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Basics of Patents

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What is a Patent

A patent is a set of exclusive rights granted by a state to an inventor or their assignee for a limited period of time in exchange for a public disclosure of an invention

Patents Act, 1970 (Act) A patent is a right granted in favor of the patentee to

use the invention to the exclusion of all others The protection granted is territorial

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Mandatory registration, otherwise there will be no protection under the Act

The protection is granted for a period of twenty years from the date of filing of the patent application

Not renewable (inventions become public domain after, term of patent (20 years in most countries)

First to file system

What is a Patent

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What is an Invention

"invention" means a new product or process involving an inventive step and capable of industrial application

Invention 1. Should be a product or a process2. Must be a new invention3. Should have an inventive step4. Capable of industrial application

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What is a new invention

Under Section 2 (1) (l)"new invention" means any invention or technology

which has not been anticipated by publication in any document or used in the country or elsewhere in the world before the date of filing of patent application with complete specification, i.e. the subject matter has not fallen in public domain or that it does not form part of the state of the art;

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If the prior art contains a clear description of instructions to do or make the invention in question, that would infringe the patentee’s invention than the invention is said to have lack novelty

Has to be disclosed in a single enabling reference

What is a new invention

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Inventive Step and Industrial Application

“inventive step" means a feature of an invention that involves technical advance as compared to the existing knowledge or having economic significance or both and that makes the invention not obvious to a person skilled in the art

A person skilled in the art is someone who has common general knowledge of the arts and who has knowledge of the relevant literature

The invention has to be capable of being made or used in a industry

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Other requirements of patentability

The disclosure of the invention in a complete specification must be such that a person skilled in the art may be able to perform the invention (Enablement without undue experimentation)

Disclosure of best mode Unity of invention – A single inventive concept has to

be claimed

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What are not Inventions

Section 3 provides a list of invention that are not patentable such as Frivolous inventions or inventions contrary to well

established natural laws. Example :- Perpetual machine Discovery of a scientific principle or any living thing or non

living substance occurring in nature. Example:- discovery of a new species of a animal or discovery of new metal

The mere discovery of a new form of a known substance which does not result in the enhancement of the known efficacy of that substance

Method of Agriculture or Horticulture. Example:- Method of cultivation of a plant

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A process for medicinal, surgical, diagnostic treatment of human beings or animals. Example:- Method to remove a cancer tumor

Plants & animals except micro organisms Mathematical method. Example:- A method of

calculation, formulation of equations, finding square roots

Business method. Example:- A method of expediting online purchase. Excludes even if technology is used

Algorithms Computer programme per se

What are not Inventions

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Who can apply for a patent

True and first inventor Any person who is assignee of the true and first

inventor Legal representative of the deceased person who was

entitled to make such patent application A person resident in India cannot apply for a patent

outside India without first applying in India or without obtaining a written consent from the patent office in India

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Regular Patent document

Drawings

Front Page• Bibliographique data• References• Abstract

Specifications• Background of invention• Detailed Description• Claims

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Patent Document - Content

• Background section• Explaining what is already known• Objective of creating the invention

• Need of the invention

• Detailed Description• Explaining how the invention can be practiced by a

person skilled in the art

• Claims• Define the scope of protection of the patent• Set out the essential features of the invention

• Drawings• Include drawings, wherever necessary, for better

understanding of the invention

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Patent Document - Terms

Assignee Inventor Filing date Grant date Priority date Patent Number Publication Number Regular Patent Application (RPA) Provisional Patent Application (PPA)

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PUBLICATION OF APPLICATION

REQUEST FOR EXAMINATION

GRANT OF PATENT

•AFTER 18 MONTHS FROM APPLICATION

• WITHIN 48 MONTHS FROM FILING OF APPLICATION.

• ALL OBJECTIONS TO BE COMPLIED WITHIN 12 MONTHS

FILING OF APPLICATION

EXAMINATION-ISSUE OF FER

Stages for grant of a patent in India

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Patent Filing Process

Filing in national patent offices• The PPA/RPA is filed in national patent office• In case of PPA filing, RPA needs to be filed within 12 months • Patent application needs to be filed in all national offices within 12

months of the first filing• The prosecution of the patent application begins in the national

patent offices PCT Filing

• File application with the receiving office• Designate convention countries for filing patent application• Application is published with search report• Application needs to be entered in the national phase

independently within 30-31 from the first filing date

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Rights granted to a Patentee

A patentee has the exclusive right to prevent third parties from

Making Using Offering for Sale Selling Importing into India the product or the process

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Renewal Fee

No fee for 1st and 2nd year Renewal fee, on yearly basis, is required to be paid for

3rd to 20th for keeping the patent in force Delay upto six months from due date permissible on

payment of fee for extension of time Patent lapses if renewal fee A lapsed patent can be restored by filing a restoration

application within 18 months from the date the patent ceased to have effect

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Patent Validity Challenge by Third Parties

Pre-Grant Opposition Any Person From the date of publication of the patent to grant of

the patent At the Patent OfficePost-Grant Opposition Any Person Within 12 months from the date of grant of patent At the Patent Office

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Revocation of a Patent Any interested person Any time after the date of grant of the patent At the Intellectual Property Appellate BoardCounter Claim Can be filed by a defendant in the patent infringement

suit After the filing of an infringement suit At the High Court

Patent Validity Challenge by Third Parties

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Compulsory Licensing

Any person interested may make an application to the Controller for grant of Compulsory License for a patent after the expiry of three years from the ―date of grant‖ of the patent on the following grounds:

I. that the reasonable requirements of public with respect to the patented invention have not been satisfied, or

II. that the patented invention is not available to the public at reasonably affordable price, or

III. that the patented invention is not worked in the territory of India

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An application for compulsory license can also be made by the licensee

While considering an application for compulsory license the controller takes into account The nature of the invention The time which has elapsed since the sealing of the patent The ability of the compulsory license applicant to work the

invention to the public advantage The capacity of the compulsory license applicant to undertake the

risk in providing capital and working the invention As to whether the applicant has made efforts to obtain a license

from the patentee on reasonable terms and conditions

Compulsory Licensing

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Compulsory License For Export of Patented Pharmaceutical

Products

Compulsory license can be applied for manufacture and export of patented pharmaceutical product to any country having insufficient or no manufacturing capacity in the pharmaceutical sector for the concerned product to address public health problems

Provided compulsory license has been granted by such country or such country has, by notification or otherwise, allowed importation of the patented pharmaceutical products from India

Thank You!

nda@nishithdesai.com

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© Nishith Desai Associates