of grant)
7. Maintenance of patent (renewal after three years-renewal fee)
8. Working of patent (Satisfactory availability of the patented product at
reasonable prices-Compulsory licensing by the Controller , if required)
9. Revocation of patent (s 64- wrongfully obtained)
10. Remedies against abuse of patent (S . 66, revocation in public interest by
central govt.-mischievous)
11. Penalties ( S. 120- falsely representing ‘Patented’, ‘Patent applied for’-fine up
to Rs 1 lakh)
12 Infringement (S.108, injunction, either damages or an account for profits)

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Process of Grant of Patent (contd.)Process of Grant of Patent (contd.)
1. Application with complete specifications has to be submitted to Controller
of Patents.
2. The application along with an abstract is published after 18 months of filing,
unless the applicant requests early publication
3. Applicant may apply for examination of his application within 48 months of
filing (31 months incase of applications under Patent Cooperation treaty)
4. The application is then referred to an Examiner.
5. Examiner checks its legality and authenticity and reports to the Controller.
6. If there are discrepancies in the application , objections are raised
which must be answered within an year from the date of report.
7. Any one interested can object after the publication and before grant of the
patent

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Process of Grant of Patent (contd.)Process of Grant of Patent (contd.)
8. Grant of the patent is notified in the Official Gazette, Patent
Office journal published every week
9. Post grant objections can be made within an year of grant of
the patent
10. Maintenance (renewal)fee has to be paid after the third year
11. Lapse of the Patent on failure to renew, restoration within 18
months from the date of lapse on payment of fee
11. Controller may grant ‘compulsory licence’ if the patent is not
working (product is not available in sufficient quantity at
reasonable prices).
12. PATENTEE CAN SELL OR ASSIGN HIS PATENT TO
OTHER PERSONS

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complete specificationcomplete specification
The patent specification generally comprises of
the title of the invention indicating its technical
field, (i)prior art, (ii) draw backs in the prior art,
(iii) the solution provided by the inventor to
obviate the drawbacks of the prior art, (iv)
concise but sufficient description of the invention
and its usefulness, (v) drawings (if any) and (vi)
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

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provisional specificationprovisional 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 abandoned

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Prior artPrior art
• Prior art ( state of the art) is all
information that has been disclosed to the
public in any form about an invention
before a given date. Prior art includes
things like any patents related to your
invention, any published articles about
your invention, and any public
demonstrations.
• If an invention has been described in prior
art, a patent on that invention is not valid.

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Prior art searchPrior art search
How can one find out that an invention is
already patented?
• A preliminary search can be made on:
1. Patent Office website, the Indian patent data
base of granted patents, or
2. Patent Office journal published every week, or
3. Search in the documents kept in the Patent
Office Search and Reference Room, which
contains Indian patents arranged according to
international patent classification system.
4. One can also make a request for information
regarding any patent under section 153 of the
Act

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Priority Dates of Claims ofPriority Dates of Claims of
Complete Specification (s.11)Complete Specification (s.11)
• Priority date of the claim is the date
of filing of specifications-provisional
or complete, wherein the matter on
which the claim is fairly based was
first disclosed. Controller can order
post-dating or ante-dating of a claim
under section 9, 17 and 16
depending upon when he thinks the
matter was actually first disclosed.

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PUBLICATIONPUBLICATION
• Every application for patent is published
after 18 months from the date of its filing
or priority date whichever is earlier, except
where there is a secrecy direction.
• Applicant can make a request for early
publication with the prescribed fee. After
receiving such request the Patent Office
publishes such application within a period
of one month provided the invention does
not relate to atomic energy or defence
purpose.

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EXAMINATIONEXAMINATION
• The patent application is examined only on
request.
• 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.
• Request for examination before expiry of 31
months can be made in respect of the
applications filed under Patent Cooperation Treaty
known as National Phase applications by payment
of the prescribed fee.

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First Examination Report (FER)First Examination Report (FER)
After examination, the Patent office issues
an examination report to the applicant
which is generally known as First
Examination Report (FER). Applicant
should comply with the requirements
within a period of twelve months from the
date of FER. If the application is in order,
the patent is granted and a letter patent is
issued to the applicant. However, if there
is a pre-grant opposition, the applicant has
to defend his claim.

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PATENT INFRINGEMENTPATENT INFRINGEMENT
• A patent is not infringed until proven
otherwise
• onus or burden of proving
infringement is on the patent owner

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Infringement- Jurisdiction, Burden of ProofInfringement- Jurisdiction, Burden of Proof
• Jurisdiction-District Court (S.104)
• If the defendant makes a counter claim for
revocation of the patent, the case is
transferred to the High Court
• Burden of Proof (104-A): If the patentee
first proves that the product is identical
then if the subject matter is a process, the
court may direct the defendant to prove
that the process used by him to obtain the
product was different.

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Relief in Suits for Infringement (S 108)Relief in Suits for Infringement (S 108)
• Injunction
• Either ‘damages’ or an ‘account of profits’,
at the option of the plaintiff
• Seizure, forfeiture or destruction of
infringing goods, as the Court deems fit
[Infringement of patent is not an offence.
No criminal action is possible]

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COMPULSORY LICENSECOMPULSORY LICENSE
• After 3 years of patent, anyone can request a
license from the govt. on these grounds
– That the reasonable requirements of the
public with respect to the patented invention
have not been satisfied
– That the patented invention is not available
to the public at reasonably affordable price
– Export of pharmaceuticals to poor countries