What, Why and How of Patents!
August 31, 2017
Biswajit Sarkar - IP Law Firm India
Post time: 1:39 pm
Introduction
In the past 60 years, innovation and technology have made great strides. Inventions in any field require a huge amount of capital for R &D. Without patents, it is estimated R&D outlays would be reduced by 64%, jeopardizing the well-being of the future innovation process itself.
What is Patent?
A patent for an invention is granted by government to the inventor, giving the inventor an exclusive right, i.e. the right to stop others, for a limited period, from making, using or selling the invention without their permission. The patent owner may give permission to, or license, other parties to use the invention on mutually agreed terms. The consideration for grant of such a right is complete disclosure of the invention.
Patent Laws in India
Patentable Subject matter
In India, the Indian Patents Act 1970 (from hereinafter referred to as the Act) and the Patent Rules, 2003 regulate the grant, the operative period, the revocation and infringement etc. of Patents. The Act has been amended in 1999, 2002 and 2005 to make it TRIPS compliant. An “invention” which can be patented is clearly defined under the Act “as a new product or process involving an inventive step and capable of industrial application”. Thus, there are basically three requirements for an invention to be granted a patent under the Indian law i.e. Novelty or newness, non-obviousness and industrial application (usefulness).
Procedure for grant of Patents in India
- Filing of an application
- Publication and examination of patents
- Pre- grant Opposition
- Grant and sealing of Patents
- Post-grant opposition (if any)
Filing of an Application
In India, there are majorly five different types of Patent applications. Each application serves a different purpose. These are:
1. Ordinary application
An ordinary patent application may be filed if the applicant does not have any priority to claim or if the application is not filed in pursuance of any preceding convention application.
2. Convention application
Filing a convention application allows the applicant to claim priority in all the convention countries. The time limit for claiming priority is 12 months from the date on which the first convention application was filed in a convention country.
3. National Phase PCT application
The PCT procedure consists of two main phases: “International Phase” and “National Phase”.
An international phase comprising:
· Filing of the international application.
· International search and written opinion of the ISA.
· International publication and
· International preliminary examination.
The decision on granting patents is taken exclusively by national or regional Offices in the national phase.
4. Patent of Addition
In cases where a patent application has already been filed and there has been a slight improvement in the invention, a new patent application may not be filed, as it would not satisfy the requirement for inventive step. That is when a patent of addition may be filed. A patent of addition protects the improvement.
5. Divisional Application
When there is more than one invention in a patent application, the applicant may be required to divide the application based on the number of inventions in the application in form of divisional applications.
Who can apply?
A true and first inventor or his assignee or legal representative of a deceased person who immediately before his death was entitled to make such an application, can apply for a patent.
Provisional and Complete Specification
A patent specification is a technical document describing the invention. It may be provisional giving initial description of an invention or a complete specification giving full description and sufficient detail in such a manner that a person skilled in the art can use the invention when he reads the description. In case of a provisional specification, a complete specification must be filed within 12 months.
Publication and Examination of the Applications
An application for patent must not be open before expiry of 18 months from the date of filing the application or the date of priority of the application, whichever is earlier. But an applicant can request publication before the expiry of the prescribed period.
The applicant must request for examination of the application for patent within 36 months from the date of filing the application for patent, otherwise the application shall be treated as withdrawn. An express request for examination before expiry of 31 months can be made with respect of the applications filed under Patent Cooperation Treaty (PCT).
The Controller refers the application to the examiner, who is then required to prepare the Examination Report within one month, but not exceeding three months from the date of reference.
Once the patent application is examined, the Patent office issues an examination report to the patent applicant known as First Examination Report (FER). The Applicant should reply any objections and place the application for grant within 12 months from the date of issue of the FER.
Pre Grant Opposition/Post grant opposition
Where an application for a patent has been published but a patent has not been granted, any person may in writing, oppose the grant of patent on the grounds given under the Act. An opposition can be made even after grant of the patent on similar grounds within 1 year of publication of the grant of patent.
Grant of Patent: When the application for a patent has been found in order, is in accordance with the provisions of the Act and has not been refused by the controller by virtue of any power vested in him, then patent is granted as expeditiously as possible.
Neetu Singh
Legal Trainee
