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Sdm Law College

DEPARTMENT OF POST GRADUATE STUDIES IN LAW


MANGALORE UNIVERSITY

ASSIGNMENT SUBMISSION
Branch

Subject

Title

BUSINESS AND TRADE LAW

INTELLECTUAL PROPERTY RIGHTS

Submitted To:

PROCEDURE TO OBTAIN A PATENT


Dr. B.K. RAVINDRA M.A, LL.M, PhD,
Post Graduate Department in Law,
SDM Law College Mangalore.
Mangalore University.

Submitted By:

KOUSHALYA .ANAND.PATTAN
LL.M First year,
1st semester.
SDM Law College, Mangalore.

Date of submission:

28 -11-2011

A. IntroductionA
The term patent usually refers to an exclusive right granted to anyone who
invents any new, useful, and non-obvious process, machine, article of
manufacture, or composition of matter, or any new and useful improvement
A Dr. G.B. Reddys intellectual property rights and the law p. Narayan IPR

thereof, and claims that right in a formal patent application. The additional
qualification utility patent is used in the United States to distinguish it from
other types of patents (e.g. design patents) but should not be confused with
utility models granted by other countries. Examples of particular species of
patents for inventions include biological patents, business method patents,
chemical patents and software patents.

Procedure for Acquisition of Patents

Application for patent


Publication and Examination of
Application

Opposition proceedings to Grant


of patent
Granting of Patent

Meaning of patent
The word patent originates from the Latin patere, which means "to lay open"
(i.e., to make available for public inspection), and more directly as a
shortened version of the term letters patent, which originally denoted an
open for public reading royal decree granting exclusive rights to a person.

Procedure to obtain a patentB


B http//www.airwebworld.com www.wto.org.com
www.patentoffice.com

Obtaining a patent
A patent application is a request pending at a patent office for the grant of
a patent for the invention described and claimed by that application. An
application consists of a description of the invention (the patent
specification), together with official forms and correspondence relating to the
application. The term patent application is also used to refer to the process
of applying for a patent, or to the patent specification itself (i.e. the content
of the document filed with a view to initiating the process of applying for a
patent).

In order to obtain the grant of a patent, a person, either legal or natural,


must file an application at a patent office with jurisdiction to grant a patent in
the geographic area over which coverage is required. This will often be a
national patent office but could be a regional body, such as the European
Patent Office. Once the patent specification complies with the laws of the
office concerned, a patent may be granted for the invention described and
claimed by the specification.
The process of "negotiating" or "arguing" with a patent office for the grant of
a patent, and interaction with a patent office with regard to a patent after its
grant, is known as patent prosecution. Patent prosecution is distinct from
patent litigation which relates to legal proceedings for infringement of a
patent after it is granted.

Cost to obtain a patentC

What are the requirements for obtaining a patent?


D

The basic requirement to confirm whether it is patentable the Invention must


be a new product or process involving inventive step and capable of
industrial application. Not all inventions are patentable. For an invention to
be patentable, it must be new, useful and non-obvious. Invention means a
new product or process involving inventive step and capable of industrial
C www.google.com images

D http://www.ipab.tn.nic.in/Dr. M.K. Bhandari Law Relating To Intellectual property Rights.

application. Inventive step is defined as a feature of an invention that


involves technical advance as compared to the existing knowledge or having
economic significance or both and that makes the invention not obvious to
the person skilled in the art. The national laws of a number of countries
prescribe limitations on the patentability of inventions. As for example, the
Indian law declares that Inventions which are frivolous or which claim
anything obviously contrary to well established natural laws as not
patentable. Inventions, the commercial exploitation of which could be
contrary to public order or morality or which cause serious prejudice to
human, animal or plant life or health or to the environment are also declared
as non-patentable. Similarly there are several other specific categories of
inventions, which are declared as non-patentable in India. Various steps
discussed hereunder:

B.

