[FAQs] on Law Relating to Patents

Patent [Section 2(1)(m)]: It define patent as patent granted under the Act.

Thus, word patent is not defined under the act though what can be patented and what cannot be patented has been specified.

A patent generally speaking is a grant from government which confers on the grantee for a limited period of time (in 20 years) exclusive privilege of making, selling & using the invention for which a patent has been granted.

A patent is a contract between society as a whole and the individual inventor.

Patent right are granted only to new invention which are capable of industrial application.

Various advantages of patent are as follows:

1. Rights to restrict outsider: Patentee have the complete rights to restrict outsider from making, operating, providing accessibility to be bought, providing or putting in the product generated by him, without his consent. He has absolute prerogative to utilize his invention and his rights that are very much ensured under the Patents Act, 1970.
2. Remedies in case of encroachment of patent: The patentee has a privilege to file the suit for encroachment of his patent and can ask for remedies like, injunction, compensation and a settlement of profit against the individual who encroached his patent.
3. Commercial exploitation: Patentee can commercially exploit or pitch his creation to any skilled individual and concede permit to him to abuse his item and in this way the patentee can likewise wins benefit along these lines.
4. Permitted use can exercise the rights of patentee: The holder of the exclusive permit can also avail the rights given to the patentee and can bring a suit if there is encroachment of Patent.
5. Privilege to make changes or alterations: A patentee gets the privilege to make changes in or alterations of an invention depicted or uncovered in the total determination of the primary innovation and get the particular right of a patent by the substantial change or patent as a matter of addition/certain adjustment.

An invention relating either to a product or process that is new, involving inventive step and capable of industrial application can be patented.

However, it must not fall into the categories of inventions that are non-patentable under sections 3 and 4 of the Act.

Patents are territorial rights. In general, the exclusive rights are only applicable in the country or region in which a patent has been filed and granted, in accordance with the law of that country or region.

Therefore, separate patents should be obtained in each country where the applicant requires protection of his invention in those countries. There is no patent valid worldwide.

It is possible to file an international application known as PCT application in India in the Patent Offices located at Kolkata, Chennai, Mumbai and Delhi. All these offices act as Receiving Office (RO) for International application.

Mudit should follow the following procedure for filing patent application for the tool:

Search Report: Before filing a patent application in India, one should perform a detailed patentability search to determine whether a patent for it will be available or not.

Mode of filing application: Application for grant of patent may be filed either physically at patent office or electronically.

While filing a patent application, provisional specifications or complete specifications can be filed by the applicant.

Documents/information that must be filed for obtaining patent registration:

• Patent Application: Application for Patent shall be submitted in the specified Form.
• Proof of right: Proof of right to file application from the inventor. The proof of right can either be an endorsement at the end of the application or a separate agreement attached with the patent application.
• Provisional specifications: Provisional specifications, if complete specifications are not available.
• Complete specification: Complete specification in specified Form within 12 months of filing of provisional specification.
• Statement and undertaking: Statement and undertaking in Form 3, if applicable. Form 3 can be filed along with the application or within 6 months from the date of application.
• Declaration as to inventor ship: Declaration as to inventorship in Form 5 for applications with complete specification or a convention application or a PCT application designating India. Form 5 or Declaration as to inventorship can be filed within one month from the date of filing of application, if a request is made to the Controller in Form 4.
• Power of authority: Power of authority in Form 26, if patent application is being filed by a Patent Agent. In case a general power of authority, then a self-attested copy of the same can be filed by the Patent Agent or Patent Attorney.
• Priority document: Priority document must be filed in the following cases:

1. 1. Convention Application (under Paris Convention).
   2. PCT National Phase Application wherein requirements of Rule 17 of has not been fulfilled.
   3. Priority document must be filed along with the application or before the expiry of 18 months from the date of priority, to enable early publication of the application.

• Permission from National Biodiversity Authority: If the Application pertains to a biological material obtained from India, the applicant is required to submit permission from the National Biodiversity Authority any time before the grant of the patent. However, it is sufficient if permission from the National Biodiversity Authority is submitted before the grant of the patent.
• Geographical origin of biological material: The Application form should also indicate clearly the source of geographical origin of any biological material used in the specification.
• Signature: All patent applications must bear the signature of the applicant or authorized person or Patent Attorney along with name and date.

Provisional or complete specification must be signed by the agent/applicant with date on the last page of the specification. The drawing sheets attached should also contain the signature of an applicant or his agent in the right hand bottom corner.

