What is Patent?

A patent is a grant from the government which confers on the guarantee for a limited period of time the
exclusive privilege of making, selling, and using the inventions for which a patent has been granted.
In India the grant of patents is governed by the patent Act 197 and !ules 197". #he patents granted
under the act are operative in the whole of India.
A patent is a contract between the inventor or applicant for the patent and the $tate, whereby the inventor
or applicant gets a monopoly from the state for a certain period in return for disclosing full details of the
invention.
Purpose of getting a patent
% #o en&oy the exclusive rights over the invention. 'If the inventor does not get the patent rights
over his invention and introduce his product(process based on his invention in the market,
anybody can copy his invention and exploits it commercially.)
% #he patent is to ensure commercial returns to the inventor for the time and money spend in
generating a new product.
% *revention against leaking of the invention through workmen of inventor.
% *revent secret exploitation of invention by the competitor.
% +n obtaining patent the patentee can lawfully enforce against infringers.
% #o encourage research and development.
% Induces an inventor to disclose his invention.
% #o protect their invention from being copied
,oth product and process patent provided.
#erm of patent - " years.
Q-1 What are not inventions and which inventions are not patentable?
An invention means a new product or process involving an inventive step and capable of industrial
application.
An innovation means the successful exploitation of new ideas in the form of a useful machinery or
process, by any person, using his(her own intellect.
Not inventions:
% A method of agriculture or horticulture.
% any process for the medicinal, surgical, curative, prophylactic or other treatment of
human beings or any process for a similar treatment of animals or plants to render them
free of disease or to increase their economic value or that of their products.
% the mere arrangement or re.arrangement or duplication of known devices each
functioning independently of one another in a known way.
Inventions are not patentable:
% Inventions related to atomic energy
% arrangement or rearrangement in a known way
% /iscovery of any living thing or non living substances occurring in nature.
% #he inventions whose use are in&urious to public health
% A presentation of information
% /iscovery of scientific principle or formulation of an abstract theory. 0g a method of transmitting
material from one brain to another brain is an abstract theory.
% 1ethod of agriculture or horticulture eg, the method of terrace farming cannot be patented.
% Any process for medical, surgical, curative or other treatment of human beings.0g knee surgery.
Q-2 What do you understand by provisional and coplete specifications and contents of
specifications of a patent?
It is very important documents to establish the earliest ownership of an invention.
#he provisional specification is a permanent and independent scientific cum legal document and no
amendment is allowed in this and no patents are granted on the basis of this specification.
It is a document in prescribed form containing a description of essential features of the inventions.
It is document in prescribed form
#hat contains fully and particularly describe the inventions and its operation or use and the method by
which it is to be performed.
#hat contains claim defining the scope of the invention for which protection is claimed.
#he complete specification has following parts2.
#itle
Abstract
3ritten /escription
4laims
Q-! What are the powers of "ontroller in respect of the following:
a# $o refuse or re%uire aended applications in certain cases
4ontroller is satisfied that the application or any specification filed in pursuance thereof does not
comply with the re5uirements of this Act or of any rules made thereunder, the
4ontroller may either refuse to proceed with a. the application6 or re5uire the application,
specification or drawings to be amended to his satisfaction before he proceeds with the
application.
b# $o a&e orders respecting division of application
c# $o a&e order respecting dating of application
d#
e# In case of potential infringeent
Q-' ()plain what you understand by opposition proceedings to grant of patents#
7our months from date of advertisement of acceptance of complete specification '1 month may exceed)
+pposition to the grant of *atent signifies the first instance at which a challenge can be made to the grant
of a patent.
+pportunity for the competitor to oppose un&ustified protective rights.
#8*0$ +7 +**+$I#I+9
*re.:rant
+pposition made before the :rant of *atent

*ost.:rant
+pposition made after the :rant of *atent
A;#<+!I#8 7+! I9=+>I9: +**+$I#I+9
*atent +ffice
Intellectual *roperty Appellate ,oard ?I*A,@
<igh 4ourt ?4oncerned Aurisdiction@
+pposition to a *re.grant *atent should be made after the publication of the $pecification in the *atent
office &ournal and before the :rant of *atent.
+pposition to a *ost.grant *atent should be made within twelve months from the date of publication of
the :rant of *atent in the *atent office &ournal

Q-* What is patent of addition and its ter and validity?
*atent of addition is an application made for a patent in respect of any improvement or modification of
an invention described or disclosed in the complete specification already applied for or has a patent.
#erms of patents of addition e5ual to the term of patents for the main invention.
Q-+ What are the provisions of aendent of applications and specifications for a petent?

