INTRODUCTION TO INTELLECTUAL PROPERTY Intellectual Property refers to creation of mind i.e. inventions, industrial designs for article, literary & artistic work, symbols etc. used in commerce. Intellectual property is divided into two categories: industrial property, which includes inventions (patents), trademarks, industrial designs, and geographic indications of source: and Copyright, which includes literary and artistic works such as novels, poems, plays, films and musical works etc. According to the TRIPS Agreement, the intellectual property has been classified into–Patents, Industrial Designs, Trade Marks, Copyright, Geographical Indications, Layout Designs of Integrated Circuits, Protection of Undisclosed Information/Trade Secrets. Different IP Rights vary in the protection they provide.
PATENTS—WHAT IT IS A Patent is an intellectual property right relating to 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 process producing that product for those purposes. The purpose of this system is to encourage inventions by promoting their protection and utilization so as to contribute to the development of industries, which in turn, contributes to the promotion of technological innovation and to the transfer and dissemination of technology. Under the system, Patents ensure property rights (legal title) for the invention for which patent have been granted, which may be extremely valuable to an individual or a Company. One should make the fullest possible use of the Patent System and the benefits it provides. Patent right is territorial in nature and a patent obtained in one country is not enforceable in other country. The inventors/their assignees are required to file separate patent applications in different countries for obtaining the patent in those countries.
LEGISLATION The Patent System in India is governed by the Patents Act, 1970(No. 39 of 1970) as amended by the Patents (Amendment) Act, 2002 and the Patents Rules, 2003 effective from 20-05-2003 in India.
ADMINISTRATION The Patent Office, under the Department of Industrial Policy & Promotion, Ministry of 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 at Kolkata (Head Office), Mumbai, Chennai and Delhi to deal with the applications for patents originating within their respective territorial jurisdictions. Patent Information System (PIS) located at Nagpur maintains a comprehensive collection of patent specifications and patent related literature, on a worldwide basis and provides technological information contained in patent or patent related literature through search services and patent document supply services. Intellectual Property Training Institute (IPTI) located at Nagpur provides training to the officials of IP offices and other users of the system who are working in the field of Intellectual Property Rights.
INTERNATIONAL TREATIES India is a member-state of Word Intellectual Property Organisation (WIPO), an International Organisation, responsible for the promotion of the protection of intellectual property throughout the world. India is a member of the following International Organisations and Treaties in respect of Patents: a) World Trade Organization (WTO) with effect from 01-01-1995. b) Convention establishing World Intellectual Property Organisation, (WIPO). c) Paris Convention for the protection of Industrial Property with effect from Dec.7, 1998. d) Patent Co-operation Treaty (PCT) with effect from Dec.7, 1998. e) Budapest Treaty with effect from 17th December, 2001.
TYPES OF PATENTS a) Ordinary Patents b) Patents of Addition (granted for Improvement or Modification of the already patented invention for the unexpired term of the main patent). c) Convention applications with priority date, claiming on the basis of filing in Convention Countries d) National Phase Applications under PCT.
WHO MAY APPLY Application may be made by the inventor, either alone or jointly with another, or his/their assignee, legal representative of deceased inventor or assignee are entitled to apply.
GENERAL PRECAUTION FOR APPLICANT The first to file system is employed, in which, among persons having filed the same invention, first one is granted a patent, Therefore, a completed invention should be filed promptly. It is common experience that through ignorance of patent law, inventors act unknowingly and jeopardize the chance of obtaining patents for their inventions. The most common of these indiscretions is to publish their inventions in newspapers or scientific and technical journals, before applying for patents. Publication of an invention, even by the inventor himself, would (except under certain rare circumstances) constitute a bar for the subsequent patenting of it.
