Chapter -2

Patents

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Introduction to Patents

Patents are one of the oldest forms of intellectual property protection and, as with all forms of
protection for intellectual property; the aim of a patent system is to encourage economic and
technological development by rewarding intellectual creativity.

Let's begin by exploring what a patent is. Issued, upon application, by a government office
(commonly the Patent Office), a patent is a document which describes an invention and creates
a legal situation in which the invention can normally only be exploited with the authorization of
the owner of the patent. In other words, a patent protects an invention, and grants to the
owner the exclusive rights to use his/her invention for a limited period of time. And an
invention may be defined as a new solution to a technical problem.

Example of inventions: band- aid, electric iron, safety pin, ball point pen, telephone, etc.

The purpose of a patent is to provide a form of protection for technological advances. The
theory is that patent protection will provide a reward not only for the creation of an invention,
but also for the development of an invention to the point at which it is technologically feasible
and marketable, and that this type of an incentive would promote additional creativity and
encourage companies to continue their development of new technology to the point at which it
is marketable, useful to the public and desirable for the public good.

Patenting System was developed over several centuries. There were patents back in the 1700s.
The system has evolved in the intervening years and we now have a very modern system. We
are still developing the international system to make it even more modern and to keep it
abreast of technological change and the changing economic system.

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Patent System in India

A Patent Act is a country's legislation that controls the use of patent. The Patents Act 1970 came
into force on 20th April 1972 along with Patent Rules 1972. This law was suited changed
political situation and economic needs for providing impetus technological development by
promoting inventive activities in the country.

India was put under the contractual obligation to amend its patents act in compliance with the
provisions of TRIPS. India had to meet the first set of requirements on 1- 1-1995. This was to
give a pipeline protection till the country starts giving product patent. It came to force on 26th
March 1999 retrospective from 1-1-1995. It lays down the provisions for filing of application for
product patent in the field of drugs or medicines with effect from 01.01.1995 and grant of
Exclusive Marketing Rights on those products.

India amended its Patents Act again in 2002 to meet with the second set of obligations (Term of
Patent etc.), which had to be effected from 1-1-2000. This amendment, which provides for 20
years term for the patent, Reversal of burden of proof etc. came into force on 20th May, 2003.
The Third Amendment of the Patents Act 1970, by way of the Patents (Amendment) Ordinance
2004 came into force on 1st January, 2005 incorporating the provisions for granting product
patent in all fields of Technology including chemicals, food, drugs & agrochemicals and this
Ordinance is replaced by the Patents (Amendment) Act 2005 which is in force now having effect
from 1-1-2005 .

Establishment of Patent Administration in India

Patent system in India is administered under the superintendence of the Controller General of
Patents, Designs, Trademarks and Geographical Indications.

The Office of the Controller General functions under the Department of Industrial Policy and
Promotion, Ministry of Commerce and Industry. There are four patent offices in India. The Head
Office is located at Kolkata and other Patent Offices are located at Delhi, Mumbai and Chennai.

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The Controller General delegates his powers to Sr. Joint Controller, Joint Controllers, Deputy
Controllers and Assistant Controllers. Examiners of patents in each office discharge their duties
according to the direction of the Controllers.

Hierarchy of Officers in Patent office

Controller General of Patents, Designs, Trademarks & GI

Examiners of Patents & Designs

Assistant Controller of Patents & Designs

Deputy Controller of Patents & Designs

Joint Controller of Patents & Designs

Senior Joint Controller of Patents & Designs

Patent
A patent in an exclusive right granted by a country to the owner of an invention to make, use,
manufacture and market the invention, provided the invention satisfies certain conditions
stipulated in the law. Exclusivity of right implies that no one else can make, use, manufacture or
market the invention without the consent of the patent holder. This right is available only for a
limited period of time. However, the use or exploitation of a patent may be affected by other
laws of the country which has awarded the patent.

The patent right is territorial in nature and inventors/their assignees will have to file separate
patent applications in countries of their interest, along with necessary fees, for obtaining
patents in those countries.

A patentee may, by a license, permit others to make, use, or exercise, the invention which
otherwise would not be allowed. The license should be in writing and the terms of which must
be given in the application filed with the Controller. A license maybe given in express terms or
implied from the circumstances. An exclusive license excludes all other persons including the
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patentee from the use of invention In a limited license the limitation may arise as to persons,
time, place, manufacture, use or sale.

A patentee may assign the whole or any part of the patent rights to the whole of India or any
part thereof. There are three kinds of assignments: legal assignment, equitable assignment and
mortgages. An assignment of an existing patent is a legal assignment where the assignee may
enter his name as the patent owner. A certain share given to another person is called an
equitable assignment and a mortgage is when patent rights are wholly or partly transferred to
obtain money.