Filing of Application (Sections 6-11)

The process for claiming patent begins with the filing of application under
section 6. Following persons either alone or jointly can file the application:

(i) Any person claiming to be the true and first inventor of the invention;
(ii)
Any assignee of such invention;
(iii) The legal representative of any deceased person who could be either
the
First true inventor or the assignee;
(iv) An application under sub-section (1) may be made by any of the
persons
shall be made in the prescribed form
and filed in the patent office.
Every such application should be made in the prescribed form and filed in
the patent office.
1. Form of ApplicationE
Every application for a patent shall be for one invention only. It
means that two inventions cannot be clubbed together and separate
application for each invention is required to be made in prescribed form
before controller of patent.

E P. Narayanan, Patent Law 3 (Eastern Books Agency, Kolkata 3rd edn., 1998).See Patents Act, 1970, s. 89 (a).

Section 7(1) provides that only one application can be made


for one invention and it has to be made in the prescribed form (available in
the patent office) and filed in the patent office.
Section 7(2) provides that where an application is made by
virtue of an assignment of the right to apply for a patent for the invention,
there shall be furnished with the application and within such period as may
be prescribed after the filing of the application, the proof of the right to
make the application, i.e., some document showing that assignment by the
true and first inventor has actually been made in favour of the applicant.
Section 7(3) lays down that every application that every
application under this section shall state that the applicant is in possession
of the invention and shall name the owner claiming to be the true and first
inventor and where the person so claiming to be true and first inventor is
not the applicant believes the person so named to be the true and first
inventor.
Section 7(4) provides that an application made by a citizen of India is to
be accompanied with a provisional or complete specification. It also
provides that where an application is made by a foreign national of a
convention country, i.e. a country offering the reciprocal right to an Indian
citizen to apply for a patent in that country, the patent application is to be
accompanied with the complete specification and not provisional
specification.

2). International Patent Application


Where an international application is filed under patent cooperation treaty (PCT) for a patent in any member country designating
India, shall be deemed to be an application under the Indian Act, provided
a corresponding application has also been filed before the controller in
India. The filing date of such an application shall be deemed as
international filing date accorded under the PCT. This will be based on
principle of reciprocity and national treatment.

3). Special provision For Foreign Application


Section 8 provides that foreign applicants shall furnish
information setting out the name of the country where the application is
being pursued, the serial number and date of filing of the application and
such other particulars as may be prescribed. A foreign applicant is also
required to give an undertaking that up to the date of acceptance of the
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complete specification by the controller he would keep the controller


informed in writing of the details and developments in any patent
application filed outside India.

4). Application by Indians in Other Countries


By the patents (Amendment) Act, 2005 no person who is
resident in India shall, except under the authority of a written permit
sought in the manner prescribed and granted by or on behalf of the
controller, make or cause to be made any application outside India for the
grant of a patent for an invention unless:
a) An application for a patent for the same invention has been made
in India, not less than six weeks before the application outside
India; and
b) Either no direction has been given under sub-section (1) of
section 35 in relation to the application in India, or all such
directions have been revoked.

Withdrawal of Application._ The applicant may, at any time after


filing the application, but before grant of patent, withdraw the application
by making a request in the prescribed manner.
The transitional provision of the Amendment requires to treat every
application for the grant of exclusive marketing rights filed before the 1st
day of January, 2005, in respect of a claim for a patent covered under
sub-section (2) of section 5 of the principal Act. Such application
shall be deemed to be treated as a request for examination for grant of
patent.

5). Filing of provisional and completed specification

A specification is an accurate description of the patent stating how


the invention can be carried out by the method best known to the
applicant. The specification ends with a claim or claims defining the scope
of the invention for which protection is claimed.
Every application must be accompanied by a provisional or a
complete specification. It is possible to file the application with provisional
specifications. A provisional specification furnishes the initial description of
an invention when the application is filed and a complete specification
furnishes complete details of an invention. A description of the invention is
F Dr. M.K. Bhandari Law Relating to Intellectual property Rights
7