Similarly, the use of the invention in Public, or the commercial use of the invention in public or even in secrecy, prior to the date of filing patent application would be a fatal objection to the grant of a patent for such invention, thereafter. There is, however, no objection to the secret working of the invention by way of reasonable trial or experiment, or to the disclosure of the invention to other confidentially. Another mistake, which is frequently made by the inventors, is to wait until their inventions are fully developed for commercial working, before applying for patents. It is, therefore, advisable to apply for a patent as soon as the inventor's idea of the nature of the invention has taken a definite shape. It is permissible to file an application for a patent accompanied by a "Provisional Specification" describing the invention. The application may, therefore, be made even before the full details of working the invention are developed. The filing of an application for a patent disclosing the invention would secure "provisional protection", and thereby, enable the inventor to work out the practical details of the invention and to file complete specification within 12/15 months with extension from the date of filing of provisional specification.
WHAT IS PATENTABLE INVENTION Under the Patents Act, an Invention means "a new product or process involving an inventive step and also capable of being made or used in the industry". It means the invention to be patentable should be technical in nature and should meet the following criteria – i) Novelty: The matter disclosed in the specification is not published in India or elsewhere before the date of filing of the patent application in India. ii) Inventive Step: The invention is not obvious to a person skilled in the art in the light of the prior publication/knowledge/ document. iii) Industrially applicable: Invention should possess utility, so that it can be made or used in the industry.
WHAT IS NOT PATENTABLE The following are Non-Patentable inventions within the meaning of the Act: - (a) an invention which is frivolous or which claims anything obviously contrary to well established natural laws; (b) an invention the primary or intended use or commercial exploitation of which could be contrary to public order or morality or which causes serious prejudice to human, animal or plant life or health or to the environment; (c) the mere discovery of a scientific principle or the formulation of an abstract theory (or discovery of any living thing or non-living substances occurring in nature); (d) 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; (e) 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; (f) the mere arrangement or re-arrangement or duplication of known devices each functioning independently of one another in a known way; (g) a method of agriculture or horticulture; (h) any process for the medicinal, surgical, curative, prophylactic (diagnostic therapeutic) or other treatment of human beings or any process for a similar treatment of animals to render them free of disease or to increase their economic value or that of their products. (i) 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; (j) a mathematical or business method or a computer programme per se or algorithms; (k) a literary, dramatic, musical or artistic work or any other aesthetic creation whatsoever including cinematographic works and television productions; (l) a mere scheme or rule or method of performing mental act or method of playing game; (m) a presentation of information; (n) topography of integrated circuits; (o) an invention which in effect, is traditional knowledge or which is an aggregation or duplication of known properties of traditionally known component or components. (p) Inventions relating to atomic energy and prejudicial to the defence of India. (q) In the case of inventions relating to substances prepared or produced by "chemical processes" (including alloys, optical glass, semiconductors and inter-metallic compounds) and substance intended for use or capable of being used as drug and food, no patent will be granted in respect of claims for the substances themselves, but claims for the method or processes of manufacture will be patented. "Chemical Process" includes biochemical, biotechnological and micro-biological process.
APPROPRIATE OFFICE FOR FILING AN APPLICATION & FOR OTHER PROCEEDINGS Application is required to be filed according to the territorial limits where the applicant or the first mentioned applicant in case joint applicants for a patent normally resides or has domicile or has a place of business or the place from where the invention actually originated. If the applicant for the patent or party in a proceeding having no business places or domicile in India, the appropriate office will be according to the address of service in India given by the applicant or party in a proceeding . The appropriate office once decided in respect of any proceedings under the Act shall not ordinarily be changed. The four patent offices are located at Kolkatta, Mumbai, Delhi & Chennai.