The Purpose behind the Patent Law

To promote the Progress of Science and useful Arts, by securing for limited times to Inventors
the exclusive Right to their inventions Thus, India legislation created a patent system to
promote creativity by rewarding the inventor with a limited monopoly on using, making, and
selling his inventions.

In exchange for the right to exclude others from using, making, or selling the invention, an
inventor agrees to make public her invention. Once issued, patents become public record.
Inventors are also required in the patent application to disclose the "best mode" for making or
using the patented invention. Failure to do so can result in an invalid patent.

By international agreement, patents are available for any inventions, whether processes or
products, in all areas of technology. A chemical compound can be patented. A machine, of
course, can be patented. Processes for developing or making things can be patented. However,
there are things that cannot be patented, and are usually excluded from the scope of
patentability. Human genes, for instance, cannot be patented. Things that already exist in
nature, with very few exceptions, cannot be patented. A perpetual motion machine, which goes
against the laws of nature, cannot be patented unless someone can show it working. Then, of
course, the old rules are set aside and something new is created. Some inventions may be
excluded from the scope of patentability for public order or morality grounds.

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Figure 1: Structure of Patent

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The conditions to be satisfied by an invention to be patentable
There are several characteristics that a patent office will look at to determine whether the
invention is patentable. At the outset, there has to be a patent application on file. In most cases
that patent application is examined by a technical expert to ensure that it meets the
substantive criteria for patentability. The first of those criteria is that it has to be new (novel),
meaning that the invention must never have been made before, carried out before or used
before.

The second criterion is that there must have been an inventive step. In other words, it must
represent a sufficient advance in relation to the state of the art before it was made to be
considered worth patenting.

The term "non-obvious" is also used: if it were obvious to a person of ordinary skill in the field
concerned, it would not progress to the stage qualifying for patent protection.

The third criterion is that it needs to be industrially applicable. It has to be susceptible of use in
so many way. This is a very broad criterion. Almost anything can be used, even if its in the
research stage, but, as I mentioned, that does not apply to a perpetual motion machine,
because
it simply will not work.

Lets look in to more details

(i) Novelty: An invention will be considered novel if it does not form a part of the global state of
the art. Information appearing in magazines, technical journals, books, newspapers etc.
constitutes the state of the art. Oral description of the invention in a seminar/conference can
also spoil novelty. Novelty is assessed in a global context. An invention will cease to be novel if it
has been disclosed in the public through any type of publications anywhere in the world before
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filing a patent application in respect of the invention. Prior use of the invention in the country of
interest before the filing date can also destroy the novelty. Novelty is determined through
extensive literature and patent searches. It should be realized that patent search is essential and
critical for ascertaining novelty as most of the information reported in patent documents does
not get published anywhere else.

(ii) Inventiveness (Non-obviousness): A patent application involves an inventive step if the

proposed invention is not obvious to a person skilled in the art i.e., skilled in the subject matter
of the patent application. The prior art should not point towards the invention implying that the
practitioner of the subject matter could not have thought about the invention prior to filing of
the patent application. Inventiveness cannot be decided on the material contained in
unpublished patents. The complexity or the simplicity of an inventive step does not have any
bearing on the grant of a patent. In other words a very simple invention can qualify for a patent.
If there is an inventive step between the proposed patent and the prior art at that point of time,
then an invention has taken place. A mere 'scintilla' of invention is sufficient to found a valid
patent.

(iii) Usefulness: An invention must possess utility for the grant of patent No valid patent can be
granted for an invention devoid of utility.

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 Figure 2: Change of computers with time

The Types of Inventions which are not Patentable in India

According to sec 3 & 4 an invention may satisfy the condition of novelty, inventiveness and
usefulness but it may not qualify for a patent under the following situations:

I. An invention which is frivolous or which claims anything obviously contrary to well

established natural laws;
II. An invention the primary or intended use or commercial exploitation of which could be
contrary to public order or morality or which causes serious prejudice to human , animal
or plant life or health or to the environment;
III. The mere discovery of scientific principle or the formulation of an abstract theory or
discovery of any living thing or non-living substance occurring in nature;
IV. The mere discovery of any new property or new use for a known substance or of the
mere use of a known process, machine or apparatus unless such known process results
in a new product or employs at least one new reactant;

