Object and Need of Patent, Types of Patent, Condition for Patenting, Documents with Patent Application and Stages from Filling to Grant of Patent

1. Presented By :
Dipen P. Gaykar
M. pharm. ( 2nd Sem)
Department Of Quality Assurance
INDIAN
PATENT
ACT
1970
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2. CONTENTS
 Introduction to IPR.
 Types of IPR
 Indian Patent Act 1970
 History
 What is Patent
 Object & Need of Patent
 Salient features
 Condition of Patenting
 Patentable & Non patentable in India
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3.  Types of Patent
 Term of Patent
 Document with Patent application
 Where to apply
 Stages from filling to grant of patent.
 Fees
 Difference between IPS &UPS
 Patent infringement
 Compulsory Licenses
 Exclusive Marketing Rights
 Amendments of IPA 1970
 Conclusion
 References
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4. INTRODUCTION TO IPR
DEFINITION OF IPR
 “Intellectual Property” means the property which is created with
intellect, and the legal rights conferred on such property are called as
“Intellectual Property Rights”(IPR).
 IPRs are granted by the state to encourage innovation, invention, and
investments.
 IPR aim is to provide certain time limited rights.
 These works can be in industrial, scientific, literature and artistic
domains etc.
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5. TYPES OF IPR
• Patent, Trademark
• Industrial Design, Geographical Indications
Industrial Property
• Printing industry, film industry
• Software industry
Copyrights and Related
Rights
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6. INDIAN PATENT ACT 1970
YEAR IMPROVEMENTS CONCLUSION
1856 Patent system introduced in India.
On based of British Patent Law
1852.
Rights to patent holder for a
period of 14 years.
1859 Patent Monopolies called Exclusive
Privileges.
Rights to patent holder for a
period of 14 years.
1872 The Patent and Designs Protection
Act
1883 The Protection Of Inventions Act.
1888 Consolidated as the Inventions &
Design Act.
1911 The Indian Patent & Designs Act.
HISTORY
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7. YEAR IMPROVEMENTS CONCLUSION
1970 &
1972
Bill was sent in Parliament for
“Indian Patent Act” and enacted on
20.04.1972.
Only process patent introduced.
1975 India joins WIPO.
1999 India signs TRIPS (after joining
WTO).
1999,2002,
2004, 2005
Amendments and product patent. Rights to patent holder for a
period of 20 years.
The Indian Patent Act 1970 was deliberate by two committees:
Justice Bakshi tek chand and
Justice N. Rajgopal Ayyangar committee.
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8. WHAT IS PATENT ?
 Patent word is from Latin: Patere. It means “to lay open”( To make available for public
inspection).
 The term patent refers to a right granted to anyone who invents or discovers any new
and useful process, machine, article of manufacture, or composition of matter, or any
new and useful things.
 A monopoly right granted by the central government to the applicant.
 The Indian Patent Act, 1970 consists of :
 Chapters 23
 Section 162
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9. OBJECT & NEED OF PATENT
OBJECT
 Encourage inventor.
 To get good industrial growth.
 To get new technology.
 And benefit for society.
NEED
 To protect the creativity of individual.
 To protect the invention from copied.
 To get reward to inventor.
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10. SALIENT FEATURES OF INDIAN PATENT ACT
1970
 To encourage scientific research , new technology and industrial progress.
 The fundamental principle of patent law is that a it should have invention, novelty &
utility.
 Both product and process patent provided.
 Both pre grant and post grant opposition.
 Publication of application after 18 months with facility for early publication.
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11. CONDITION FOR PATENTING
An invention must satisfy the following three conditions of:
 Novelty
 Inventiveness (non-obviousness)
 Usefulness
1) Novelty:
A novel invention is one, which has not been disclosed, in global state.
The invention can be steal if disclosed in public before filling patent application.
So, the documents and everything that has to published, presented or otherwise
disclosed to the public on the date of patent.
For e.g. use of new reactants, use of catalyst or new process can lead to patentable
inventions.
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12. 2) INVENTIVENESS (NON-OBVIOUSNESS):
A patent application involves an inventive step if the proposed invention is not
obvious to a person in the art that is skilled in the subject matter of patent application.
The prior art should not point towards the invention implying that the practitioner of
the subject matter could not have thought about the invention prior to filling of the
patent application.
Inventiveness cannot be decided on the material contained in unpublished patents.
The complexity or simplicity of an inventive step does not depend on the grant of a
patent.
If there is inventive step between proposed and prior art at that point of time, then
such invention can be patentable.
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13. 3) USEFULNESS:
An invention must possess utility for the grant of patent. No valid patent can be
granted for an invention of utility.
The patent specification should have various uses and manner of practicing them.
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14. PATENTABLE AND NOT-PATENTABLE IN
INDIA
Patentable Not-patentable
Art, process, method of manufacture. Different type of perpetual motion
machines.
Machine, apparatus, and substance
produced by manufacture.
Beverages.
Substance intended for use, e.g. food
,medicine or drug.
Mathematical method or Business method.
Invention relating to atomic energy.
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15. TYPES OF PATENT
Process patent
• The process patent is that the product can be manufactured by the totally new and
different method.
• The exclusive rights are only for methods of manufacturing product.
Product patent
• The person utilize the process that he as develop for product development.
• After granting a patent he can sell & distribute the product in country.
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16. TERM OF PATENT
 5 years : from date of sealing of patent
Or
7 years from date of filling of complete specifications.
 Twenty years from the date of patent in respect of any other patentable invention.
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17. DOCUMENTS WITH PATENT APPLICATION
Provisional
specifications
Complete
specifications
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18. Provisional Specifications : Form-2.pdf -
It consists of general outline of patent invention.
It is document of record
Complete Specifications :
 The document in which details of invention for which the patent protection is
desired are disclosed.
It is very important document.
Content of complete specifications includes following :
Title.
Field of invention.
Background.
Complete description and experimental results of invention.
Drawing etc. for easy understanding.
Claims.
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19. WHERE TO APPLY ?
PATENT
OFFICE
Mumbai
Delhi
Chennai
Kolkata (Head
Office)
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Fig. no. 1 Kolkata Patent Office (HEAD OFFICE)

