Types of Patent

HOW TO FILE A PATENT

Patent filing in India is a tedious task. Let us summarize the process with the help of flow chart.

STEP 1: FILING OF PATENT APPLICATION

Documents regarding patents can be filed either online or at the jurisdiction of respective patent office: Mumbai, Delhi, Chennai and Kolkata.

Physical Filing (at counter of jurisdictional patent office)

a) Application for the grant of Patent in Form 1 in duplicate [section 54, section 135 & section 7 and Rule 20(1)]

b) Complete/Provisional specification as in Form 2 in duplicate [Section 10, Rule 13] comprising

•Drawings •Abstract•DescriptionDescription•Claims

c) Covering indicating the documents list.d) Undertaking and Statement as in Form 3 in duplicate [Section 8, Rule 12]e) Requisite Statutory fees (DD/ Cheque). f) Power of Attorney (original) as in Form 26 (in case an agent for the patent is assigned)

(Rule 3.3 (a)(ii))g) Inventorship Declaration (duplicate) as in Form 5 (applicable only in those cases

where applicant and inventor(s) are different) (Rule 4.17)h) Form 28 (applicable in those cases where the applicant is a small entity) (Rule 2 &

Rule 7)i) Certified true copy of the Priority document (applicable, in case priorities are claimed)

Table 1 Regional Patent Offices and their Jurisdiction areas

Office Territory under jurisdiction

Patent Office Branch, New Delhi

The States of Punjab, Himachal Pradesh, Haryana, Rajasthan, Jammu & Kashmir and Uttar Pradesh, Delhi and Chandigarh

Patent Office Branch, Mumbai

States of Goa, Gujarat, Maharashtra and Madhya Pradesh, Dadar & Nagar Haveli and Daman & Diu

Patent Office Branch, Kolkata West Bengal and rest of the parts of India.

Patent Office Branch, Chennai

States of Tamil Nadu, Kerala, Andhra Pradesh and Karnataka, Pondicherry, Aminidivi, Minicoy and Laccadive

Islands

Table 2 Statutory fees for Physical Filing

Particulars Natural Person

Large Entity Small Entity

For filing patent application 1, 760 8, 800 4, 400

For each claim in excess of 10 352 1, 760 880

For each sheet of specification in excess of 30 176 880 440

All quantities are in Indian National Rupee

Online Filing of Patent Application [using the e-filing portal of Patent Office]

Pre-requirements

1. Applicant/ Inventor must have a login ID & password2. A valid Net Banking facility /Debit/Credit/ for transaction3. Applicant/ Inventor must have a Digital Signature (in accordance to Class III) issued

from e-mudhra or Safe Script or Code Solutions

Process of e-Filing

a) Generation of Form 1 through portal with field specific information to be given by filer b) Complete/Provisional Specification as in Form 2 comprising

Claims Abstract Description Drawings

c) Inventorship Declaration as in Form 5d) Power of Attorney (original) as in Form 26 (in case an agent for the patent is assigned).

The original copy must be submitted before Indian Patent Office

e) Undertaking and Statement as in Form 3f) Figure of Abstractg) In case the applicant is a small entity, Form 28 is requiredh) Requisite Statutory fees (through online payment gateway)i) Certified true copy of the Priority document (applicable, in case priorities are claimed).

The document must be submitted within 6 months of filing the applicationj) Priority Detailsk) Documentary proof to prove the small entity status (if applicable)

Table 3 Statutory fees for Online Filing



For filing patent application 1, 600 8, 000 4, 000

For each claim in excess of 10 320 1, 600 800

For each sheet of specification in excess of 30 160 800 400


STEP 2: PUBLICATION

An application of a patent will be published in the official journal automatically after expiry of 18 months from filing date or priority date of the application containing abstract, title, application number and name of applicant(s)/inventor(s) (Rule 24)

Request for early publication: In order to speed up the patent grant process, a request for publication under Section 11(A)(2) can be made in Form 9 any time after application filing. The application will be published in one month from the date of such request (Rule 22A)

Table 4 Statutory fees for Publication



E-Filing 2500 12500 6250

Physical Filing 2750 13750 6875

All quantities are in Indian National Rupe

STEP 3: OPPOSITION (IF APPLICABLE)

