PATENTING

SYSTEM
IN
INDIA

By,
T.SAIRAM SINGH
Y.SRUJANA
V.BHUVANESHWARI
T.SAKETRAM
K.SACHIN

1
 WHAT IS PATENT?

Patent is an exclusive right

granted by the Authority to the
applicant of an invention for a
limited period of time in lieu of full
disclosure of his invention.

2
 WHAT IS AN INVENTION?

“Invention” means any

(i) new product or process,

(ii)involving an inventive step and

(iii)capable of industrial application.

3
 TATA'S SEEK PATENT SECURITY FOR NANO
AGAINST COPYCATS
KALA VIJAYRAGHAVAN & LIJEE PHILIP, ET BUREAU MAR
16, 2009, 09.41AM IST
MUMBAI: Tata Motors has applied for
patent protection for over 37 inventions and
innovations linked to its high-profile
affordable car, Nano, in an aggressive
move to protect the brand against imitation
in the ultra-competitive car industry. It is
also close to filing intellectual property
rights (IPRs) claims for Nano in overseas
markets, company officials said.
The company has used a number of new
concepts and ideas to develop this vehicle
and patents will help in protecting some of
its innovative ideas, according to officials
close to the development
CRITERIA FOR PATENTING:

a) Novelty

b) Inventive step

c) Capable of industrial application

5
 NOVELTY
The invention should not have been published in India
or elsewhere.

The invention should not have been in prior public

knowledge or public use in India.

Exception: display in public exhibition or paper

presented before a learned society but within twelve
months, patent application should be filed.

6
 INVENTIVE STEP

“Inventive step” means a feature of an invention that

involves technical advancement as compared to the
existing knowledge or having economic significance
or both and that makes the invention not obvious to
a person skilled in the art.

The question, „is there any inventive step?‟ arises

only if there is novelty.

7
 CAPABLE OF INDUSTRIAL
APPLICATION

Capable of industrial application, in

relation to an invention means that the
invention is capable of being made or
used in an industry.

8
NOT PATENTABLE IN INDIA
The patentability requirement in India, is, the invention should be
novel, inventive and capable of industrial applicable.
However, one can not get patent for all the inventions even though
which meets all the above criteria, and section (3) and (4) under
patent act has long list of area which are not patentable in India.
This section has been obstacle for not less than 50,000 inventions
which are eligible for registering patent

According to Section 3 of the (Indian) Patents Act, 1970 The

following are not patentable in India:-
An invention, that is frivolous or that claims anything obviously
contrary to well established natural laws;
CONTD..
An invention, the primary or intended use of which would be
contrary to law or morality or injurious to public health;
The mere discovery of a scientific principle or the formulation of
an abstract theory.
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.
A substance obtained by a mere admixture resulting only in the
aggregation of the properties of the components thereof or a
process for producing such substance.
The mere arrangement or rearrangement or duplication of known
devices, each functioning independently of one another in a known
way.
CONTD…
A method of agriculture or horticulture.
Inventions relating to atomic energy within sub-section (1)
of Section 20 of the Atomic Energy Act, 1962 .
Any process for the
medicinal, surgical, curative, prophylactic or other
treatment of human beings or animals.
Plants and animals in whole or any part thereof other than
micro-organisms but including seeds, varieties and species
and essentially biological processes for production or
propagation of plants and animals
Mathematical or business method or a computer program
per se or algorithms.
CONTD..

Literary, dramatic, musical or artistic

works, cinematographic works, television productions and
any other aesthetic creations.
Mere scheme or rule or method of performing mental act or
playing game.
Presentation of information.
Topography of integrated circuits.
An invention which in effect, is traditional knowledge or is
based on the properties of traditional knowledge.
WHO CAN APPLY FOR A PATENT?

An application for a patent may be submitted by:

1. Any person claiming to be the true and first
inventor of the invention.
2.Any person being the assignee of the person
claiming to be the true and first inventor in respect of
the right to make such an application.
3.By the legal representative of any deceased
person who immediately before his death was
entitled to make such an application.

13
WHERE TO APPLY
For applicants resident in India, appropriate
office is determined according to any of the
following:
place of residence/business/origin of
invention.
For applicants not resident in India or with
no place of business in India, appropriate
office would be according to the address for
service given in the application form.
PATENT OFFICE
Head Office – Kolkata
Branch offices at
Mumbai
Delhi
Chennai
The Patent Office comes under the Ministry of
Commerce & Industry.
Each of the branch offices have their own fixed territory and
accept application forms from areas lying within its geographical
limits.
FEES:
1)The fees payable under section 142 in respect of the grant
of patents and applications therefore, and in respect of
other matters for which fees are required to be payable
under the act shall be as specified in the first schedule.

2)The amount of the fees varies from 1000-4000.

3) The fees, payable under the act may either be paid in cash
or may be sent by bank draft or cheque payable to the
controller of patents.
 STAGES FROM
FILING TO GRANT
OF A PATENT
 OBTAINING A PATENT

File an application for patent

• With one of the patent offices based on territorial jurisdiction

of the place of office or residence of the applicant /agent

• Pay the required fee

Information concerning application form and details of fee

available at www.ipindia.nic.in

Guidelines for applicants also available on this website

 FORMALITY CHECK
An Examiner checks the formal requirements before
accepting the application and the fee – this is done
immediately

Issue of application number and the cash receipt – this is

done the same day

In case of receipt of application by post, cash

receipt, application number is sent by post within 2-3 days
 PUBLICATION
Application is kept secret for a period of 18 months from the
date of filing.

