Patent processing, filing, and applications

Presented by:

N . Sai Jyothy

256213886032

A patent is a set of exclusive rights granted by

sovereign state to an inventer or assignee for

a limited period of time in exchange for detailed

public discloser of an invention

Definition :

PATENT PROCEESSING :

A patent is an exclusive right of its owner to exclude others from making,

using, or selling the invention as defined in the claims of the patent for a

period of time, which in the United States is 20 years from the date of

filing the patent application. The typical process of obtaining a patent on

an invention is shown here

INTELLECTUAL PROPERTY RIGHTS PATENT

A patent is a set of exclusive rights granted by a state (national

government) to an inventor or their assignee for a limited period of

time in exchange for a public disclosure of an invention.

The procedure for granting patents, the requirements placed on the

patentee, and the extent of the exclusive rights vary widely between

countries according to national laws and international agreements.

The word patent originates from the Latin patere, which means "to

lay open" (i.e., to make available for public inspection)

HISTORY OF INDIAN PATENT SYSTEM:

1856 -THE ACT VI OF 1856 ON PROTECTION OF INVENTIONS

BASED ON THE BRITISH PATENT LAW OF 1852. CERTAIN

EXCLUSIVE PRIVILEGES GRANTED TO INVENTORS OF NEW

MANUFACTURERS FOR A PERIOD OF 14 YEARS.

1859 -THE ACT MODIFIED AS ACT XV; PATENT MONOPOLIES

CALLED EXCLUSIVE PRIVILEGES (MAKING. SELLING AND

USING INVENTIONS IN INDIA AND AUTHORIZING OTHERS

TO DO SO FOR 14 YEARS FROM DATE OF FILING

SPECIFICATION).

1872 - THE PATENTS & DESIGNS PROTECTION ACT.

1883 - THE PROTECTION OF INVENTIONS ACT.

1888 -

1911 -

1972 -

1999 -

2002 -

2005 -

CONSOLIDATED AS THE INVENTIONS & DESIGNS ACT.

THE INDIAN PATENTS & DESIGNS ACT.

THE PATENTS ACT (ACT 39 OF 1970) CAME INTO FORCE ON

20TH APRIL 1972.

ON MARCH 26, 1999 PATENTS (AMENDMENT) ACT, (1999)

CAME INTO FORCE FROM 01-01-1995.

THE PATENTS (AMENDMENT) ACT 2002 CAME INTO FORCE

FROM 2OTH MAY 2003

THE PATENTS (AMENDMENT) ACT 2005 EFFECTIVE FROM

Ist JANUARY 2005

1. The first legislation in India relating to patents was the Act VI of 1856. The

objective of this legislation was to encourage inventions of new and useful

manufactures and to induce inventors to disclose secret of their inventions.

The Act was subsequently repealed by Act IX of 1857 since it had been

enacted without the approval of the British Crown . Fresh legislation for

granting ‘exclusive privileges’ was introduced in 1 859 as Act XV of 1859.

This legislation contained certain modifications of the earlier legislation,

namely, grant of exclusive privileges to useful inventions only and extension

of priority period from 6 months to 12 months. This Act excluded importers

from the definition of inventor. This Act was based on the United Kingdom

Act of 1852 with certain departures which include allowing assignees to

make application in India and also taking prior public use or publication in

India or United Kingdom for the purpose of ascertaining novelty.

Brief about Indian Patent System

2. In 1872, the Act of 1859 was consolidated to provide protection relating

to designs. It was renamed as “The Patterns and Designs Protection

Act” under Act XIII of 1872. The Act of 1872 was further amended in

1883 (XVI of 1883) to introduce a provision to protect novelty of the

invention, which prior to making application for their protection were

disclosed in the Exhibition of India. A grace period of 6 months was

provided for filing such applications after the date of the opening of

such Exhibition.

3. The Indian Patents and Designs Act, 1911, (Act II of 1911) replaced all the

previous Acts. This Act brought patent administration under the management

of Controller of Patents for the first time. This Act was further amended in 1920

to enter into reciprocal arrangements with UK and other countries for securing

priority. In 1930, further amendments were made to incorporate, inter-

alia, provisions relating to grant of secret patents, patent of addition, use of

invention by Government, powers of the Controller to rectify register of patent

and increase of term of the patent from 14 years to 16 years. In 1945, an

amendment was made to provide for filing of provisional specification and

submission of complete specification within nine months.

4. After Independence, it was felt that the Indian Patents & Designs Act,

1911 was not fulfilling its objective. It was found desirable to enact

comprehensive patent law owing to substantial changes in political and

economic conditions in the country. Accordingly, the Government of

India constituted a committee under the Chairmanship of Justice (Dr.)