Opposition prior to Grant

As per Section 25(1), upon publication but before the patent grant, any person, based on different grounds may file an opposition, in writing, represent by way of opposition to the Controller against the patent grant. But in such a case, the opposition will be taken by the patent office only after the filing of Examination request.The opposition may be filed with 3 months from the date of application publication or before the grant of patent, whichever is later as per Section 25(1) Rule 55(1)There is no statutory fee required for a pre Grant opposition.To file an opposition, the content is given according to Rule 55(1) along with Form 7A which comprises the following particulars:

Evidence related to opposition (if any) Hearing request (optional) Statement related to opposition

Procedure

a) Such representations shall be considered by the controller only when an examination request has been filed.

b) The representation shall be forwarded to the applicant by the controller.c) In support of his application, the applicant shall file his statement and evidence within

three months from the date of notice of filing the representation.d) The request can be made to the Controller by either party to give them a chance to be

heard.

After hearing both the parties and after considering the representation of the opponent and the response of the applicant and their supporting evidences, the Controller can either reject the representation and grant the patent or accept the representation and refuse the grant of the patent. The process is completed ordinarily within one month from the completion of above proceedings. (Rule 55(6))An appeal can be filed by the applicant against the decision of the Controller before the Intellectual Property Appellate Board.

Opposition post Grant

As per Section 25(2), any interested person may file an opposition in Form 7 to the Controller against the grant of a patent, based on different grounds. This opposition can be filed within one year after the grant of the patent. The content and particulars regarding the opposition are as follows:

Written Statement (in duplicate) stating the nature of interest (Rule 57) Opposition Notice (Rule 55A) shall be in Form 7 Hearing Request Evidences regarding Opposition Statutory fees

Table 5 Statutory fees for Post Grant Opposition



E-Filing 2400 6000 12000



Process

a) The Controller shall be, by order, constituting an Opposition Board consisting of three members and nominating one of the members as the Chairman of the Board, on receipt of the opposition notice.

b) The Applicant will be provided with the copy of evidence and statement together with the Opposition notice.

c) If the applicant wants to contest the opposition, he shall be leaving a Reply Statement stating fully the grounds upon which the opposition is claimed, within a period of two months from the receipt date of the statement’s copy and opponent’s evidence

d) Within 3 months from the date of receipt of copy of applicant’s reply. The opponent may leave evidence strictly confining to matter in the applicant’s reply and can deliver a copy of such evidence to applicant.

e) The Opposition board will hold an opposition notice’s examination and submit a report with reasons on each ground considered with joint recommendation within 3 months from the date on which the document was forwarded.

Hearing

a) A date and time may be fixed by the Controller to hear the opposition according to rule and inform parties and member of opposition Board [Rule 62] .

b) He shall inform the Controller by a notice along with prescribed fee upon the notice receipt of hearing either party desirous to be heard

c) In case applicant notifies Controller that he doesn’t desire to proceed with application after opposition notice is given, the Controller, will decide whether costs should be awarded to the opponent [Rule 63].

After hearing the parties desirous of being heard and taking into consideration the recommendation of opposition board, the controller shall take a call on the opposition and will notify his decision to the parties giving reasons.

Appeal

An applicant can go for appeal against the Controller’s decision. Such appeal will be filed before the Intellectual Property Appellate Board (IPAB).

STEP 4: EXAMINATION REQUEST

No Request, No Grant

Form 18 has to be produced within period of 48 months from date of filing or priority, whichever is earlier [section 11B; rules 20(4)(ii) and 24B(1)(i)] (in duplicate when filed in physical copy)

Table 6 Statutory fees for Examination Request



E-Filing 4000 20000 10000



Express Request

Under rule 20(4)(ii), this request can only be made for National Phase Applications

Table 7 Statutory fees for Express Request



E-Filing 5600 28000 14000



STEP 5: FIRST EXAMINATION REPORT (FER)

As per Section 12 Rule 24B(3), After proper examination of patent application on the novelty criteria, industrial application and inventiveness, the Patent Examiner will issue and

send the First Examination Report (FER) along with the application and specification to the applicant.

