f5117patent Law SN+Amity[1]

8/8/2019 f5117patent Law SN+Amity[1]

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PATENTS ACT 1970PATENTS ACT 1970


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Intellectual Intellectual Property Rights (IPRs):Intellectual property rights are the rights given to persons over the creationsof their minds. They usually give the creator an exclusive right over the use

of his/her creation for a certain period of time .a) legal or statutory rightb) Of exclusive or monopolistic naturec) Over their creations i.e. products of human intellect

IPRs in general IPRs in the Indian Context |CopyrightIndustrial

Property

PatentCopyright

Trademark Industrial Design

Geographical IndicationLayout design of industrial circuits


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Patents act 1970Patents act 1970- -AmendmentsAmendments

Patents and designs Act 1911The Patents Act, 1970Three amendments 1999 , 2002 & 2005

T he 3 rd amendment in 2005 has major implications on: Introduction of product patent for food, pharmaceuticals,

chemicals and embedded software (software incombination with hardware, like mobile telephone,Computer, television) inventions.

Ex amination of the mail bo x applications, from January01 , 2005


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M ailbox ApplicationsM ailbox ApplicationsWhen the TRIPS agreement came into force onJanuary 1, 1995, developing countries like Indiawere given a grace period of ten years tointroduce product patents. During this interimperiod of ten years, all patent applications wereput in a mailbox and were only to be examinedafter January 1, 2005. However, Pharmaceuticalcompanies were allowed to apply for exclusivemarketing rights (E M R) for their products for fiveyears if their product was registered for a patentand had received marketing rights in any of theWTO member countries. Practice of E M Rs stoppedafter January 1, 2005.


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OBJEC T OF TH E LAWOBJEC T OF TH E LAWObject: To encourage

S cientific research;new technology;industrial progress

M ethodology: O pportunity of acquiringexclusive rights stimulates technical progress inthe following ways:-

1. Encourages research & invention2. Inducement to disclose invention 3. Offers a reward 4. Inducement to invest capital


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Types of IPRTypes of IPRIntellectual property rights arecustomarily divided into two main

areas:(i) Copyright(ii) Industrial property.


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C opyrightC opyrightC opyright is the exclusive right tocopy a creative work or allowsomeone else to do so. It includesthe sole right to publish, produce orreproduce, to perform in public, tocommunicate a work to the public bytelecommunication, to translate awork, and in some cases, to rent thework.


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To what does copyright applyTo what does copyright applyC opyright applies to all original literary,dramatic, musical and artistic works.These include books, other writings,music, sculptures, paintings, photographs,films, plays, television and radioprograms, computer programs (software),sound recordings (such as records,cassettes, and tapes), performances, etc..


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C opyright Does Not Apply ToC opyright Does Not Apply To

Themes, ideas, titles, names, catch-phrases and other short-word

combinations.


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Industrial propertyIndustrial propertyIndustrial property can be divided into two main areas:Distinctive signs, like trademarks (which distinguish thegoods or services of one undertaking from those of others)and geographical indications (which identify a goodas originating in a place where a given characteristic of the

good is essentially attributable to its geographical origin).Innovation through research and design, creation of technology. This includes inventions (protected by patents),industrial designs and trade secrets .Industrial Property thus includes Patents, Trade Marks and Geographical Indications, Industrial Designs and TradeSecrets


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PA T EN TPA T EN T- - D EFINI T IOND EFINI T ION E xclusive right for being the true and first inventor of a product or process, granted by the govt for a limited

period. to exclude others from making, using, selling or importing the patented product or process without his consent, in exchange of full disclosure of his invention .

Term- 20 years from FI LI N G Date (S.45 )


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Characteristic Features of PatentCharacteristic Features of PatentCharacteristic Features of Patent

1. Set of exclusive rights2. R ight granted to the true and first inventor 3. Of a product or process4. R ight to exclude others from making, using,

selling or importing the patented product or process without his consent 5.. R ight Granted by the state (Sort of agreement

between inventor and the state) 6. R ight In exchange for Public disclosure of complete specifications of the invention.

