By Vaishali Chaubey
Published On: November 11, 2021 at 19:15 IST
Introduction
Patent is a legal document for invention of creator. It is granted by government that provides exclusive right to use, sell or import product or process to the inventor. The term ‘Patent’ has been defined under Section 2(1) (m) of the Patents Act, 1970 which states that “patent” means a patent for any invention granted’ under the Act.
An invention as mentioned in Section 2(1)(j) of act is relating to a product or a process that is new, involving inventive step and capable of industrial application can be patented in India. Indian Patent Act 1970 and Patent rule 2003 currently governs Patent Law in India. It is a form of intellectual property that is intangible in nature granted for a period of 20 years from the date of filling application. Patent is territorial right. Patent is techno-legal document.
Why to register a Patent?
To prevent third party without authorization:
- Making or manufacturing;
- Using;
- Offering for sale;
- Selling;
- Importing;
- Distributing;
- Licensing.
Which forms must be submitted?[i]
| FORM | TITLE |
| FORM 1 | Application for Grant of Patent |
| FORM 2 | Provisional/Complete Specification |
| FORM 3 | Statement and Undertaking Under Section 8 |
| FORM 5 | Declaration as to Inventorship |
| FORM 9 | Request for Publication |
| FORM 18 | Request/Express Request for Examination of Application for Patent |
| FORM 26 | Authorisation of a Patent Agent/Or any Person in a Matter or Proceeding Under the Act |
| FEES | First schedule fees |
Is Public Search required?
Invention makes existence simple and contributes in nations financial growth and development beside giving exclusive right to inventor. To protect it from infringement it is advisable to obtain patent for an original invention. Patent search and patentability report are crucial component of the registration process. Before filing it is always advisable to check whether there is a similar patent already existing or not.
A patent search is an examination performed by an inventor or their attorney to determine novelty, utility, and obviousness of invention. While this step is optional, it may save time and assist you recognize whether or not or now no longer you must record for a patent with inside the first place. This process is also known as prior art. Website, where one can carry out public search.
What are the stages for filling patent application?
Invention truly changes the world so as to get patented it must be new. Applicant shall not disclose it to anyone before filing an application for grant of patent. The invention must not have been published in India or abroad, it must not have been known or used by the general public in India, and it must not have been claimed in any specification in India.
Every application shall be for one invention.[ii] All the steps mentioned below are mandatory and must be followed in series to get patent.
- Filling Patent Application;
- Publication;
- Pre-Grant Opposition;
- Examination;
- Notifying Grant of Patent;
- Post grant Opposition;
- Renewal fees.
Who can apply?
Section 6 of Chapter 3 Indian Patent Act 1970 mentions who can apply for a patent registration.
- First and True investor of invention. In India first to file system works where one who applies first for grant of patent is consider first and true owner of patent.
- OR an assignee
- A legal representative of any deceased person, who was entitled to apply immediately before death of person
- A register patent agent can apply on behalf of inventor/ applicant.
How and where to apply?
Application for grant of patent can be filed online or by submitting a paper application, the applicant can file application form in physical mode at appropriate patent office. In India first online filling commenced from 20 July 2007. Physical filing should be filed carefully within territorial jurisdiction as specifically mentioned by an applicant or in case of join applicants the first name of applicant mentioned.
Appropriate patent office includes applicants’ place of residence/domicile or place of business, location where invention originated. Address for service or place of his patent agent business is given by foreign applicant whose business is not in India or is not domicile in India.
All rights related to patent in India are governed and granted by office of controller general of patents, designs and trademarks [CGPDTM] that is a government office under Department for Promotion of Industry and Internal Trade.
At present there is one patent office head in Kolkata and three patent office branch in Chennai, Mumbai and New Delhi. Places that are not included under 3 patent office branch shall must submit an application to the Kolkata Patent Office.
| PATENT OFFICE | TERRITORIAL JURISDICTION |
| Kolkata, Head office | Rest of India |
| Mumbai, Office Branch | MaharashtraGujarat Madhya Pradesh GoaChhattisgarh Daman and Diu & Dadra and Nagar Haveli |
| New Delhi, Office Branch | Haryana Himachal Pradesh Punjab Rajasthan Uttar Pradesh Uttarakhand Delhi Chandigarh Jammu and Kashmir Ladak |
| Chennai, Office Branch | Andhra Pradesh Karnataka Kerala Tamil Nadu Telangana Pondicherry Lakshadweep |
Patent Specification
An applicant shall fill form 1 with payment of prescribed fees to apply for registration of patent. The application shall be accompanied with patent specification that is a written document describing invention. Provisional and complete specification are two types of patent specification mentioned in Section 9 of Patent Act 1970. Former is optional while latter is mandatory.