STEP 6: AMENDMENT TO OBJECTIONS BY THE APPLICANT

To file a response and overcome the objections raised by the examiner, the issued FER gives an opportunity to the applicant. As per Rule 24 B (4) (iii), the report should be filed within 12 months from the date on which FER has been issued to the applicant. As per Section 15&16, In case of the unjustified response, the Controller has power to deny the patent grant/ amend claim(s) or make order for the division of application.

STEP 7: GRANT OF PATENT

The Controller shall grant the application upon satisfactory response by the applicant to overcome all objections raised under FER. Upon the patent grant, the application will be assigned a serial number in the series of numbers accorded to the patents under Indian Patents Act, 1970.

STEP 8: RENEWAL FEES

a) To keep an existing patent in continuance, the renewal fees shall be payable at the end of the second year from the patent date or of any succeeding year and this fees shall be remitted to the patent office before the end of the second or the succeeding year.

b) While paying the renewal fees, the serial number and date of the patent concerned and the year for which the fee is getting paid shall be quoted. This fees payable in respect of two or more years can be paid in advance.

Table 8 Statutory Renewal Fees (mode is online)

Particulars Natural person

Large Entity

Small Entity

Before expiration of 2ND

year from the date of patent in respect of 3RD-

6TH year [per year]

500 4, 000 2,000

Before expiration of 6TH

year from the date of patent in respect of 7TH 10TH

year [per year]

2, 400 12, 000 6,000


year from the date of patent in respect of 11TH

-15TH year [per year]

4, 800 24, 000 12,000


year from the date of patent in respect of 16TH

-20TH year

8,000 40, 000 20,000


10 percent surcharge is applicable in each case of physical filing.

Table 9 Statutory Renewal fees (paid per month)



E-Filing (per month) 480 1200 2400

Physical Filing (per month) 528 1320 2640All quantities are in Indian National Rupee

Plant patent

Plant patent represents a kind of patent issued against identification and characterization of asexually reproducing plant strains of economical and sociological importance.

While plant patent allows applying for a patent of asexually/ vegetatively propagating plant strain, any mutant forms, hybrids, newly characterized seedlings etc., it impedes in registering proprietorships for sexually reproducing, tuber propagated and uncultivable wild type plants. By biological definition, an asexually reproducing plant can be described as a plant growing through its vegetative parts in ways like layering, budding, grafting, and inarching etc. but not through seeds. The sexually reproducing plants, on the other hand, multiply by pollination and subsequent embryogenesis from monochot or dichot seeds. The tuber growing plants are like potatoes which can grow from branching of subcutaneous parts of plants like root or underground stem.

Again availability of lodging a plant patent has limitations in many countries. Still some countries like USA, India accepts plant patents under the policies and rules laid by the United States Patent and Trademark Office (USPTO).

Criteria for a Fundamental Patent:

1. Plant patent is pertinent for two decades and enables the inventor to prevent others from exploring the concerned plant in terms of commercial and scientific view points.

2. In plant patents the set(s) of wild type or altered/ modified genetic configurations accountable for the genotype and phenotype (i.e. properties for the plant) has to be disclosed properly and in detail.

3. Mutants and hybrids, in either form of spontaneous or induced, can be natural or artificially crafted, but must be asexually cultivable under all circumstances.

4. Plant patent only holds good for any of the living thing belonging to plant kingdom (of biological definition) and not for anything belonging or related to animal phyla or protist (like bacteria, archaea).

It is interesting to note the difference between the ‘Plant patent’ and ‘Plant variety protection Act’. While the former deals with the newly identified or genetically modified crops, seeds and/or genes that are associated with truly asexually propagating plants, the later monitors the matters related to actual breeding plants (sexually or tuber-propagated) or their varieties. However, both of them protect the proprietorship in terms of legal and intellectual aspects.

The claim of inventor-ship in plant patent has relaxations in considering more than one inventor. Regardless of being solo or in a group, any individual who has contributed in identification and/or characterization (like the asexual breeding property) of the investigated plant can be virtually a claimant or proprietorship as inventor or co-inventor. In any case, commercial custom propagating services and biotechnology enterprises remain ineligible and cannot file a plant patent application unless they represent one or more individuals as the legal patent holder.