7. R ight Granted For a fixed period of time (20 years from the date of filing)


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PA T EN T v. COPYRIG HTPA T EN T v. COPYRIG HTCharacteristic Features of Copyright

1 . R ight over original works of authorship2 . Protects the form of ex pression, not the subject matter or idea

3 . The right is for a longer duration (life of author+ 60 years)4 . Copyright is automatically granted5 . R egistration of Copyright helps in proving the copyright. The burden of proof shifts to the party who denies copyright

Ex amples of Copyright: B ook, Film, Music, Sound R ecording, Casette, Tape, Play/ Drama,

Performance, Television and R adio Programs, Art, Photograph, Painting; Computer Program (Software)


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M I N IST RY OF I NDUST RY & C OMME R CE

Office of the Controller General of Patents, Designs

& T rademarks

ORG AN IZAT IO N ST R UCTU R EORG AN IZAT IO N ST R UCTU R E-- IPIPOFFI CESOFFI CES

Patent office Kolkatta, D elhi, M umbai, chennai

GI Registry Chennai

T M Registry Kolkatta, D elhi, Chennai, M umbai,Ahmedabad,

D esigns wing Kolkatta


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Rights of PatenteesRights of PatenteesExclusive right to prevent thirdparties, who do not have hisconsent, from making, using,selling or importing the product orusing the process (S. 48)Exceptions (S. 47):

1. Use by govt. for its own use2. Use for experiment, research orinstructions to pupils


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INVEN T IONINVEN T ION -- D efinitionD efinition

Sec. 2(1)(j): Invention means a new product or process involving an inventive step & capableof industrial application

1. Process, method or manner of manufacture,2. Machine, apparatus or other article,3. Substance produced by manufacture,

And includes any new & useful improvement of any of them.


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REQUIRE M EN T S OF INVEN T IONREQUIRE M EN T S OF INVEN T ION

NEW : that no other inventor has obtained a patent for the sameinvention.

NON -OBVIOU S that the subject matter of an invention was notobvious at the time the invention was made to a person having ordinaryskill in the art to which said subject matter pertains.

US EFUL :that the machine, product, or process is one that can be usedin industry or commerce.

N ovelty

N on- O bviousness (an inventive step)U tility ( Capable of industrial application)


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N OT I NVENT IO NS (S.3) N OT I NVENT IO NS (S.3):

1. An invention which is frivolous, or claims anything contrary to existing natural laws.

2. An invention whose use would be contrary to public order or morality, or which will be prejudicial to health or environment

3. D iscovery of a scientific principle or the formulation of an abstract theory.

4. D iscovery of any living thing or non living substance occurring in nature5. D iscovery of a new property or use of a known substance, unless it

results in a new product6. A substance obtained by mere admi xture7. Arrangement or rearrangement or duplication of known devices .


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N OT I NVENT IO NS (S.3)(contd.) N OT I NVENT IO NS (S.3)(contd.)8. A method of agriculture or horticulture, seeds, etc.9. Any process of medicinal, surgical application on human beings or

animals to render them free of disease.10 . P lants, seeds, animals and biological processes for production or

propagation of plants and animals11 . Computer program, per se, other than its application to industry or

combination with hardware (embedded software)12 . A mathematical method or a business method13 . Literary, dramatic, musical, artistic, aesthetic creation including

cinematic work or television production14 . A method of playing game, presentation of information15 . Integrated circuits 16. Traditional knowledge, or aggregation of traditionally known

components

.


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NO T PA T EN T ABLENO T PA T EN T ABLE

A tomic energy 19 62(S.4)Traditional knowledgeScientific principleA bstract theoryD iscovery of natural substances

N ew form of a known substanceM ixture of known compoundsM

ethods of

agriculture


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c riteria of patentabilityc riteria of patentabilityF or an invention to become patentable

subject matter must meet the followingcriteria -i) It should be new or novel .ii) It should have inventive step or it mustbe non-obviousiii) It should be capable of Industrial application.iv) It should not fall within the provisionsof section 3 and 4 of the Patents Act1970.


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Process of Grant of PatentProcess of Grant of Patent

1. Application (s 10)2. Publication (S .11 -A), 3. Examination (S .11 -B , 12 ).4. Pre - Grant Opposition (after publication and before grant)

5. Grant of patent ( N otification)6. Post - Grant opposition (within an year of grant)7. M aintenance of patent (renewal after three years-renewal fee)8. Working of patent (Satisfactory availability of the patented product at

reasonable prices- Compulsory licensing by the Controller , if required)9. Revocation of patent (s 64- wrongfully obtained)

10 . Remedies against abuse of patent (S . 66, revocation in public interest by central govt.-mischievous)11. Penalties ( S. 120 - falsely representing Patented, Patent applied for-fine up

to R s 1 lakh)12 Infringement (S.10 8, injunction, either damages or an account for profits)


