Patent & Patenting

8/8/2019 Patent & Patenting

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PATENT & PATENTING IN INDIA

Introduction

A patent is an exclusive monopoly right granted by the Government for a new invention to aninventor for his disclosed invention for a limited period of time. This exclusive monopoly

right is valid only within the territorial limits of a country of grant. Exclusivity of rightimplies that no one else can make, use, manufacture or market the invention without the

consent of the patent holder. This right is available only for a limited period of time

Requirements of Patenting

y Noveltyy Non obviousnessy Marketability and Utility

It is important to remember

y A patent has a time limit (20 years)y A patent has a geographical limity A patent is restricted to the claims made in the application

Patenting in India Old and under the New Act

Item Old Act (1970) New Act (2005)

Human Life / Genes Not patentable Not patentable

Plants and animals Not patentable Not patentable

Microorganisms Not patentable Patentable

Non biological processes Patentable Patentable

Non biological products Not patentable Patentable

Biochemical and biotechnological

process

Patentable Patentable

Bio products Not patentable Patentable

Crop varieties No protection Protection under

PVPFR

Animal varieties Excluded Excluded

Method of Agriculture and Horticulture Not patentable Products and process

qualifying for noveltyare patentable


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Advantages of Patents Patent gives the protection to the Patentee, enabling him to enjoy theright and to raise the capital for working his invention on a commercial scale. In case of not

obtaining the patent the product may be taken over by others to commercialise its benefits

Example of Indian Legal casesTurmeric: In 1995, two non resident Indians at the University of Mississippi Medical

Centre, Jackson, (SumanK.Das and HariHarP.Cohly) were granted a US patent (patentnumber 54015041) for turmeric to be used for healing wounds. The Indian Council for

Scientific and Industrial Research (CSIR) filed a re-examination case with the US Patent

Office challenging the patent on the grounds of prior art, i.e. existing public knowledge .

The claim had to be backed by written documentation claiming traditional wisdom. CSIR

submitted a document proof in the form of research paper published in 1953 in the Journal of

the Indian Medical Association. The US Patent Office upheld the objection and cancelled the

patent in 1997

Inventions can be patented if they satisfy three criteria:

1. Novelty2. Non-obviousness3. Marketability and Utility

The turmeric case failed to meet the novelty and non-obviousness criteria

Neem:Neem (Azadirachtaindica) is a tree from India and other parts of South and Southeast

Asia. Neem is used as natural medicine, fungicide, pesticide and fertilizer and so, it has

attracted a considerable amount of international interest

In 1994, the European Patents Office granted a Patent (patent number 436257) to the US

chemical multinational company WR Grace & Co. and USDA for preparation of a fungicide

derived from the seeds of the Neem

Dr.Vandana Shiva, Director, Research Foundation for Science, Technology and Ecology

produced the evidence of farmers using this knowledge for a long period and also gave the

evidence and information of two Indian scientists conducting research on fungicidal propertyofNeem before the patent had been granted. European Patent Office revoked the patent in

2005.

Basmati: Basmati is top-quality rice from the Punjab provinces of India. The word means

fragrant earth, and the rice is a slender aromatic and long grain variety that originated in

this region and is a major export crop. In 1997, the US Patent Office granted a patent to US

firm Rice Tec Co. (patent number 5663484) for a variety called Texmati rice (20

claims).Texmati rice has 16 claims similar to Indian Basmati rice . As per Geographical

Indication, Basmati is an Indian Rice Variety which could not be patented by other country.

US patent could affect annual basmati exports of India and thus threaten the livelihood of

thousands of Punjabi farmers. The brand name of Indian Basmati will be largely affected.

Agricultural and Processed Food Products Export Development Authority (APEDA) filed for

revocation of the patents granted to Rice Tec Co. by the US Patent Office. Evidences from

IARI, New Delhi and Directorate of Rice Research, Hyderabad proved that 16 claims are

similar to traditional Indian Basmati rice. Rice Tec Co. withdrew these 16 claims. However


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US Patent Office has not revoked the patent. The patent was issued to Rice Tec Co. with just4 claims.

For more information: http://www.american.edu/ted/basmati.htm

Ponni:A rice dealer in Malaysia has obtained the Ponni Trademark for a rice variety.