The first plant patent in USA under the vigilance of UPSTO was recorded way back in 1931 A.D by Henry Bosenberg for the ‘Ever-Blooming Rose’. This was the first event introducing the concept that plant could also be discovered and legally authorized when the plant is identified and remarked in cultivable area (and strictly not in wild natural/ uncultivable areas) with also a disclaimer about its asexual reproducibility.

For plant related issues, another patent termed ‘Utility patent for plants’ exist. This patent is issued under the basic ground of plant products and elements obtainable from both sexually and asexually reproducing plants. This patent holds true for biological elemental things like modified genes (DNA), RNA, proteins, excretory materials (like latex) etc. while also retaining the characteristics of novel utility and non-obviousness. Though not mandatory, materials concerning this kind of patent are required to be submitted to a national repository for not only proper evaluation of the claims but also for the future availability of the materials. Under this patent, the buyer/ consumer/ explorer cannot manufacture the elements but retains the rights to transfer or sell the elements to some downstream user.

The goal of plant patent or plant related patents was to secure the legal and intellectual rights of the inventor for the invention. This is also to correlate the profits and benefits to the inventors,

while also discouraging the competitors from unethical usage, modification and exploration. Nonetheless, a plant patent is sellable and transferable to a third party when it is abide by the legal rules and regulations and in consent with all associated parties/ authorities/ institutions. Though a plant patent is valid for 20 years and renewable thereafter with terms and conditions, the scientific notions and commercial dimensions of the patent become available in public domain within 18 months for review. It’s advised and equally customary to apply for a combination of plant patent and utility patent/ design patent so as to protect the entire copyright of the invention. The copyright remains with the inventor(s) for 100 years and the trademark, if acquired, stays forever. For plant patent accepted after 1995 A.D in USA, the patentability time was reduced to 17 years in sake of allowance for better research of the previous invention. Similarly, the design patent time was limited to 14 years.

The process involving plant patent is less complicated and requires filling a single application with comprehensive specifications on origin, botanical criteria, all essential characteristics (genetic, appearance, modifications etc.) and photographs (if applicable). Its recommended that all inventors claiming the patent should deploy a registered patent attorney or agent for representing them. However, ‘Pro Se’ applications are equally welcome by law. Plant patents are urged to be under notice of the concerned authority within one year of the invention and before its public intimation in forms of publication and advertisement. Like all other patents, plant patent is also subjected to fees, which may vary in different countries. From applying to receiving the plant patent remains in the category of PPAF (Plant Patent Applied For) which also gives the right to prosecute and limit the usage of the material within groups of wholesale grower, retailer and breeder.

Plant patent has limited protection when regarding overseas usage and applications. While USPTO provided plant patents are accepted as unanimous patent across the world, some countries like Canada does not provide plant patent and only bestows certain rights, like plant breeding right, plant regeneration right etc. to keep the boundaries and avenues open.

UTILITY PATENTS

According to The Agreement on Trade Related Aspects of Intellectual Property Rights ("TRIPS"), to qualify as a patent, threefold criterion of novelty, inventive step and non-obviousness must be satisfied.

Utility Patents are relatively Intellectual Property Rights granted for inventions that do not qualify the threefold criteria of patentability, but still are inventions in their own consideration. The criteria being talked about are inventive step, or non-obviousness. It allows the inventor to prevent others from commercially using the protected invention, without his consent and permission, for a shorter period of time as compared to patents, say around 10 years.

The prime objective behind patent law is to encourage and promote innovation and development by granting protection rights to the creator for a limited time. It provides an incentive for the creating something new even if not of the extent of being patentable.

There are many advantages of the utility patent system.

Utility model can be granted by following a much easier process rather than of a tedious process for a regular patent. It does not require going through a lengthy process of examination. Also it is granted for a shorter period of time without the possibility of a renewal or getting extended.

In India, there is a delay in granting a patent which eventually shortens the term of the patent. The term of validity of a patent is calculated from the date of filing of application. A utility model law would effectively shorten this period and would also provide a more rapid protection for innovations.

Utility patents would ultimately lead to development and progress of the nation. Smaller units like SMEs and MSMEs would also be promoted and encouraged to perform and undertake research and development of incremental innovations which may be less capital-intensive because of the less stringent qualifications of non-obviousness and inventiveness.

Nonetheless, the system has some disadvantages too. The analysis of the drawbacks will help us to identify the areas were extra safeguards need to be employed.

