Basics of Patents

 

Basics of Patents

 

Meaning & Content

 

Patents are statutorily designed real life legal instruments aimed at protecting inventions. Inventions, in modern times, are the outcome of well-planned research and development. Patents act as economic incentives to inventors who put in intellectual labor to develop new and useful inventions. Patents foster research and development by providing limited term exclusivity to patentees to commercially make use of the inventions they own. Patents are granted by national governments in consideration for disclosing to the public the scientific and technological information subsisting in the inventions by the inventors/or the subsequent owners of the inventions. Published patent specifications are therefore, important scientific documents containing extremely valuable scientific information. A patent is enforceable only within the territorial limits of the nation granting it.

 

Patentable Inventions

 

Invention means 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 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.

 

Patent Specification

 

The process of patenting begins with the execution of an idea by an inventor. Typically an idea is executed by preparing a technical disclsoure statement that enables a person ordinarily skilled in the art to reduce the invention into practice. The technical disclosure is then converted into a patent specification. This is an extremely sophisticated process that is governed by well established conventions in patent law and practice. The process typically involves conducting prior art searches to distinguish the current invention from prior art and developing a patent disclosure that demonstrates the best mode of working the invention. The patent specification comprises a title, the technical field, cross-reference to related patents (if relevant), the background of the invention, the description of the related art, the summary of the invention, the brief description of the drawing figures (if any), the detailed description of the preferred embodiments, claims and abstract.Claims are the most critical components of a patent specification. Claims define the nature and extent of the rights that a patentee owns in the invention.

 

Filing and Prosecuting Patent Applications

 

Most countries have national laws providing for patent administration systems. These national laws not only prescribe the substantive principles concerning the patentability of inventions but also the procedure for securing patents for inventions and maintaining such patents after the grant. Once an application for a patent is filed, the national patent office in most countries will publish the application (there are some exceptions to this). Typically an application for patent will be examined for formal and substantive compliance by the national patent offices. This examination may precede prior searches and in such cases the national patent office may issue a search report. This will be followed by the establishment of an Examination Report. It is the obligation of the applicant for patent to remedy the objections by the Examiner of Patents and there will be certain time limits attached with these processes. Once the applicant complies with the national patent office requirements, the patent will be granted and issued. It is the patentee’s responsibility to maintain an issued patent by paying the annuities until the patent expires after its 20 years' term (the term of patent may not be 20 years in all countries).

 

Applicant’s particulars

 

  Full Name

  Addres

  Type of incorporation (e.g. partnership, company, etc.)

  Country of incorporation (where applicant is not a perso)

  If applicant is not the inventor How applicant derived right to file patent application from inventor(s) (e.g., employment agreement, commission, assignment deed, etc.)

 

Patent Prosecution in India

 

The Application

 

An application for a Patent is to be made in the format prescribed by the Patents Act and the Patent Rules. All applications are to be accompanied by a specification clearly describing the invention claimed. The following documents must accompany the application:

 

Application for grant of patent in Form 1; Form 2 accompanied by two copies of the complete patent specification; Two sets of the drawing figures, if any, one set of which should be in thick A-4 size white sheets; Duly stamped power of attorney in Form 26 authorizing the agent; Declaration of the inventorship signed by the applicant in Form 5; Priority documents, if any, if not in English, English translation thereof; The Statement and Undertaking regarding corresponding foreign filings in Form 3; and Proof for the applicant’s right to apply for patent. To obtain a lodgment date, what is required is: The Specification; Name and address of the applicant; Name(s) and addresse(s) of the Inventor(s); and The priority details.

 

Form 1 must be signed by the inventors. However it could be signed by the agent at the time of lodgment and it can be substituted with a duly signed one within 3 months from the date of lodgment or at any time before acceptance of the complete specification. To claim priority from corresponding foreign filings, certified copies of the priority document must be filed. Upon filing a Patent Application, the Patent office issues an official filing receipt, which contains the Indian Patent Application Number assigned to the application.

