Intellectual Property Rights

Chapter - 2

What we are going to discuss

Patents

Criteria of Patentability

Non-Patentable subject matter

Registration Procedure

Rights of Patentee

Assignment and Licence

Restoration, Surrender and Revocation of Patents

Infringement, Remedies and Penalties

Patent Office and Appellate Board

Patents - Introduction

✓ A patent can be defined as a grant of exclusive rights to an inventor over their invention for a

limited period of time. The exclusive rights conferred include the right to make, use, exercise,

sell or distribute the invention and excluding others to make use of it

✓ The term of a patent is twenty years, after the expiry of which, the invention would fall into

the public domain

✓ A patent is valid within the territory of country where it is granted; however, protection can

be availed in other countries by filing applications in relevant patent offices

✓ Patents are granted for a new product or process

Indian Patents Act, 1970

The present Patents Act, 1970 came

into force in the year 1972. This Act

has been amended two times since

then, i.e., in 2002 and 2005

Only inventions are patentable

“An invention means a new product or

process involving an inventive step and

capable of Industrial application”

Basic Structure of Patent

01ABSTRACTCrux of the

invention

02DESCRIPTION

Brief description of the invention

03CLAIMS

Aspects to claim/monopolize

04DRAWINGSImage that best represents your invention

Criteria of Patentability

Novelty

It must be new, i.e. it is not something already existing in the current knowledge anywhere in the world, i.e. not in public domain in any form, before the filing of patent application.

Inventive Step

It must be non-obvious to any person who is skilled in the relevant field of technology. That is, the standard is a person reasonably skilled in such field of study and not a layman.

Industrial use

It must be capable of industrial application, i.e. capable of being applied to practical utilities and not just pure theory.

Other Characteristics of Patentability

Unity of invention

Claims in the application for

patent must refer to the same

inventive idea

Sufficiency of Disclosure

The complete specification (techno-legal document

describing the invention) should disclose the invention completely

so that a person skilled in the art can perform the invention by

developing the necessary technical know-how

Patent - Examples

Non - Patentable subject matter

Contrary to

well

established

natural

laws

Contrary

to public

order

Discoveries

& Scientific

Theories

New form

of a

known

substance

Admixture

of

substances

Only aggregation of propertiesWithout enhanced efficacy

Arrangement

or Duplication

of known

devices

Non - Patentable subject matter

A method

of

Agriculture

or

Horticulture

Diagnostic,

Therapeutic

and Surgical

methods of

treatment for

humans or

animals

Plants, animals

and essentially

biological

processes for

production or

propagation of

plants and

animals

Mathematical

or business

method or a

computer

program

Method of

playing

game

Presentation

of

information

Except microorganisms

Non - Patentable subject matter

Traditional

Knowledge or

aggregation of

traditionally

known

component

Inventions

relating to

Atomic

energy

Registration Procedure - India

Filing an Application

✓ Inventor may make an application, either alone or jointly with another, or his/their assignee

or legal representative

✓ The filing of an application for a patent disclosing the invention would secure priority date of

the invention

✓ Application is required to be filed according to the territorial limits where the applicant(s) for

a patent normally resides or has domicile or has a place of business or the place from where

the invention actually originated

Provisional Specification -- Made even before the full details of working of the invention are

developed (Secure Priority date)

Complete Specification -- Full details of the invention and claim

section

Patent Application

Within12 Months

Jurisdiction of Patent Offices, India

Delhi

Mumbai

Chennai

Kolkata

Documents required for filing an Application

Form 1 Application

Form 2 Provisional or Complete

Form 3Statement

and undertaking

Form 5Declaration

of Inventorship

Fees

Patenting Process

1

2

3

4

5

6FILE AN

PROVISIONAL

PATENT

APPLICATION

FILE AN

COMPLETE

SPECIFICATION

WITHIN 12 MONTHS

FROM PROVISIONAL

FILING

PUBLICATIONAFTER 18 MONTHS

EXAMINATION

UNDER PROCESS

EXAMINATION

REPORT

REQUEST FOR

EXAMINATIONWITHIN 48 MONTHS

FROM DATE OF

PRIORITY

Patenting Process …

107

8

9

GRANT OF

PATENT

REPLY FOR

EXAMINATION

REPORT

CONTROLLER

HEARING

REPLY WITHIN 6

MONTHS

(EXTENDABLE BY

3 MONTHS)

MAXIMUM THREE

OFFICE ACTION

Pre-grant Opposition

Where an application for a patent hasbeen published but a patent has notbeen granted, any person may, file