The protection period for such innovations should be short as prolonged monopoly over such utility patents would negate the very purpose and concept of this model for SMEs and MSMEs.

The model should aim at supplementing the patent system and not erode it. The motive behind the Intellectual Property Rights should not be diluted by introducing a lenient system.

The system should not impede the way of innovation by providing an easy protection for incremental inventions. It should facilitate the idea of free flow of innovation and creativity in the nation.

In context of India, the country is growing at a faster rate and is hence witnessing developments in all the fields. So much so that India is now a research hub of many multi-national companies. However, the country still lags behind in patent filings.

The Indian Patents Act, 1970, follows the TRIPS provision, providing the same criterion for a product or process to qualify as patent. But India till date does not recognize utility patent. However, it has been included in the first draft of the National IPR policy submitted by the Think Tank. It is a welcoming move. If implemented successfully, this system would effectively encourage innovation and facilitate development in the country.

The first draft of the National IPR Policy says that in a country like India, there are innumerable inventions that may fall into the category of Intellectual Property but not fulfil the stringent criteria of patentability. Nevertheless, they are novel, utilitarian and inventive in their own spheres. Such inventions are already given recognition and protection under 'utility model law' in many countries but no such provision is available in India. This has adverse affects on a large number of small and medium inventors who fail to protect their inventions by IPRs. To quote some examples, it includes Micro, Small and Medium Enterprises (MSMEs) and the unorganized/informal sectors. In India, MSMEs hold for about 45% of manufacturing output, but their potential IP assets are recognized only in a limited, often informal, manner. Existence of a new law on Utility Model is felt to derive the full benefits out of such inventions.

The policy clearly motivates Indian Government to facilitate creation, designing and protection of 'small inventions' through a new law on utility models. Also specific laws must be designed and enacted to address national needs. It will help reduce gaps in the protective regime of IPRs such as Utility Models to keep up with advancements and developments in the field of technology.

Their role in growth of the country and the position of Small and Medium Enterprises (SMEs) and MSMEs is uncontested in a developing country like India. They account for about 44 % of the gross value of industrial production. Adding to it, they provide employment to around 60 million people. Without a doubt, Indian economy largely depends on the inputs of these SMEs and MSMEs. Hence, they require a protection for their inventions which does not demand for strict examination and qualification requirements. In light of this, utility model would be the perfect solution for them. The rights granted under the utility model are quite similar to those given by the patent but are more considerable for using the term 'incremental inventions'. They require lesser formality checks and lasts for a shorter period of time. These models are considered to be more suitable for such inventions that are making the 'minor but significant' improvements in the existing inventions. Only when these incremental inventions are recognised under utility model in India, it can be expected that number of inventions and their due protection will be more in India.

DESIGN PATENTS

INTRODUCTION

Industrial Design is a protection provided by law for any work of creativity that enhances the ornamental or formal appearance of any item or product.

Industrial Design is also known as Patent Design. It is protected in India under the Designs Act, 2000. Since India is member of Paris Convention for Protection of Industrial Property, 1883, Patent Design from any member country is protected under the Indian Designs Act, 2000 as any Indian design is. The same applies for any Indian industrial design in other member nations of

Paris Convention for Protection of Industrial Property, 1883.

SOME IMPORTANT TERMS DEFINED IN ACT

Design Act defines following items:

“Articles” as any manufactured or created item which can artificial, partly artificial or partly natural. It covers any part of article that can be sold separately.

“Design” as features of two dimensional or three dimensional or in both , with a distinct shape, pattern, ornament, configuration or combination of lines or colours applied to any article whether in through a mechanical, manual or both means which can be judged solely by the eye. It should not include any trade mark as defined in section 2 sub-section (1) clause (v) of the Trade and Merchandise Marks Act, 1958 or property mark as defined in IPC section 479 or any artistic work as defined in Section 2 Clause (c) of the Copyright Act, 1957.

“Copyright” stands for the exclusive right to apply a design to any article in any class in which the design is registered;

In India, it is necessary to register the design first in India for claims and enforcement rights as provided by Designs Act 2000. For any foreign Industrial Design, it should be registered in convention country and then should apply for registration in India within 6 months applying in the foreign country.

