Sdm Law CollegeDEPARTMENT OF POST GRADUATE STUDIES IN LAWMANGALORE UNIVERSITYASSIGNMENT SUBMISSIONBranch : BUSINESS AND TRADE LAW

Subject : INTELLECTUAL PROPERTY RIGHTS

Title : PROCEDURE TO OBTAIN A PATENT Submitted To: Dr. B.K. RAVINDRA M.A, LL.M, PhD, Post Graduate Department in Law, SDM Law College Mangalore. Mangalore University.Submitted By: KOUSHALYA .ANAND.PATTAN LL.M First year, 1st semester. SDM Law College, Mangalore. Date of submission: 28 -11-2011A. Introduction[footnoteRef:1] [1: Dr. G.B. Reddys intellectual property rights and the law p. Narayan IPR]

The term patent usually refers to an exclusive right granted to anyone who invents any new, useful, and non-obvious process, machine, article of manufacture, or composition of matter, or any new and useful improvement thereof, and claims that right in a formal patent application. The additional qualification utility patent is used in the United States to distinguish it from other types of patents (e.g. design patents) but should not be confused with utility models granted by other countries. Examples of particular species of patents for inventions include biological patents, business method patents, chemical patents and software patents.

Procedure for Acquisition of Patents

Application for patent

Publication and Examination of Application

Opposition proceedings to Grant of patent

Granting of Patent

Meaning of patentThe word patent originates from the Latin patere, which means "to lay open" (i.e., to make available for public inspection), and more directly as a shortened version of the term letters patent, which originally denoted an open for public reading royal decree granting exclusive rights to a person.Procedure to obtain a patent[footnoteRef:2] [2: http//www.airwebworld.com www.wto.org.comwww.patentoffice.com ]

Obtaining a patent A patent application is a request pending at a patent office for the grant of a patent for the invention described and claimed by that application. An application consists of a description of the invention (the patent specification), together with official forms and correspondence relating to the application. The term patent application is also used to refer to the process of applying for a patent, or to the patent specification itself (i.e. the content of the document filed with a view to initiating the process of applying for a patent).In order to obtain the grant of a patent, a person, either legal or natural, must file an application at a patent office with jurisdiction to grant a patent in the geographic area over which coverage is required. This will often be a national patent office but could be a regional body, such as the European Patent Office. Once the patent specification complies with the laws of the office concerned, a patent may be granted for the invention described and claimed by the specification.The process of "negotiating" or "arguing" with a patent office for the grant of a patent, and interaction with a patent office with regard to a patent after its grant, is known as patent prosecution. Patent prosecution is distinct from patent litigation which relates to legal proceedings for infringement of a patent after it is granted.Cost to obtain a patent[footnoteRef:3] [3: www.google.com images ]

What are the requirements for obtaining a patent? [footnoteRef:4]The basic requirement to confirm whether it is patentable the Invention must be a new product or process involving inventive step and capable of industrial application. Not all inventions are patentable. For an invention to be patentable, it must be new, useful and non-obvious. Invention means a new product or process involving inventive step and capable of industrial application. Inventive step is defined as 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 the person skilled in the art. The national laws of a number of countries prescribe limitations on the patentability of inventions. As for example, the Indian law declares that Inventions which are frivolous or which claim anything obviously contrary to well established natural laws as not patentable. Inventions, the commercial exploitation of which could be contrary to public order or morality or which cause serious prejudice to human, animal or plant life or health or to the environment are also declared as non-patentable. Similarly there are several other specific categories of inventions, which are declared as non-patentable in India. Various steps discussed hereunder: [4: http://www.ipab.tn.nic.in/Dr. M.K. Bhandari Law Relating To Intellectual property Rights.]

B. Filing of Application (Sections 6-11)The process for claiming patent begins with the filing of application under section 6. Following persons either alone or jointly can file the application:

(i) Any person claiming to be the true and first inventor of the invention;(ii) Any assignee of such invention;(iii) The legal representative of any deceased person who could be either the First true inventor or the assignee;(iv) An application under sub-section (1) may be made by any of the persons shall be made in the prescribed form and filed in the patent office.

