Module 5-part.1

PATENTS ACT,1970
Module:5-Part 1
Presented By:
Deepak S Gaywala
Faculty Member, JKPIM

DGJKPIMMBAIISEMIIIBELPPT 1

Topics:
1.Introduction.
2.Patentable Inventions.
3.Application for Patents.
4.Procedure, Renewal of lapsed Patent.
5. Surrender and Revocation of Patent.
6. Infringement of Patents and Remedies.


1.Introduction:
What is PATENT?????
 A ‘Patent’ is a grant from the government
which confers on the ‘grantee’ for a limited
time period , the exclusive right of making,
selling and using the invention in respect of
which patent has been granted and also of
authorizing others to do so.


Kinds of PATENTS??
 Utility Patent:
Utility patents, the most common type, are
granted to new machines, chemicals, and
processes.
 Design Patent:

Design patents are granted to protect the unique
appearance or design of manufactured objects,
such as the surface ornamentation or overall
design of the object.


Cont(d)
 Plant Patent:
Plant patents are granted for the invention
of new and distinct plant varieties,
including hybrids.


2.An Invention to be Patentable,
must satisfy the following three
conditions:-
 It is novel ie. it is different from other similar
inventions in one or more of its parts.

 It is useful to the society.

 It is non-obvious to a person possessed of
average skill in the art. An invention is non
obvious if someone who is skilled in the field of
the invention would consider the invention an
unexpected or surprising development.

3.Procedure for grant of PATENT
1. Filing an application for a patent .
2. Examination of application.
3. Acceptance of the application and
advertisement of such acceptance in the
Official Gazette.
4. Opposition to grant of patent.
5. Grant and sealing of patents.


1.Filing of Application [sec 7]
 Every application for a
patent shall be for one
invention only and shall
be made in the
prescribed form and filed
in the patent office.
 Applicant should be the
true and first inventor.
 Every such application
shall be accompanied by
a provisional or a
complete specification.


2. Examination and Acceptance
of Applications sec[12 to 24]
Examiner make a report to Controller on the
following matters:
 whether the application and the
specification relating thereto are in
accordance with the requirements of this
Act.
 Whether there is any lawful ground of
objection to the grant of the Patent .
 Any other matter which may be
prescribed.


3.Advertisement of acceptance
of complete specification:
 The controller shall give notice thereof
to the applicant and shall advertise in the
Official Gazette the fact that the
specification has been accepted , and
thereupon the application and the
specification with the drawings filed in
pursuance thereof shall be open to
public inspection.


4.Opposition to Grant of Patent
sec[25]
 Applicant or the person under or through whom
he claims, wrongfully obtained the invention .
 Invention was publicly known or publicly used in
India before the priority date of the claim.
 Where the claim made by an inventor is no more
than an individual design, not an invention.
 If the language used by the patentee is obscure
and ambiguous, no patent can be granted.
 That the complete specification does not
sufficiently and clearly describe the invention .


5.Grant and Sealing of Patents
sec[43]
 The application has not
been opposed under
sec 25 and the time for
the filing of the
opposition has expired.

 The application has
been opposed and the
opposition has been
finally decided in favour
of the applicant; or

 The application has not
been refused by the
Controller by the virtue
of any power vested in
him by this Act.

Grant of Patent of Addition
1.What is patent of addition?
A patent of addition is a patent for
improvement in or modification of the
main invention described or disclosed in
the complete satisfaction.
A patent of addition can be only in relation to
a main invention.


2.When a patent of addition is granted?
Where an applicant has applied for a patent
for invention or is patentee in respect
thereof, and he makes an application for a
patent in respect of any improvement in or
modification of the main invention, the
controller may grant the patent for the
improvement or modification of main
invention as a patent of addition.


3. What should be the date filing application
for the addition to main patent?
No patent of addition shall be granted
unless the date of filing of the application
was the same as or later than date of filing
of the application in respect of the main
invention.


4. What should be the period of patent of addition:
A patent of addition shall be granted for a term
equal to that of patent for the main invention, or
so much thereof as has not expired.
If the patent for main invention is revoked, the
Court or the Controller, as the case may be, on
request made to him by the patentee, may order
that patent of addition shall become an
independent patent for the remainder of the term
for the patent for the main invention. Thereupon,
the patent of addition shall continue in force as
an independent patent.


5. Renewal fee for patent of addition:
No renewal fees shall be payable in respect
of patent of addition. However, if any such
patent becomes an independent patent,
the same fees shall thereafter be payable,
upon the same dates, as if the patent had
been originally granted as an independent
patent.


6. Validity of patents of addition: Cannot be
refused for any ground such as invention
claimed in complete specification does not
involve any inventive step or that the
invention ought to have been the subject
of an independent patent.


4. Procedure for renewal/restoration of
lapsed Patents
4.1: Where a patent has ceased to have effect by
reason of failure to pay any renewal fee at the
expiration of second year from the date of patent
or of any succeeding year, or within such period
as may be allowed, the patentee or his legal
representative, with the leave of the controller
may, within 18 months from the date on which
the patent ceased to have effect, make an
application in the prescribed form for the
restoration of the patent.


