| History | | | | to get an early application date. |
| In 1957, Govt. of India appointed Justice N. Rajagopala | | | | Provisional Specification shall contain:a. Title,b. Written |
| Ayyangar examine and review the Patent law in India | | | | Description,c. Drawings, if necessary andd. Sample or |
| who submitted his report September 1959 | | | | model if required. |
| recommending the retention of Patent System despite | | | | The complete specification shall contain:a. Title,b. |
| shortcomings. The Patent Bill, 1965 based mainly on his | | | | Abstract,c. Written Description,d. Drawings (where |
| recommendations incorporating a few changes, in | | | | necessary),e. Sample or Model (if required by the |
| particular relating to Patents for food, drug, medicines, | | | | examiner),f. Enablement and BestMode,g. Claims andh. |
| was introduced in the lower house of Parliament on | | | | Deposit (Microorganisms) |
| 21st September, 1965. The bill was passed by the | | | | Priority Date |
| Parliament and the Patents Act 1970 came into force | | | | Priority date is the date of first filing allotted by the |
| on 20th April 1972 along with Patent Rules 1972. This | | | | patent office to an application. If a provisional |
| law was suited changed political situation and | | | | application is followed by a complete application, the |
| economic needs for providing impetus technological | | | | priority date shall be date of filing of the provisional |
| development by promoting inventive activities in the | | | | application. If an Indian application is filed after a foreign |
| country. | | | | or PCT application, the priority date shall be the date of |
| Uruguay round of GATT negotiations paved the way | | | | filing of the foreign or PCT application. If an application |
| for WTO. Therefore India was put under the | | | | is divided into two applications, the priority date shall be |
| contractual obligation to amend its patents act in | | | | date of filing of the parent application. |
| compliance with the provisions of TRIPS. India had to | | | | Priority date is the date of reference used by the |
| meet the first set of requirements on 1- 1-1995. This | | | | patent to determine the newness of the invention. If |
| was to give a pipeline protection till the country starts | | | | the claimed invention is part of public knowledge |
| giving product patent. It came to force on 26th March | | | | before the priority date, it will not be eligible for a |
| 1999 retrospective from 1-1-1995. It lays down the | | | | patent. Under US Law, priority date is pushed back to |
| provisions for filing of application for product patent in | | | | the date of conception for determining novelty and |
| the field of drugs or medicines with effect from | | | | Non-obviousness. |
| 01.01.1995 and grant of Exclusive Marketing Rights on | | | | Place of Filing |
| those products. | | | | Patent Application can be filed at any of the four |
| India amended its Patents Act again in 2002 to meet | | | | patent offices in India. Patent Offices are located at |
| with the second set of obligations (Term of Patent | | | | Kolkata, New Delhi, Chennai and Mumbai. |
| etc.), which had to be effected from 1-1-2000. This | | | | Documents to be submitted at the time of filing |
| amendment, which provides for 20 years term for the | | | | The following documents have to be submitted at the |
| patent, Reversal of burden of proof etc. came into | | | | time of filing a patent application: |
| force on 20th May, 2003. The Third Amendment of | | | | Form 1 - Application for the grant of patent. |
| the Patents Act 1970, by way of the Patents | | | | Form 2 - Provisional or Complete Specification. |
| (Amendment) Ordinance 2004 came into force on 1st | | | | Form 3 - Statement and undertaking by the applicant. |
| January, 2005 incorporating the provisions for granting | | | | Form 5 - Declaration as to inventorship. |
| product patent in all fields of Technology including | | | | Form 26 - Authorization of patent agent or any other |
| chemicals, food, drugs & agrochemicals and this | | | | person. |
| Ordinance is replaced by the Patents (Amendment) | | | | Priority document details have to be filed for a |
| Act 2005 which is in force now having effect from | | | | Convention application. |
| 1-1-2005 . | | | | PUBLICATION |
| ESTABLISHMENT OF PATENT ADMINISTRATION IN | | | | A patent application will be published on expiry of |
| INDIA | | | | eighteen months after the priority date. It can be |
| Patent system in India is administered under the | | | | published earlier, if such a request is made by the |
| superintendence of the Controller General of Patents, | | | | applicant. The application will not be published if |
