5. Patent Act

8/3/2019 5. Patent Act

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THE PATENTS ACT,1970


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INTRODUCTION TO

INTELLECTUAL PROPERTY


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Intellectual Property refers to creation of mind i.e.

Inventions,

Industrial designs for article, Literary & artistic work,

Symbols etc.

Intellectual property is divided into 2 categories:

Industrial property: which includes inventions(patents), trademarks, industrial designs, andgeographic indications of source.

Copyright: which includes literary and artisticworks such as novels, poems, plays, films andmusical works etc.


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PATENTS

A Patent is an intellectual property right relatingto inventions and is the grant of exclusive right,

for limited period

provided by the Government to the patentee

in exchange of full disclosure of his invention

for excluding others, from making, using, selling,

importing the patented product or processproducing that product for those purposes.


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A patent is a Monopoly Right granted

For an invention By the government

To the inventor or his assignee

For a limited period

It is valid within the country of grant


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INVENTION

Invention is a successful technical

solution to a technical problem.To be granted a Patent, An invention must be

new,non-obvious and

capable of industrial application


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Criteria for Patentability

New & useful Non-obvious

Capable of Industrial Applications

Patents Act specifies

What are not inventions?

What are not patentable inventions?


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What Does Patent System Do ?

It encourages RESEARCH.

Induces an inventor to disclose hisinventions instead of keeping them assecret.

Provides inducement for capital

investment encouraging technologicaldevelopment.

It encourages establishment of new

industries.


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Advantages Of A Patent ToThe Public

KNOWLEDGE OF INVENTION ADDS TOSCIENTIFIC BACKGROUND FORMING BASEFOR FURTHER RESEACH

REASONABLE ASSURANCE FORCOMMERCIALIZATION

PATENT- OPEN TO PUBLIC FOR USE AFTER ITS TERM EXPIRES

OR WHEN IT CEASES TO BE IN FORCE


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Different Ways Of Dealing With AnInvention

Make it public for free use by public (likepublishing in the journal)

Or Work the invention in SECRECY without

PATENTING it (like coco-cola composition)Or

Work the invention OPENLY withoutPATENTING it (directly put it in the market)

Or EXPLOIT the invention on the basis of a

PATENT (like Rank Xerox )


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Patent Reform and

Developments


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12

1856 Act: based on British patent system

Provided for a 14 year term

Numerous Acts and Amendments followed

Indian Patents and Design Act of 1911 replaced allprevious legislation

Beginning of Indian Patent Law


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13

Patents Act of 1970

Lengthy examination and opposition procedures

Weak re: pharma; no protection for agricultural and horticultural

products, atomic energy inventions, and all living thingsProtected methods and processes of manufacture but not thecompositions (drugs, food) themselves

Methods and processes had short terms of protection (~ 5-7

years); others had 14-year termsProblem: Little incentive for large pharma companies toinnovate, spend $ on R&D

Indian Patent Law Develops


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14

1999 Amendment:

Provisions for filing applications for product patents in fields ofdrugs/medicine

Granted Exclusive Marketing Rights (EMR) on those products

2002 Amendment:

20-year term

2005 Amendment:Grants protection to products patents in all fields of technology(chemical, food, drug, agrochemical)

Fully in compliance with TRIPS

Amendments to the Patents Act of 1970


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2005 Amendment: (continued)

Time limit for requests for examination decreased from 48 to 36months

Compulsory licensing provisions For the manufacture and export of pharma products to any

country with insufficient or no manufacturing capacity of its ownto address public health problems

Time frame for examination amended Attempt to speed up process for reviewing and examining

patents

Amendments to the Patents Act of 1970


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Rules for implementing the Patent Act and regulating thePatent Administration

Passed in 1972; replaced by Patents Rules of 2003, as

amended by Patents (Amendment) Rules of 2005 & 2006

Reduced timelines

Fee structure based on size of spec and number of claims

The Patents Rule


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WHAT IS NOT PATENTABLE

The following are Non-Patentable inventions within themeaning of the Act:

1.An invention which is frivolous or which claims anythingobviously contrary to well established natural laws.

2.An invention the primary or intended use or commercialexploitation of which could be contrary to public order ormorality or which causes serious prejudice to human,animal or plant life or health or to the environment.