Improved white ponni is a variety released by TNAU in 1986 In this context TamilNadu

Agricultural University is preparing to challenge this trademark. The Union Government hasdecided to formally contest the grant of registration for Ponni rice as a trademark to a

Malaysian company, Syarikat FaizaSdn. Bhd. We have authorised a legal firm to appeal

against the registration. They will be doing so shortly, Mr AsitTripathy, Chairman of the

Agricultural & Processed Food Products Export Development Authority (APEDA), told

.APEDA has engaged K&S Partners, a Delhi-based intellectual property attorney, to file a

cancellation application with the Malaysian Trade Marks Registry for removal of Ponni

from the register. (Govt to contest Ponni trademark to Malaysian firm, The Hindu,

Business Line, Aug 7, 2008)

y In case, the Patentee is not able to work the invention commercially, he would be ableto make a profitable use of his invention by selling his patent or by granting license toothers, permitting the use of his invention

y Patent System helps for industrial growth by introducing new technologiesy The scientific knowledge contained in the patent specification helps as a stepping

stone for further researchy Patents provide inventive and creative ideas for further R & D in the field.y Patent acts as tradable industrial asset for the enterprise and, thus the strength of

patent portfolio of the company is the indication of the good economic health of the

company.

y After the term of patent is over, or patent is not kept in force, the patented invention isavailable to the public for free use.

Procedure for patent application

There are two types of patent documents usually known as patent specification, namely

y Provisional Specification and (ii) Complete SpecificationProvisional Specification

A provisional specification is usually filed to establish priority of the invention in case

the disclosed invention is only at a conceptual stage and a delay is expected in submitting full

and specific description of the invention. Although, a patent application accompanied with

provisional specification does not confer any legal patent rights to the applicants, it is,

however, a very important document to establish the earliest ownership of an invention.

Complete specification must be submitted within 12 months of filing the provisional

specification. This period can be extended by 3 months. It is not necessary to file an


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application with provisional specification before the complete specification. An applicationwith complete specification can be filed right at the first instance.

Complete Specification

Submission of complete specification is necessary to obtain a patent The contents of a

complete specification would include the following

y Title of the invention.y Field to which the invention belongsy Background of the invention including prior art giving drawbacks of the known

inventions & practices.

y Complete description of the invention along with experimental results.y Drawings etc. essential for understanding the invention.y Claims, which are statements, related to the invention on which legal proprietorship is

being sought. Therefore the claims have to be drafted very carefully.

Cost of Filing Application in India

The Government fee for filing a patent application (complete/provisional) in India is

Rs.750/- for individuals and Rs.4,000/- for legal entities. An applicant is now required to

make a request for examining the patent application within 48 months of filing of the

application. An individual has to pay Rs.1, 000/- as examination fee and Rs.3, 000/- for legal

entities. A sealing fee of Rs.1, 500/- for individuals and Rs.5,000/- for legal entities has to be

paid at the time of grant (sealing) of patent.

Publication of applications

All the applications for patents will not be open to the public for 18 months from the

date of filing or date of priority whichever is earlier. After 18 months, every application will be published except the applications in which a secrecy direction is given under section 35,

and the same will be notified in the Official Gazette. The publication includes the particulars

of date of application, number of application, name and address of the applicant and abstract.

Request for Examination

No application for a patent will be required to be examined unless the applicant or any

other interested person makes a request in Form 19 within 48 months from the date of filingof the application for patent.

Examination and First examination Report

All the applications filed at the appropriate office shall be first subjected to formal screeningand then to substantive Technical examination by the examiner [when a request in Form 19 is

made]. As the novelty, inventive step and industrial application are the criteria for the Grant

of Patent, these aspects are thoroughly studied by the Examiner. Further, the examiner willconduct a search for novelty, using the databases available at the patent office after the

subject matter of invention is classified according to Indian & International classification, andalso various other sources.


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Acceptance & Notification of Complete Specification

The controller of Patent shall accept the complete specification and inform theacceptance of complete specification to the applicant. Further, the acceptance of complete

specification will be notified in the Gazette of India, Part III, section 2 which is published

weekly, on every Saturday.

Opposition to the Grant of Patent

Any person interested can oppose the grant of patent within a period of four months,extendable by another month. The desire to oppose the grant should be put in an appropriate

form with appropriate fee. An opponent shall file a Notice of Opposition giving details of thegrounds on which he wishes to oppose the Grant of Patent. The notice of opposition should

be followed by full written statement explaining the various ground of opposition. The

opposition to the Grant of Patent coming before the controller is a bi-party proceedings

wherein, the Controller, being a quasi-judicial authority, will decide the case based on the

written statement and evidence placed by the opponent and, also the reply statement and

evidence filed subsequently by the Applicant.