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Process of Grant of Patent (contd.)Process of Grant of Patent (contd.)1. A pplication with complete specifications has to be submitted to Controller

of Patents.2. The application along with an abstract is published after 18 months of filing,

unless the applicant requests early publication3. A pplicant may apply for examination of his application within 48 months of

filing (31 months incase of applications under Patent Cooperation treaty)4. The application is then referred to an Ex aminer.5. Ex aminer checks its legality and authenticity and reports to the Controller.6. If there are discrepancies in the application , objections are raised which

must be answered within an year from the date of report.7. Any one interested can object after the publication and before grant of the

patent


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Process of Grant of Patent (contd.)Process of Grant of Patent (contd.)8. Grant of the patent is notified in the Official Gazette, P atent

Office journal published every week 9 . Post grant objections can be made within an year of grant of

the patent10 . Maintenance (renewal)fee has to be paid after the third year 11 . Lapse of the Patent on failure to renew, restoration within 18

months from the date of lapse on payment of fee11 . Controller may grant compulsory licence if the patent is not

working (product is not available in sufficient quantity at reasonable prices).12 . PATENTEE CAN SE LL OR ASS IG N H IS PATENT T O

OTHE R PE R SO NS


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APPLICA T ION WI TH CO M PLE T EAPPLICA T ION WI TH CO M PLE T E -- S PECIFICA T ION S (S . 10)S PECIFICA T ION S (S . 10)Patent application - specifications1 . Name of the inventor 2 . Address 3 . Name of the assignee, if any

4 . T itle of the invention, sufficiently indicating the subject matter 5 . Subject matter, object & purpose: to enable a reasonably well

informed artisan to make the patented thing at the end of protected period.

6. P rior art , full description of the invention, its operation anduse

7 . model or sample (if the Controller requires), etc.

8. Best method of performing the invention


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APPLICA T ION WI TH CO M PLE T EAPPLICA T ION WI TH CO M PLE T E --S PECIFICA T ION S (S . 10) (contd.)S PECIFICA T ION S (S . 10) (contd.)

9 . C laims: defining scope of invention10 . A bstract, providing technical information11 . If the applicant mentions a biological material in the

specifications, he should deposit the material with an international depository authority under the Budapest Treaty, give name and address of the depository institution, date and number of the deposit of the material in that institution. He should disclose the source and origin of the biological material( There are 34 authorised

international depository authorities notified under S 10 of the Patents Act, including one in India (Chandigarh)-M icrobial Type Culture Collection and Gene Bank (MTCC )


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complete specificationcomplete specificationA patent specification can be prepared by theapplicant himself or his registered and authorizedagent . The patent specification generallycomprises of the title of the invention indicating

its technical field, prior art, draw backs in theprior art, the solution provided by the inventor toobviate the drawbacks of the prior art, a concisebut sufficient description of the invention and itsusefulness, drawings (if any) and details of best

method of its working. The complete specificationmust contain at least one claim or statement of claims defining the scope of the invention forwhich protection is sought


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provisional specificationprovisional specification

Indian Patent Law follows first to filesystem. Provisional specification describes thenature of the invention to have the priority dateof filing of the application in which the inventiveidea has been disclosed. It must be followed by acomplete specification describing the details of the invention along with a statement of claimswithin 12 months after filing of the provisionalapplication. If the complete specification is notfiled within the prescribed period, the applicationis treated as abandoned


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Prior artPrior artPrior art ( state of the art) is allinformation that has been disclosed to thepublic in any form about an invention

before a given date. Prior art includesthings like any patents related to yourinvention, any published articles aboutyour invention, and any publicdemonstrations.If an invention has been described in priorart, a patent on that invention is not valid.


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Prior art searchPrior art searchH ow c an one find out that an invention is already

patented?The person concerned can perform a preliminary searchon:

1. Patent Office website in the Indian patent data base of

granted patents , or2. Patent Office journal published every week, or3. Search in the documents kept in the Patent Office Search

and Reference Room , which contains Indian patentsarranged according to international patent classificationsystem.

4. One can also make a request for information regarding anypatent under section 153 of the Act


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Priority Dates of C laims of Priority Dates of C laims of C omplete Specification (s.11)C omplete Specification (s.11)Priority date of the claim is the dateof filing of specifications-provisional or complete, wherein the matter onwhich the claim is fairly based wasfirst disclosed . C ontroller can orderpost-dating or ante-dating of a claimunder section 9, 17 and 16depending upon when he thinks thematter was actually first disclosed.


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PUBLI C ATIONPUBLI C ATIONEvery application for patent is publishedafter 18 months from the date of its filingor priority date whichever is earlier,except where there is a secrecydirection.Applicant can make a request for early

publication with the prescribed fee. Afterreceiving such request the Patent Officepublishes such application within a period of one month provided the invention doesnot relate to atomic energy or defencepurpose.


