Patent Laws in India
WHAT ARE THE INTERNATIONAL TREATIES GOVERNING PATENT LAWS IN INDIA?
Section 5 Part II of the TRIPS Agreement (Article 27 to Article 34) contains the provisions for standards in respect of the Patents.
A Patent is an exclusive right granted by a country to the inventor to make, use, manufacture and market the invention that satisfies the conditions of novelty, innovativeness and usefulness Members are required to comply with the Paris Convention for the Protection of Industrial Property.
Introduction of Patent Law in India took place in 1856 whereby certain exclusive privileges to the inventors of new inventions were granted for a period of 14 years. Presently, the patent provisions in India are governed by the Patents Act, 1970. The Indian Patents Act is fully compatible with the TRIPS Agreement, following amendments to it; the last amendment being in 2005 by the Patents (Amendment) Act, 2005.
Product patents in the field of pharmaceuticals and agro-chemicals have been introduced by deleting Section 5 of the Patents Act. Those inventions which are considered a mere discovery of a new form of a known substance or mere discovery of a new property or new use will not be considered patentable. A provision for patenting of software that is embedded in hardware has also been introduced in the Patents Act.
The term of every patent is now for 20 years from the date of filing. Provisions for the pre-grant opposition to the grant of patents have also been incorporated in the Act. Earlier such provisions were available only for post-grant opposition. The filing date of a patent application and its complete specification will now be the international date of filing for the patent as per the provisions of the Patent Cooperation Treaty.
A provision has also been introduced in the Patents Act to enable the grant of compulsory licenses for the export of medicines to countries with limited or no manufacturing capacities to meet emergent public health situations. The law effectively balances and calibrates intellectual property protection with public health concerns and national security. This provision is in line with the Decision of the WTO of 30 August 2003 on the Implementation of Paragraph 6 of the Doha Declaration on the TRIPS Agreement and Public Health.
WHAT ARE DIFFERENT PROVISIONS RELATED TO PATENT IN TRIPS AGREEMENT?
Art. 27: Patents shall be granted for any inventions, whether products or processes, in all field of technology, provided they are new, involve an inventive step and are capable of industrial application. No discrimination in respect to place of invention. Exception available for diagnostic, therapeutic and surgical methods of treatment for humans or animals, as well as plants and animals and essentially biological processes for the production thereof.
Art. 28: Exclusive right to owners against third party for using subject matter including process of patent, without his consent.
Art. 29: Inventions shall be disclosed in a manner, which is \sufficiently clear and complete for a skilled person in the art to carry out the invention.
Art. 30: Limited exceptions to the exclusive rights provided such exception do not conflict with normal exploitation of the patent.
Art. 32: Revocation/forfeiture is subject to judicial review.
Art. 33: The term of protection shall be at least 20 years from the date of application.
Art. 34: Reversal off the burden of proof in civil proceedings relating to infringement of process patents is to be established in certain cases.
What is a Patent?
A Patent is a statutory right for an invention granted for a limited period of time to the patentee by the Government, in exchange of full disclosure of his invention for excluding others, from making, using, selling, importing the patented product or process for producing that product for those purposes without his consent.
Does Indian Patent give protection worldwide?
Patent protection is territorial right and, therefore, it is effective only within the territory of India. However, filing an application in India enables the applicant to file a corresponding application for same invention in convention countries, within or before expiry of twelve months from the date of filing in India. Therefore, separate patents should be obtained in each country where the applicant requires protection of his invention in those countries. There is no worldwide valid patent.
Is it possible to file international application under Patent Cooperation Treaty (PCT) in India?
It is possible to file an international application known as PCT application in India in the Patent Offices located at Kolkata, Chennai, Mumbai and Delhi. All these offices act as Receiving Office (RO) for International application.
What can be patented?
An invention relating either to a product or process that is new, involving inventive step and capable of industrial application can be patented. However, it must not fall into the categories of inventions that are non- patentable under section 3 and 4 of the Act.
Who can apply for a patent?
A patent application can be filed either by true and first inventor or his assignee, either alone or jointly with any other person. Further, legal representative of any deceased person can also make an application for patent.
What are the criteria for patentability?
An invention to become patentable the subject matter must meet the following criteria –
i) It should be novel.
ii) It should have inventive step or it must be non-obvious .
iii) It should be capable of Industrial application.
iv) It should not fall within the provisions of section 3 and 4 of the Patents Act 1970.
Should application for patent be filed before or after publication of the details of the invention?
The application for patent should be filed before the publication of the invention and till then it should not be disclosed or published. Disclosure of invention by publication before filing of the patent application may be detrimental to novelty of the invention as it may no longer be considered novel due to such publication. However, under certain conditions, there is grace period of 12 months for filing application even after publication.
Can any invention be patented after publication or display in the public exhibition?
Generally, a patent application for the invention which has been either published or publicly displayed cannot be filed. However the Patents Act provides a grace period of 12 months for filing of patent application from the date of its publication in a journal or its public display in an exhibition organized by the Government or disclosure before any learned society or published by applicant. The detailed conditions are provided under Chapter VI of the Act (Section 29-34).