 

The Applicant

 

The Applicant for a Patent can be either the true and first inventor or the assignee or legal representative of the true and the first inventor.

 

Publication

 

The Patents Amendment Act, 2002 brought into force Sections 11A and 11B concerning publication of applications. All patent applications will be published in the official gazette on the expiry of 18 months from the date of filing or the date of priority whichever is earlier. Applications wherein a secrecy direction is given under section 35 shall not be published.

 

Representation

 

Any person can file a representation by way of opposition against the grant of patent, once the application is published. The representation shall be considered by the Controller only when a request for examination of the application has been filed.

 

The Examination

 

The Patent Office will examine an application only if the applicant files a request for examination. The request for examination must be filed after the publication of the application but within 36 months from the date of priority or date of filing, whichever is earlier. The request can be filed by any interested person. Once the request is filed, the Patent Office will issue the First Examination Report. The Applicant must respond to the objections (if any) raised by the Examiner within the prescribed time lines. All procedural compliances must be met within 3 months from the date of receipt of the First Examination Report, or as may be prescribed. The remaining substantive objections raised by the Examiner must be removed and the application must be re-filed to put the application in order for grant within 6 months from the date of the First Examination Report. An extension of time upto 3 months is available. However, this extension can be availed only before the expiry of said 6 months period and in circumstances beyond the control of the applicant.

 

Grant

 

Once the applicant complies with all the requirements under the Patents Act and the Patents Rules, the Patent Office will issue a notice regarding Intimation of Grant. Thereafter, the Letters Patent shall be issued to the applicant.

 

Opposition

 

The granted application shall remain open for objection by interested parties for 12 months from the date of publication of the patent in the Patent Office Journal.

 

Renewal

 

A renewal fee is to be paid at the expiration of two years from the date of Patent and before the expiration of all succeeding years. A patent becomes ineffective if the renewal fee is not paid in time.

 

Patent Filing Requirements in India

 

Inventor’s particulars

 

·         Full Name ·         Address document (may submit later) ·         Citizenship ·         Inventors signature in prescribed form

 

Specification

 

·         Acceptable filing language: English/Hindi ·         Description ·         Claims ·         Abstract ·         Drawings (if any)

 

·         Printed on plain A-4 size sheets (one set in thick white drawing sheets). ·         Shall bear in the left hand top corner the name of the applicant. ·         Shall bear on the right hand top corner the number of sheets and the consecutive number of each sheet (e.g. Page 3 of 4) ·         Figures shall be in an upright position.

 

·         Electronic copy of the above, if any (preferable in Word)

 

Priority claim details (if relevant)

 

·         Priority date ·         Priority country ·         Priority application number ·         Applicant in priority application ·         Title of the priority application ·         Certified copy of priority document (may submit later) ·         Verified English translation of priority document (if relevant, may submit later)

 

Forms

 

·         Power of Attorney form

 

·         Duly stamped and notarized by Notary Public

 

Other Documents

 

·         Details of corresponding applications in other countries ·         Instrument of assignment duly executed and legalized if applicant is not inventor ·         If inventor not so named in the application, signature of inventor in prescribed form ·         If invention relates to micro-organisms deposited under Budapest Treaty, please provide:-

 

·         Name of International Depository Authority (may submit later) ·         Date of deposit (may submit later) ·         Accession Number (may submit later)

 

Minimum instructions to obtain filing date

 

·         Applicant’s name & address ·         Description, claims, drawings, abstract (in English) ·         Priority claim details, if any

 

National Phase Filing Requirements

 

International phase documents

 

·         Verified English translation of international application (if applicable) ·         Copy of PCT publication (for our records) ·         Citizenship ·         If applicant is not the inventor

 

 

 

Applicant’s particulars (if different from publication cover page)

 

·         Full Name ·         Address ·         Citizenship ·         If applicant is not the inventor

 

·  How applicant derived right to file patent application from inventor (e.g., employment agreement, commission, assignment deed, etc.)

