Patent Protection in

India: Law and Practice

Ms. Urvi Shah
Assistant Professor
Unitedworld School of Law

Meaning and Types of Intellectual

Property
Intellectual

property right is an intangible

right protecting commercially valuable
products of human intellect
Copyrights and related rights
Trade Marks
Geographical Indications
Industrial Designs
Lay out Designs of Integrated Circuits
Protection
of Undisclosed Information
(Trade Secrets)
Patents
Plant varieties

Patent - Meaning
Patent

is an exclusive right
granted by the Government of
India to the patentee of an
invention for a limited period of
time in lieu of full disclosure of
his invention.

Reasons for Patenting Inventions

Provide

Exclusive rights
Strong market position
Higher returns on investments
Opportunity to license or sell the
invention
Increase in negotiating power
Positive image for the Company

Legislation governing the Patent

Law in India
The

Patent system in India is

governed by the Patents Act,1970
The Patents Act was amended in the
year 2005 by The Patents
(Amendment) Act, 2005
The Patent rules, 2003 were also
amended by the Patent (Amendment)
Rules 2006

Salient features under the Patents

law
Both

product and process patent

provided
Term of patent 20 years
Examination on request
Both pre-grant and post-grant opposition
Fast track mechanism for disposal of
appeals
Provision for protection of bio-diversity
and traditional knowledge
Publication of applications after 18
months with facility for early publication
Substantially reduced time-lines

Safeguards in the Patent Law

Compulsory

license to ensure availability

of drugs at reasonable prices
Provision to deal with public health
emergency
Revocation of patent in public interest
and also on security considerations

Role of the Government

To

encourage innovation and investment

in the research and development
Economic, Industrial and Technological
development in the Country

Who can apply for a patent?

An

inventor

or
any other person/company assigned by
the inventor
A

Patent is obtained by the inventor or

his assignee by filing an application with
the patent office in the stipulated forms
as required by the Patent Act of that
country.

Where to apply for patents?

The

four patent offices are located at Kolkata,

Mumbai, Delhi and Chennai
The Application is required to be filed according
to the territorial limits where the applicant or
the first mentioned applicant in case of joint
applicants for patent normally resides or has
domicile or has a place of business or the place
from where the invention actually originated.
The Appropriate office once decided in respect
of any proceedings under the Act shall not
ordinarily changed.

Patentability of Invention
Sec.2(1)(J)
Invention

means a new product or

process involving an inventive step and
capable of industrial application.

So

basically the criteria for patents is -

Novelty
Inventive

Step
Industrial Applicability

Novelty
Invention

should not form a part of the

global state of art.
Novelty is assessed in a global context
Novelty is determined through extensive
literature and Patent searches.
Patent search is essential and critical for
ascertaining novelty as most of the
information reported in the patent
document does not get published
anywhere else.

Inventive Step
The

invention must not be obvious from

the previously known substance.
Inventive step means a feature of an
invention
that
involves
technical
advancement as compared to the
existing knowledge or having economic
significance or both and that makes the
invention not obvious to a person skilled
in the art.

Capable of Industrial Application

Industrial

Applicability means
the invention must be capable of
being produced or used on an
Industrial scale.

Non Patentable Inventions

Invention

which is frivolous or contrary to the

well established natural laws
Contrary to public order or mortality 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
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 any new property or new use for
a known substance.
A substance obtained by mere admixure

 The

mere arrangement or rearrangement or

duplication of known devices.
A method of agriculture or horticulture
A process for the medicinal, surgical, curative,
prophylactic, diagnostic, therapeutic
Plants and Animals other than microorganisms
Mathematical or Business method or a
computer program
Artistic work or any other aesthetic creation
Scheme or rule or method of performing mental
act
Topography of integrated circuits
Invention relating to atomic energy

Term of Patent
Term

of every patent will be 20 years

from the date of filing of patent
application
Date of patent is the date on which the
application for patent is filed

Types of Patent Applications

Application

for ordinary Patent

- Provisional specification
- Complete Specification
Patent of Addition
Division Application
Convention Application
Application under PCT

Provisional Specification
Should

contain title and description of the

essential features of the invention.
Need not include the manner of performing
the invention.
Should not contain claims.
The Complete specification should be based
on matters disclosed in the Provisional
specification and should be filed within 12
months.
If Complete specification is not filed within
12 months the application is deemed to be
abandoned.

Complete Specification
Complete

Specification
shall
fully
describe the invention with reference to
drawing, if required
It should disclose the best method
known to the applicant and end with
claims defining the scope of protection
sought
The specification must be written in such
a manner that person of ordinary skill in
the relevant field to which the invention
pertains can understand the invention

Contents of Complete Specification

Title:

It should indicate the subject matter

to which the invention relates.
Field of the Invention: It shows the scope
of the invention.
State of prior Art: It should indicate the
state of technology in the field of invention
with reference to experiments going on in
the field, patents and pending patent
applications.
Object of the Invention: The purpose of
this part is to clearly bring out the
necessity of the invention.

 Statement

of Invention: The description should

include a statement of invention before giving the
details of the invention and method of performing it.
Description: It contains fully and particularly
describes the invention and its operation or use and
the method by which it is to be performed.
Drawings: No special illustration of drawings
required but it should be mentioned in the
specification itself.
Biological material: If biological material is
mentioned in the specification and there is a
requirement for deposition of biological material
then it should deposit at depository institution and
the date and number of the deposits of the material
at the institution should be mentioned in the
specification.