Grant of Patent

If the application is not opposed or the opposition is decided in favour of the applicant

or is not refused otherwise, then the patent is granted and sealed upon request made by theapplicant in the prescribed manner along with fees on payment of Sealing Fee within 6

months from the date of advertisement of acceptance of complete specification. The period is

extendable by three months. Patent rights will accrue to the applicant only when the patent issealed and the rights are granted to him.

In order to keep the patent in force, Renewal Fee is to be paid in the Patent Office

annually.

How can a patent be obtained worldwide?

At present, no world patents or international patents exist. In general, anapplication for a patent must be filed, and a patent shall be granted and enforced, in each

country in which you seek patent protection for your invention, in accordance with the law ofthat country. In some regions, a regional patent office, for example, the European Patent

Office (EPO) and the African Regional Intellectual Property Organization (ARIPO), acceptsregional patent applications, or grants patents, which have the same effect as applications

filed, or patents granted, in the member States of that region. Further, any resident or national

of a Contracting State of the Patent Cooperation Treaty (PCT) may file an international

application under the PCT. A single international patent application has the same effect as

national applications filed in each designated Contracting State of the PCT

Patent offices in India


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The Patent Office, under the Department of Industrial Policy & Promotion, Ministryof Commerce & Industry, performs the statutory duties in connection with the grant of

patents for new inventions and registration of industrial designs. Patent Offices are located atKolkata (Head Office), Mumbai, Chennai and Delhi to deal with the applications for patents

originating within their respective territorial jurisdictions.

Head OfficeController General of Patents and Designs and Trademarks,

Old CGO Building, 101, M K Road,

Mumbai - 400002 , India

Phone No.: 91-22-201 7368

: 91-22-203 9050

Fax No.: 91-22-205 3372

http://www.patentoffice.nic.in

Regional Patent Offices Address:


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List of Forms

Controller General of Patents, Designs & Trade Marks BhoudhikSampadaBhavan, Near

Antop Hill Head Post Office, S.M. Road, Antop Hill, Mumbai-400037, Phones : 022-

24123311, Fax : 022-24123322 Web site : www.ipindia.nic.in

Patent Offices

Address Contact

Persons

The Patent Office, Intellectual Property Office Building, CP-2 Sector V, Salt

Lake City,Kolkata-700091, Phone : 23671945, 1946, 1987, FAX-033-2367-

1988, Email:- [email protected]

Deputy

Controller o

Patents &

Designs,

Assistant

Controller o

Patents &Designs

The Patent Office,Intellectual Property Office Building,G.S.T. Road, Guindy,

Chennai-600032, Phone: 044-22502081- 84, FAX: 044-22502066, Email:

[email protected]

Deputy

Controller o

Patents &Designs ,

Assistant

Controller o

Patents &Designs

The Patent Office,Intellectual Property Office Building,Plot No. 32, Sector

14, Dwarka, New Delhi-110075, Phone : 011-28031032. 28031039,28031044, 28031053, FAX:011-28031583, 28031432 Email: delhi-

[email protected]

Deputy

Controller oPatents &

Designs ,

Assistant

Controller o

Patents &Designs

Patent Office BoudhikSampadaBhawan, S.M.Road, Near Antop Hill Post

Office, Antop Hill, MumbaiI - 400 037. Phone : 24137701, 24141026,24150381, 24148165, 24171457 FAX : 24130387 EMAIL: mumbai-

[email protected]

Joint

Controller oPatents &

Designs,

Assistant

Controller o

Patents &

Designs

Designs Wing of the Patent Office

The Patent Office(Designs Wing), Intellectual Property Office,CP-2 SectorV, Salt Lake City, Kolkata-700091 Phone No. 033-23671945-46, 23671987

FAX-033-23671988, Email:- [email protected] Note : Application

for Design can also be received by any of the Patent Office located at

New Delhi, Chennai & Mumbai.

AssistantController o

Patents &

Designs


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Form No.Section and rule Title

1.

1.A

Sections 5(2), 7, 54, 135 and rule 39

Section 7(1A); rule 20(1)

Application for grant of a patent.

Application for grant of patent on an

application corresponding to an

International application under PCT.