Q-, What are the provisions of restoration of elapsed patents?
#he patentee or his legal representative, and where the patent was held by two or more persons &ointly,
then with the leave of the 4ontroller, one or more of them without &oining the others, may, within one
year from the date on which the patent ceased to have effect, make an application for the restoration of
the patent.
Application for restoration of a patent that lapses due to non payment of renewal fees must be made
within 1" month of lapse. #he application is to be filed to the controller.
Q-1- What are the provisions of surrender and revocation of patents?
In order to surrender his patent, a patentee has to give notice in the prescribed manner to the 4ontroller.
#he registrar then informs all concerned persons and on hearing the patentee and any opposition, if he
feels he may allow the surrender of patent.
A patent may be revoked by the <igh court and an Appellate ,oard on any of the following grounds2
% #he specification claimed in the application have already been given in a prior
application.
% #he patent was obtained by false representation.
% #he patent was granted wrongfully.
% #he patent was granted to a person who is not entitled to apply for it.
Q-11 What are the penalties?
.//(N"(0 P(N12$I(0
4ontravention of secrecy provisions relating to
certain inventions
imprisonment for a term which may extend to two years, or with
fine, or with both.
7alsification of entries in register, etc. ..... do .....
;nauthorised claim of patent rights fine upto 1 lakh rupees
3rongful use of words, Bpatent officeB imprisonment for a term which may extend to six months, or
with fine, or with both.
!efusal or failure to supply information ..... do .....
*ractice by non.registered patent agents fine which may extend to !s.1 lakh in the case of a first offence
and !s.C lakhs in the case of
subse5uent offence.
+ffences by companies If the person committing an offence under this Act is a company
offence shall be deemed to be guilty and shall be liable to be
proceeded against and punished accordingly
Q-12 What is an 31ppellate 4oard5? What are the procedures and powers of 1ppellate 4oard?
% Intellectual *roperty Appellate ,oard has been constituted by a :aDette notification of the 4entral
:overnment in the 1inistry of 4ommerce and Industry on1Cth$eptember "E.
% #he Intellectual *roperty Appellate ,oard hasits head5uarters at 4hennai and shall have sittings
at 4hennai, 1umbai,/elhi,>olkata and Ahmedabad.
% #ohearappealsagainstthedecisionsofthe!egistrarunderthe#rade1arksAct,1999andthe:eographica
lIndicationsof:oods'!egistrationand*rotection)Act,1999.
% AlltheAppealspendingbeforethevarious<igh4ourts,aretransferredtotheI*A,.
% 7resh!ectificationApplicationsunderthe*atentsAct,197,willhavetobefiledbeforetheI*A,
% "oposition
4hairman
=ice 4hairman
#echnical 1ember '*atent)
#echnical 1ember '#rade 1arks)
/eputy !egistrar
Q-1! Write about the Patent "ooperation $reaty#
*atent Faws differ from country to country and there is no B3orld *atentB or BInternational *atentB.
<owever, there is an international filing system that is accessible in accordance with patent cooperation
treaty '*4#).
3hen a *4# application is filed in one of the member.states of the *4#, this is legally in effect e5uivalent
to filing in all *4# member states.
*atent right is granted only by the particular member country after entering the national phase in that
country.
If any application is to be filed abroad ,without filing in India ,it should be made only after taking a
written permission from the 4ontroller.
Q-1' Write in detail about WIP.?
% 3orld Intellectual *roperty +rganiDation is one of the specialiDed Agencies of the united
nations.
% 3I*+ was created in 19G7 HTo Encourage creative activity, To promote the protection of
intellectual property through out the worldI.
% 3I*+ currently has 1J7 member states administrators "G international treaties , and is
head5uartered in :eneva , $witDerland.
% 3I*+ has established 3I*+90# , a global info network.#he pro&ect seeks to link over
E intellectual property offices in all 3I*+ member states . In addition to providing a means of
secure communication among all connected parties , 3I*+90# 7oundation for 3I*+Ks
Intellectual property services.
% 3I*+ is responsible
H For promoting creative intellectual activity and for facilitating the transfer of technology related
to industrial property to developing countries in order to accelerate economic , Social and
cultural development , subject to the competence and responsibilities of the UN and its rgans ,
!articularly the UN conference on Trade and "evelopment , the Un development program and
the UNs #ndustrial development organi$ation , as well as of the UN educational , Scientific and
cultural organi$ation and of other agencies with in the Un system I
% I* $0!=I40$ 2 *rotecting I* L resolving disputes.
% 3I*+ is the :lobal forum for intellectual property $ervices , policy information and co.
operation.