 

Inventor’s particulars

 

·         Full Name ·         Address ·         Citizenship ·         Country of permanent residence ·         Inventor’s signature in prescribed form

 

Priority claim details (if relevant)

 

·         Form PCT/IB/304 or Verified English translation of priority document (may submit later)

 

Forms

 

·         Power of Attorney form

 

·  Duly stamped and notarized by Notary Public

 

Other Documents

 

·         If seeking early entry into national phase before publication of international application

 

·   Copy of international application

 

·         Instrument of assignment duly executed and legalized if inventor is not the applicant ·         Inventor’s assent if inventor is not so named in the application in prescribed form.

 

Patent Opposition in India

 

Introduction

 

The Pre-Grant Opposition by way of Representation can be filed after publication of the application (in the Patent Office Journal) till the grant of the patent by any person, in writing, against the grant of patent.

The Post Grant Opposition can be filed by any interested person within 12 months from the date of publication of the grant of patent in the Patent Office Journal at the appropriate office.

 

Grounds for opposition:

 

The major grounds on which the representation or opposition can be made are (a) wrongful obtainment; (b) obviousness; (c) non-patentable subject matter; and (d) anticipation having regard to the knowledge, oral or otherwise, available within any local or indigenous community in India or elsewhere.

 

Procedure:

 

In pre-grant opposition, the representation may be given at the appropriate office along with a statement and evidence in support of the representation. A hearing can also be requested if desired. However, the representation shall be considered only when a request for examination of the application has been filed. Upon considering the representation, if the Controller feels that the application needs amendment or rejection, a notice shall be given to the applicant in this regard. A copy of the representation may also be sent. The applicant has to reply within a period of 1 month from the date of the notice with statement and evidence in support of his application. The applicant may also request for a hearing if desired. The case shall be decided ordinarily within 1 month from the completion of above proceedings.

In post-grant opposition, the notice of opposition is to be given in the prescribed form at the appropriate office along with a written statement setting out the nature of the opponent’s interest; the facts upon which the opponent bases his case; the relief which the opponent seeks; and the evidences, if any. A copy of the statement and evidences is to be provided to the patentee.

Reply statement and evidence:

In response to the notice of opposition, the patentee can submit a reply statement setting out fully the grounds upon which the opposition is contested; and evidence, if any, in support of his case. The patentee has to reply within 2 months from the date of receipt of the copy of the written statement and opponent’s evidence by him. The patentee has to deliver a copy of his statement and evidences to the opponent.

Reply evidence by opponent:

 

The opponent may leave evidence in reply strictly confined to matters in the patentee’s evidence at the appropriate office. The opponent has to reply within 1 month from the date of delivery to him of a copy of the patentee’s reply statement and evidence. The opponent has to provide a copy of reply evidence to the patentee.

Hearing:

On the completion of the presentation of evidence, and on receiving the recommendation of Opposition Board, a date and time for the hearing of the opposition may be fixed, which shall be notified to the parties at least 10 days in advance. The party who desires to be heard has to inform the Controller by a notice along with the prescribed fee.

Decision:

After hearing the party or parties desirous of being heard, and after taking into consideration the recommendation of Opposition Board, the opposition shall be decided and the decision shall be notified to the parties giving reasons therefor.

 

The Opposition Board

 

On receipt of notice of opposition, the Controller constitutes an Opposition Board consisting of three members and nominates one of the members as the Chairman of Board. The Examiner who has dealt with the application for patent during the proceeding for grant of patent is not eligible as a member of the Opposition Board. The Opposition Board conducts the examination of the notice of opposition along with documents (statements and evidences) filed, and submits a report with reasons on each ground taken in the notice of opposition with its joint recommendation within 3 months from the date on which the documents were forwarded to them.