2. Section 10; rule 13 Provisional/Complete Specification.

3. Section 8 and rule 12. Statement and undertaking.

4. Sections 8(2), 9(1), 25(1), 28(4), 43(3),

53(3) and rules 12(4), 13(6), 24(5), 56(1),

73(3) or 130.

Request for extension for time.

5. Section 10(6) and rule 13(6). Declaration as inventorship.

6. Sections 20(1), 20(4), 20(5) and rules 34(1),

35 or 36.

Claim or reque st re garding any

change in applicant for patent.

7. Section 25 and rule 55. Notice of opposition to grant of aatent.

8. Sections 28(2), 28(3) or 28(4) and rules 66,

67, 68.

Reque st or claim regardingmention

of inventor as such in a patent.9. Section 43 and rule 73(1). Request for sealing of a patent.

10. Section 44 and rule 75. Application for amendment of patent.

11. Sections 51(1), 51(2) and rules 76, 77. Application for direction of the

controller.

12. Section 52(2) and rule 79. Request for grant of patent.

13. Section 57 and rule 81(1). Application for amendment of the

application for patent/completespecification.

14. Sections 57(4), 61(1), 63(3), 78(5) and 87(2)

and rules 49(1), 52(3), 81(3)(b), 85(1),

87(2), 98(1), 101(3) or 124 and also section87 (2) as modified by section 24C.

Notice of opposition to

amendment/restoration/surrender o

atent/grant of com pulsory licenceor revision of term s thereof or to a

correction of clericalerrors.

15. Section 60 and rule 84. Application for re storation o

atents.

16. Section 68 and rule 89. Application for re gistration of a

document.

17. Sections 69(1) or 69(2) and rules 90(1) and90(2)

Application for re gistration otitle/interest in a patent or share in it

or re gistration of any documenturporting to affect proprietorship o

the patent.18. Sections 84(1), 91 or 92(1) and rules 47, 96

and also sections 84 and 92 as modified by

section 24C.

Application for compulsory licence.

19. Section 11B and Rule 24(1). Reque st forexamination o

application for patent.

20. Section 85(1) and rules 47, 96, and also

section 85(1) as modified by section 24C.

Application for revocation of a

atent orexclusivemarketing right.


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21. Section 88(4) and rules 51, 100 and also

section 88(4) as modified by section 24C.

Application for revision of terms and

conditions of licence.

22. Section 94 and rule 102(1) and also section94 as modified by section 24C.

Reque st for termination ocompulsory licence.

23. Rules 109 and 112. Application for registration of Patent

Agent.

24. Section 130 (2) and rule 117. Application for the restoration of the

name in the register of PatentAgents.

25. Sections 77(1)(f), 77(1)(g) and rules 130(1)

or 130(2).

Application for review/setting aside

controllers decision/order.

26. Sections 127, 132 and rule 135. Form of authorisation of a PatentAgent/or any person in a matter or

roceeding under the Act.

27. Section 24A and rule 40. Application for grant ofexclusivemarketing rights.

28. Rule 46. Form for the grant of exclusive

marketing rights.

29. Section 146(2) and rule 131(1) Statement re garding the working othe Patented invention.

30. Section 39 Reque st for permission for making

atent application outside India

Forms and Fees

Form no.

Amount of fees (in rupees)

Natural Person Legal Entity other than natural

person(s).

1 1000

- Multiple of 1000 in case of every multiple

priority.

- 100 (each sheet of specn. -in addition to 30)

- 200 (for each claim in addition to 10)

4000

- Multiple of 4000 in case of

every multiple priority.

- 400 (each sheet of specn. -in

addition to 30)

- 800 (for each claim in

addition to 10)

2 No fee

- 100 (each sheet of specn. -in addition to 30)

- 200 (for each claim in addition to 10)

No fee

- 400 (each sheet of specn. -in

addition to 30)

- 800 (for each claim in

addition to 10)3 No fee No fee

4 300 per month 1200 per month

5 No fee No fee

6 500 2000

7 1500 6000

8 500 2000

9 2500 10000


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10 1500 6000

11 1500 6000

12 1500 6000

13 500

1000

200

2000

4000

800

14 1500 6000

15 1500 6000

16 1000 4000

17 1500 6000

18 2500

3500

10000

14000

19 1500 6000

20 1500 6000

21 1500 6000

22 2000 No fee

23 1000 No fee24 1000 4000

25 1000 4000

26 No fee No fee

27 No fee No fee

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