6nder pre-grant opposition7 any person can represent for opposition7 in writing7 to the
Indian Patent .ffice7 against the grant of a patent after the application for a patent has
been published7 but a patent has not been granted# $he pre-grant opposition procedure acts
as a protective shield to chec& the validity of patent applications before a patent is granted
on the# 1dditionally7 pre-grant opposition acts as a business strategy7 whereby
copetitors e)ploit it as an opportunity for opposing un8ustified protective rights#
With regards to opposition after the grant7 or post-grant opposition7 at any tie after the
grant of patent but before the e)piry of period of one year 912 onths: fro the date of
publication of grant of patent7 any person interested ay give notice of opposition to the
Patent office# $his type of opposition is siilar to the opposition proceedings under
the (uropean Patent .ffice 9(P.: as the opposition is ade after grant#
$he grounds for both pre and post-grant opposition are identical and there is nothing to
preclude a pre-grant opponent fro subse%uently filing a post-grant opposition# ;owever7
despite the siilarities7 there are also several procedural differences between the two types
of opposition#
$he priary difference between pre-grant and post-grant opposition is that though pre-
grant proceedings ay be initiated by 3any person57 but only a 3person interested5 can
institute a post-grant opposition# $he Indian Patents 1ct defines a 3person interested5 as
including a person engaged in7 or in prooting7 research in the sae field as that to which
the invention relates#
1nother stri&ing difference between the pre-grant and post-grant opposition is that
infringeent proceedings cannot be initiated during pre-grant opposition as the patent is
still in the application stage7 whereas in case of post-grant opposition7 infringeent
proceedings ay be instituted#
<oreover7 the Indian Patents 1ct does not e)plicitly allow the opponent to be heard in a
pre-grant opposition# $he opponent has to a&e a re%uest for hearing and the rules do not
detail how a hearing is to be conducted# $he opponent=s right to be heard solely depends
upon the discretion of the "ontroller7 who decides the sae based upon the erit of the
opposition# 1dditionally7 the rules are also not clear whether the opponent will be heard in
the presence of the applicant# In contrast7 the opponent in a post-grant opposition can
proceed with the case irrespective of the erit of the notice of opposition#
/urtherore7 as per the stand ta&en by the Intellectual Property 1ppellate 4oard 9IP14:
on nuerous occasions7 there is no reedy against an order of the "ontroller in a pre-grant
opposition7 e)cept to file a writ petition under the Indian "onstitution#
;owever7 a recent order by the <adras ;igh "ourt provided soe clarity with regards to
the e)isting abiguities in the pre-grant opposition proceedings# >ediff#co India 2td# had
filed a Pre ?rant .pposition against grant of patent to @ahooA Inc# for a patent application
pertaining to a coputer networ& search syste7 which was published on 2-#-'#2--' in
Patents Bournal No#1C of 2--*# $he "ontroller accepted the representation and refused to
grant patent by holding that the invention of the applicant does not pass the novelty and
patentability test# "hallenging said order7 an appeal was preferred by @ahoo before IP14#
;owever7 said appeal was refused to be entertained by the IP14 on the ground that no
appeal under 0ection 11*-1 would lie against an order under 0ection 2D91: of the Patents
1ct7 1,*-# "hallenging said order of refusal to entertain the appeal filed by @ahoo7 a writ
petition was filed before the ;igh "ourt of <adras#
"onse%uently7 setting aside the order of the IP147 <adras ;igh "ourt has held that an
appeal under section 2D of the Patent 1ct lies under 0ection 11* 1 and that while hearing
such an appeal the party which had filed a Pre ?rant .pposition should be given a hearing
before arriving at a decision on the .pposition7 thereby providing clarities with regards to
above-entioned abiguities#
1s fas as pharaceutical industry is concerned7 a broad analysis of soe basic trends in
the strategies of the generic pharaceutical industry in filing such oppositions illustrates
that the highest nuber of oppositions aongst generic copanies have been filed by
"ipla7 followed by >anba)y# <oving further down the ladder7 ne)t coes $orrents7
followed by N1$".# .ther generic copanies include ?lenar&7 <atri)7 18anta7 ;etero
and Woc&hardt#
$herefore7 as ay be seen7 the two-stage patent opposition process has particularly affected
the pharaceutical industry7 as the patent applicants are now vulnerable to ultiple pre-
grant oppositions filed by copetitors7 or even by a single copetitor7 since there is nothing
to stop a party which has filed a pre-grant opposition fro subse%uently filing an
opposition once the patent has been granted# 1s a result7 it is not uncoon that
continuous and repeated opposition proceedings have been launched against the sae
patent application# $he resulting delays are a a8or cause of concern for the patent
applicant7 as the patent ter begins to run fro the date of filing of the application# $his
wave of opposition proceedings is also adding to the bac&log of patent prosecutions at the
Indian Patent .ffice# ?iven that revocation and litigation are also available options to
challenge a patent7 the delay in grant ay be regarded as bias against the patentee#