Patents

Introduction

The objective and purpose of patent law is to encourage scientific research, new technology and industrial projects. Grant of exclusive rights to own, use or sell the method or the product patented for a limited period stimulates new invention of commercial utility.

The fundamental principle of Patents Act, 1970 is that the patent is granted for that invention which is new and useful. It must have the novelty and utility. It is essential for the validity of the patent that it must be the investor’s own discovery as opposed to mere verification of what was already known before the date of patent.

Patents Act, 1970 was made to protect Indian drugs, pharmaceuticals, chemical industries and Indian agriculture from foreign competition. In some cases only process can be patented but product cannot be patented i.e., in cases where only process is patentable, manufacture of that product by different process by another person is not an offence under the Patents Act, 1970.

Meaning of Patent

Patent means a patent granted under the Patents Act, 1970.

Patents is a grant from Government which confers on the grantee, for limited period of time, the exclusive privileges of making, selling and using the invention for which patent has been granted and also of authorizing others to do so.

A patent is a contract between the society as a whole and individual inventor. The inventor gets the exclusive rights to prevent others from making, using selling a patented invention for a fixed period of time, in return for the investors disclosing the details of invention to the public. In this way, inventor is rewarded for his/her endeavours and he is encouraged to disclose the benefits arising out of his/her invention. Patent rights are granted only to new inventions capable of industrial application. The document in the prescribed form duly signed by the concerned authorities and seal is called the patent. A patent right is a property which can be bought, sold, hired or licensed.

What can be patented?

Any “invention” may be patented.

“Invention” means new product or process involving an “inventing step” and “capable of industrial application”.

“Inventing Step” means a feature that makes the invention not obvious to a person skilled in that art.

“Capable of Industrial Application” in relation to invention means that the invention is capable of being made or used in the industry.

Thus, “Patentable Invention” is 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 in to the categories of inventions that are non-patentable under section 3 and 4 of the Patents Act, 1970.

What cannot be patented?

Anything, which is not an invention, cannot be patented.

Patents Act, 1970 provides that the following shall not be covered under the concept of invention:

1. If its use is contrary to law or morality.
2. Mere discovery.
3. Aggregation of properties by mere mixture of 2 or more things.
4. Re-arrangement or duplication.
5. A method of agriculture or horticulture.
6. Any process for the medical, surgical, diagnostic or other treatment of human beings or animals.
7. Plants and animals other than micro-organisms but including seeds, spices, and other biological processes.
8. Literary, dramatic, musical or artistic work or cinematographic films or any other aesthetic creation.
9. A mathematical or business method or computer programs.
10. Method of performing any mental act or method of playing any game.
11. A presentation of information.
12. Topography of integrated circuits.
13. Inventions based on traditional knowledge.
14. Inventions relating to atomic energy
15. Mere new form or new property or new use of an existing drugs, chemicals, or other substances, until and unless it results in enhancement in quality or efficacy.

Who can make an application for grant of Patent?

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 of the invention.
3. Legal representative of any deceased person who immediately before his death was entitled to make such an application.

Patent Search 

Patent search is done to verify the uniqueness of your invention. Patent can’t be similar or same to any other patent. Patent search can be done by yourself but you need to be skilled and attentive. A patent search typically deals with search, research, and data mining. It includes a search of the database of the intellectual property regulator of India to verify whether an already existing object or invention is either identical or similar to the applicant’s invention.

Importance of Patent search

• Checking validity of patent. 
• Helps to know about similar inventions done. 
• Helps in saving money and time. 
• Provides freedom to operate independently. 

How to search for Patents?

To make searching more comfortable, every patent is divided by it’s subject matter. Patent classification schemes have a tree-like structure, and all level of classification has a different reference code. Inventions are classified into technologies Example: – “Engineering” has been divided into classes like mechanical engineering and then into subclasses like machines or equipment. Patent classification is a hierarchical system that incorporates a patent according to the state of technology it falls into. It performs managing and searching patents that fall into the identical technical group or sub-group.

There are various patent classifications like the International Patent Classification, Cooperative Patent Classification (CPC), etc.