3. The mere discovery of a scientific principle or the

formulation of an abstract theory (or discovery of anyliving thing or non-living substances occurring in nature);


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4. The mere arrangement or re-arrangement or duplicationof known devices each functioning independently of one

another in a known way.

5. A method of agriculture or horticulture .

6. Inventions relating to atomic energy not patentable:


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Grant for a patent

To get a patent grant, the first moststep is to file a patent application.

Who can file a patent application?

Where to file a patent application?

How to file a patent application?


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Who can file Patent Application

In India [Section 6 and 134]

The application can be filed either alone or jointly:

By any person claiming to be true and firstinventor(s)

By any person being the assignee of personclaiming to be true and first inventor(s)

( proof of assignment has to be submitted along with

the application) By the legal representative of any deceased person

or assignee


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Where to file patent application

The appropriate office of the patent office shall be thehead office of the patent office or the branch office as thecase may be within whose territorial limits

Residence of applicant or Domicile; or

His the place of business; orThe place where the invention actually originated.

If the applicant has no business or domicile in India, the

address for service in India is given by such applicant


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Regional Patent offices Jurisdiction

Office Territorial JurisdictionPatent Office Branch,Chennai

The States of Andhra Pradesh, Karnataka, Kerala,Tamil Nadu and the Union Territories ofPondicherry and Lakshadweep

Patent Office BranchMumbai

The States of Maharashtra, Gujarat, MadhyaPradesh, Goa and Chhattisgarh and the UnionTerritories of Daman and Diu & Dadra and NagarHaveli.

Patent Office Branch,

New Delhi

The States of Haryana, Himachal Pradesh, Jammu

and Kashmir, Punjab, Rajasthan, Uttar Pradesh,Uttaranchal, Delhi and the Union Territory ofChandigarh.

Patent Office, HO

Kolkata

The rest of India


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How to file a patent application?

Documents can be filed in the patent office

through online( e-filing) orwww.ipindiaonline.gov.in/online

through post or

can be submitted by hand
http://www.ipindiaonline.gov.in/onlinehttp://www.ipindiaonline.gov.in/online


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GENERAL PROCEDURE FOR

OBTAINING A PATENT

Filing of patent application

Publication after 18 months

Pre Grant Opposition /Representation by any

person. Request for examination

Examination: Grant or Refusal

Publication of Grant of patent

Post Grant Opposition to grant of patent

Decision By Controller


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Form of application

1. Every application for a patent shall be for one inventiononly and shall be made in the prescribed form and filedin the patent office.

2. Every application under this section shall state that theapplicant is in possession of the invention and shall

name the owner claiming to be the true and first inventor;and where the person so claiming is not the applicant orone of the applicants, the application shall contain adeclaration that the applicant believes the person sonamed to be the true and first inventor.

3. Every such application (not being a conventionapplication) shall be accompanied by a provisional or acomplete specification


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Provisional specification -a provisional specification isusually filed to establish priority of the invention in casethe disclosed invention is only at a conceptual stage anda delay is expected in submitting full and specific

description of the invention. No patent is granted on the basis of a provisionalspecification.

Complete specification -the complete specification isthe document in which all the details of the invention forwhich patent protection is desired are disclosed

SPECIFICATIONS


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Contents of Specification

Title of the invention Field of the invention Background of the invention (PRIOR ART)

Object of the invention Summary of the invention Brief description of drawings, if any Detailed description of the invention

Examples Claims- not required in provisional Abstract- not required in provisional


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Examination of application

(1) When the complete specification has been led in respect of anapplication for a patent, the application and the specification relatingthereto shall be referred by the Controller to an Examiner for making areport to him in respect of the following matters, namely:-

A. whether the application and the specification relating thereto are inaccordance with the requirements of this Act .

B. whether there is any lawful ground of objection to the grant of the patentunder this Act in pursuance of the application; the result ofinvestigations made under section 13; and any other matter which maybe prescribed.

(2) The Examiner to whom the application and the specification relatingthereto are referred under sub-section (1) shall ordinarily make thereport to the Controller within a period of eighteen months from thedate of such reference.

5. Patent Act

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