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EXAM INATIONEXAM INATION

The patent application is examined only onrequest.The request for examination can be filed within aperiod of 48 months from the date of priority ordate of filing of the application whichever isearlier.Request for examination before expiry of 31months can be made in respect of theapplications filed under Patent C ooperationTreaty known as National Phase applications bypayment of the prescribed fee.


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F irst Examination Report ( F ER)F irst Examination Report ( F ER)After examination, the Patent office issues anexamination report to the applicant which isgenerally known as F irst Examination Report( F ER). Thereafter the applicant is required to

comply with the requirements within a period of twelve months from the date of F ER. In case,the application is found to be in order for grant,the patent is granted, provided there is no pre-grant opposition is filed or pending. A letter

patent is issued to the applicant. However, incase a pre-grant opposition is pending, furtheraction is taken after disposal of the pre-grantopposition.


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PrePre--Grant and PostGrant and Post- -Grant Opposition (S.25)Grant Opposition (S.25)

Grounds F or Pre-Grant Opposition:1. Lack of Patentability including novelty,

inventive step and industrial use2. Non disclosure or wrongful mentioning in

complete specification3. Anticipation of invention by knowledge oral or

otherwiseGrounds for Post-Grant Opposition:

1. The patentee wrongfully obtained the inventionor any part of it from him2. Anticipation by previous publication or prior

claim


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Pre - grant Opposition Patent applications are published N on-compliance N on/wrong-disclosure

Post - grant Opposition W ithin 12 months of grant of a patent M isconduct, public display, non-patentable

Patent opposition (contd)


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prepre--grant oppositiongrant oppositionA representation for pre-grantopposition can be filed afterpublication of the application u/s 11Aand before the grant of patent.The grounds on which therepresentation can be filed areprovided u/s 25(1) of the Patents Act1970.


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Grounds (Sec. 25 ):1. O btaining the Patent wrongfully

2. Prior publication 3. Prior claim in a concurrent application4. Prior public use or knowledge in India

5. O bviousness or lack of inventive step6. N on-patentable invention7. Insufficient description of the invention

8. Failure to disclose information relating to foreignapplication9. If convention application, not made within

prescribed time


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S T AGE S IN TH E GRAN T OF PA T EN TS T AGE S IN TH E GRAN T OF PA T EN T

After filing the application for the grant of patent:1. A pplicant may make a request for early publication of his application and

an abstract of application ( Publication before 18 months from the date of filing or date of priority, whichever is earlier) (S.11 -A),

2. A request for examination is required to be made by the applicant or by

any other interested person and thereafter it is referred by the Controller to an Ex aminer for report (S.11 -B , 12 ).3. P rior Art Search for Anticipation by Previous Publication and Prior

C laim( Prior Art search) (S.13 )4. First E xamination R eport is issued and the applicant is given an

opportunity to correct deficiencies within the prescribed time.


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S T AGE S IN TH E GRAN T OF PA T EN T (contd.)S T AGE S IN TH E GRAN T OF PA T EN T (contd.)

5 . Power of Controller to direct revision of application if specification relate to more than one invention or as respects post-dating or ante-dating of application (S.16,17 )

6. Power of controller to direct the applicant to insert a reference

to the other specification by way of notice to the public in the applicants complete specification in case of anticipation by prior claim or potential infringement (S.18, 19 )

7 . When all the requirements are met, the patent is granted and notified in the P atent office Journal .

8.H

owever before

the

grant

of

patent

and

after

the

publication

of

application, any person can make a representation for pre-

grant opposition . 9 . Post- grant opposition, within one year from the date of

publication of grant [S . 25 (3)]


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PA T EN T INFRINGE M EN TPA T EN T INFRINGE M EN T

A patent is not infringed until proven

otherwiseonus or burden of provinginfringement is on the patent owner


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InfringementInfringement- - Jurisdiction, Burden of Proof Jurisdiction, Burden of Proof

Jurisdiction-District C ourt (S.104)If the defendant makes a counter claim forrevocation of the patent-High C ourtBurden of Proof (104-A): If the patenteefirst proves that the product is identicalthen if the subject matter is a process, thecourt may direct the defendant to provethat the process used by him to obtain theproduct was different.


