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PATENTING SYSTEM

IN

INDIA

By,T.SAIRAM SINGHY.SRUJANAV.BHUVANESHWARIT.SAKETRAMK.SACHIN

WHAT IS PATENT?

Patent is an exclusive right granted by the Authority to the applicant of an invention for a limited period of time in lieu of full disclosure of his invention.

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WHAT IS AN INVENTION?

“Invention” means any

(i) new product or process,

(ii)involving an inventive step and

(iii)capable of industrial application.

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TATA'S SEEK PATENT SECURITY FOR NANO AGAINST COPYCATSKALA VIJAYRAGHAVAN & LIJEE PHILIP, ET BUREAU MAR 16, 2009, 09.41AM IST

MUMBAI: Tata Motors has applied for patent protection for over 37 inventions and innovations linked to its high-profile affordable car, Nano, in an aggressive move to protect the brand against imitation in the ultra-competitive car industry. It is also close to filing intellectual property rights (IPRs) claims for Nano in overseas markets, company officials said.

The company has used a number of new concepts and ideas to develop this vehicle and patents will help in protecting some of its innovative ideas, according to officials close to the development

CRITERIA FOR PATENTING:

a) Novelty

b) Inventive step

c) Capable of industrial application

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NOVELTY

The invention should not have been published in India or elsewhere.

The invention should not have been in prior public knowledge or public use in India.

Exception: display in public exhibition or paper presented before a learned society but within twelve months, patent application should be filed.

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INVENTIVE STEP

“Inventive step” means a feature of an invention that involves technical advancement as compared to the existing knowledge or having economic significance or both and that makes the invention not obvious to a person skilled in the art.

The question, ‘is there any inventive step?’ arises only if there is novelty.

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CAPABLE OF INDUSTRIAL APPLICATION

Capable of industrial application, in relation to an invention means that the invention is capable of being made or used in an industry.

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NOT PATENTABLE IN INDIAThe patentability requirement in India, is, the invention should be novel, inventive and capable of industrial applicable. However, one can not get patent for all the inventions even though which meets all the above criteria, and section (3) and (4) under patent act has long list of area which are not patentable in India. This section has been obstacle for not less than 50,000 inventions which are eligible for registering patent

According to Section 3 of the (Indian) Patents Act, 1970 The following are not patentable in India:-

An invention, that is frivolous or that claims anything obviously contrary to well established natural laws;

CONTD..An invention, the primary or intended use of which would be contrary to law or morality or injurious to public health;

The mere discovery of a scientific principle or the formulation of an abstract theory.

The 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.

A substance obtained by a mere admixture resulting only in the aggregation of the properties of the components thereof or a process for producing such substance.

The mere arrangement or rearrangement or duplication of known devices, each functioning independently of one another in a known way.

CONTD…

A method of agriculture or horticulture.

Inventions relating to atomic energy within sub-section (1) of Section 20 of the Atomic Energy Act, 1962 .

Any process for the medicinal, surgical, curative, prophylactic or other treatment of human beings or animals.

Plants and animals in whole or any part thereof other than micro-organisms but including seeds, varieties and species and essentially biological processes for production or propagation of plants and animals

Mathematical or business method or a computer program per se or algorithms.

CONTD..

Literary, dramatic, musical or artistic works, cinematographic works, television productions and any other aesthetic creations.

Mere scheme or rule or method of performing mental act or playing game.

Presentation of information.

Topography of integrated circuits.

An invention which in effect, is traditional knowledge or is based on the properties of traditional knowledge.

An application for a patent may be submitted by:

1. Any person claiming to be the true and first inventor of the invention.

2.Any person being the assignee of the person claiming to be the true and first inventor in respect of the right to make such an application.

3.By the legal representative of any deceased person who immediately before his death was entitled to make such an application.

WHO CAN APPLY FOR A PATENT?

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WHERE TO APPLY

For applicants resident in India, appropriate office is determined according to any of the following: place of residence/business/origin of invention.

For applicants not resident in India or with no place of business in India, appropriate office would be according to the address for service given in the application form.

PATENT OFFICE

Head Office – Kolkata

Branch offices at

Mumbai

Delhi

Chennai

The Patent Office comes under the Ministry of Commerce & Industry.

Each of the branch offices have their own fixed territory and accept application forms from areas lying within its geographical limits.

FEES:

1)The fees payable under section 142 in respect of the grant of patents and applications therefore, and in respect of other matters for which fees are required to be payable under the act shall be as specified in the first schedule.

2)The amount of the fees varies from 1000-4000.

3) The fees, payable under the act may either be paid in cash or may be sent by bank draft or cheque payable to the controller of patents.

STAGES FROM FILING TO GRANT OF A PATENT

OBTAINING A 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

Guidelines for applicants also available on this website

FORMALITY CHECK

An Examiner checks the formal requirements before

accepting the application and the fee – this is done

immediately

Issue of application number and the cash receipt – this is

done the same day

In case of receipt of application by post, cash receipt,

application number is sent by post within 2-3 days

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 journal is made available on the website weekly.

