February 24, 2014 Indian Patent law, Office Procedure and Examination Practice in Indian Patent office Dr. K.S.Kardam Deputy. Controller of Patents & Designs

April 10, 2023

Indian Patent law, Office Procedure and Examination Practice in

Indian Patent office

Dr. K.S.Kardam

Deputy. Controller of Patents & Designs

The Patent Office Delhi

23rd OCTOBER 2010

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

MSMES

April 10, 2023

Outline of the Presentation

April 10, 2023K.S.Kardam

INDIAN PATENT LAWHISTORICAL 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The Act of 1856 based on UK Act Of 1852 -But withdrawn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 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



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 simplified-GOC, UOC,IGO recognized


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



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


The Patents (Amendments) Act 2005……

Extension of grace period to 12 months Provisions concerning review of secrecy

directions-now 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

April 10, 2023

Examination Procedure

Filing of the applicationRequest For Examination

( RFE)

Request For Examination

( RFE)

Publication under section 11A

Examination

Grant of Patent

Pre-grant Opposition

Post-grant Opposition

April 10, 2023

Electronic filing

(July 20,2007)

Physical filing at the Patent Office

Filing of the Application

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 Northern Patent Office Delhi Southern Patent Office Chennai Western Patent Office Mumbai 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 right—if 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

April 10, 2023

April 10, 2023

PUBLICATION

UNEXAMINED APPLICATIONS AFTER 18 MONTHS

EARLY PUBLICATION ON REQUEST GRANTED PATENTS

April 10, 2023

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

April 10, 2023

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

April 10, 2023

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

http://www.ipindia.nic.in/

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

(51) International classification (31) Priority Document No (32) Priority Date (33) Name of priority country (86) International Application No Filing Date (87) International Publication No (61) Patent of Addition to Application Number Filing Date (62) Divisional to Application Number Filing Date

:G06Q20/00 :NA :NA :NA :NA :NA :NA :NA :NA

(71)Name of Applicant : 1)MEENA MISHRA Address of Applicant :B-1, SECTOR-41, NOIDA, (U.P) Uttar Pradesh India (72)Name of Inventor : 1)MEERA MISHRA 2)SH.ANJANI KUMAR MISHRA 3)SH.VIKAS PANDEY

(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.

April 10, 2023

Contents of Publication under section 43(2)

Examination

April 10, 2023

April 10, 2023

Examination

Examination: Not automatic Request to be made by applicant or

third parties Examination report to applicant only Fees: Rs 2500/ 10000

April 10, 2023

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

April 10, 2023

Request for examination……..

In case of application in which secrecy direction is imposed 48 months from priority date or date of filing or 6 months from the date of revocation of

secrecy direction,whichever expires later In case of divisional application-

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

April 10, 2023

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

applications

Technical groups

April 10, 2023

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

April 10, 2023

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


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


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

Inventive Step means ?


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

Industrial applicable means ?


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



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


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



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.




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



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

Novelty Search

April 10, 2023

Indian Patents Since 1912 DWPI(DELPHION) STN Questel

QPAT And QWEB MMS and NPL E- Journals

• EPOQUENET(Since April 2009)

April 10, 2023

Time to comply with the Requirements

12 months from the date of issue of First Examination Report (FER)

This time limit is not extendable

OPPOSITION

April 10, 2023

Post –grant oppositionPost –grant opposition

Pre-grant opposition by representationPre-grant opposition by representation

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

REPRESENTATION

FORWARDED TO THE APPLICANT

REPLY AND EVIDENCE OF APPLICANT

HEARING

Copy of reply given to the opponent if requested

Patent grantedApplication

refused

Request for examination is

filed

YESNO

3 Months

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

NotificationGrant of patent Notice of opp.

Reply Evd. by opp.Reply statement&Evd.by applicant F.W.S.& Evd. By opp.

Further Evd. If any

Appointment of hearing

Hearing

Decision RevokedPatent Cont

Recommendations of OPPOSITION BOARD

Constitution of Opposition Board

Patent Applications filed

0

5000

10000

15000

20000

25000

30000

35000

40000

1999-2000

2002-032003-042004-052005-062006-072007-08

April 10, 2023

4824

11466

12613

17466

24505

28940

35,218

Patents granted

0

2000

4000

6000

8000

10000

12000

14000

16000

2001-02 2002-03 2003-04 2004-05 2005-06 2006-07 2007-08

April 10, 2023

1318 13792469 1911

4320

7539

15.262

April 10, 2023

THE FEE SCHEDULEOn what payable Prov./Comp spec.PAGES EXCEEDING 30CLAIMS EXCEEDING 10

*Request for extension of time

REQUEST FOR EARLY PUBLICATIONRequest for ExaminationEXPRESS REQUEST FOR EXAMN.

*Change of Applicant

*Notice of Opposition *Certified Copy\Certificate

*On a petition

*Restoration of lapsed patent

Form

2

-

-

4

9

18

18

6

7

--

15

Individual

1000

100

200

1000/2000/3000

2500

2500

3500

1500

1000

1000

1500

1500

Company

4000

400

800

4000/8000/1200

10000

10000

14000

2000

6000

4000

4000

6000

RENEWAL FEES

3rd to 6th Year(per year)

6th to 10th Year—do--

11th to 15th Year---do---

16th to 20th year----do---

500

1500

3000

5000

2000

6000

12000

20000

April 10, 2023

April 10, 2023

Documents

February 24, 2014 Indian Patent law, Office Procedure and Examination Practice in Indian Patent office Dr. K.S.Kardam Deputy. Controller of Patents & Designs