Bakshi Tek Chand, a retired Judge of Lahore High Court, in 1949 t o

review the patent law in India in order to ensure that the patent system

is conducive to the national interest. The terms of reference included

to survey and report on the working of the patent system in India;

to examine the existing patent legislation in India and to make

recommendations for improving it, particularly with reference to the

provisions concerned with the prevention of abuse of patent rights;

to consider whether any special restrictions should be imposed on

patent regarding food and medicine;

to suggest steps for ensuring effective publicity to the patent

system and to patent literature, particularly as regards patents

obtained by Indian inventors;

to consider the necessity and feasibility of setting up a National

Patents Trust;

to consider the desirability or otherwise of regulating the profession

of patent agents

to examine the working of the Patent Office and the services

rendered by it to the public and make suitable recommendations

for improvement; and

to report generally on any improvement that the Committee thinks

fit to recommend for enabling the Indian Patent System to be more

conducive to national interest by encouraging invention and the

commercial development and use of inventions.

PATENT LAW:

A patent is not a right to practice or use the invention. Rather, a

patent provides the right to exclude others[13] from making, using,

selling, offering for sale, or importing the patented invention for the

term of the patent, which is usually 20 years from the filing date [3]

subject to the payment of maintenance fees. A patent is, in effect, a

limited property right that the government offers to inventors in

exchange for their agreement to share the details of their inventions

with the public.

TYPES OF PATENTS:

Utility Patents - new, useful, or improved processes, machines,

apparatuses, articles of manufacture, or compositions

of matter

Design Patents - new, original, and ornamental designs for an article of

manufacture

Plant Patents - inventions, discoveries, or asexually reproduced

distinct and new varieties of plants; including cultivated

sports, mutants, hybrids, newly found seedlings, and

living organisms.

PATENT APPLICATION

National applications :

National applications are generally filed at a national patent office,

such as the United Kingdom Patent Office, to obtain a patent in the

country of that office. The application may either be filed directly at

that office, or may result from a regional application or from an

international application under the Patent Cooperation Treaty (PCT),

once it enters the national phase.

Regional applications :

A regional patent application is one which may have effect in a

range of countries. The European Patent Office (EPO) is an

example of a Regional patent office. The EPO grants patents

which can take effect in some or all countries contracting to the

European Patent Convention (EPC), following a single

application process.

International applications :(under the Patent Cooperation Treaty)

The Patent Cooperation Treaty (PCT) is operated by World

Intellectual Property Organization (WIPO) and provides a

centralised application process, but patents are not granted under

the treaty. The PCT system enables an applicant to file a single

patent application in a single language. The application, called an

international application, can, at a later date, lead to the grant of a

patent in any of the states contracting to the PCT. WIPO, or more

precisely the International Bureau of WIPO, performs many of the

formalities of a patent application in a centralised manner, therefore

avoiding the need to repeat the steps in all countries in which a

patent may ultimately be granted. The main advantage of

proceeding via the PCT route is that the option of obtaining patents

in a wide range of countries is retained

Types of applications :

Patent offices may define a number of types of applications, each

offering different benefits and being useful in different situations. Each

office utilises different names for the types of applications, but the

general groups are detailed below. Within each group there are

specific type of applications, such as utility patents, plant patents,

and design patents, each of which can have their own substantive and

procedural rules.

1 . Standard application :

A standard patent application is a patent application containing all of

the necessary parts (e.g. a written description of the invention

and claims) that are required for the grant of a patent. A standard

patent may or may not result in the grant of a patent depending upon

the outcome of an examination by the patent office it is filed in. In the

U.S., a standard patent application is referred to as a "non-

provisional" application.

2 . Provisional application :

Provisional patent applications can be filed at many patent offices,

such as the USPTO in the U.S. A provisional application provides an

opportunity to place an application on file to obtain a filing date

(thereby securing a priority date), but without the expense and

complexity of a standard patent application. The disclosure in a

provisional application may, within a limited time (one year in the

U.S.), be incorporated into a standard patent application if a patent

is to be pursued. Otherwise, the provisional application expires. No

enforceable rights can be obtained solely through the filing of a

provisional application.

3. Continuation application :

In certain offices a patent application can be filed as a continuation

of a previous application. Such an application is a convenient

method of including material from a previous application in a new

application when the priority year has expired and further refinement

is needed. Various types of continuation application are possible,

such as continuation and continuation-in-part

4 .Divisional application :

A divisional application is one which has been "divided" from an

existing application. A divisional application can only contain

subject matter in the application from which it is divided

(its parent), but retains the filing and priority date of that parent. A

divisional application is useful if a unity of invention objection is

issued, in which case the second (and third, fourth, etc.)

inventions can be protected in divisional applications

Reference :

1. N.R Subbaram, what every one should know about patents, 2nd

Edition, pharma book syndicate, 17:104 (2005)

2.Guide to patent information for users in india, patent information

system, nagpur,7:27.

3. T.T Lang, intellectual property : patent procedure and

requirements of patentability, parlee Mclaws LLP Barristors and

soliscitors.

4. Mark J.Nuell, Are you protected? Some of patent., birch,

stewart,kolasch and birch, LLP., sep.2003.

5. Legislative frame work of IP Administration, D.P.S. Parmar, Deputy

controller of patent and designs.

6. S. Chandhrashekaran, Overview of IPR patent system and practice.