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 V. A substance obtained by mere admixture resulting only in the aggregation of the
properties of the components thereof or a process for producing such substance;
VI. The mere arrangement or re-arrangement or duplication of known devices each
functioning independently of one another in a known way;
VII. A method of agriculture or horticulture;
VIII. Any process for medicinal, surgical, curative, prophylactic, diagnostic, therapeutic or
other treatment of human beings or any process for a similar treatment of animals to
render them free of disease or to increase their economic value or that of their
products;
IX. Plants and animals in whole or any part thereof other than microorganisms but including
seeds, varieties and species and essentially biological processes for production or
propagation of plants and animals;
X. Mathematical or business method or a computer program per se algorithms
XI. A literary, dramatic, musical or artistic work or any other aesthetic creation whatsoever
including cinematographic works and television productions;
XII. A mere scheme or rule or method of performing mental act or method of playing game;
XIII. A presentation of information
XIV. Topography of integrated circuits
XV. An invention which, in effect, is traditional knowledge or which is an aggregation or
duplication of known properties of traditionally known component or components
XVI. Inventions relating to atomic energy

Term or Duration of a Patent in the Indian System

Term of the patent is 20 years from the date of filling for all types of inventions

A patent has to be maintained by paying the maintenance fees every year. If the maintenance
fees is not paid, the patent will cease to remain in force and the invention becomes open to
public. Anyone can then utilize the patent without the danger of infringing the patent.

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Procedural Requirements
An application for a patent in the prescribed form along with the prescribed fee has to be filed
in the appropriate patent office. Examiners of patents scrutinize the application accompanied by
a specification so that it satisfies the requirements. After examination, the Patent Office will
raise objections and once the applicant convinces the Controller Of Patents will put the
specification in the Official Gazette and on its acceptance without any controversy, a patent
shall be granted.

A patent grant gives the patentee the exclusive right to make or use the patented article or use
the patented process by preventing all others from making or using the patented article or using
the patented process. The patentee can assign, grant licenses or deal for consideration.

The patent application passes through the following stages:

1. FILING

An application for a patent can be filed by the true and first inventor. It can also be filed the by
the assignee or legal representative of the inventor. If an application is filed by the assignee,
proof of assignment has to be submitted along with the application. The applicant can be
national of any country.

2. FORM OF APPLICATION

Every application shall be accompanied by a provisional or complete specification. Provisional

applications are generally filed at a stage where some experimentation is required to perfect
the invention.

Filing of a provisional specification allows the applicant to get an early application date.

Provisional Specification shall contain:

a. Title,

b. Written Description,

c. Drawings, if necessary and

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d. Sample or model if required.

The complete specification shall contain:

a. Title,

b. Abstract,

c. Written Description,

d. Drawings (where necessary),

e. Sample or Model (if required by the examiner),

f. Enablement and Best Mode,

g. Claims and

h. Deposit (Microorganisms)

Priority Date

Priority date is the date of first filing allotted by the patent office to an application. If a
provisional application is followed by a complete application, the priority date shall be date of
filing of the provisional application. If an Indian application is filed after a foreign or PCT
application, the priority date shall be the date of filing of the foreign or PCT application. If an
application is divided into two applications, the priority date shall be date of filing of the parent
application.

Priority date is the date of reference used by the patent to determine the newness of the
invention. If the claimed invention is part of public knowledge before the priority date, it will
not be eligible for a patent. Under US Law, priority date is pushed back to the date of
conception for determining novelty and Non-obviousness.

Place of Filing

Patent Application can be filed at any of the four patent offices in India. Patent Offices are
located at Kolkata, New Delhi, Chennai and Mumbai.

The following documents have to be submitted at the time of filing a patent application:

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Form 1 - Application for the grant of patent.

Form 2 - Provisional or Complete Specification.

Form 3 - Statement and undertaking by the applicant.

Form 5 - Declaration as to inventorship.

Form 26 - Authorization of patent agent or any other person.

Priority document details have to be filed for a Convention application.

3. PUBLICATION

A patent application will be published on expiry of eighteen months after the priority date. It
can be published earlier, if such a request is made by the applicant. The application will not be
published if directions are given for secrecy, until the term of those directions expires. It will
also not be published if the application is withdrawn three months before publication date.

On publication, specification including drawings and deposits shall be open for public
inspection. The rights of the patentee start from the date of publication but they cannot be
enforced until after patent grant.

4. EXAMINATION

a) Request for Examination

The process of examination starts with a request for examination. The request has to be made
within 36 months from the date of priority or filing. However, if secrecy directions have been
given for the application, the request can be made six months after the directions are revoked
or thirty six months from the date of priority or filing, if that date is later.

b) Examination

On receiving the request, the controller shall direct the patent application to the Examiner for
examination. To start with, the examiner makes a formal examination by verifying the propriety
and correctness of all documents filed with the application. Later, he verifies the patentability of
the application. The patentability analysis includes all patentability requirements.