The 2 main group schemes used by patent offices globally are:

• The International Patent Classification includes about 70,000 different IPC codes. You can survey the class headings and do keyword searches on the WIPO website IPC page. We use this type of system as it’s more common.
• The Cooperative Patent Classification is an expansion of the IPC. It’s together controlled by the European Patent Office and the US Trademark and Patent Office.

Provisional Patent

A Provisional Patent application is an interim step on the road to a patent. It is effective because by filing an appropriate provisional patent application a person can market the invention without fear of losing his patent rights, procuring cash to proceed with development and further patent operations. One of the most important legal documents while applying for patent registration is provisional specification or complete specification. To increase the chances of obtaining patent registration, a provision specification can be filed along with a patent application if the applicant feels that the invention has reached a stage wherein it can be disclosed on paper, but has not attained the final stage.

The average time taken to file a provisional patent application is about 15 – 20 working days, subject to government processing time and client document submission.

Advantages of filing provisional patent

1. Legal Protection
2. Global patent protection
3. 20 years validity
4. Competitive edge
5. Creation of asset

Documents required

1. Form 1 ( Application for grant of patent)
2. Form 2 (Provisional Specifications)
3. Form 5 ( Declaration of Inventorship)
4.  Form 26 (Power of Attorney). If your patent is filed by a Patent Agent then this form is necessary.
5.  E-filing fees (Patent Statutory fee)
6. Form 3 (Corresponding foreign patent application statement and undertakings)
7.  Priority Document (This is used for convention applications if priority date is claimed).
8.  Illustrations/Drawings of the invention.

Patent Registration

For patent registration in India, applicant needs to follow the steps of registration carefully. 

The process of patent registration is as follows- 

1. Patent search- Before filing an application, applicant has to do thorough research about patent and its validity. 
2. Preparing an application- After searching about patent, the applicant needs to-
   1. Prepare an application in form 1. 
   2. Patent specifications in form 2. 
   3. A patent draft has to be submitted on basis of which registrar will grant patent rights. 
   4. Statement and undertaking under section 8 in form 3. 
   5. Declaration of inventorship in form 5. 
   6. Forms submitted by small enterprises and start ups in form 28.

These above documents must be filed along with application. 

3. Patent application publication- After filing patent application with Indian Patent Office, it will be published in official patent journal. This will be done generally after 18 months of filing of application and in case applicant wants it early then they can request in form 9. If patent is not published then the patent are under restrictions. 
4. Examination report- The patent officer will do thorough research of the patent application and will provide First Examiner report. After resolving all the objections, the patent will be granted.
5. Grant of Patent- After the Patent Officer acknowledges the completion of all objections raised, then the patent is granted.

Important points to be kept in mind- 

1. Fees is mentioned in First schedule of the act and additional of 10% of fees is there for physical application. 
2. The fees is to be paid to appropriate office via appropriate channels to the Controller of Patents. 
3. The fee relating to the document shall be accompanied with the document. 
4. In case of transfer of application the amount has to be paid by new applicant to the old one. 
5. Fees is non-refundable. There are few exceptions. 

Documents required

The following documents are required to get your patent registered:

1. Patent application in form-1
2. Proof of right to file the application of patent. This proof could either be attached at the end of application or along with it.
3. If complete specifications is not available, then provisional specifications.
4. In the case of provisional specifications, then complete specification in form-2 within 12 months.
5. Statement and undertaking under section-8 in form-3 (if applicable).
6. If patent application is filed by patent agent, then power of authority in form-26.
7. If the application is for biological material, then the applicant is required to get permission from the National Biodiversity Authority, before the grant of the patent.
8. The source of geographical origin should also be included in the case of biological material used in the innovation.
9. All the applications must bear the signature of the applicant/authorized person/Patent attorney.
10. The last page of the complete/provisional specification must be signed by the applicant/agent. Including the sign at the right bottom corner of the drawing sheets.

Types of patent applications in India

1. Ordinary application: This type of application is carried out when there are not any applications or references to any other application under process in the Indian Patent office. The priority date and filing date are the same for ordinary application.
2. Conventional application: If an inventor has already filed a patent in other country and now wishes to do the same, then this comes under conventional application. It is mandatory to file the application for Indian patent within 12 months of first filing it.
3. PCT International application: PCT International application lets you, file the patent application in multiple countries and you can file it in up to 142 countries. It could take between 30-31 months from the international filing date to enter and claim protection in each country.
4. PCT National phase application: You can file this application within 31 months from the international filing date.