Provisional specification briefly describes invention. This is the first step required for getting a patent, although it is optional since the applicant does not have complete information about the invention. This specification does not have claims. It is done to secure invention and its priority date and reduces the cost of filing. Content includes:
- Tittle – Indicates subject matter of invention. Shall not be more than 15 words. Shall be brief, precise and free from ambiguity.
- Field of Invention – Starts with the given preamble, utility of invention, advantages over conventional invention.
- Background – Prior art, reason of invention, benefit of invention
- Objective – Necessity, Positives of invention.
- Summary – Original features, brief work already been done and benefit of applicant invention to society.
Complete specification fully describes invention. Description includes nature of patent, object of patent and manner of performing in general. It includes claim that is concluding part. It is mandatory to submit complete specification with 12 months from the date of filing provisional application otherwise application will be abandoned. Content includes:
- Tittle – Indicates subject matter of invention. Shall not be more than 15 words. Shall be brief, precise and free from ambiguity.
- Field of Invention – Starts with the given preamble, utility of invention, advantages over conventional invention.
- Prior Art – Identify Closest Prior Art – Patent or Applications, Technical Literature, Books etc; Differentiate invention from prior art; Existing problems with prior art that invention solves.
- Objective – Necessity, Positives of invention.
- Summary – Original features, brief work already been done and benefit of applicant invention to society.
- Detailed Description – Complete details of invention, Description of nature of invention, specific examples, figures description, Transition word or phrase.
- Claims – Shall begin with I Claim, define extent of protection sought for invention and heart of specification, Techno-legal part, independent claims and dependent claims.
- Drawings – Submitted on sheet, number in sequence and labelled.
- Date and signature
- Abstract – Conscience invention of summary.
Publication
Section 11A of Chapter 4 of Indian Patent Act 1970 mention publication of application. Patent publication is published within 18 months after submitting complete specification. It is an automatic process. Publication is published in official journal of patent on every Friday. If applicant wants to speed up the publication process request is made to publish before 18 months by paying prescribed fee.
The patent office publishes the following information in the patent journal:
- Application number;
- Filing Date;
- Name of the inventor;
- Applicant’s name and address;
- Title of invention;
- Publication Date;
- International Patent Classification;
- Priority document number, date, country, etc;
- References of Patent of Addition/Divisional application including the filing date of the parent application;
- Abstract;
- The total number of claims made;
- Drawings.
Examination
After publication stage is completed, a request is filed at patent office for examination as mentioned in section 11B of chapter 4 of Patent Act 1970. This request must be made within 48 months from priority date. Examiner who is an expert is allocated by patent office on applicant’s request. Examiner examines patentability criteria on novelty, non-obviousness, industrial applicability, section 3 and 4 and mistake.
After the examination, the examiner prepares the first examination report and sends it to the applicant for an answer. Reply must be made within 6 months. Examiner if satisfied will accept the reply and is not satisfied will conduct a hearing. After hearing and clarification thereby if accepted patent will be granted or rejected or partially accepted granting patent after amendment.
Opposition
There are two stages while filling an application for grant of patent where one can oppose.
First is Pre-grant opposition is made when patent is published and not granted. Any interested person can file this opposition after publication in official journal by Patent Office.
Second is post-grant opposition that can be filed by only person skilled in art of invention with evidential document. This opposition shall be filed within one year from grant of patent.
In case of opposition controller if dismissed opposition than patent is granted, is upheld that patent is not granted or if partially upheld then patent is granted only after amendment.
Controller grants the patent and in official journal of patent office grant of patent is published. A certificate of patent is given to applicant. Term of patent is 20 years from date of filling application. Renewal fees is required to be paid every year after expiration of 20 years and if not done so patent comes under public domain.