4.2: An application for restoration shall
contain a statement, verified fully setting
out the circumstances which led to failure
to pay the prescribed fee. The Controller
may require from the applicant such
further evidence as he may think
necessary.


4.3: If the Controller is satisfied that a prima
facie case for the restoration of patent has
not been made out, he shall intimate the
applicant accordingly and unless within
one month from the date of such
intimation, the applicant requests to be
heard in the matter, the Controller shall
refuse the application.


4.4: If after hearing the applicant, the Controller is
prima facie satisfied that the failure to pay
renewal fee was unintentional and that there has
been no delay in making of the application, the
Controller shall publish the application.
Within two months from the date of
advertisement, any person interested may give
notice to the Controller of opposition thereto in
the prescribed form on either or both of the
following grounds:


1.that the failure to pay the renewal fee was
not unintentional, or
2. that there has been undue delay in the
making of the application.
If the notice of opposition is given, the
Controller shall notify the applicant and
shall give to him and the opponent an
opportunity to be heard before he
decides the case.


If no notice of opposition is given, or if in the case
of opposition, the decision is in the favour of the
applicant, then upon payment by the applicant of
any unpaid renewal fee and such additional fee
as specified in the First Schedule within one
month from the date of order of the Controller
allowing application for restoration, the
Controller shall restore the patent and any
patent of addition specified in the application
which has ceased to have effect.


The Controller may require that an entry shall be
made in the register of any document. The
Controller shall publish his decision.
4.5: Rights of patentees on restoration of leased
patents:
Subject to protection or compensation of persons
availing patented invention under contract from
the date patent ceased to have effect and the
date of the advertisement of the application for
the restoration of the patent.


5.Surrender and Revocation of
Patents
5.1: Surrender of Patents:
1. At any time by giving notice in the
prescribed form to the Controller, the
patentee may offer to surrender his patent.
Where such an offer is made, the
Controller shall publish the notice of an
offer and shall notify every person having
an interest in the patent.


2. Any person interested may, within three months from the
date of such application give notice of opposition to the
surrender in the prescribed form.

3. Where any such notice is given, the Controller shall
notify the patentee. If the controller is satisfied, after
hearing the patentee and any opponent and if the
Controller accepts the patentee’s offer to surrender the
patent, he may direct the patentee to return the patent
and on receipt of such patent, the Controller shall revoke
it and publish the revocation of the patent.


5.2: Revocation of Patents:
On petition, of any person interested, or of
the Central Government by the appellate
board or on counter claim in a suit for
infringement of the patent by the High
Court, the patent may be revoked on the
following grounds:


1. Invention earlier claimed.
2. Patentee not entitled to apply.
3. Patent wrongfully obtained.
4. Subject claim not an invention.
5. Claims not new.
6. Invention is obvious and not an inventive
step.
7. Invention not useful.


8. Invention not sufficiently and fairly
described.
9. Claim not sufficiently and clearly defined.
10. False suggestion.
11. Claim not patentable.
12. Invention secretly used before priority
date of claim.
13. Failure to disclose information.

14. Contravened secrecy.
15. Amendment obtained by fraud.
16. Wrong mentions.
17. Invention was anticipated.
18. Mischievous to State or prejudicial to public.
19. Requirements of public not satisfied.
20. Patent has expired.
21. Patent relating to atomic energy.


6.Remedies for Infringement of
Patents
 Reliefs in suit for infringement.
 Right of licensee under sec84 to take
proceedings against infringements.
 Jurisdiction of Court :No suit for a
declaration under sec 105 for
infringement of a patent shall be instituted
in any court inferior to a district court .


Cont(d)
 Power of Courts to grant relief in
cases of groundless threats of
infringement proceedings:
Where a person threatens any other person by
communication oral or in writing with
proceedings for infringement of a patent ,any
person aggrieved thereby may bring a suit
against him .


7. Miscellaneous:Penalties sec[118-124]

 Falsification of entries in
register etc.-
imprisonment upto 2
years or fine or both.
 Unauthorized claim of
Patent Rights-fine upto
Rs.500.
 In case of offences by
companies.
 Refusal or failure to
supply information to
Central Govt. or
controller-imprisonment
upto 6 month or fine or
both. DGJKPIMMBAIISEMIIIBELPPT 34

PATENTS ACT,1970
Module:5-Part 1


 Assignment:
Figures in the bracket indicate the marks.
Q.1. What are patentable Inventions and
Non-patentable inventions? (10)
Q.2. What is meant by patent? Explain the
procedure to be followed for grant of
patent? (10)


Q.3. What is meant by patent? When is
patent said to have been infringed? What
are the remedies available in case of
infringement of patent? (10)
Q.4. Explain the following:
1. Agreement of Patent (4)
Q.5. Distinguish the following:
Patent and Copyright (4)

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