Every such application should be made in the prescribed form and filed in the patent office.

1. Form of Application[footnoteRef:5] [5: P. Narayanan, Patent Law 3 (Eastern Books Agency, Kolkata 3rd edn., 1998).See Patents Act, 1970, s. 89 (a).]

Every application for a patent shall be for one invention only. It means that two inventions cannot be clubbed together and separate application for each invention is required to be made in prescribed form before controller of patent.

Section 7(1) provides that only one application can be made for one invention and it has to be made in the prescribed form (available in the patent office) and filed in the patent office.

Section 7(2) provides that where an application is made by virtue of an assignment of the right to apply for a patent for the invention, there shall be furnished with the application and within such period as may be prescribed after the filing of the application, the proof of the right to make the application, i.e., some document showing that assignment by the true and first inventor has actually been made in favour of the applicant.

Section 7(3) lays down that every application that every application under this section shall state that the applicant is in possession of the invention and shall name the owner claiming to be the true and first inventor and where the person so claiming to be true and first inventor is not the applicant believes the person so named to be the true and first inventor.

Section 7(4) provides that an application made by a citizen of India is to be accompanied with a provisional or complete specification. It also provides that where an application is made by a foreign national of a convention country, i.e. a country offering the reciprocal right to an Indian citizen to apply for a patent in that country, the patent application is to be accompanied with the complete specification and not provisional specification.

2). International Patent Application Where an international application is filed under patent co-operation treaty (PCT) for a patent in any member country designating India, shall be deemed to be an application under the Indian Act, provided a corresponding application has also been filed before the controller in India. The filing date of such an application shall be deemed as international filing date accorded under the PCT. This will be based on principle of reciprocity and national treatment.

3). Special provision For Foreign Application Section 8 provides that foreign applicants shall furnish information setting out the name of the country where the application is being pursued, the serial number and date of filing of the application and such other particulars as may be prescribed. A foreign applicant is also required to give an undertaking that up to the date of acceptance of the complete specification by the controller he would keep the controller informed in writing of the details and developments in any patent application filed outside India. 4). Application by Indians in Other Countries By the patents (Amendment) Act, 2005 no person who is resident in India shall, except under the authority of a written permit sought in the manner prescribed and granted by or on behalf of the controller, make or cause to be made any application outside India for the grant of a patent for an invention unless:

a) An application for a patent for the same invention has been made in India, not less than six weeks before the application outside India; and b) Either no direction has been given under sub-section (1) of section 35 in relation to the application in India, or all such directions have been revoked.

Withdrawal of Application._ The applicant may, at any time after filing the application, but before grant of patent, withdraw the application by making a request in the prescribed manner.

The transitional provision of the Amendment requires to treat every application for the grant of exclusive marketing rights filed before the 1st day of January, 2005, in respect of a claim for a patent covered under sub-section (2) of section 5 of the principal Act. Such application shall be deemed to be treated as a request for examination for grant of patent.

5). Filing of provisional and completed specification [footnoteRef:6] [6: Dr. M.K. Bhandari Law Relating to Intellectual property Rights]

A specification is an accurate description of the patent stating how the invention can be carried out by the method best known to the applicant. The specification ends with a claim or claims defining the scope of the invention for which protection is claimed. Every application must be accompanied by a provisional or a complete specification. It is possible to file the application with provisional specifications. A provisional specification furnishes the initial description of an invention when the application is filed and a complete specification furnishes complete details of an invention. A description of the invention is called the specification. The provisional specification contains only a general description of the invention; its filed of application and anticipated results. The complete specification consists of the full description of the invention will all the claims over which the applicant seeks monopoly right. But it is necessary to file the complete specifications within twelve months of filing the original patent application. The application is deemed to be abandoned if this condition is not met. The twelve months limit can be extended to 15 months if an application is made to the Controller with such request and the prescribed fee is paid. The inventor is entitled to apply for a separate patent in respect of such developments/additions. In case of a convention application the patent application must be accompanied with complete specifications only. The claim/claims of a complete specification relate to a single invention, or to a group of inventions, which form a single inventive concept e.g. in an instrument there may be 8 or 10 different inventions used. All these could be separately patented; or they can be patented together as a group; if they form an integrated instrument.The specification must contain the following:[footnoteRef:7] [7: http://www.ipab.tn.nic.in/B.L. Wadera, Law relating to patents, trademarks, copy right, designs & geographical indications]

