WHAT IS A PATENT
Patent law has been formulated with an objective to promote and protect the inventions and methods. The object of granting a patent is to encourage and develop science, technology and industry.
A patent can be defined as a grant of exclusive rights to an inventor over his invention for a limited period of time. The exclusive rights conferred include the right to make, use, exercise, sell or distribute the invention in India. The term of a patent is twenty years, after the expiry of which, the invention would fall into the public domain. After the expiry of the duration of patents, anybody can make use of the invention.
WHAT IS AN INVENTION
Invention means any new and useful
- art, process, method or manner of manufacture machine, apparatus or other article
- substance produced by manufacture and includes any new and useful improvement of any of them, and alleged invention
Therefore, the criteria for an invention to be patentable are,
- An invention must be novel
- has an inventive step and
- is capable of industrial application
To be patentable, an invention should fall within the scope of patentable subject matter as defined by the patent statute. The invention must relate to a machine, article or substance produced by manufacture, or the process of manufacture of an article. A patent may also be obtained for an improvement of an article or of a process of manufacture. With regard to medicine or drug and certain classes of chemicals no patent is granted for the product itself even if new, only the process of manufacturing the substance is patentable. However, product patents would be available for drugs and food materials from 2005 as India's obligations under the TRIPs Agreement would kick in from that point of time. If any substance falls outside the scope of patentable subject matter, it cannot be patentable.
NOT PATENTABLE INVENTIONS
There are some products and processes, which are not patentable in India they are classified into two categories in the patent act
- Those which are not inventions
- Invention relating to atomic Energy
Various types of non-patentable inventions are as follows-
An invention which is frivolous or which claims anything obvious contrary to well established natural laws.
Merely making in one piece, articles, previously made in two or more pieces is frivolous. Mere usefulness is not sufficient (Indian vacuum brake co. ltd vs. Laurd (AUR 1962 CAK 152).
Perpetual motion machine alleged to be giving output without any input is not patentable as it is contrary to natural law.
An invention the primary or intended use or commercial exploitation of which could be contrary to public order or morality or which causes serious prejudice to human, animal or plant life or health or to the environment
The mere discovery of a scientific principle or the formulation of an abstract theory or discovery of any living thing or non-living substances occurring in nature;
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 or the 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.
Explanation- For the purposes of this clause, salts, esters, ethers, polymorphs, metabolites, pure form, particle size, isomers, mixtures of isomers, complexes, combinations and other derivatives of known substance shall be considered to be the same substance, unless they differ significantly in properties with regard to efficacy.
A substance obtained by a mere admixture resulting only in the aggregation of the properties of the components thereof or a process for producing such substance:
The mere arrangement or re-arrangement or duplication of known devices each functioning independently of one another in a known way.
A method of agriculture or horticulture.
A method of producing a new form of a known plant even if it involved a modification of the conditions under which natural phenomena would pursue their inevitable course is not patentable. (N.V. Philips Gloeiammpenfabrieken's Application 71 RFC 192).
Any process for the medicinal, surgical, curative, prophylactic diagnostic therapeutic or other treatment of human being or any process for a similar treatment of animals to render them free of disease or to increase their economic value or that of their products.
Plants and animals in whole or any part thereof other than microorganisms but including seeds, varieties and species and essentially biological processes for production or propagation of plants and animals;
Example: Clones and new variety of plants are not patentable. But process / method of preparing Genetically Modified Organisms are patentable subject matter.
A mere scheme or rule or method of performing mental act or method of playing game;
A presentation of information Topography of integrated circuits;
INVENTIONS RELATING TO ATOMIC ENERGY
No Patent shall be granted in respect of an invention relating to atomic energy falling within subsection (1) of section 20 of the Atomic Energy Act, 1962
Various types of Patent Applications in India
- Ordinary application
- Convention application
- PCT international application
- PCT National phase application
- Application for Patent of addition
- Divisional Application
APPLICATION FOR A PATENT
An application for a patent may be made by the actual inventor of the invention, or an assignee of the right to make an application or a legal representative of either.
It is the person who first applies for a patent who is entitled to the grant. A prior inventor of the invention who applies subsequently will not get the patent as against the first applicant.
The following documents have to be submitted at the time of filing a patent application:
- Form 1 - Application form in triplicate for the grant of patent.
- Form 2 - Provisional or Complete Specification.
- Form 3 - Statement and undertaking by the applicant.
- Form 5 - Declaration as to inventorship.
- Form 26 - Authorization of patent agent or any other person.
- Priority document details have to be filed for a Convention application
FORM OF APPLICATION
- An application for a patent in the prescribed form along with the prescribed fee should be led in the patent office and every application shall be for one invention only.