How is a Patent Specification prepared?
A patent specification can be prepared by the applicant himself or his registered and authorized agent. The patent specification generally comprises of the title of the invention indicating its technical field, prior art, draw backs in the prior art, the solution provided by the inventor to obviate the drawbacks of the prior art, a concise but sufficient description of the invention and its usefulness, drawings (if any) and details of best method of its working. The complete specification must contain at least one claim or statement of claims defining the scope of the invention for which protection is sought for.
Does the Patent Office keep information of the invention secret?
Yes. All the patent applications are kept secret up to 18 months from the date of filing or priority date whichever is earlier and thereafter they are published in the Official Journal of the Patent Office which is published every week and is also made available on the IPO website. After its publication, public can inspect the documents and also may take the photocopy thereof on payment of the fee as prescribed.
When is an application for patent published?
Every application for patent is published after 18 months from the date of its filing or priority date whichever is earlier. However, following applications are not published:
A) Application in which secrecy direction is imposed
B) Application which has been abandoned u/s 9(1) and
C) Application which has been withdrawn 3 months prior to 18 months
Is there any provision in the law for early publication?
Yes, the applicant can make a request for early publication in Form 9 along with the prescribed fee. After receiving such request the Patent Office publishes such application within a period of one month provided the invention contained thereon does not relate to atomic energy or defense purpose.
What are the various stages involved in the grant of patent?
After filing the application for the grant of patent, a request for examination is required to be made by the applicant or by third party and thereafter it is taken up for examination by the Patent office. Usually, the First Examination Report is issued and the applicant is given an opportunity to correct the deficiencies in order to meet the objections raised in the said report. The applicant must comply with the requirements within the prescribed time otherwise his application would be treated as deemed to have been abandoned. When all the requirements are met, the patent is granted and notified in the Patent office Journal. However, before the grant of patent and after the publication of application, any person can make a representation for pre-grant opposition.
Can one use the words "Patent Pending" or "Patent Applied For"?
These words are normally used by the patent applicant to their products after filing his application for patent so that the public is made aware that a patent application has been filed in respect of that invention. Use of these words where no application has been made is prohibited under the Patent law. However, use of such words by the patent applicant does not prohibit the third party to plead innocence unless the patent number is indicated.
What is the term of patent?
Term of every patent in India is 20 years from the date of filing of patent application, irrespective of whether it is filed with provisional or complete specification. However, in case of applications filed under PCT the term of 20 years begins from International filing date.
Courtsey: www.thelegist.com
Section 5 Part II of the TRIPS Agreement (Article 27 to Article 34) contains the provisions for standards in respect of the Patents.
A Patent is an exclusive right granted by a country to the inventor to make, use, manufacture and market the invention that satisfies the conditions of novelty, innovativeness and usefulness Members are required to comply with the Paris Convention for the Protection of Industrial Property.
Introduction of Patent Law in India took place in 1856 whereby certain exclusive privileges to the inventors of new inventions were granted for a period of 14 years. Presently, the patent provisions in India are governed by the Patents Act, 1970. The Indian Patents Act is fully compatible with the TRIPS Agreement, following amendments to it; the last amendment being in 2005 by the Patents (Amendment) Act, 2005.
Product patents in the field of pharmaceuticals and agro-chemicals have been introduced by deleting Section 5 of the Patents Act. Those inventions which are considered a mere discovery of a new form of a known substance or mere discovery of a new property or new use will not be considered patentable. A provision for patenting of software that is embedded in hardware has also been introduced in the Patents Act.
The term of every patent is now for 20 years from the date of filing. Provisions for the pre-grant opposition to the grant of patents have also been incorporated in the Act. Earlier such provisions were available only for post-grant opposition. The filing date of a patent application and its complete specification will now be the international date of filing for the patent as per the provisions of the Patent Cooperation Treaty.
A provision has also been introduced in the Patents Act to enable the grant of compulsory licenses for the export of medicines to countries with limited or no manufacturing capacities to meet emergent public health situations. The law effectively balances and calibrates intellectual property protection with public health concerns and national security. This provision is in line with the Decision of the WTO of 30 August 2003 on the Implementation of Paragraph 6 of the Doha Declaration on the TRIPS Agreement and Public Health.
WHAT ARE DIFFERENT PROVISIONS RELATED TO PATENT IN TRIPS AGREEMENT?
Art. 27: Patents shall be granted for any inventions, whether products or processes, in all field of technology, provided they are new, involve an inventive step and are capable of industrial application. No discrimination in respect to place of invention. Exception available for diagnostic, therapeutic and surgical methods of treatment for humans or animals, as well as plants and animals and essentially biological processes for the production thereof.
Art. 28: Exclusive right to owners against third party for using subject matter including process of patent, without his consent.
Art. 29: Inventions shall be disclosed in a manner, which is \sufficiently clear and complete for a skilled person in the art to carry out the invention.
Art. 30: Limited exceptions to the exclusive rights provided such exception do not conflict with normal exploitation of the patent.