| Designs, Trademarks and Geographical Indications. | | | | directions are given for secrecy, until the term of those |
| The Office of the Controller General functions under | | | | directions expires. It will also not be published if the |
| the Department of Industrial Policy and Promotion, | | | | application is withdrawn three months before |
| Ministry of Commerce and Industry. There are four | | | | publication date. |
| patent offices in India. The Head Office is located at | | | | On publication, specification including drawings and |
| Kolkata and other Patent Offices are located at Delhi, | | | | deposits shall be open for public inspection. The rights |
| Mumbai and Chennai. The Controller General delegates | | | | of the patentee start from the date of publication but |
| his powers to Sr. Joint Controller, Joint Controllers, | | | | they cannot be enforced until after patent grant. |
| Deputy Controllers and Assistant Controllers. | | | | EXAMINATION |
| Examiners of patents in each office discharge their | | | | 1. Request for Examination |
| duties according to the direction of the Controllers. | | | | The process of examination starts with a request for |
| Hierarchy of Officers in Patent office | | | | examination. The request has to be made within 36 |
| Controller General of Patents, Designs, Trademarks | | | | months from the date of priority or filing. However, if |
| & GI | | | | secrecy directions have been given for the application, |
| Examiners of Patents & Designs | | | | the request can be made six months after the |
| Assistant Controller of Patents & Designs | | | | directions are revoked or thirty six months from the |
| Deputy Controller of Patents & Designs | | | | date of priority or filing, if that date is later. |
| Joint Controller of Patents & Designs | | | | 2. Examination |
| Senior Joint Controller of Patents & Designs | | | | On receiving the request, the controller shall direct the |
| Patentable Inventions: | | | | patent application to the Examiner for examination. To |
| A patent can be granted for an invention which may | | | | start with, the examiner makes a formal examination |
| be related to any process or product. The word | | | | by verifying the propriety and correctness of all |
| "Invention " has been defined under the Patents Act | | | | documents filed with the application. Later, he verifies |
| 1970 as amended from time to time. | | | | the patentability of the application. The patentability |
| "An invention means a new product or process | | | | analysis includes all patentability requirements. |
| involving an inventive step and capable of industrial | | | | After confirming that the application falls within the |
| application" (S. 2(1)(j)) | | | | scope of patentable subject matter, the examiner |
| " new invention" is defined as any invention or | | | | conducts a prior art search to check if there is prior |
| technology which has not been anticipated by | | | | art, which anticipates the invention claimed. Prior art |
| publication in any document or used in the country or | | | | search for anticipation includes search for anticipation |
| elsewhere in the world before the date of filing of | | | | by publication, filing of complete specification, etc. He |
| patent application with complete specification, i.e. the | | | | then verifies the existence of inventive step, Industrial |
| subject matter has not fallen in public domain or that it | | | | application, and Enablement and Best mode. |
| does not form part of the state of the art; Where, | | | | The examiner will give the examination report within 1 |
| Capable of industrial application, in relation to an | | | | month from the date of reference by controller and |
| invention, means that the invention is capable of being | | | | that term shall not exceed three months. If the |
| made or used in an industry | | | | examination report is adverse, the controller sends a |
| (S.2 (1)(ac)) Therefore, the criteria for an invention to | | | | notice to the applicant and gives him an opportunity to |
| be patentable are, | | | | correct and if necessary an opportunity of hearing. |
| (1) An invention must be novel | | | | The Controller might ask the applicant to amend the |
| (2) has an inventive step and | | | | application in order to proceed further. If the applicant |
| (3) is capable of industrial application | | | | does not make such changes, the application might be |
| To be patentable, an invention should fall within the | | | | rejected. |
| scope of patentable subject matter as defined by the | | | | The Controller has the power to divide the application, |
| patent statute. The invention must relate to a machine, | | | | post date the application, substitute applicants and |
| article or substance produced by manufacture, or the | | | | reject the application. An order of division will be given |