- Where the application is made by virtue of assignment of right to apply, proof of such right shall be filed.
- The application shall state that the applicant is in possession of the invention and give the name of the owner claiming to be the true and first inventor and where the person so claiming is not the applicant the application shall contain a declaration that the applicant believes the person so named to be the true and first owner.
- Every such application is to be accompanied by a provisional or complete specification.
- Where the application is accompanied by a provisional specification, a complete specification should be filed within twelve months from the date of filing the application. If this is not done the application shall be deemed to be abandoned.
- The complete specification should fully describe the invention and the method by which it is to be carried out. It should disclose the best method of performing the invention known to the applicant and end with a claim or claims defining the scope of the invention for which protection is claimed.
Priority date is the date of first filing allotted by the patent office to an application. If a provisional application is followed by a complete application, the priority date shall be date of filing of the provisional application. If an Indian application is filed after a foreign or PCT application, the priority date shall be the date of filing of the foreign or PCT application. If an application is divided into two applications, the priority date shall be date of filing of the parent application.
Priority date is the date of reference used by the patent to determine the newness of the invention. If the claimed invention is part of public knowledge before the priority date, it will not be eligible for a patent. Under US Law, priority date is pushed back to the date of conception for determining novelty and Non-obviousness.
An application for a patent can be filed by the true and first inventor. It can also be filed the by the assignee or legal representative of the inventor. If an application is filed by the assignee, proof of assignment has to be submitted along with the application. The applicant can be national of any country.
Place of Filing
Patent Application can be filed at any of the four patent offices in India. Patent Offices are located at Kolkata, New Delhi, Chennai and Mumbai.
PROCEDURE ON RECEIPT OF APPLICATION
A patent application will be published on expiry of eighteen months after the priority date. It can be published earlier, if such a request is made by the applicant. The application will not be published if directions are given for secrecy, until the term of those directions expires. It will also not be published if the application is withdrawn three months before publication date.
On publication, specification including drawings and deposits shall be open for public inspection. The rights of the patentee start from the date of publication but they cannot be enforced until after patent grant.
- Request for Examination The process of examination starts with a request for examination. The request has to be made within 36 months from the date of priority or filing. However, if secrecy directions have been given for the application, the request can be made six months after the directions are revoked or thirty six months from the date of priority or filing, if that date is later.
Examination On receiving the request, the controller shall direct the patent application to the Examiner for examination. To start with, the examiner makes a formal examination by verifying the propriety and correctness of all documents filed with the application. Later, he verifies the patentability of the application. The patentability analysis includes all patentability requirements.
After confirming that the application falls within the scope of patentable subject matter, the examiner conducts a prior art search to check if there is prior art, which anticipates the invention claimed. Prior art search for anticipation includes search for anticipation by publication, filing of complete specification, etc. He then verifies the existence of inventive step, Industrial application, and Enablement and Best mode.
The examiner will give the examination report within 1 month from the date of reference by controller and that term shall not exceed three months. If the examination report is adverse, the controller sends a notice to the applicant and gives him an opportunity to correct and if necessary an opportunity of hearing. The Controller might ask the applicant to amend the application in order to proceed further. If the applicant does not make such changes, the application might be rejected.
The Controller has the power to divide the application, post date the application, substitute applicants and reject the application. An order of division will be given if the application contains more than one invention and if it is required to file separate applications for each invention. The application might be post dated to a period of six months if requested by the applicant. Substitution of inventors is generally done if the inventor has been wrongfully mentioned or if a joint inventor has not been mentioned in the application. The controller has the power to reject the application, if the applicant does not comply with his requirements.
Pre-grant Opposition Any person can file an opposition within a period twelve months after the grant of a patent. It can be filed based on the following grounds:
- Non compliance of patentability requirements.
- Nondisclosure or Wrongful disclosure of genetic resources or traditional knowledge.
Post-grant Opposition : Any person can file an opposition within a period twelve months after the grant of a patent. It can be filed based on the following grounds:
- Wrongful obtainment of the invention by the inventor.
- Publication of the claimed invention before the priority date.
- Sale or Import of the invention before the priority date.
- Public use or display of the invention.
- The invention doesn't satisfy the patentability requirements.
- Disclosure of false information to patent office.
- Application for the invention is not filed within twelve months from the date of convention application.
- Nondisclosure or wrongful disclosure of the biological source.
- Invention is anticipated by traditional knowledge.