Form 7(A) by way of opposition to theController against the grant of anyPatent

The Controller shall, if requested bysuch person for being heard, hear himand dispose of such representation

Post-grant Opposition

Any interested person can file notice of

opposition by filing Form 7 any time

after the grant of Patent but before the

expiry of a period of one year from the

date of publication of grant of a Patent

in the Patent Office Journal

The post grant opposition is decided by

an Opposition Board followed by ahearing and the reasoned decision bythe Controller

Term of Patent

Application for restoration of a patent

that lapses due to non-payment of renewal

fees must be made within 18 months of

lapse (Form 15)

Request for permission to file abroad

If any application is to be filed abroad,

without filing in India, it should be made

only after taking a written permission from

the Controller

The request for permission for making

patent application outside India shall be

made in Form-25 along with a fee. A gist of

invention should also be filed along with the

Form-25

Registration Procedure – Convention Countries

Filing an convention application

In order to get convention status, an applicant should file the application in the

Indian Patent Office within 12 months from the date of first filing of a similar

application in the convention country

An application for patent filed in the Patent Office, claiming a priority date

based on the same or substantially similar application filed in one or more of

the convention countries

Registration Procedure - International

The Patent Cooperation Treaty is an international treaty with more than 150

Contracting States

The PCT makes it possible to seek patent protection for an invention

simultaneously in a large number of countries by filing a single “international”

patent application instead of filing several separate national or regional patent

applications

The granting of patents remains under the control of the national or regional

patent Offices in what is called the “national phase”

Filing of International Application

The Indian Patent Office at Delhi, Chennai, Mumbai or Kolkata as the Receiving Office (RO/IN)

The International Bureau of WIPO as the Receiving Office (RO/IB)

A Request (Form PCT/RO/101) accompanied by description, claims, abstract (and drawings if required) of the invention in English or Hindi

OR

Filing fee

International Search

Every international application is subject to international

search by an International Searching Authority (ISA)

ISA establishes International Search Report (ISR) which

identifies the published patent documents and technical

literature (“prior art”) which may have an influence on

whether the invention is patentable

ISA also establishes Written Opinion of Search Authority

(WOSA) on the invention’s potential patentability

India is one of the

ISA

Publication

International application along with

International Search Report is published by WIPO

After expiry of 18 months

from the priority date

of the application

International Preliminary Examination

After establishment of ISR/WOSA and publication by WIPO, the

applicant may opt for International Preliminary Examination (IPE).

IPEA establishes International Preliminary Report on Patentability

(IPRP)

File (Form PCT/IPEA/401) for international preliminary examination

with fees

If the applicant does not opt for IPE, the International Bureau of WIPO

publishes the WOSA as International Preliminary Report on

Patentability

National Phase

Before 30/31 months from the priority date, applications for the grant of patents can be filed before the national (or regional) patent offices of the countries in which patent

protection is desired

Patent term of 20

years begins from

International filing

date

Rights of the Patentee

The patentee has 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

The patentee has the exclusive right to exclude others from performing, without their 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

Product Process

A patentee may assign the whole or any part of the patent rights

Kinds of assignments:

✓ Legal assignment (agreement to assign – Assignee (Patent Owner))

✓ Equitable assignment (certain share given to another person)

✓ Mortgages (patent rights are transferred to obtain money)

A valid assignment under the Patents Act requires the assignment to

be in writing, to be contained in a document that embodies all terms

and conditions and must be submitted within six months

Assignment

Licence

Exclusive Licence means that no person or company other than

the named licensee can exploit the relevant intellectual property

rights. Importantly, the licensor is also excluded from exploiting

the intellectual property rights

Non-Exclusive Licence grants to the licensee the right to use the

intellectual property, but means that the licensor remains free to

exploit the same intellectual property and to allow any number

of other licensees to also exploit the same intellectual property

Compulsory Licence

To prevent the abuse of patent as a monopoly and to make way

for commercial exploitation of an invention by an interested person

Any person can make an application for grant of a compulsory

license for a patent after three years, from the date of grant of that

patent, on any of the following grounds:

• The reasonable requirements of the public with respect to the

patented invention have not been satisfied

• The patented invention is not available to the public at a

reasonably affordable price

• The patented invention has not worked in the territory of India

Surrender of Patents

A patentee may, at any time by giving notice to the Controller, offer to

surrender the patent

Where such an offer is made, the Controller shall publish the offer

Any person interested may, within the prescribed period after such

publication, give notice to the Controller of opposition to the surrender

If the Controller is satisfied after hearing the patentee and any

opponent, if desirous of being heard, that the patent may properly be

surrendered and, by order, revoke the patent

Patents may be revoked

✓ on a petition of any person interested or

✓ of the Central Government by the Appellate Board or

✓ on a counter-claim in a suit for infringement of the patent by the High Court

Revocation of Patents

Revocation grounds

✓ Invention claim is already present in the granted patent

✓ Patent was obtained wrongfully

✓ Subject of any claim of the complete specification is not an invention

✓ The invention so far as claimed in any claim of the complete

specification is not new

✓ The invention so far as claimed in any claim of the complete

specification is obvious

Revocation grounds

✓ Complete specification does not sufficiently and fairly describe the

invention

✓ Scope of any claim of the complete specification is not sufficiently

and clearly defined

✓ Subject of any claim of the complete specification is not patentable

✓ That the invention, so far as claimed in any claim of the complete

specification, is not useful

Revocation grounds

✓ Applicant for the patent has failed to disclose to the Controller the

information or false information

✓ Applicant contravened any direction for secrecy

✓ Amend the complete specification was obtained by fraud

✓ The complete specification does not disclose or wrongly mentions

the source or geographical origin of biological material

Revocation grounds

✓ Claimed in any claim of the complete specification having regard

to the knowledge, oral or otherwise, available within any local or

indigenous community in India or elsewhere

✓ Where the Central Government is of opinion that a patent or the

mode in which it is exercised is mischievous to the State or

generally prejudicial to the public, after hearing the patent shall be

deemed to be revoked

The Indian Patent Act does not specifically define activities that

constitute infringement of patent rights

But there is an exclusive rights upon the patentee to exclude

third parties from making, importing, using, offering for sale or

selling the patented invention

Violation of aforementioned monopoly rights would constitute

infringement of patent

Patent Infringement

Administrative Remedy

When infringing goods are imported into Indian territory, the

IP owner can approach the collector of customs and prevent

the entry of these goods into the Indian market. The IP owner

must provide the name of the exporter, consignee, port of

entry, name of the ship, etc., to avail their remedy

Remedies

Civil Remedy

1. Interim Injunctions - During the pendency of the case before

a full-fledged trial

2. Permanent Injunctions - Full-fledged trial

Remedies

The penalty that a court may grant in any suit for infringement includes an injunction and at the option of Plantiff, either damages or an account of profits

Penalties

Damages or accounts of profits shall not be granted against the defendant who proves that at the date of infringement they were not aware and had no reasonable grounds for believing that that the patent existed

Strengthened IPAB(Intellectual Property Appellate Board, Chennai) will directly contribute to the growth of a stronger IPR regime and indirectly in the growth of economic development

It hear appeals against the decisions of the Registrar of Trade Marks and Geographical Indications and Controller of Patents

Intellectual Property Appellate Board

(15th September 2003)

Links for Reference

World Intellectual Property Organisation

https://www.wipo.int/patents/en/

Controller General of Patents, Designs and Trademarks

http://www.ipindia.nic.in/patents.htm

Cell for IPR promotion and Management (CIPAM)

http://cipam.gov.in/know-your-ip-2/patents/

To know more...

Visit : http://www.bdu.ac.in/cells/ipr/

E-Books on IPR :

http://www.bdu.ac.in/cells/ipr/docs/ipr-tamil-ebook.pdf (Tamil)

http://www.bdu.ac.in/cells/ipr/docs/ipr-eng-ebook.pdf (English)

E-mail: iprcell@bdu.ac.in

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