It describes the patent law in India and describes what comes and what does come under patent . In other words it defines what kind of inventions can be patented . In brief it contains the following topics: -What is intellectual property -Meaning of Patent -Legislative Framework Patents -Patent Law - Salient Features -Safeguards in the Patent Law -Definition of patentable invention -Inventions not patentable -Documenting invention -Steps for obtaining a patent in India -Rights of product patentee -Rights of process patentee -Renewal of patent -Infringement of patent -Patent Due Diligence

1. 1

2.  What is intellectual property
 Meaning of Patent
 Legislative Framework Patents
 Patent Law - Salient Features
 Safeguards in the Patent Law
 Definition of patentable invention
 Inventions not patentable
 Documenting invention
 Steps for obtaining a patent in India
 Rights of product patentee
 Rights of process patentee
 Renewal of patent
 Infringement of patent
 Patent Due Diligence

3. Intellectual Property refers to creation of mind
i.e. inventions, industrial designs for
article, literary & artistic work, symbols etc. used
in commerce

4. A Patent is an intellectual property right relating to
inventions and
is the grant of exclusive right,
for limited period,
provided by the Government to the
patentee, in exchange of full disclosure of his
invention, for excluding others,
from making, using, selling, importing
the patented product or process producing that
product for those purposes.

5. The Patents Act, 1970 (as amended in 2005)
The Patents Rules, 2003 (as amended in 2006)
The Patent Act was amended in line with
international treaty that is Trade Related
Intellectual Property Rights ( TRIPS )

6.  Both product and process patent provided
 Term of patent 20 years
 Examination on request
 Both pre-grant and post-grant opposition
 Publication of applications after 18 months
with facility for early publication
 Substantially reduced time-lines

7.  Compulsory license to ensure availability
of drugs at reasonable prices
 Provision to deal with public health
emergency
 Revocation of patent in public
interest and also on security considerations

8. A new product or process, involving an
inventive step and capable of being made
or used in an industry. Section 2(1)j

9. Section 3 and Section 4
sets out the inventions
which are not
patentable

10.  Invention must relates to a Process or Product or
both
 be new(Novel)
 involves an inventive step
 inventive step be Capable of industrial
application
 industrial application not fall under Section 3
and 4

11. i) Novelty : The matter disclosed in the specification
is not published or used in India or elsewhere before
the date of filing of the patent application in India. 2(1)l
ii) Inventive Step: The invention is not obvious to
a person skilled in the art in the light of the prior
publication/ knowledge/ document.2(1)ja
iii) Industrially applicable: Invention should
possess utility, so that it can be made or used in an
industry.

12. Section 3(a)
 Frivolous inventions
 Inventions contrary to well established
natural laws
Examples
 Machine that gives more than 100% performance
 Perpetual machine
continue-

13. Section 3(b)
Commercial exploitation or primary use of
inventions, which is
Contrary to
public order or
Morality
Examples
 Gambling machine,
 Device for house-breaking
 continue-

14. Section 3(b)
Commercial exploitation or primary use of
inventions , which
Causes serious Prejudice to
 health or
 human, animal, plant life or
 to the environment
Examples
 Biological warfare material or device,
weapons of mass destruction
 Terminator gene technology,
 Embryonic stem cell
continue-

15. Section 3(b)
Excludes patents on
 GMOs – exploitation of which could be
contrary public order or morality or prejudicial
to human, animal or plant life or health or to
the environment
Effect : Only genetically modified micro-
organisms (GMOs) which do not fall under
section 3 (b) are patentable.
continue-

16. Section 3 ( c )
 Mere Discovery of a Scientific Principle or
 formulation of an Abstract Theory or
 discovery of any living thing or
 discovery of non–living substance occurring in nature
Examples
Newton’s Laws
Superconducting Phenomenon as such
Property of certain material to withstand
mechanical shock
Discovery of micro-organism
Discovery of natural gas or a mineral
continue-

17. Section 3(c)
Excludes patents on
Naturally occurring Micro-
organisms
Effect
Genetically modified microorganisms (GMOs) are
however, patentable.
continue-

18. Section3 (d)
The mere discovery of a new form of a
known substance which does not result in
the enhancement of the known efficacy of
that substance
continue-

19. Section3 (d) Explanation
For the purposes of this clause,
 salts, esters, ethers, polymorphs,
 metabolites, pure form, particle size,
 isomers, mixture of isomers,
 complexes, combinations and other derivatives of known substances
shall be considered to be the same substance, unless they
differ significantly in properties with regard to efficacy.
Examples
 Crystalline forms of known substance
continue-