called the specification. The provisional specification contains only a general


description of the invention; its filed of application and anticipated results.
The complete specification consists of the full description of the invention will
all the claims over which the applicant seeks monopoly right. But it is
necessary to file the complete specifications within twelve months of filing
the original patent application. The application is deemed to be abandoned if
this condition is not met. The twelve months limit can be extended to 15
months if an application is made to the Controller with such request and the
prescribed fee is paid.
The inventor is entitled to apply for a separate patent in respect of such
developments/additions. In case of a convention application the patent
application must be accompanied with complete specifications only. The
claim/claims of a complete specification relate to a single invention, or to a
group of inventions, which form a single inventive concept e.g. in an
instrument there may be 8 or 10 different inventions used. All these could
be separately patented; or they can be patented together as a group; if they
form an integrated instrument.
The specification must contain the following:G
Title, sufficiently indicating the subject-matter;
Relevant drawings;
If required a model of sample of anything illustrating the invention
should be furnished before the acceptance of the application;
Full and particular description of the invention;

G http://www.ipab.tn.nic.in/B.L. Wadera, Law relating to patents, trademarks, copy right, designs &
geographical indications

Details of its operation or use and the method by which it is to be


performed;
Disclosure of the best method of performing the invention;
Claims defining the scope of the invention substantiated by the
disclosure;
Abstract providing technical information on the invention;
Declaration as to the inventorship of the invention.
If an invention is an improvement in or modification of another
invention, for which the patent has been obtained or has been applied for,
the Controller may grant the patent for modification/improvement, as a
patent of addition; however the patentee for both the original patent and the
patent of addition has to be the same. Each claim of a complete specification
has a priority date. In a simple case, where a complete specification is filed in
pursuance of a single application with a provisional specification, the priority
date of a claim is the date of the filing of the application. This is true if the
claim is fairly based on the matter disclosed in the specification. However,
in some cases, the priority date may be different than the date of filing.

6). Claim of priority Date


The priority date is important in claiming the novelty aspect of
patent. It is the date on which patentee claims his invention. Since a
provisional specification is generally filed much before the filing of complete
specification, the priority date is the date of filing of the provisional
specification provided the claims contained therein are fairly based on the
description of the invention as given in the provisional specification. The
novelty of an invention is tested with reference to the existing state of
knowledge on such priority date. The invention qualifies the test of novelty
and non-obviousness.

7). Amendment of specification


A complete specification once filed is not absolute. It can be
amended subject to certain conditions at the following three stages:
(i).

Before acceptance;

(ii).

After acceptance but before the sealing of the patent; and

(iii).

After the sealing of patent.

The controller may, upon application by a patentee, allow the complete


specification to be amended subject to certain conditions. The application for
amendment should state the nature of the proposed amendment.

Examination of a patentH

H www.patentofficeapplication.com
10

C.publication and examination of applicationI


Patent applications are generally published 18 months after
the earliest priority date of the application. Prior to that publication the
application is confidential to the patent office. After publication, depending
upon local rules, certain parts of the application file may remain confidential,
but it is common for all communications between an Applicant (or his agent)
and the patent office to be publicly available.
The publication of a patent application marks the date at which
it is publicly available and therefore at which it forms full prior art for other
patent applications worldwide.
The examination or search of the specification is done by the examiners in
the patent office on a reference by the controller, to determine its
compliance, procedurally as well as substantively, with the provisions of the
Act and the rules framed there under. For the sake of convenience, the
examination of Application may be divided into two types:
(i).

Formal examination

Which determines whether the application complies


with the prescribed form, fee, particulars to be furnished and documents
to be submitted; and
(ii).

Substantive Examination

Which determines whether the matter is an


invention and whether the specification requirements under the Act are
complied with. This includes a search to determine prior use, prior
claims, prior publication and prior public working. Prior use means,
use of the invention described in the provisional specification or
published in India or elsewhere before filing that specification.
I W.R. Cornish, Intellectual Property: Patents, Copy right, Trademarks and Allied RightsP. Narayanan,
Intellectual Property Law

11

An examination will be carried out by an examiner of the JPO,


who will decide whether or not the claimed invention should be patented.
The examiner firstly checks whether the application fulfils requirements
prescribed by law, i.e., whether or not there are any reasons for refusal.
These requirements include the following:
i. Whether the claimed invention is based on a technical idea which
utilizes a law of nature,
ii. Whether it has any industrial applicability,
iii. Whether the technical idea existed before the filing of the current
application,
iv. Whether the claimed invention could have been easily invented by a
person skilled in the art,
v. Whether the application is the first to file,
vi.Whether the claimed invention is liable to contravene public order and
morality, and
vii.