| process of manufacture of an article. A patent may | | | | if the application contains more than one invention and |
| also be obtained for an improvement of an article or | | | | if it is required to file separate applications for each |
| of a process of manufacture. With regard to medicine | | | | invention. The application might be post dated to a |
| or drug and certain classes of chemicals no patent is | | | | period of six months if requested by the applicant. |
| granted for the product itself even if new, only the | | | | Substitution of inventors is generally done if the |
| process of manufacturing the substance is patentable. | | | | inventor has been wrongfully mentioned or if a joint |
| However, product patents would be available for drugs | | | | inventor has not been mentioned in the application. |
| and food materials from 2005 as India's obligations | | | | The controller has the power to reject the application, |
| under the TRIPs Agreement would kick in from that | | | | if the applicant does not comply with his requirements. |
| point of time. If any substance falls outside the scope | | | | OPPOSITION |
| of patentable subject matter, it cannot be patentable. | | | | 1. Pre-grant Opposition |
| NOT PATENTABLE INVENTIONS | | | | Any person can file an opposition for grant of patent |
| There are some products and processes, which are | | | | after the application has been published. Opposition |
| not patentable in India They are classified into two | | | | may be filed on any of the following grounds:a. Non |
| categories in the patent acta) Those which are not | | | | compliance of patentability requirements.b. |
| inventions (S.3)b) Invention relating to atomic Energy | | | | Nondisclosure or Wrongful disclosure of genetic |
| (S.4) | | | | resources or traditional knowledge. |
| Various types of non-patentable inventions under | | | | 2. Post-grant Opposition |
| Section 3 are as follows- | | | | Any person can file an opposition within a period |
| 3(a) An invention which is frivolous or which claims | | | | twelve months after the grant of a patent. It can be |
| anything obvious contrary to well established natural | | | | filed based on the following grounds:a. Wrongful |
| laws. | | | | obtainment of the invention by the inventor.b. |
| Merely making in one piece, articles, previously made in | | | | Publication of the claimed invention before the priority |
| two or more pieces is frivolous. Mere usefulness is not | | | | date.c. Sale or Import of the invention before the |
| sufficient (Indian vacuum brake co. ltd vs. Laurd (AUR | | | | priority date.d. Public use or display of the invention.e. |
| 1962 CAK 152). | | | | The invention doesn't satisfy the patentability |
| Perpetual motion machine alleged to be giving output | | | | requirements.f. Disclosure of false information to patent |
| without any input is not patentable as it is contrary to | | | | office.g. Application for the invention is not filed within |
| natural law. | | | | twelve months from the date of convention |
| 3(b) An invention the primary or intended use or | | | | application.h. Nondisclosure or wrongful disclosure of |
| commercial exploitation of which could be contrary to | | | | the biological source.i. Invention is anticipated by |
| public order or morality or which causes serious | | | | traditional knowledge. |
| prejudice to human, animal or plant life or health or to | | | | 3. Process of Opposition |
| the environment | | | | On receiving a notice of opposition, the controller |
| 3(c) The mere discovery of a scientific principle or the | | | | notifies the patentee. He then constitutes an Opposition |
| formulation of an abstract theory or discovery of any | | | | board to deal with the opposition. The Opposition board |
| living thing or non-living substances occurring in nature; | | | | decides the issues after giving reasonable opportunity |
| 3(d) The mere discovery of a new form of a known | | | | of hearing to both the parties. The Opposition board |
| substance which does not result in the enhancement | | | | might invalidate the patent, require amendments or |
| of the known efficacy of that substance or the mere | | | | maintain the status quo. If amendments are required, |
| discovery of any new property or new use for a | | | | they have to be made within the prescribed period in |
| known substance or of the mere use of a known | | | | order to maintain the patent. |
| process, machine or apparatus unless such known | | | | E. GRANT |
| process results in a new product or employs at least | | | | If the application satisfies all the requirements of the |
| one new reactant. | | | | patent act, the application is said to be in order for |