Applicant has an option to get his application published before

18 months also

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

Application is sent to an Examiner within 1 month from the

date of request for examination

Examiner undertakes examination w.r.t.

• whether the claimed invention is not prohibited for grant

of patent

• whether the invention meets the criteria of patentability

ISSUE OF FER

A period of 1 to 3 months is available to Examiner to submit the

report to the Controller

1 month’s time available to Controller to assess the Examiner’s

report

First Examination Report (FER) containing list of the

objections is issued within 6 months from the date of filing of

request

RESPONSE FROM THE APPLICANT

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-GRANT OPPOSITION

After publication, an opposition can be filed within a

period of 6 months

Opportunity of hearing the opponent is also available

EXAMINATION OF PRE-GRANT OPPOSITION

Opposition (documents) is sent to the applicant

A period of 3 months is allowed for receipt of response

CONSIDERATION OF PRE-GRANT OPPOSITION

After examining the opposition and the submissions made

during the hearing, Controller may

• Either reject the opposition and grant the patent

• Or accept the opposition and modify/reject the patent

application

This is to be done within a period of 1 month from the date of

completion of opposition proceedings

GRANT OF A PATENT

A certificate of patent is issued within 7 days

Grant of patent is published in the official journal

For a term of 20 years from the Date of filing the

Patent Application

STAGES - FILING TO GRANT OF PATENT

PUBLICATION OF APPLICATION

REQUEST FOR EXAMINATION

GRANT OF PATENT

3rd Party Representation

Revocation/Amendment

OPPOSITION

• PROMPTLY AFTER 18 MONTHS FROM F.D.

• WITHIN 48 MONTHS FROM F.D.

• ALL OBJECTIONS TO BE COMPLIED WITHIN 12 MONTHS

• WITHIN 12 MONTHS

FILING OF APPLICATIONPROVNL. / COMPLETE

Decision of Controller

EXAMINATION-ISSUE OF FER

Appellate Board

Appeal

EXAMPLE:

FEE SCHEDULEOn What payable Form Individua

lLegal entity

Application for PatentRequest for extn.timeRequest for publnRequest for examn.Renewal Fees 3rd to 6th year 7th to 10th year 11th to 15th year 16th to 20th year

14918

1000* 300 p.m.

25002500

500150030005000

4000* 1200 p.m. 1000010000

20006000

1200020000

PATENT INFRINGEMENT

Patent infringement is the commission of a prohibited act with respect to a patented invention without permission from the patent holder.

TYPES OF PATENT INFRINGEMENT

Direct Infringement : The third party has willfully or intentionally stole the technology from the inventor without his prior permission.

Indirect Infringement : It refers to the unfair practice that does not give a clear indication that the patent is bought and sold in the market.

BASIC FEATURES OF PATENT INFRINGEMENT

1. Objectives of infringement

2. Infringement behavior

3. Violation of legal rules

WHAT CONSEQUENCES CAN WE EXPECT

FROM PATENT INFRINGEMENT?

HOW TO JUDGE PATENT INFRINGEMENT?

A determination of patent infringement involves a two-step

process:

1. The claims are analyzed by studying all the relevant

patent documents;

2. The claims must “read on” the accused device or

process.

In a word, the claims are tested to see whether they

describe the accused infringement.

REMEDIES OF PATENT INFRINGEMENT

Monetary Relief

Equitable Relief

Cost & Attorney’s Fees

CASES ON PATENTS:APPLE VS SAMSUNG PATENT WAR

Apple files first:

Apple Inc. sued Samsung for copying its

product ideas

38-page suit filed by Apple in the U.S. District Court of Northern California states

Copied look, product design, Packaging

COPIED LOOK & PRODUCT DESIGN

COPIED PACKAGING

Samsung’s turn:

Samsung, the world’s largest maker of smart phones, countersued Apple saying that Apple infringes on several of its patents having to do with wireless communications technology and camera phones.

VERDICT

Samsung Electronics flagship Galaxy Smartphone looks very similar to Apples iPhone

Jury has found Samsung guilty of infringing on Apple’s design patent

Come in favor of Apple in the U.S $1.049 Billion

Rejected all of Samsung’s claims & Leading devices may be banned in the U.S

NOVARTIS PATENT PLEA

Novartis is the world’s leading pharmaceutical company filed patent application for its new version of cancer drug(Glivec).

Indian law bans firms from extending patents on their products by making slight changes to a compound, a practice known as "evergreening".

The court held that the patent application is rejected on the grounds that : 

Novartis has failed to meet stipulations under sections 3(d) and 3(b) of the Indian Patent Law.

Section 3(d) restricts patents for already known drugs unless the new claims are superior in terms of efficacy 

Section 3(b) bars patents for products that are against public interest and do not demonstrate enhanced efficacy over existing products.

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