Whether the descriptions in the specification conform exactly with

the requirements for patentability


Thereafter the examiner to whom the application is referred by the controller
should examine the test of definition of invention i.e. novelty, and utility by
the national standards. Then the test of inventiveness or non-obviousness is
followed.

Effect of examination and investigation and validity of patent :Section 13(4) of the Act clearly states that the examination
and investigation mentioned above does not warrant the validity of any
patent. The Delhi High Court has recently explained the presumption of
validity as under in

M/s. Standpack Pvt. Ltd. V. M/s. Oswal Trading Co. Ltd.,J


J AIR 2000 Del 23
12

Section 13(4) of the patents Act provide that the examination and
investigation required under section 12 and 13 shall not be deemed in any
way to warrant the validity of any patent, and no liability shall be incurred by
the central government or any officer thereof by reason of, or in connection
with, any such examination or investigation or any report or other proceeding
consequent thereon. Thus, grant of patent in any manner does not guarantee
the validity of the patent.
In this connection reference may be made to a decision of the Madras High
Court in

V. Manicka Thevar V. M/s. Star Plough Works,K


Where in it was held that if from the objection raised by the
defendant it is clear that a serious controversy exists as to whether or
not the invention involves any new inventive skill having regard to
what was known or used prior to the date of the patent; courts would
not grant an injunction restraining the defendant from pursuing his
normal business activity. It was also held that an interim injunction
would not be granted if the defendant disputes the validity of the
grant.

D. Opposition to Grant of patent (section 25)


In the Amendment Act of 2005 provision for both pre-grant and postgrant opposition has been made. LThis provision will provide ample
opportunity for local generic companies, as well as other interested parties,
to challenge and prevent and prevent the issuing of trivial patents.
After the grant of patent but before the expiry of a period of one year
from the date of publication of grant of patent, any person interested may
give notice of opposition to the controller. After receipt of notice the
controller will constitute opposition Board. On the basis of report of Board,
the controller may revoke the patent. Appeal against decision of controller
can be filed before Appellate Board.
The opposition can be notified on any of the following groundsi. Wrongful obtaining of the invention by the applicant or any person
claiming through him;
ii. Publication of the invention before the date of claim;

K AIR 1965 Madras. 327 at 328.


L Section 25
13

iii. The invention and claim of the complete specification is publicly


known or publicly used in India before the priority date of that
claim;
iv. Already a similar complete specification was already claimed with
priority date earlier than that of the applicants claim;
v. The claimed invention does not involve is obvious and clearly does
not invoke any inventive step;
vi.The subject matter of any claim of the complete specification is not
an invention under the Act or it is not patentable under the Act.
vii.
The complete specification does not sufficiently and clearly
describe the invention or method by which it is to be performed;
viii.
The applicant has failed to disclose to the controller the
information required by section 8 i.e. information and undertaking
regarding foreign applications or has furnished the information
false to his knowledge; and
ix.In the case of a convention application, the application was not
made within 12 months from the date of the first application for
protection for the invention made in convention country by the
applicant or a person from whom he derives title, but on no other
ground.
Therefore, a person who wants to oppose the grant of patent may oppose on
any of the above grounds, by giving a notice of such opposition to the
controller. M

e. Grant and sealing of patent (section 43& 47)N


Where the application is accepted, either without any opposition or has
been accepted after the opposition proceedings have concluded with a
decision in favour of the applicant the patent shall, on request being made in
a prescribed form, be granted to the applicant and the patent shall be sealed
with the seal of the patent office and the date on which the patent is sealed
shall be entered in the Register maintained in the patent office. The decision
of the controller, if it is against the applicant, can be appealed against before
the Appellate Board.
The grant of patent shall be subject to certain conditions
under section 47. They are as follows:
a) Any machine, apparatus or other article in respect of which the
patent is granted or any article made by using a process in
respect of which the patent is granted, may be imported or made
M Under section 25 of the Act.