20. Section 3 (d) Explanation
Effect
Salts, esters, ethers, polymorphs, metabolite, pure
forms, particle
size, isomers, complexes, combinations and
derivatives of a known substance with enhanced
efficacy are patentable
continue-

21. Section3 (d)
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.
Examples
 New use of Aspirin for heart ailments,
 Mere new uses of Neem
continue-

22. Section 3(e)
Substance obtained by mere admixture resulting only in the
aggregation of the properties of the components thereof or a process
for producing such substance
Examples
 Combiflam [Paracetamol (Antipyretic) + Brufen
(analgesic)]
 Solution of sugar and color additives in water to form a
soft drink
However,
A mixture resulting into synergistic properties of mixture
of ingredients however, may be patentable -
Soap, Detergents, lubricants etc
continue-

23. Section 3 ( e )
Effect
 Substance obtained by mere admixture resulting
only in the aggregation of the properties of the
components thereof or
 a process for producing such substance
are not patentable
However
Synergistic formulations are patentable
continue-

24. Section 3 ( f )
Mere arrangement or re-arrangement or
duplication of known devices, each
functioning independently of one another in
a known way
Examples
A Bucket fitted with torch,
An Umbrella with fan
A Clock and radio in a single cabinet
A flour-mill provided with sieving
continue-

25. Section 3(h)

Method of Agriculture or Horticulture
 Examples
Cultivation of algae ,
Producing new form of a known plant,
Preparation of an improved soil

 However,
 Agricultural Equipments are patentable
continue-

26. Section 3(i)
Any process for
medicinal, surgical, curative, prophylactic, diagnostic, t
herapeutic or other treatment of human beings or a
similar treatment of animals to render them free of
disease or to increase their economic value or that of
their products
Examples
 Removal of cancer tumor
 Removal of dental plaque and carries
 Surgical processes
 Processes relating to therapy
 Method of vaccination,
 Blood transfusion
continue-

27. Section 3(j)
Plants & animals in whole or any part thereof
other than micro- organisms, but including
seeds, varieties an d species and essentially
biological process for production or
propagation of plants & animals
continue-

28. Section 3(j)
 Plants & animals in whole
 Parts of plants & animals
 Seeds
 Varieties & species
 Essentially biological processes for
propagation or production of the animals &
plants
continue-

29. Section 3(j)
Excludes patents on
 Plants and animals in whole or any parts
thereof, …… including seeds, varieties and species
and essentially biological processes for production
or propagation of plants and animals
Examples
 Clones and new varieties of plants
 A process for production of plants or animals if it consists entirely
of natural phenomena such as crossing or selection
 Essentially biological Process
continue-

30. Section 3(k)
* mathematical method or
* business method or
* algorithms or
* computer programme per se
Examples
 Computer program by itself or as a record on a carrier
However
 New calculating machine
 combination of hardware and software
is patentable
continue-

31. Section 3(l)
A literary,dramatic, musical or artistic work or
any other aesthetic creation including
cinematographic work and television
productions
These subject-matters fall under the
copyright protection
continue-

32. Section 3(m)
A mere scheme or rule or method of performing mental act
or method of playing game
Examples
Scheme for learning a language
Method for solving a crossword puzzle,
Method of learning a language
Method of teaching /learning
However,
Novel apparatus for playing game or carrying
out a scheme is patentable
continue-

33. Section 3 (n)
Presentation of information
Examples
 Any manner or method of expressing information
whether by
spoken words
Visual display
symbols
diagrams
Information recorded on a carrier
continue-

34. Section 3 (o)
Topography of integrated circuits.
Examples
Mask works - circuits layout
continue-

35. Section 4
Inventions falling within Section
20(1) of the Atomic Energy Act, 1962
are not patentable
Effect
 Inventions relating to compounds of
Uranium, Beryllium, Thorium, Plutonium, Radium, Graphite
, Lithium and more as notified by Central Govt. from time to
time are not patentable .