| Explanation- For the purposes of this clause, salts, | | | | grant. An application in order for grant shall be granted |
| esters, ethers, polymorphs, metabolites, pure form, | | | | expeditiously. A granted patent shall be published in the |
| particle size, isomers, mixtures of isomers, complexes, | | | | official gazette and shall be open for public inspection. |
| combinations and other derivatives of known | | | | Every granted patent shall be given the filing date. The |
| substance shall be considered to be the same | | | | patent will be valid throughout India. A granted patent |
| substance, unless they differ significantly in properties | | | | gives the patent holder the exclusive right to make, |
| with regard to efficacy. | | | | use, sell, offer for sale and import the product or use |
| [Note: Before amendment of Section 3 (d) by the | | | | the process. However, the government can make use |
| Patents (Amendments) Ordinance 2004 it reads as | | | | of the patent for its own purposes or for distributing an |
| "mere discovery of any new property or new use for | | | | invention relating to medicine to hospitals and |
| a known substance or mere use of a known process, | | | | dispensaries. Furthermore, any person can make use |
| machine or apparatus..."The insertion of the word | | | | of the patent for experiment or education. |
| "mere" before 'new use for a known substance' in this | | | | Assignments |
| clause by the Patents (Amendment) Ordinance 2004, | | | | A patentee may assign the whole or any part of the |
| is for the purpose of drafting clarity only as without it | | | | patent rights to the whole of India or any part thereof. |
| the sub-section would have remained ambiguous. This | | | | There are three kinds of assignments: legal |
| does not restrict the nonpatentability and give rise to | | | | assignment, equitable assignment and mortgages. An |
| ambiguity and possible misuse. There is noneed of | | | | assignment of an existing patent is a legal assignment |
| giving wider meaning to it.] | | | | where the assignee may enter his name as the patent |
| 3(e) A substance obtained by a mere admixture | | | | owner. A certain share given to another person is |
| resulting only in the aggregation ofthe properties of the | | | | called an equitable assignment and a mortgage is |
| components thereof or a process for producing such | | | | when patent rights are wholly or partly transferred to |
| substance: | | | | obtain money. |
| 3(f) The mere arrangement or re-arrangement or | | | | Licenses |
| duplication of known devices eachfunctioning | | | | A patentee may, by a license, permit others to make, |
| independently of one another in a known way. | | | | use, or exercise, the invention which otherwise would |
| 3(h) A method of agriculture or horticulture. | | | | not be allowed. The license should be in writing and the |
| (i) A method of producing a new form of a known | | | | terms of which must be given in the application filed |
| plant even if it involved a modification of the conditions | | | | with the Controller. A license maybe given in express |
| under which natural phenomena would pursue their | | | | terms or implied from the circumstances. An exclusive |
| inevitable course is not patentable. (N.V. Philips | | | | license excludes all other persons including the |
| Gloeiammpenfabrieken's Application 71 RFC 192). | | | | patentee from the use of invention In a limited license |
| 3(i) Any process for the medicinal, surgical, curative, | | | | the limitation may arise as to persons, time, place, |
| prophylactic diagnostic therapeutic or other treatment | | | | manufacture, use or sale. |
| of human being or any process for a similar treatment | | | | Compulsory Licenses and Government use of |
| of animals to render them free of disease or to | | | | inventions |
| increase their economic value or that of their products. | | | | Under certain circumstances like when reasonable |
| Plants and animals in whole or any part thereof other | | | | requirements are not satisfied, a very high royalty is |
| than microorganisms but including seeds, varieties and | | | | quoted, when a patent cannot work without another |
| species and essentially biological processes for | | | | related patent or on notification by the Central |
| production or propagation of plants and animals; | | | | government, the Controller can grant a license to an |
| Example: Clones and new variety of plants are not | | | | interested person. |
| patentable. But process / method of preparing | | | | The Central or State government can use for a |
| Genetically Modified Organisms are patentable subject | | | | purpose of its own all patented inventions or |
| matter. | | | | processes either with or without royalty. |