In 19th month, the application is published in the official journal

– this journal is made available on the website weekly.

Applicant has an option to get his application published before

18 months also

In that case, application is published within one month of the

request
 REQUEST FOR EXAMINATION

Application is examined on request

Request for examination can be made either by the applicant or by a

third party.

A period of 48 months, from the date of filing, is available for

making request for examination
 EXAMINATION

Application is sent to an Examiner within 1 month from the

date of request for examination

Examiner undertakes examination w.r.t.

• whether the claimed invention is not prohibited for grant

of patent

• whether the invention meets the criteria of patentability

 ISSUE OF FER
A period of 1 to 3 months is available to Examiner to submit the
report to the Controller

1 month’s time available to Controller to assess the Examiner’s

report

First Examination Report (FER) containing list of the

objections is issued within 6 months from the date of filing of
request
 RESPONSE FROM THE
APPLICANT

12 months’ time, from the date of issue of FER, is available to

the applicant to meet the objections

If objections are met, grant of patent is approved by the

Controller – within a period of 1 month
 PRE-GRANT OPPOSITION

After publication, an opposition can be filed within a

period of 6 months

Opportunity of hearing the opponent is also available

 EXAMINATION OF PRE-GRANT
OPPOSITION

Opposition (documents) is sent to the applicant

A period of 3 months is allowed for receipt of response

 CONSIDERATION OF
PRE-GRANT OPPOSITION

After examining the opposition and the submissions made during

the hearing, Controller may

• Either reject the opposition and grant the patent

• Or accept the opposition and modify/reject the patent

application

This is to be done within a period of 1 month from the date of

completion of opposition proceedings
 GRANT OF A PATENT

A certificate of patent is issued within 7 days

Grant of patent is published in the official journal

For a term of 20 years from the Date of filing the

Patent Application
 STAGES - FILING TO GRANT OF
PATENT
FILING OF APPLICATION
PROVNL. / COMPLETE

PUBLICATION OF APPLICATION • PROMPTLY AFTER 18 MONTHS FROM F.D.

REQUEST FOR EXAMINATION • WITHIN 48 MONTHS FROM F.D.

EXAMINATION-ISSUE OF FER 3rd Party Representation

• ALL OBJECTIONS TO BE COMPLIED WITHIN 12

MONTHS
GRANT OF PATENT
OPPOSITION
• WITHIN 12 MONTHS
Decision of
Controller

Appeal

Appellate Board Revocation/Amendment

EXAMPLE:
 FEE SCHEDULE
On What payable Form Individual Legal
entity
Application for Patent 1 1000* 4000*
Request for extn.time 4 300 p.m. 1200
Request for publn 9 2500 p.m.
Request for examn. 18 2500 10000
Renewal Fees 10000
3rd to 6th year 500
7th to 10th year 1500 2000
11th to 15th year 3000 6000
16th to 20th year 5000 12000
20000
PATENT
INFRINGEMENT
Patent infringement is the commission of a
prohibited act with respect to a patented
invention without permission from the patent
holder.
TYPES OF PATENT
INFRINGEMENT
Direct Infringement : The third party has
willfully or intentionally stole the technology
from the inventor without his prior permission.
Indirect Infringement : It refers to the unfair
practice that does not give a clear indication
that the patent is bought and sold in the
market.
BASIC FEATURES OF
PATENT INFRINGEMENT

1. Objectives of infringement
2. Infringement behavior
3. Violation of legal rules
WHAT CONSEQUENCES CAN WE
EXPECT
FROM PATENT INFRINGEMENT?
HOW TO JUDGE PATENT
INFRINGEMENT?
A determination of patent infringement involves a two-step
process:

1. The claims are analyzed by studying all the relevant

patent documents;

2. The claims must “read on” the accused device or

process.

In a word, the claims are tested to see whether they

describe the accused infringement.
REMEDIES OF PATENT
INFRINGEMENT
Monetary Relief
Equitable Relief
Cost & Attorney‟s Fees
 CASES ON PATENTS:
APPLE VS SAMSUNG
PATENT WAR

Apple files first:

Apple Inc. sued Samsung for copying its

product ideas
38-page suit filed by Apple in the U.S. District
Court of Northern California states
Copied look, product design, Packaging
COPIED LOOK &
PRODUCT DESIGN
COPIED PACKAGING
Samsung’s turn:
Samsung, the world‟s largest maker of
smart phones, countersued Apple saying
that Apple infringes on several of its
patents having to do with wireless
communications technology and camera
phones.
VERDICT
Samsung Electronics flagship Galaxy
Smartphone looks very similar to Apples
iPhone
Jury has found Samsung guilty of infringing on
Apple‟s design patent
Come in favor of Apple in the U.S $1.049
Billion
Rejected all of Samsung‟s claims & Leading
devices may be banned in the U.S
NOVARTIS PATENT
PLEA
Novartis is the world‟s leading pharmaceutical
company filed patent application for its new
version of cancer drug(Glivec).
Indian law bans firms from extending patents
on their products by making slight changes to
a compound, a practice known as
"evergreening".
The court held that the patent application is
rejected on the grounds that :

Novartis has failed to meet stipulations under

sections 3(d) and 3(b) of the Indian Patent
Law.
Section 3(d) restricts patents for already
known drugs unless the new claims are
superior in terms of efficacy

Section 3(b) bars patents for products

that are against public interest and do
not demonstrate enhanced efficacy over
existing products.
FRIENDS RE…