Art. 32: Revocation/forfeiture is subject to judicial review.
Art. 33: The term of protection shall be at least 20 years from the date of application.
Art. 34: Reversal off the burden of proof in civil proceedings relating to infringement of process patents is to be established in certain cases.
What is a Patent?
A Patent is a statutory right for an invention granted for a limited period of time to the patentee by the Government, in exchange of full disclosure of his invention for excluding others, from making, using, selling, importing the patented product or process for producing that product for those purposes without his consent.
Does Indian Patent give protection worldwide?
Patent protection is territorial right and, therefore, it is effective only within the territory of India. However, filing an application in India enables the applicant to file a corresponding application for same invention in convention countries, within or before expiry of twelve months from the date of filing in India. Therefore, separate patents should be obtained in each country where the applicant requires protection of his invention in those countries. There is no worldwide valid patent.
Is it possible to file international application under Patent Cooperation Treaty (PCT) in India?
It is possible to file an international application known as PCT application in India in the Patent Offices located at Kolkata, Chennai, Mumbai and Delhi. All these offices act as Receiving Office (RO) for International application.
What can be patented?
An invention relating either to a product or process that is new, involving inventive step and capable of industrial application can be patented. However, it must not fall into the categories of inventions that are non- patentable under section 3 and 4 of the Act.
Who can apply for a patent?
A patent application can be filed either by true and first inventor or his assignee, either alone or jointly with any other person. Further, legal representative of any deceased person can also make an application for patent.
What are the criteria for patentability?
An invention to become patentable the subject matter must meet the following criteria –
i) It should be novel.
ii) It should have inventive step or it must be non-obvious .
iii) It should be capable of Industrial application.
iv) It should not fall within the provisions of section 3 and 4 of the Patents Act 1970.
Should application for patent be filed before or after publication of the details of the invention?
The application for patent should be filed before the publication of the invention and till then it should not be disclosed or published. Disclosure of invention by publication before filing of the patent application may be detrimental to novelty of the invention as it may no longer be considered novel due to such publication. However, under certain conditions, there is grace period of 12 months for filing application even after publication.
Can any invention be patented after publication or display in the public exhibition?
Generally, a patent application for the invention which has been either published or publicly displayed cannot be filed. However the Patents Act provides a grace period of 12 months for filing of patent application from the date of its publication in a journal or its public display in an exhibition organized by the Government or disclosure before any learned society or published by applicant. The detailed conditions are provided under Chapter VI of the Act (Section 29-34).
How is a Patent Specification prepared?
A patent specification can be prepared by the applicant himself or his registered and authorized agent. The patent specification generally comprises of the title of the invention indicating its technical field, prior art, draw backs in the prior art, the solution provided by the inventor to obviate the drawbacks of the prior art, a concise but sufficient description of the invention and its usefulness, drawings (if any) and details of best method of its working. The complete specification must contain at least one claim or statement of claims defining the scope of the invention for which protection is sought for.
Does the Patent Office keep information of the invention secret?
Yes. All the patent applications are kept secret up to 18 months from the date of filing or priority date whichever is earlier and thereafter they are published in the Official Journal of the Patent Office which is published every week and is also made available on the IPO website. After its publication, public can inspect the documents and also may take the photocopy thereof on payment of the fee as prescribed.
When is an application for patent published?
Every application for patent is published after 18 months from the date of its filing or priority date whichever is earlier. However, following applications are not published:
A) Application in which secrecy direction is imposed
B) Application which has been abandoned u/s 9(1) and
C) Application which has been withdrawn 3 months prior to 18 months
Is there any provision in the law for early publication?
Yes, the applicant can make a request for early publication in Form 9 along with the prescribed fee. After receiving such request the Patent Office publishes such application within a period of one month provided the invention contained thereon does not relate to atomic energy or defense purpose.
What are the various stages involved in the grant of patent?
After filing the application for the grant of patent, a request for examination is required to be made by the applicant or by third party and thereafter it is taken up for examination by the Patent office. Usually, the First Examination Report is issued and the applicant is given an opportunity to correct the deficiencies in order to meet the objections raised in the said report. The applicant must comply with the requirements within the prescribed time otherwise his application would be treated as deemed to have been abandoned. When all the requirements are met, the patent is granted and notified in the Patent office Journal. However, before the grant of patent and after the publication of application, any person can make a representation for pre-grant opposition.
Can one use the words "Patent Pending" or "Patent Applied For"?
These words are normally used by the patent applicant to their products after filing his application for patent so that the public is made aware that a patent application has been filed in respect of that invention. Use of these words where no application has been made is prohibited under the Patent law. However, use of such words by the patent applicant does not prohibit the third party to plead innocence unless the patent number is indicated.
What is the term of patent?
Term of every patent in India is 20 years from the date of filing of patent application, irrespective of whether it is filed with provisional or complete specification. However, in case of applications filed under PCT the term of 20 years begins from International filing date.
Courtsey: www.thelegist.com
Comments
Indian patent search
Patent search