N Patents Act, 1970,


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by or on behalf of the government for the purpose merely of its


own use;
b) Any process in respect of which the patent is granted may be used
by or on behalf of the government for the purpose merely of its
own use;
c) Any machine apparatus or other article in respect of which the
patent is granted or any article made by the use of the process in
respect of which the patent is granted, may be made or used, and
any process in respect of which the patent is granted may be
used, by any person, for the purpose merely of experiment or
research including the imparting of instructions to pupil; and
d) In the case of patent in respect of any medicine or drug, the
medicine or drug may be imported by the government for the
purpose merely of its own use or for distribution in any
dispensary, hospital or other medical institution which the central
government may, having to the public service that such
dispensary, hospital or medical institution renders, specify in this
behalf by notification in the Official Gazette.

f. date of patent (section 45)O


Subject to the other provisions contained in this Act, every patent shall be
dated as of the date on which the application for patent was filed. The date
of every patent shall be entered in the register. Notwithstanding anything
contained in this section, no suit or other proceeding shall be commenced or
prosecuted in respect of an infringement committed before the date of
advertisement of the acceptance of the complete specification.

G. term of patent (section 53)P


Prior to patent Amendment Act, 2002, the term of patent in India was
ranging between 5 and 14 years. (from date of sealing) depending upon the
categories of invention. But as required under section 27 of TRIPSs
agreement, a uniform term of 20 years has been provided. This period of 20
years shall be reckoned from date of filing of application for patent. But to
keep the patent alive and effective a periodic renewal fee is also required to
be deposited, failing which the patent shall cease to have effect, and shall
not eligible to any protection.
Procedure to obtain a patent in Japan patent office Q

O Section 45
P Sec.53Dr. M.K. Bhandari law relating to IPR

Q www.airwebworld.com
15

H. patents of Addition (section 54)


Patent of addition is a patent granted in respect to any improvement
in or modification of a pervious invention called the main invention for which
a patent has been granted or an application has been made. R The right
conferred by a patent of addition may not proceed unless it is in respect of
one main application or patent.
After the Amendment of the patents Act in 2005, a patent of addition will
not be granted before the grant of the patent for the main invention. S
No renewal fee is payable in respect of a patent of addition as long as the
main patent remains in force. However if patent of addition becomes an
independent patent, the same fee shall be payable upon the same dates as if
the patent has been originally granted as an independent patent.
We have discussed the detailed procedure for grant of patent. Amendments
made in 2002 and 2005 have tried to simplify the procedure and curtail the
R Sec. 54(1)
S Sec. 54(2)
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time limit at various stages of application. But still time span in India is
T
longer than time taken in USA.

Conclusion
The justification for the granting patent right is discussed in detail in Chiron
corporation

v. Organon Teknika Ltd. (No.10). UIt has been pointed out that it

is generally accepted that the opportunity of acquiring monopoly rights in an


invention stimulates technical progress in at least four ways: First, it encourages
research and invention; secondly, it induces an inventor to disclose his discoveries
instead of keeping them a secret; thirdly, it offers a reward for the expense of
developing inventions to the state at which they are commercially practical and
fourthly, it provides an inducement to invest capital in new lines o production which
might not appear profitable if many competing producers embarked on them
simultaneously
Encouragement, inducement and reward are the main factors underlying the
patent system. The public interest although apparently jeopardized by the grant of
monopoly, is secured by increased industrial activity, developing new technologies
and disclosure of new and useful invention. Furthermore, patent law contains a
number of safeguards, such as compulsory licensing and crown use, to curb any
significant abuse of the patent monopoly.
Thus the presence of a strong and effective patent system may bring
numerous benefits such as the dissemination of information and providing an
incentive to invest in the development of new products and process which will
eventually fall into the public domain.
T In India a period of 4-5 years is taken in grant of patent, whereas, in USA the patent is granted
within 2-3 years time limit.
U (1995) FSR 325 www.airwebworld.com
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A major change in Indian patent Act has been the extension of term of
patent to 20 years for all categories of inventions. The patent Act with these
major changes will now encourage more filing of patent applications.

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