- Process of Opposition
GRANT OF PATENT
If the application satisfies all the requirements of the patent act, the application is said to be in order for grant. An application in order for grant shall be granted expeditiously. A granted patent shall be published in the official gazette and shall be open for public inspection. Every granted patent shall be given the filing date. The patent will be valid throughout India. A granted patent gives the patent holder the exclusive right to make, use, sell, offer for sale and import the product or use the process. However, the government can make use of the patent for its own purposes or for distributing an invention relating to medicine to hospitals and dispensaries. Furthermore, any person can make use of the patent for experiment or education.
A patentee may assign the whole or any part of the patent rights to the whole of India or any part thereof. There are three kinds of assignments: legal assignment, equitable assignment and mortgages. An assignment of an existing patent is a legal assignment where the assignee may enter his name as the patent owner. A certain share given to another person is called an equitable assignment and a mortgage is when patent rights are wholly or partly transferred to obtain money.
A patentee may, by a license, permit others to make, use, or exercise, the invention which otherwise would not be allowed. The license should be in writing and the terms of which must be given in the application filed with the Controller. A license maybe given in express terms or implied from the circumstances. An exclusive license excludes all other persons including the patentee from the use of invention. In a limited license the limitation may arise as to persons, time, place, manufacture, use or sale.
Compulsory Licenses and Government use of inventions
Under certain circumstances like when reasonable requirements are not satisfied, a very high royalty is quoted, when a patent cannot work without another related patent or on notification by the Central government, the Controller can grant a license to an interested person.
The Central or State government can use for a purpose of its own all patented inventions or processes either with or without royalty. The idea is that the invention can be put to use for general public benefit by the government in certain circumstances when the patentee would have to forego his commercial gain in the general public interest.
SOME RESTRICTED USE OF PATENTED INVENTION PERMISSIBLE UNDER THE LAW
The essence of a patent is conferring of the exclusive right on the patentee. Yet some restricted use of a patented invention by a person other than the patentee is permissible under the law. For such instance, use of a patented invention is permissible for research or experimental purposes or for imparting knowledge or instructions to pupils.
Revocation of a patent
A patent may be revoked by various modes namely revocation in the public interest by the Government or relating to atomic energy by Controller. A patent may also be revoked for non-working. The High Court may revoke a patent on noncompliance with the requirements for use of an invention or on petition by a person interested on various specified grounds. A patentee may at any time offer to surrender his patent by giving notice to the Controller, whom after hearing the parties may revoke the patent.
RIGHTS OF A PATENTEE
The owner of the "Patent", i.e. patentee is entitled to deal with such property in the same manner as owner of any other moveable property.
- The patentee can sell the whole or part of this property (Patent). He can also grant license to other(s) to use the patented property.
- He can also assign such property to any other(s). Such sale, license or assignment of such patented property naturally has to be for valuable consideration, acceptable mutually.
PERIOD OF PATENT
- In respect of process patents relating to drugs and food, the term is five years from the date of sealing the patents or seven years from the date of the patent whichever is shorter.
- In respect of all other patents the term is fourteen years from the date of the patent. A patent is kept alive only by paying the renewal fee from time to time
INFRINGEMENT OF THE PATENT
The right conferred by the Patent is the exclusive rights to make, use, exercise, sell or distribute the invention in India. Infringement consists in the violation of any of these rights.
The act expressly provides that use by a person other than the patentee, patentee's assignee or licensee would be an infringement of the patent and as such illegal.
The defendant in a suit for infringement may plead one or more defenses. He can claim the patent owner is not entitled to sue for infringement or deny any infringement. Any leave or license express or implied to use the invention does not amount to infringement and where infringement is invalid on certain grounds.
Acts done in connection with government use, experiment, research, education and falling within the scope of innocent infringement or done after failure to pay renewal fee or before the date of amendment of the specification do not amount to infringement. A defendant may also counter claim for revocation of patent.
REMEDY FOR INFRINGEMENT OF PATENT
An action for infringement must be instituted by way of a suit in any District Court or a High Court having jurisdiction to entertain the suit.
The plaintiff on satisfying the court about infringement of his patent would be entitled to the following relief:
- Interlocutory injunction
- Account of profits
The Plaintiff may at the commencement of the action move for an interim injunction to restrain the defendant from committing the acts complained of until the hearing of the action or further orders. The plaintiff should make out a prima facie case and also show that the balance of convenience lies in his favour.
In assessing the damages the important question is what is the loss sustained by the patentee. The loss must be the natural and direct consequence of the defendant's acts. The object of damages is to compensate for loss or injury.
ACCOUNTS OF PROFITS
Where a patentee claims the profits made by the unauthorised use of his patent, it is important to ascertain how much of his invention was appropriated, in order to determine what proportion of the net profits realised by the infringer was attributable to its use.
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