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InfringementInfringement Declaration as to NonDeclaration as to NonInfringement (S.105)Infringement (S.105)

A suit for declaration as to noninfringement may be instituted if thepatentee neglects or refuses toacknowledge a declaration that theuse of the process by the plaintiff does not amount to an infringement


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InfringementInfringement- -Threat of Proceedings (S.106)Threat of Proceedings (S.106)

If any person threatens any one bycirculars, advertisements or bycommunications-oral or in writing,with proceedings for infringement of a patent, the threatened person canbring a suit for declaration that thethreats are unjustifiable . He mayalso seek an injunction anddamages .


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InfringementInfringement- -Limitation on DamagesLimitation on Damagesor Account of Profits (S.111)or Account of Profits (S.111)

Damages or an account of profits shall notbe granted against a defendant whoproves that he was not aware of the

patent.M ere mention of Patented on the articleis not deemed to make everyone aware of the existence of patent, unless thenumber of the patent is also mentioned onthe article


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InfringementInfringement- -Defences,Relief Defences,Relief (S.107,108)(S.107,108)

Defences:Every ground on which the patent

may be revoked is available as adefence in a suit for infringement.Relief:

InjunctionDamages or account of profits


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PenaltiesPenaltiesC ontravention of secrecy directions relevant for defensepurposes (S.35) or applying for patents outside Indiawithout prior permission of the C ontroller (S. 39) ispunishable with imprisonment up to 2 years or with fineor with both. (S 118)Unauthorized claim of patent rights: If any person falselyrepresents that any article sold by him is patented in Indiaby using words such as patented , patent applied for ;he shall be punishable with fine up to Rs 1 lakh ( S.120)F ailure or refusal to furnish information to:

(1) central govt. to use invention for purposes of govt.[S.100(5)]

(2) C ontroller regarding the extent of commercial use of the invention in India as required us 146

Punishable with fine up to Rs 10 lakh (S. 122):Practice by non-registered patent agents punishable withfine up to Rs 1 lakh(S. 123)


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CO M PUL S ORY LICEN S ECO M PUL S ORY LICEN S E

After 3 years of patent, anyone can request alicense from the govt. on these grounds

T hat the reasonable requirements of the

public with respect to the patented inventionhave not been satisfied

T hat the patented invention is not availableto the public at reasonably affordable price

Ex port of pharmaceuticals to poor countries


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C ompulsory LicencesC ompulsory Licences1. Any time after three years of the sealing of a patent any

interested person may apply to the C ontroller for grant of compulsory licence on the ground that reasonablerequirements of the public with respect to the patented invention are not being satisfied at reasonably affordable

price or that the invention is not being worked in India2. The C ontroller has to take into account the efforts made by

the applicant for obtaining a licence from the patentee onreasonable terms and the fact that such efforts were notsuccessful within a reasonable period.

3. C ontroller will secure reasonable royalty and otherremuneration to the patentee

4. After the expiration of two years from the date of grantingthe first compulsory licence , any person may apply to theC ontroller to revoke the patent on the same grounds asmentioned in the first para.


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IN D IAN PA T EN T OFFICEIN D IAN PA T EN T OFFICE

Administered by

Office of the Controller General of Patents, D esigns & T rade M arks(CGP DT M )~300 examiners

Patents now granted in 2 - 3 years


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PURPO S E & S T RUC T URE OFPURPO S E & S T RUC T URE OFPA T EN T LEGI S LA T IONPA T EN T LEGI S LA T ION

Balancing of public and private rightsStructure of the patents legislation

S cope of patentability Ex clusion from patentability P rocedure for grant of patents

R emedies against abuse of patents Ex ceptions to patents rights R emedies against infringement


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PA T EN T S : S O M E IN T ERE S T INGPA T EN T S : S O M E IN T ERE S T INGFAC T SFAC T S

More than 90% of patent rights are held indeveloped countries

95% of patents are not working N ot all industries are bothered about patents(E .g. Auto industry)

Industries keen on Patent- Chemical, B iotech,IT S ector etc


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sealing of a patentsealing of a patentWhen an application for a patent complies with the Act and Rules it is in order forgrantand the applicant is notified of the date on which the complete specification of theapplication will be published. F or a patent to be granted the applicant must requestsealing on the appropriate form and pay the required fee. This form must be filedwithin4 months of the date on which the complete specification is published, subject thetherenot being any pending action on the application in any court or before theC omptroller.F ollowing such an action the request for sealing must be filed within 2 months aftertheaction is completed. In all cases an extension of up to 3 months are allowed formakingthe request for sealing on payment of an additional fee. The patent is prepared onone

of the forms set out in a schedule to the Rules and sealed with the Patent Offi c eseal ,the date of sealing being entered in the Register of Patents.

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f5117patent Law SN+Amity[1]