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
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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
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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
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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.
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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
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17. Section 3(c)
Excludes patents on
Naturally occurring Micro-
organisms
Effect
Genetically modified microorganisms (GMOs) are
however, patentable.
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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
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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
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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
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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
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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
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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
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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
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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
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26. Section 3(i)
Any process for medicinal, surgical, curative,
prophylactic, diagnostic, therapeutic 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
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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
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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
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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
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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
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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
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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
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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
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34. Section 3 (o)
Topography of integrated circuits.
Examples
Mask works - circuits layout
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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
37.
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