Title, sufficiently indicating the subject-matter; Relevant drawings; If required a model of sample of anything illustrating the invention should be furnished before the acceptance of the application; Full and particular description of the invention; Details of its operation or use and the method by which it is to be performed; Disclosure of the best method of performing the invention; Claims defining the scope of the invention substantiated by the disclosure; Abstract providing technical information on the invention; Declaration as to the inventorship of the invention. If an invention is an improvement in or modification of another invention, for which the patent has been obtained or has been applied for, the Controller may grant the patent for modification/improvement, as a patent of addition; however the patentee for both the original patent and the patent of addition has to be the same. Each claim of a complete specification has a priority date. In a simple case, where a complete specification is filed in pursuance of a single application with a provisional specification, the priority date of a claim is the date of the filing of the application. This is true if the claim is fairly based on the matter disclosed in the specification. However, in some cases, the priority date may be different than the date of filing. 6). Claim of priority Date The priority date is important in claiming the novelty aspect of patent. It is the date on which patentee claims his invention. Since a provisional specification is generally filed much before the filing of complete specification, the priority date is the date of filing of the provisional specification provided the claims contained therein are fairly based on the description of the invention as given in the provisional specification. The novelty of an invention is tested with reference to the existing state of knowledge on such priority date. The invention qualifies the test of novelty and non-obviousness.

7). Amendment of specification A complete specification once filed is not absolute. It can be amended subject to certain conditions at the following three stages: (i). Before acceptance;(ii). After acceptance but before the sealing of the patent; and (iii). After the sealing of patent.The controller may, upon application by a patentee, allow the complete specification to be amended subject to certain conditions. The application for amendment should state the nature of the proposed amendment.Examination of a patent[footnoteRef:8] [8: www.patentofficeapplication.com ]

C. publication and examination of application[footnoteRef:9] [9: W.R. Cornish, Intellectual Property: Patents, Copy right, Trademarks and Allied RightsP. Narayanan, Intellectual Property Law]

Patent applications are generally published 18 months after the earliest priority date of the application. Prior to that publication the application is confidential to the patent office. After publication, depending upon local rules, certain parts of the application file may remain confidential, but it is common for all communications between an Applicant (or his agent) and the patent office to be publicly available. The publication of a patent application marks the date at which it is publicly available and therefore at which it forms full prior art for other patent applications worldwide.The examination or search of the specification is done by the examiners in the patent office on a reference by the controller, to determine its compliance, procedurally as well as substantively, with the provisions of the Act and the rules framed there under. For the sake of convenience, the examination of Application may be divided into two types:(i). Formal examination Which determines whether the application complies with the prescribed form, fee, particulars to be furnished and documents to be submitted; and (ii). Substantive Examination Which determines whether the matter is an invention and whether the specification requirements under the Act are complied with. This includes a search to determine prior use, prior claims, prior publication and prior public working. Prior use means, use of the invention described in the provisional specification or published in India or elsewhere before filing that specification. An examination will be carried out by an examiner of the JPO, who will decide whether or not the claimed invention should be patented. The examiner firstly checks whether the application fulfils requirements prescribed by law, i.e., whether or not there are any reasons for refusal. These requirements include the following:i. Whether the claimed invention is based on a technical idea which utilizes a law of nature,ii. Whether it has any industrial applicability,iii. Whether the technical idea existed before the filing of the current application,iv. Whether the claimed invention could have been easily invented by a person skilled in the art,v. Whether the application is the first to file,vi. Whether the claimed invention is liable to contravene public order and morality, andvii. Whether the descriptions in the specification conform exactly with the requirements for patentabilityThereafter the examiner to whom the application is referred by the controller should examine the test of definition of invention i.e. novelty, and utility by the national standards. Then the test of inventiveness or non-obviousness is followed. Effect of examination and investigation and validity of patent :- Section 13(4) of the Act clearly states that the examination and investigation mentioned above does not warrant the validity of any patent. The Delhi High Court has recently explained the presumption of validity as under in M/s. Standpack Pvt. Ltd. V. M/s. Oswal Trading Co. Ltd.,[footnoteRef:10] [10: AIR 2000 Del 23]