20. STAGES FROM FILLING TO GRANT OF PATENT
OBTAINING OF PATENT Form-1.pdf -
 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.
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21. 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 Form-9.pdf -
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.
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25. 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
REQUEST FOR EXAMINATION Form-18.pdf
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26. 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
RESPONSE FROM THE APPLICANT
ISSUE OF FER
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
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27. PRE –GRANT OPPOSITIONForm-7.pdf
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
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28. 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
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RENEWAL FEE
To be paid within 3+6 months from date of recording in the register [sec 142 (4) ]
No fee for 1st and 2nd year
Renewal fee, on yearly basis, is required to be paid for 3rd to 20th months for
keeping the patent in force
Delay up to six months from due date permissible on payment of fee for extension
of time .

29. Patent lapses if renewal fee is not paid within the prescribed period.
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Years Fees
3 to 6 years Rs. 2,000/ year
7 to 10 years Rs. 6000/ year
11 to 15 year Rs. 12,000/ year
16 to 20 year Rs. 20,000/ year

30. FEES
•There shall be paid in respect of the grant of patents and applications.
•The fees are prescribed by Central Government.
•The fee shall be paid along with the document only.
Form name Form no. Natural
person
Other person
General application. 1 1600 rs 4000 rs
P. S.& C. S. 2 No Fee No Fee
Claim or change in applicant
for patent.
6 800 rs 2000 rs
Notice of opposition 7 2400 6000
Representation Of
opposition
7A No Fee No Fee
Request for Publication 9 2000 rs 6250 rs
For Amendments of Patent 10 2400 rs 6000 rs
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31. Form name Form no. Natural person Other person
Request for
Examination
18 4000 rs 10000 rs
Request for grant of
patent
12 2400 rs 6000 rs
Compulsory
Licensing
17 2400 rs 6000 rs
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32. DIFFERENCE BETWEEN IPS AND UPS
Parameter Indian system US system
Patent Act 23 chapters
163 sections
4 part
37 chapters
163 sections
Rule of patent rights First to file First to invent
Scope of patent act Covers only utility Covers utility patent
Plant patent
Design patent
Criteria for
patentability
Novel, Inventiveness & Utility Novel, Inventiveness &
Utility
Transgenic animal Not patentable Patentable
Term of patent 20 years from filing either P.S. &
C.S.
20 years from date of non
provisional filing.
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33. Parameter Indian system US system
Compulsory licensing Available in Indian patent
system
No such provision
Parallel import No such provision applicable
Who is head ? Director ( Michelle K. Lee ) Controller ( Om Prakash
Gupta)
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34. PATENT INFRINGEMENT
It occurs when someone violates the patent rights an inventor has in his invention by
making , using, or selling the invention without the patent owner’s permission.
Use of patent by Government for its own purpose will not have infringement.
Causes of Patent Infringement :
A huge barrier for innovator.
A damage to economic law and value of law.
An illegal behavior that destroys the market value and competitive order.
For example, Merck & Glenmark over “SITAGLIPTIN”
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35. COMPULSORY LICENSES
Right of access to affordable medicines by people.
Mainly recognized by WTO.
Important for pharmaceutical products Anti -HIV & Anti-Cancer.
To get local requirement of people.
Compulsory licensing is done to avoid the abuse of the patents.
Effective tool.
Form-17.pdf
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36. EXCLUSIVE MARKETING RIGHTS
The EMR provision was for only Process patent as per 1999 amendments to Indian patent
act 1970.
In 2004 it applied for Product patent.
The claims receive for patents application can only taken up for consideration of granting
only EMR.
Upon Getting Exclusive Marketing Rights the applicant has rights to sell or distribute the
product for period of five years from date of grant.
EMR were granted by the Patent office for following products:
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37. Product Category Company
Beta crystalline
form of Imatinib
mesylate
Anticancer drug Novartis
NADOXIN Antibacterial Wockhardt
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38. AMENDMENTS OF IPA 1970
Year Feature
1999 •Introduction of pre grant opposition.
•Provision of EMR were provided.
•The provision of Mail Box Applications.
2002 •The term of patent became 20 years.
•A method or process can be patentable.
•The provision for 18 months publication was introduced .
•The provision for request of examination was introduced.
•The opposition and revocation were introduced.
2005 •Product patent regime was introduced.
•Novelty requirement have been made
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39. Year feature
2005 •New definition of inventive step.
•Limitation on patent application by inventor resident in
India.
•Opposition.
•Damages.
•Import of patent product.
•Parallel imports.
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40. CONCLUSION
Patent is an instrument of economic policy and development.
The economic, social and cultural development of nations and societies now depend
more on intellectual resources rather than materials or natural resources.
Gives recent development and new technology to society.
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41. REFERENCES
1. Dr. B. S. Kuchekar, A. M. Khadatare, Sachin C. Itkar, “ IPR, INDIAN PATENT
ACT ”, Forensic Pharmacy , 9th edition , April 2013 , Nirali prakashan, pg. no. 15.1-
15.20.
2. Philip W. Grubb, “PATENT LAW AND PROCEDURE”, “ Patent for Chemicals,
Pharmaceuticals and Biotechnology”, 4th edition , Oxford University Press, pg. no,
57- 210.
3. www.ipindia.nic.in
4. www.wipo.int
5. www.indianpatents.org.in
6. www.uspto.gov
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