PUBLICATION & EXAMINATION OF PATENT APPLICATIONS i) Publication: Publication of all the applications for patents except the applications prejudicial to the defence of India or abandoned due to non-filing of complete specification within the prescribed time-limit after provisional or withdrawal of the application will be published in the official Gazette after 18 months from the date of filing of the application or the date of priority whichever is earlier. The publication will include the particulars of the date of the application, application number, name and address of the applicant along with the abstract. No application for patent shall be opened for public inspection before publication. After the date of publication of the application, as stated above, the complete specification along with provisional and drawing, if any, and abstract may be inspected at the appropriate office by making a written request to the Controller in the prescribed manner. ii) Request for examination No application for patent will be examined if no request is made by the applicant or by any other interested person in Form-19 with prescribed fee of Rs.1,000/- and Rs.3,000/- for individual and for legal entity respectively, within a period of 48 months from the date of filing of the application for patent. However, in case of applications for patents filed before 20th May, 2003, the request is required to be made by the applicant or any other interested person within a period of 12 months from 20th May, 2003 or within 48 months from the date of application whichever is later. Where no request against the application for patent has been filed within the prescribed period, the aforesaid application will be treated as withdrawn and, hereinafter, application cannot be revived. iii) EXAMINATION Applications for patent, where requests have been made by the applicants or by any other interested persons, the applications will be taken up for examination strictly according to the serial number of the requests received on Form 19. A First Examination Report (FER) stating the objections/requirements is communicated to the applicant or his agent according to the address for service. An applicant shall submit his first reply to the FER within a period of 4 months from the date of FER.. Application or complete specification is required to be amended in order to meet the objections/requirements within a period of 12 months from the date of First Examination Report (FER). No further extension of time is available in this regard. If all the objections are not complied with within the period of 12 months, the application will be deemed to have been abandoned. When the application is in order for acceptance, it is notified in the Gazette of India.
WITHDRAWAL OF PATENT APPLICATION The application for patent can be withdrawn at least 3(Three) months before the first publication which will be 18(Eighteen) months from the date of filing or date of priority whichever is earlier. The application can also be withdrawn at any time before the grant of the patent. The application withdrawn after the date of publication, cannot be refiled as it is already laid open for public inspection. However, application withdrawn before the publication can be refiled provided it is not opened otherwise.
OPPOSITION Notice of opposition must be filed within 4(four) months of notification in the Official Gazette. Extension of one month is available, but must be applied for before expiry of initial four month period in Form-4 with prescribed fee.
GRANT OR SEALING OF PATENT If the application is not opposed or the opposition is decided in favour of the applicant or is not refused, the patent is granted or sealed on making a request in Form 9 alongwith sealing fee within 6 months from the date of notification of acceptance of the complete specification in the Gazette of India at the appropriate office where the application was filed. However, it is extendable by three months. If the sealing fee is not paid within the prescribed period, it will be treated as "NO PATENT". There is no provision in the Act to revive the said patent.
TERM AND DATE OF PATENT Term of every patent will be 20 years from the date of filing of patent application, irrespective of whether it is filed with provisional or complete specification. Date of patent is the date on which the application for patent is filed, irrespective of whether it is accompanied with provisional or complete specification.
RIGHTS OF THE PATENTEE Where a patent covers a product, the grant of patent gives the patentee the exclusive right to prevent others from performing, without authorisation, the act of making, using, offering for sale, selling or importing that product for the above purpose. Where a patent covers a process, the patentee has the exclusive right to exclude others from performing, without his authorisation, the act of using that process, using and offering for sale, selling or importing for those purposes, the product obtained directly by that process in India, wherein product for which no patent is granted is excluded. These rights created by statute are circumscribed by various conditions and limitations as provided in the Patents Act, 1970 as amended by The Patents (amendment) Act, 2002.
REGISTER OF PATENT A Register of Patents will be kept in the Patent Office and its branch offices. Register of Patent can be inspected or extract from it can be obtained on payment of prescribed fee. Register of Patent contains the names and addresses of the patentee, notification of assignment etc., particulars in respect of validity or proprietorship of patent and payment of renewal fee.