Section 13(4) of the patents Act provide that the examination and investigation required under section 12 and 13 shall not be deemed in any way to warrant the validity of any patent, and no liability shall be incurred by the central government or any officer thereof by reason of, or in connection with, any such examination or investigation or any report or other proceeding consequent thereon. Thus, grant of patent in any manner does not guarantee the validity of the patent.

In this connection reference may be made to a decision of the Madras High Court in V. Manicka Thevar V. M/s. Star Plough Works,[footnoteRef:11] [11: AIR 1965 Madras. 327 at 328.]

Where in it was held that if from the objection raised by the defendant it is clear that a serious controversy exists as to whether or not the invention involves any new inventive skill having regard to what was known or used prior to the date of the patent; courts would not grant an injunction restraining the defendant from pursuing his normal business activity. It was also held that an interim injunction would not be granted if the defendant disputes the validity of the grant.D. Opposition to Grant of patent (section 25) In the Amendment Act of 2005 provision for both pre-grant and post-grant opposition has been made. [footnoteRef:12]This provision will provide ample opportunity for local generic companies, as well as other interested parties, to challenge and prevent and prevent the issuing of trivial patents. [12: Section 25]

After the grant of patent but before the expiry of a period of one year from the date of publication of grant of patent, any person interested may give notice of opposition to the controller. After receipt of notice the controller will constitute opposition Board. On the basis of report of Board, the controller may revoke the patent. Appeal against decision of controller can be filed before Appellate Board.The opposition can be notified on any of the following grounds-i. Wrongful obtaining of the invention by the applicant or any person claiming through him;ii. Publication of the invention before the date of claim;iii. The invention and claim of the complete specification is publicly known or publicly used in India before the priority date of that claim;iv. Already a similar complete specification was already claimed with priority date earlier than that of the applicants claim;v. The claimed invention does not involve is obvious and clearly does not invoke any inventive step;vi. The subject matter of any claim of the complete specification is not an invention under the Act or it is not patentable under the Act.vii. The complete specification does not sufficiently and clearly describe the invention or method by which it is to be performed;viii. The applicant has failed to disclose to the controller the information required by section 8 i.e. information and undertaking regarding foreign applications or has furnished the information false to his knowledge; andix. In the case of a convention application, the application was not made within 12 months from the date of the first application for protection for the invention made in convention country by the applicant or a person from whom he derives title, but on no other ground.Therefore, a person who wants to oppose the grant of patent may oppose on any of the above grounds, by giving a notice of such opposition to the controller. [footnoteRef:13] [13: Under section 25 of the Act.]

e. Grant and sealing of patent (section 43& 47)[footnoteRef:14] [14: Patents Act, 1970,]

Where the application is accepted, either without any opposition or has been accepted after the opposition proceedings have concluded with a decision in favour of the applicant the patent shall, on request being made in a prescribed form, be granted to the applicant and the patent shall be sealed with the seal of the patent office and the date on which the patent is sealed shall be entered in the Register maintained in the patent office. The decision of the controller, if it is against the applicant, can be appealed against before the Appellate Board. The grant of patent shall be subject to certain conditions under section 47. They are as follows:a) Any machine, apparatus or other article in respect of which the patent is granted or any article made by using a process in respect of which the patent is granted, may be imported or made by or on behalf of the government for the purpose merely of its own use;b) Any process in respect of which the patent is granted may be used by or on behalf of the government for the purpose merely of its own use;c) Any machine apparatus or other article in respect of which the patent is granted or any article made by the use of the process in respect of which the patent is granted, may be made or used, and any process in respect of which the patent is granted may be used, by any person, for the purpose merely of experiment or research including the imparting of instructions to pupil; and d) In the case of patent in respect of any medicine or drug, the medicine or drug may be imported by the government for the purpose merely of its own use or for distribution in any dispensary, hospital or other medical institution which the central government may, having to the public service that such dispensary, hospital or medical institution renders, specify in this behalf by notification in the Official Gazette.