REGISTRATION

Functionality aspects of design are not covered under Design Act, 2000 and are not registrable. It is limited to any two dimensional or three dimensional features of shape, pattern, configuration, ornament or combination of colors or lines.

These are some more conditions that may make a design invalid for getting registered. These conditions may also lead to cancellation of the registration and can also be used as a defense in an infringement proceeding.

If the design is not original or new

If the design has been revealed to public whether in India or any other country by reproduction of same in a tangible form or by usage before priority date of the application

If it cannot be differentiated from any previously known designs

If its content is obscene or inappropriate

If any foreign entity wants to protect any Industrial Design in India then it should file an

application for registering the same within six months from date of corresponding filing of application in home country.

DURATION OF PROTECTION OF DESIGN

Initially, the proprietor of a registered design is given protection for 10 years. He has full right to sell, import or manufacture the items and also sue any infringer. These 10 years can be extended further by 5 years on payment of a renewal fee. The maximum period of validity for registering a design under Indian Designs Act, 2000 can be 15 years. Lapsed designs can also restored or expired registrations is also permitted under Indian Designs Act, 2000

M.C. Jayasingh Vs. Mishra Dhatu Nigam Limited (MIDHANI) rep. by its Managing Director, Apollo Hospitals

The plaintiff along with Professor Mayilvahanan Natarajan (co-patentee) had invented various prosthetics for limb salvage surgery. It was made of titanium and stainless steel. It was named as ‘Custom Mega Prosthesis’ (CMP). It could be used to replace elbow, wrist, shoulder, hip, knee, ankle, etc. The plaintiff obtained patent and design registrations for 15 kinds of Custom Mega Prosthesis. There were very novel features in this design and was quite up to mark.

The plaintiff supplied these prosthetics to the third and fourth defendants. From a newspaper article and on finding the research project of a potential employee, the plaintiff suspected that the defendants are infringing the patent and hence filed a suit for infringement.

This case was basically for only one patent and design- “Distal Femoral Prosthesis with Thrust Bearing Polymer Pad & Rotating Axis Mechanism” (patent No. 196333, which corresponds to the design No. 191946)

After considering the validity of the plaintiff’s patent, the checked infringement and compared the defendant product’s features with that of the plaintiff’s product. The defendants showed several dissimilarities between the two products and the court delayered that there was no infringement. It was also found that the plaintiff couldn’t produce any evidence of actual infringement and it was only able to establish his suspicion that the defendant might be infringing his patent. The court observed:

“The exact reason why the defendants set up the plea of obviousness on the ground that these developments were to be known or at least expected in prior art, for individuals skilled in the art. But I rejected the argument with the intention to give the benefits of the innovation to the plaintiff. Therefore, as a corollary, the defendants are entitled to the benefits of the dissimilarities that exist between their prosthesis and the plaintiff’s prosthesis.”

Conclusion

A patent provides the owner protection rights to stop others from exploiting his patented technology. This process helps the patent owner to get a fair amount as royalty for the use of technology. Patents provide a wide range of value to their owners, some of which may be more applicable to one business or another. First, patents provide freedom of movement in the company’s field. For companies, this is very valuable, especially in the field competition is high and competitors are many. Patent filing is vital in order to protect the invention from copy. This early mover position assures the organizations of assurance for their inventions. Indeed, the sooner patents are applied for, the better the chance that someone else will not be first.

The various steps involved in filing a patent have been thoroughly discussed ranging from filing of patent application, publication, opposition to grant of patent. The monetary costs involved in filing and renewal of patent have also been detailed.

The basics of plant patent, the kind of plants the plant patent is awarded is discussed in detail. The process involving plant patent is less complicated and requires filling a single application with comprehensive specifications on origin.

Utility Patents are relatively Intellectual Property Rights granted for inventions that do not qualify the threefold criteria of patentability, but still are inventions in their own consideration. . It allows the inventor to prevent others from using his/her protected invention, without his consent and permission, for a shorter period of time as compared to patents, say around 10 years.

Industrial Design is protected by provision of law for any work of creativity that enhances the ornamental or formal appearance of any item or product. It is protected in India under the Designs Act, 2000. Registration, duration and other details about the act are mentioned.

Types of Patent

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