Advantages of Patent Registration

1. It keeps the competitors at bay, as you have all the rights reserved to yourself.
2. Moreover, it increases your business revenues as it enables the patent holder to charge premium for the invention.
3. These patents are just like other forms of property. Hence, it is possible to license or sell them.
4. It makes it easier to raise capital for your business, if you are ready to sell or license the patent that you possess.
5. The credibility of the inventor will go up after the patent registration is done.
6. The selling of the idea outright will bring in much advantage to the inventor. It only brings royalty of 5% or less, but it is highly advantageous to people who have the idea but doesn’t have enough money to bring the invention to the market themselves.

Patent infringement

Patent infringement is done when someone uses patent without having any right or permission from its authorized user. It is done for selling the patented inventions. Infringement is considered as illegal. There are two types of infringement- Direct and Indirect. 

Action against infringement

Where the rights of patentee are violated, judicial intervention will happen. Patentee must file a suit against violator. Reliefs available are- Interim injunction, Damages on account of profits will be paid or Permanent injunction will be imposed. 

Enforcement of suit

The suit must be filed in District court or any court superior to it. In case of suit filed in District court, its revocation can be instituted in High court only. Further, section 104A provides for burden of proof in case of suits concerning infringement.

Suit can be enforced when- 

From the period of patent being sealed. During the decision making process suit for infringement cannot be filed. Damages sustained due to the infringement, i.e. between the date of publication of complete specification and the date of grant may be claimed in a different suit. A suit can be filed even if infringement is done after the expiry of the term of the patent. In a case where a patent is obtained wrongfully by a person and is granted to the true and first inventor, no suit for infringement can be enforced before the period of such grant to the true and first inventor.

Frequently Asked Questions (FAQs)

1. What is a patent search?

Ans. It is the search of the patent database to determine if there is any other patent application similar or identical to an invention that is to be patented.

2. What is a new invention within the meaning of the Indian Patents Act?

Ans. New inventions refer to any technology or pertains to a specific product or service which has not been anticipated by publication in any document or has been used in the country or elsewhere in the world before the date of filing of the application with complete specification i.e. the subject matter has not fallen in the public domain or that it doesn’t form a part of the state of the art.

3. What is a Provisional Patent?

Ans. A Provisional Patent application is an interim step on the road to a patent. It is effective because by filing an appropriate provisional patent application a person can market the invention without fear of losing his patent rights, procuring cash to proceed with development and further patent operations.

4. How to file a Provisional Patent Application?

Ans. A patent application can be filed with Indian Patent Office either with complete specification or with provisional specification along with fee as prescribed in schedule I. In case the application is filed with provisional specification, then one has to file complete specification within 12 months from the date of filing of the application.

5. What is the difference between Provisional and Non-Provisional Patent?

Ans. A provisional patent application is unlike a non-provisional application since it will never be examined, but is used to establish a priority date. The provisional application is designed to buy the inventor more time to decide if he wants to pursue a non-provisional patent application, which requires more work and is typically more expensive. Basically, a provisional patent application is a simple description of an idea along with any applicable drawings.
A non-provisional patent application requires a few more components than the provisional patent application. It requires a set of claims, a description of the invention, any applicable drawings of the invention, an abstract, a filing fee, and an oath or declaration.

6. Is it necessary to file a Provisional application?

Ans. An application filed with provisional specification is known as provisional application which is useful in establishing a priority date for your invention. Moreover, filing of a provisional application is useful as it gives sufficient time to the applicant to assess and evaluate the market potential of his invention before filing complete specification. However, it is not necessary to file an application with provisional specification and one can file application directly with complete specification.

7. What is a Provisional Specification?

Ans. Indian Patent Law follows first to file system. Provisional specification describes the nature of the invention to have the priority date of filing of the application in which the inventive idea has been disclosed. It must be followed by a complete specification describing the details of the invention along with a statement of claims within 12 months after filing of the provisional application. If the complete specification is not filed within the prescribed period, the application is treated as deemed to have been abandoned.