36.  Keep a notebook sequential
numbered
 Write down experiments, showing
structure of invention and how these are
conducted and how the invention is
made out .
 Keep on noting and updating the
claims of the patent

38.  File an Application form in duplicate for each
invention (Form 1) .(section 7,54,135 Rule 20.1 )
 Provisional or complete specification in duplicate in
Form 2. s.7
 Information and undertaking listing the
number, filing date and current status of each
foreign patent application ( in case application is
made in foreign country ) in duplicate for same
invention s 8
 Applicable fee of Rs 750 in case of individual or
Rs 3000 in case of corporate .
With one of the patent offices based on territorial jurisdiction
of the place of office or residence of the applicant ( head office
Kolkata, Madras, New Delhi , Chennai ) (r 4)

39. An Examiner after checking the formal
requirements before accepting the application
and the fee , issues application number and the
cash receipt on the same day of filing of
application

40. It is permissible to file an application for a
patent accompanied by a "Provisional
Specification" describing the invention.
The application may, therefore, be made even
before the full details of working of the
invention are developed. The filing of an
application for a patent disclosing the
invention would secure priority date of the
invention, and thereby, enable the inventor to
work out the practical details of the invention .

41. If the provisional specification is filed, it must
be followed by the complete specification
within 12 months.(Form 2). s9
Complete specification shall fully describe the
invention with reference to drawing, if
required, disclosing the best method known to
the applicant and end with Claim/Claims
defining the scope of protection sought.

42.  The specification must be written in such a manner that
person of ordinary skill in the relevant field, to which the
invention pertains, can understand the invention.
 Normally, it should contain the following matter- s9
 Title of invention, sufficiently indicating the subject matter
of invention
 Detailed description of the invention with reference to
drawing/examples,
 Operation or use of the invention
 Best method of performing the invention,
 Claim(s)defining the scope of invention ,
 Abstract to provide technological information of invention

43.  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

44.  The publication includes the particulars of the
date of the application, application
number, name and address of the applicant
along with the abstract.
 The applications for patent are not open for
public inspection before publication.

45.  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

46.  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

47.  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 vet
the Examiner’s report
 First Examination Report (FER) containing gist
of the objections is issued within 6 months
from the date of filing of request

48.  Application or complete specification should
be amended in order to meet the objections
within a period of 12 months from the date of
First Examination Report (FER).
 If objections are met, grant of patent is
approved by the Controller – within a period of
1 month

49.  Where an application for a patent has been
published but a patent has not been
granted, any person may, in writing represent
by way of opposition to the Controller against
the grant of any Patent with in period of six
months of publication .
 Opportunity of hearing the opponent is also
available

50.  -specification has been published before
the priority date of the claim
 -publicly known or publicly used in India before
the priority date of that claim.
 - being a claim of which the priority date is
earlier than that of the applicant's claim;
 - that the invention so far as claimed in any claim
of the complete specification is obvious


51.  - that the subject of any claim of the complete specification
is not an invention within the meaning of this Act
 - that the complete specification does not sufficiently and
clearly describe the invention
 that in the case of convention application, the application
was not made within twelve months from the date of the
first application for protection for the invention made in a
convention country by the applicant or a person from whom
he derives title.


52.  that the complete specification does not disclose or
wrongly mentions the source or
geographical origin of biological material
used for the invention.
 -that the invention so far as claimed in any claim of
the complete specification is anticipated
having regard to the knowledge, oral or
otherwise, available within any local or indigenous
community in India or elsewhere.

53.  Opposition (documents) is sent to the
applicant.
 A period of 3 months is allowed for receipt
of response from the applicant .

54.  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

55.  A certificate of patent is issued
within 7 days
 Grant of patent is published in the
official journal

56. Term of every patent will be 20
years from the date of filing of
patent application, irrespective of
whether it is filed with provisional
or complete specification.
Date of patent is the date on which
the application for patent is filed.

57. Any interested person can file notice
of opposition (along with written
statement and evidence, if any)
anytime after the grant of Patent but
before the expiry of a period of one
year from the date of publication of
grant of a Patent in the Patent Office
Journal.

58. Where a patent covers a
product, the grant of patent gives
the patentee the exclusive right to
prevent others from
performing, without
authorisation, the act of
making, using, offering for
sale, selling or importing that
product for the above purpose.

59. Where a patent covers a process, the
patentee has the exclusive right to
exclude others from
performing, without his
authorization, the act of using that
process, using and offering for
sale, selling or importing for those
purposes, the product obtained
directly by that process in India.

60. To keep the patent in force, renewal
fee is to be paid every year.
Application for restoration of a
patent that lapses due to non-
payment of renewal fees must be
made within 18 months of lapse

61.  “Infringement” of a patent
occurs when a person
makes, uses, sells, or imports
an invention without the
permission of the patent owner.

62.  Patents only cover those products or
processes described by the claims
 An infringing product or process must
have each element of the claim
 The accused product or process may
have more than required by the
claim

63. 1. Patent searches on relevant
product lines of primary competitors
2. Compare proposed new product
or process to any relevant
patents or competitor products
3. If necessary, search for prior art