RENEWAL FEE To keep the patent in force, Renewal fee is to be paid every year. The first renewal fee is payable for third year of the patent's life and must be paid before the patent's second anniversary. If the patent has not been issued within the period, renewal fees may be accumulated and paid immediately after the patent is sealed, or within three months of its recordal in Register of Patents or within extended period of six months upto 9 months from the date of recordal. If the renewal is not paid within the prescribed time, the patent will cease to have effect. However, provision to restore the patent is possible provided application is made within eighteen months from the date of cessation. Renewal fee is measured from the date of filing of the Patent application. Six month's grace time is available with extension fee for payment of renewal fee. No renewal fees is payable on Patents of Addition, unless the original patent is revoked and if the Patent of Addition is converted into an independent patent; renewal fee, then, becomes payable for the remainder of the term of the main patent.
RESTORATION Application for restoration of a patent that lapses due to non-payment of renewal fees must be made within 18 months of lapse. The application is to be filed to the appropriate office according to the jurisdiction. DOCUMENTS REQUIRED FOR FILING AN APPLICATION 1) Application form in duplicate (Form 1 or 1A). 2) Provisional or complete specification in duplicate. If the provisional specification is filed, it must be followed by the complete specification within 12 months/15 months with extension (Form 2). 3) Drawing in duplicate (if necessary). 4) Abstract of the invention in duplicate. 5) Information & undertaking listing the number, filing date & current status of each foreign patent application in duplicate (Form 3). 6) Priority document (if priority date is claimed) in convention application. 7) Declaration of inventor-ship where provisional specification is followed by complete specification or in case of convention application (Form 5). 8) Power of attorney (if filed through Patent Agent). 9) Fee (to be paid in cash/by cheque/by demand draft). (Note: The cheque or demand draft should be payable to the "Controller of Patents" drawn on any schedule bank at a place where the appropriate office is situated).
PROVISIONAL SPECIFICATION Application for patent may be accompanied by the provisional specification. It should contain the description of invention with drawing, if required. It is not necessary to include Claim. However, the complete specification should be fairly based on the matter disclosed in the provisional specification and should be filed within 12 months (extendable by 3 months) from the date of filing of provisional specification. If the complete specification is not filed within 12 months or within the extended period, the application will be deemed to have been abandoned.
COMPLETE SPECIFATION* The complete specification is an essential document in the procedure of patent application with drawing required to be attached according to the necessity. Complete specification shall fully describe the invention with drawing, if required, disclosing the best method known to the applicant and end with Claim/Claims defining the scope of protection sought. The protection under the Patents Act depends upon the detailed disclosure of the invention as the subject of its protection. The specification must be written in such a manner that person of ordinary skill in the relevant field to which the invention pertains, can understand the invention. Normally, it should contain the following matter- 1) Title of invention, 2) Field of invention, 3) Background of invention with regard to the drawback of associated with known art, 4) Object of invention, 5) Statement of invention, 6) A summary of invention, 7) A brief description of the accompanying drawing, 8) Detailed description of the invention with reference to drawing/examples, 9) Claim(s), 10) Abstract. The specification must start with a title, which is short, and, which describes the general nature of invention. The title should not contain anyone's name, a fancy name and trade name or personal name or any abbreviation etc. *(See Specimen) Description: The specification must be written in good and clear English or Hindi. The specification should indicate those features which are essential for the operation of the invention as well as those features for which a choice can be made. The description must be sufficiently detailed for someone who works in the same area of technology to be able to perform the invention from the information given in the description. The best method of putting the invention into effect is required to be described in the description. In case of biological invention, it is required to mention the source or geographical origin of biological material used for the invention Claim: A set of properly drafted claim is an important part of complete specification. The complete specification must have at least one Claim. The claim is drafted in a number of paragraphs serially numbered. The first claim is the main claim which is made as wide as possible. The subsidiary claims refer to the main claim and include qualifying or explanatory clauses on the various integers of the main claim or optional features. They may also contain independent claims. Although the claim clauses consist of a number of claims, the totality of the claims must relate to one invention only. It should be noted that a claim is a statement of technical facts expressed in legal terms defining the scope of the invention sought to be protected.