 Scope

and/or Ambit of the Invention: This

part of the specification should bring out the
areas of application of the invention and the
preferable use of the invention.
Claims: The claim defines the boundaries of
the legal protection sought by the patent. Its
object is to define clearly with conciseness,
precision and accuracy the monopoly claimed.
Claims should relate to a single invention.
Claims should be clear and concise.
Claims should be supported by description.
Principal claim should define all essential
novel features.
Preferred features may be given in the
subordinate claims.

-Principal claim most preferred embodiment

-Subsidiary claims alternate embodiment of the
invention
-Independent claims an invention supplementary
to the principal claim
-Dependent claims minute aspects and optional
features
-Omnibus claims To get an integral protection of
what is described in the specification and
drawings.
Abstract It should not be more than 150 words.
It should contain a concise summary of the
matter contained in the specification, indicate
the technical field, technical problem its solution
and the use of the invention. If it contains
drawings it must be illustrated in the abstract.

Procedure after filing till grant

Filing of Patent Application
If the Applicant wishes earlier publication
then he may file Request for publication
before eighteen months from the date of
filing of application or the date of priority
(not mandatory)
Publication of Patent Application
Request for examination after publication of
the application should be made within 36
months from the date of priority of the
Application or from the date of filing of the
Application

Issuance of Examination Report

Reply on examination report should be
given within 6 months from the date
of first statement of objection is
issued to the applicant to comply with
the requirements.
Grant of Patent
Renewal of Patent

Explanation of the Stages

File

an application for patent

With one of the patent offices based on
territorial jurisdiction of the place of
office or residence of the applicant
/agent
Pay the required fee
Information concerning application form
and
details
of
fee
available
at
www.ipindia.nic.in
Guidelines for applicants also available
on this website

Formality Check
An

Examiner
checks
the
formal
requirements before accepting the
application and the fee this is done
immediately
Issue of application number and the cash
receipt this is done the same day
In case of receipt of application by post,
cash receipt, application number is sent
by post within 2-3 days

Publication
Application

is kept secret for a period of

18 months from the date of filing
In
19th month, the application is
published in the official journal this
journal is made available on the website
weekly
Applicant has an option to get his
application published before 18 months
also
In that case, application is published
within one month of the request

Request for Examination

Application

is examined on request
Request for examination can be made
either by the applicant or by a third
party
A period of 48 months, from the date of
filing, is available for making request for
examination

Examination
Application

is sent to an Examiner within

1 month from the date of request for
examination
Examiner undertakes examination w.r.t.
whether the claimed invention is not
prohibited for grant of patent
whether the invention meets the
criteria of patentability

Issue of FER
A

period of 1 to 3 months is available to

Examiner to submit the report to the
Controller
1 months time available to Controller to
vet the Examiners report
First
Examination
Report
(FER)
containing gist of the objections is issued
within 6 months from the date of filing of
request

Response from the Applicant

12

months time, from the date of issue

of FER, is available to the applicant to
meet the objections

If

objections are met, grant of patent is

approved by the Controller within a
period of 1 month

Examination of Pre-grant
Opposition
Opposition

(documents) is sent to the

applicant
A

period of 3 months is allowed for

receipt of response

Consideration of Pre-grant
Opposition
After

examining the opposition and the

submissions made during the hearing,
Controller may
Either reject the opposition and grant
the patent
Or
accept
the
opposition
and
modify/reject the patent application
This is to be done within a period of 1
month from the date of completion of
opposition proceedings

Pre-grant Opposition
After

publication, an opposition can be

filed within a period of 6 months

Opportunity

of hearing the opponent is

also available

Grant of a Patent
A

certificate of patent is issued within

7 days

Grant

of patent is published in the

official journal

Renewal Fee
To

be paid within 3+6 months from date

of recording in the register [sec 142 (4) ]
No fee for 1st and 2nd year
Renewal fee, on yearly basis, is required
to be paid for 3rd to 20th for keeping the
patent in force
Delay upto six months from due date
permissible on payment of fee for
extension of time
Patent lapses if renewal fee is not paid
within the prescribed period

General information required to fill

forms
Name

(s), Address (es) and nationality (ies) of

the
Applicant (s)
Name (s), Address (es) and nationality (ies) of
the Inventor(s)
If the Applicant is not the inventor:
Relevant information explaining how the
Applicant acquired the right to the invention for
our preparation of a statement which has to be
filed with the Patent office.
Eg. The Applicant is the assignee of the
invention or the Applicant the employer of the
inventor etc

Common Mistakes
If you do not patent
- Somebody else might patent them
- Competitors will take advantage
- Possibilities
to license, sell or transfer
technology will be affected
First to file system is employed therefore a
patent application should be filed promptly after
conceiving the invention
Do not publish invention in news papers or
scientific and technical journals, before applying
for patents. Publication of an invention, even by
the inventor himself would constitute a bar for
subsequent patenting of it.

 Do

not wait until inventions are fully

developed for commercial working, before
applying for patents. It is advisable to
apply for a patent as soon as the
inventors idea of the nature of invention
has taken a definite shape.

Thank you