f. date of patent (section 45)[footnoteRef:15] [15: Section 45]

Subject to the other provisions contained in this Act, every patent shall be dated as of the date on which the application for patent was filed. The date of every patent shall be entered in the register. Notwithstanding anything contained in this section, no suit or other proceeding shall be commenced or prosecuted in respect of an infringement committed before the date of advertisement of the acceptance of the complete specification.G. term of patent (section 53)[footnoteRef:16] [16: Sec.53Dr. M.K. Bhandari law relating to IPR]

Prior to patent Amendment Act, 2002, the term of patent in India was ranging between 5 and 14 years. (from date of sealing) depending upon the categories of invention. But as required under section 27 of TRIPSs agreement, a uniform term of 20 years has been provided. This period of 20 years shall be reckoned from date of filing of application for patent. But to keep the patent alive and effective a periodic renewal fee is also required to be deposited, failing which the patent shall cease to have effect, and shall not eligible to any protection.Procedure to obtain a patent in Japan patent office[footnoteRef:17] [17: www.airwebworld.com ]

H. patents of Addition (section 54) Patent of addition is a patent granted in respect to any improvement in or modification of a pervious invention called the main invention for which a patent has been granted or an application has been made.[footnoteRef:18] The right conferred by a patent of addition may not proceed unless it is in respect of one main application or patent. [18: Sec. 54(1)]

After the Amendment of the patents Act in 2005, a patent of addition will not be granted before the grant of the patent for the main invention.[footnoteRef:19] [19: Sec. 54(2)]

No renewal fee is payable in respect of a patent of addition as long as the main patent remains in force. However if patent of addition becomes an independent patent, the same fee shall be payable upon the same dates as if the patent has been originally granted as an independent patent. We have discussed the detailed procedure for grant of patent. Amendments made in 2002 and 2005 have tried to simplify the procedure and curtail the time limit at various stages of application. But still time span in India is longer than time taken in USA. [footnoteRef:20] [20: In India a period of 4-5 years is taken in grant of patent, whereas, in USA the patent is granted within 2-3 years time limit.]

ConclusionThe justification for the granting patent right is discussed in detail in Chiron corporation v. Organon Teknika Ltd. (No.10). [footnoteRef:21]It has been pointed out that it is generally accepted that the opportunity of acquiring monopoly rights in an invention stimulates technical progress in at least four ways: First, it encourages research and invention; secondly, it induces an inventor to disclose his discoveries instead of keeping them a secret; thirdly, it offers a reward for the expense of developing inventions to the state at which they are commercially practical and fourthly, it provides an inducement to invest capital in new lines o production which might not appear profitable if many competing producers embarked on them simultaneously [21: (1995) FSR 325 www.airwebworld.com ]

Encouragement, inducement and reward are the main factors underlying the patent system. The public interest although apparently jeopardized by the grant of monopoly, is secured by increased industrial activity, developing new technologies and disclosure of new and useful invention. Furthermore, patent law contains a number of safeguards, such as compulsory licensing and crown use, to curb any significant abuse of the patent monopoly.Thus the presence of a strong and effective patent system may bring numerous benefits such as the dissemination of information and providing an incentive to invest in the development of new products and process which will eventually fall into the public domain.A major change in Indian patent Act has been the extension of term of patent to 20 years for all categories of inventions. The patent Act with these major changes will now encourage more filing of patent applications.

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