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After confirming that the application falls within the scope of patentable subject matter, the
examiner conducts a prior art search to check if there is prior art, which anticipates the
invention claimed. Prior art search for anticipation includes search for anticipation by
publication, filing of complete specification, etc. He then verifies the existence of inventive step,
Industrial application, and Enablement and Best mode.

The examiner will give the examination report within 1 month from the date of reference by
controller and that term shall not exceed three months. If the examination report is adverse,
the controller sends a notice to the applicant and gives him an opportunity to correct and if
necessary an opportunity of hearing. The Controller might ask the applicant to amend the
application in order to proceed further. If the applicant does not make such changes, the
application might be rejected.

The Controller has the power to divide the application, post date the application, substitute
applicants and reject the application. An order of division will be given if the application
contains more than one invention and if it is required to file separate applications for each
invention. The application might be post dated to a period of six months if requested by the
applicant. Substitution of inventors is generally done if the inventor has been wrongfully
mentioned or if a joint inventor has not been mentioned in the application.

The controller has the power to reject the application, if the applicant does not comply with his
requirements.

5. OPPOSITION

a) Pre-grant Opposition

Any person can file an opposition for grant of patent after the application has been published.
Opposition may be filed on any of the following grounds:

a. Non compliance of patentability requirements.

b. Nondisclosure or Wrongful disclosure of genetic resources or traditional knowledge.

b) Post-grant Opposition

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Any person can file an opposition within a period twelve months after the grant of a patent. It
can be filed based on the following grounds:

a. Wrongful obtainment of the invention by the inventor.

b. Publication of the claimed invention before the priority date.

c. Sale or Import of the invention before the priority date.

d. Public use or display of the invention.

e. The invention doesn't satisfy the patentability requirements.

f. Disclosure of false information to patent office.

g. Application for the invention is not filed within twelve months from the date of convention
application.

h. Nondisclosure or wrongful disclosure of the biological source.

i. Invention is anticipated by traditional knowledge.

c) Process of Opposition

On receiving a notice of opposition, the controller notifies the patentee. He then constitutes an
Opposition board to deal with the opposition. The Opposition board decides the issues after
giving reasonable opportunity of hearing to both the parties. The Opposition board might
invalidate the patent, require amendments or maintain the status quo. If amendments are
required, they have to be made within the prescribed period in order to maintain the patent.

6. GRANT

If the application satisfies all the requirements of the patent act, the application is said to be in
order for grant. An application in order for grant shall be granted expeditiously. A granted
patent shall be published in the official gazette and shall be open for public inspection. Every
granted patent shall be given the filing date. The patent will be valid throughout India. A
granted patent gives the patent holder the exclusive right to make, use, sell, offer for sale and
import the product or use the process. However, the government can make use of the patent
for its own purposes or for distributing an invention relating to medicine to hospitals and

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dispensaries. Furthermore, any person can make use of the patent for experiment or education.

The Cost of Filing a Patent Application in India

1. Application for Grant of a Patent = Rs. 1000 for Natural person and Rs. 4000 for Legal
entity.

2. Application for Provisional/Complete Specification = No Fee

3. Application for Statement and Undertaking under section 8 = No Fee

4. Application for Declaration as to inventorship = No Fee

5. Request for Early Publication = Rs. 2500 for Natural person and Rs. 10,000 for Legal
entity.

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Figure 3: Patent Filing Procedure

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Is it possible to get a worldwide patent?
In the current state of the international patent system, no. There is no one patent that covers
every country in the world, or even a large number of the countries of the world. The patent
system is still a territorial system; in order to be protected in a particular country, you have to
be granted a patent in that country. Now, with the globalization of the world economy, the
world is moving towards a more international system: we have the Patent Cooperation Treaty,
which provides for the filing of a single international application that can become a multitude of
national applications, not actual patents but applications, and they are then examined in each
of the countries designated.

There are certain regional systems, like that of the European Patent Organization, under which
a single examination, if successful, results in a bundle of national patents. There has been some
discussion in Europe about having a single European patent one that would cover all the
countries of the European Union, although there are great difficulties with that, as you can
imagine. There is still no such thing as a single world patent, nor are there any plans for one,
because there are a great many difficulties with that too, but discussions are going on to find
ways of bringing down the cost of obtaining patent protection worldwide. Among other things
there is the cost of all the examinations of the same invention that have to be conducted in
different countries under present arrangements, the cost of translation and the cost of
maintaining a patent, as to keep a patent in force one generally has to pay an annual fee, which
can be quite substantial.

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