| 3(m) A mere scheme or rule or method of performing | | | | Revocation of a patent |
| mental act or method of playing game; | | | | A patent may be revoked by various modes namely |
| 3(n) A presentation of information | | | | revocation in the public interest by the Government or |
| 3(o) Topography of integrated circuits; | | | | relating to atomic energy by Controller. A patent may |
| INVENTIONS RELATING TO ATOMIC ENERGY (S.4) | | | | also be revoked for non-working. The High Court may |
| "No Patent shall be granted in respect of an invention | | | | revoke a patent on noncompliance with the |
| relating to atomic energy falling within subsection (1) of | | | | requirements for use of an invention or on petition by a |
| section 20 of the Atomic Energy Act, 1962 | | | | person interested on various specified grounds. |
| Various types of Patent Applications in India | | | | A patentee may at any time offer to surrender his |
| 1. Ordinary application | | | | patent by giving notice to the Controller, whom after |
| 2. Convention application | | | | hearing the parties may revoke the patent. |
| 3. PCT international application | | | | Patent enforcement and Infringement of patents |
| 4. PCT National phase application | | | | Infringement of a patent is the violation of the exclusive |
| 5. Application for Patent of addition | | | | rights of the patentee. |
| 6. Divisional Application | | | | Determination of infringement depends on the scope |
| Procedural requirements | | | | of exclusive rights of the patentee, whether the |
| An application for a patent in the prescribed form | | | | infringer's acts amount to making, using, selling or |
| along with the prescribed fee has to be filed in the | | | | distributing a product or using a method and if in fact |
| appropriate patent office. Examiners of patents | | | | the acts amount to an infringement. The burden of |
| scrutinize the application accompanied by a | | | | proof is on the patent owner for proving infringement. |
| specification so that it satisfies the requirements. After | | | | Defenses |
| examination, the Patent Office will raise objections and | | | | The defendant in a suit for infringement may plead one |
| once the applicant convinces the Controller Of Patents | | | | or more defenses. He can claim the patent owner is |
| will put the specification in the Official Gazette and on | | | | not entitled to sue for infringement or deny any |
| its acceptance without any controversy, a patent shall | | | | infringement. Any leave or license express or implied to |
| be granted. | | | | use the invention does not amount to infringement and |
| A patent grant gives the patentee the exclusive right | | | | where infringement is invalid on certain grounds. |
| to make or use the patented article or use the | | | | Acts done in connection with government use, |
| patented process by preventing all others from making | | | | experiment, research, education and falling within the |
| or using the patented article or using the patented | | | | scope of innocent infringement or done after failure to |
| process. The patentee can assign, grant licenses or | | | | pay renewal fee or before the date of amendment of |
| deal for consideration. | | | | the specification do not amount to infringement. A |
| The patent application passes through the following | | | | defendant may also counter claim for revocation of |
| stages: | | | | patent. |
| FILING | | | | Remedies |
| An application for a patent can be filed by the true and | | | | Injunctions act as a preventive relief to the patentees. |
| first inventor. It can also be filed the by the assignee or | | | | The patent owner at the start of a trial can request |
| legal representative of the inventor. If an application is | | | | for an interim injunction in order to restrain the infringer |
| filed by the assignee, proof of assignment has to be | | | | from continuing the infringement to prevent further |
| submitted along with the application. The applicant can | | | | losses. Permanent injunction is given based on the |
| be national of any country. | | | | merits of the case at the end of the trial. A patent |
| Form of Application | | | | owner is entitled to the relief of damages as |
| Every application shall be accompanied by a | | | | compensation to the patentee and not punishment to |
| provisional or complete specification. Provisional | | | | the infringer. The patent owner may also opt for the |
| applications are generally filed at a stage where some | | | | account of profits where he has to prove use of |
| experimentation is required to perfect the invention. | | | | invention and the amount of profit derived from such |
| Filing of a provisional specification allows the applicant | | | | illegal use. |