Landmark Judgements
- Dr Snehlata C. Gupte Vs Union of India & Ors [iii] – Rejection of Pre-Grant Opposition
FACT: In 2001 two patent application was filed by J Mitra & Co, published in 2004. Pre-grant opposition was filed by Span Diagnostic Ltd that was rejected in 2006. The Patents Act 1970 was by the time amended by the Patents (Amendment) Act 2005, which extended the deadline for filing a pre-grant opposition until the patent was granted.
Dr Snehalata, the applicant, argued that his previous opposition was well within the time limit established by the amended law as it was received before the patent was granted. She argued that under patent law, a patent is not granted until it is sealed and registered.
In January 2007 a hearing was granted followed by submission of written statement to controller. In May 2007 pre-grant opposition was rejected by stating the reason of time barred. A writ petition was filed challenging order of controller.
HELD: Delhi high court laid a landmark judgement relating to actual date for granting a patent. Court held patent is considered to be granted after Controller passes an order to effect, after passing final order to grant a patent and being noted by Controller it is then considered to be date on which patent is granted.
- Raj Parkash Vs Mangat Ram Chowdhry and Ors. on 25 March, 1977[iv] – Process as Invention
FACT: Plaintiff is manufacturer of a toy named viewer and has patent for same. Images are printer on 35mm medially cut positive film that can be viewed through a lens. In this case respondents have infringed by manufacturing and selling by producing similar and identical toys. Respondent denied this allegation and said that the process used by plaintiff does not qualify as an invention.
HELD: Court held that “It is the pith and marrow of the invention claimed that has to be looked into and not get bogged down or involved in the detailed specifications and claims made by the parties who claim to be patentee or alleged violators.” It was also held that grant of patent is quid pro quo where quid is the knowledge to public and quo is monopoly granted for term of patent.
- Laxmi Dutt Roop Chand Vs Nankau and Ors. on 16 May, 1962[v] – Patentee includes assignee of patent whose name is entered into register of patent.
FACT: Appellant Laxmi Dutt Roop Chand, holder of a patent related to the manufacturing process of hollow ware such as “lotas”, “batwas”, “degchis”, “batlois”, etc. Patent infringement lawsuit against the defendants Nankau and other was filed alleging that their process for the production of hollow ware infringed the patents held by the appellant and requested an injunction from the defendants to manufacture the hollow ware using this method.
In response to the infringement claimants’ action, the defendants asserted that there was no infringement and filed a counterclaim for the revocation of the patent.
HELD: Patentee includes assignee of patent whose name is entered into register of patent.
Conclusion
Patent is a valuable legal document. It protects right of inventor and helps in gaining commercial profit from invention. Filing protects invention from misuse. Rights is immediately grant over invention after invention on first to file basis but executed after grant of patent. It is a lengthy and complex process which takes 2-5 years but is worth protecting. Online registration has made it easier to apply for grant of patent that saves a lot of time and number of applications have subsequently increased due to it.
ABOUT THE AUTHOR
Vaishali Chaubey has completed PG diploma in IPR from Government Law College, Maharashtra. She is always looking for opportunities to learn new things. She is inquisitive about legal research. She believes that through consistency and hard work anything can be achieved.
Edited by: Aashima Kakkar, Associate Editor, Law Insider
Reference
- P. Narayana, “Intellectual Property Law” Chapter 2 Page 22, Chapter 4,5,6,7.
- Patent Registration Requirement: Filling a patent application in India
- Patent registration in India
- Patent Office Procedure
- The Indian Patent Act, 1970 (39 of 1970) chapter 3 Section 6, Section 7, Section 8, Section 9, Section 10, Section 11; chapter 4 Section 11A, Section 11b, Section 12, Section 15 and chapter 5 Section 25, Section 26.
- The Patents Rules, 2003
[i] Forms and fees (Last visited on November 2, 2021)
[ii] Enercon India Ltd. Vs Aloys Wobben 2011 IPAB
[iii] Dr Snehlata C. Gupte v. Union of India & Ors W.P. (C) No 3516 and 3517 of 2007) Delhi HC
[iv] Raj Parkash vs Mangat Ram Chowdhry And Ors. AIR 1978 Delhi 1, ILR 1977 Delhi 412, 1977 RLR 440
[v] Laxmi Dutt Roop Chand vs Nankau And Ors. AIR 1964 All 27