What are not Inventions [Section 3]: Following are not inventions within the meaning of the Act:

(a) An invention which is frivolous or which claims anything obviously contrary to well established natural laws.

(b) An invention the primary or intended use or commercial exploitation of which would be contrary to public order or morality or which causes serious prejudice to human, animal or plant life or health or to the environment.

(c) The mere discovery of a scientific principle or the formulation of an abstract theory or discovery of any living thing or non-living substance occurring in nature.

(d) 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.

(e) 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.

(f) The mere arrangement or rearrangement or duplication of known devices each functioning independently of one another in a known way.

(g) Omitted by Patents (Amendment) Act, 2002.

(h) A method of agriculture or horticulture.

(i) Any process for the medicinal, surgical, curative, prophylactic diagnostics, therapeutic or other treatment of human beings 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.

(j) Plants and animals in whole or any part thereof other than micro-organisms but including seeds, varieties and species and essentially biological processes for production or propagation of plants and animals.

(k) A mathematical or business method or a computer programme per se or algorithms.

(l) A literary, dramatic, musical or artistic work or any other aesthetic creation whatsoever including cinematographic works and television productions.

(m) A mere scheme or rule or method of performing mental act or method of playing game.

(n) A presentation of information.

(o) Topography of integrated circuits.

(p) An invention which, in effect, is traditional knowledge or which is an aggregation or duplication of known properties of traditionally known component or components.

Inventions relating to atomic energy not patentable [Section 4]: No patent shall be granted in respect of an invention relating to atomic energy falling Section 20(1) of the Atomic Energy Act, 1962.

Inventions where only methods or processes of manufacture patentable [Section 5]: Omitted by the Patents (Amendment) Act, 2005 w.e.f. 1.1.2005.

Invention: Invention means new product or process involving inventive step and capable of industrial application. Invention is a product of original thought. Invention must result in a new product or new result or new process or a new combination.

If invention is obvious and does not involve any inventive step, grant of patent can be opposed.

What is not invention: Mere discovery of an already existing principle is not an invention e.g. Edison invented electric bulb while Columbus discovered America. Mere discovery of new thing is not invention.

Thus, utility and novelty of the invention were the important considerations for granting a patent privilege.

The word ‘patentable invention’ is not defined anywhere in the Patent Act, 1970. However, one can say that ‘patentable invention’ means invention for which patent can be granted under the Patent Act, 1970. Section 3 enumerates the inventions which are not patentable.

Invention: Invention means new product or process involving inventive step and capable of industrial application. Invention is a product of original thought. Invention must result in a new product or new result or new process or a new combination.

If invention is obvious and does not involve any inventive step, grant of patent can be opposed.

Inventive Step [Section 2(1)(ja)]: Inventive step means a feature of an invention that involves technical advance 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.

The word ‘patentable invention’ is not defined anywhere in the Patent Act, 1970.

However, one can say that ‘patentable invention’ means invention for which patent can be granted under the Patent Act, 1970. Section 3 enumerates the inventions which are not patentable.

Persons entitled to apply for Patents [Section 6]: An application for a patent for an invention may be made by any of the following persons:

1. True and first inventor of the invention.
2. Assignee of the true and first inventor of the invention.
3. Legal representative of deceased person who was entitled to make application before his death.

An application may be made by any of the above persons either alone or jointly with any other persons.

Patent protection is territorial right and therefore it is effective only within the territory of India. However, filing an application in India enables the applicant to file a corresponding application for same invention in convention countries, within or before expiry of twelve months from the filing date in India. Therefore, separate patents should be obtained in each country where the applicant requires protection of his invention in those countries. There is no patent valid worldwide.

Application under Patent Cooperation Treaty [Section (1A)]: Every international application under the Patent Cooperation Treaty (PCT) for a patent, as may be filed designating India, shall be deemed to be an application under the Act, if a corresponding application has also been filed before the Controller in India.

Filing date of international application [Section (1B)]: The filing date of international application under the Patent Cooperation Treaty and its complete specification processed by the patent office as designated office or elected office shall be the international filing date accorded under the Patent Cooperation Treaty.

Provisional & Complete Specifications [Section 9]: Where an application for a patent is accompanied by a provisional specification, a complete specification shall be filed within 12 months from the date of filing of the application.

If the complete specification is not so filed, the application shall be deemed to be abandoned.

Where an application for a patent is accompanied by a specification purporting to be a complete specification, if the applicant so requests within 12 months from the date of filing of the application, the Controller may direct that such specification shall be treated as a provisional specification.

Contents of specification [Section 10]:

(1) Description of invention: Every provisional or complete specification shall describe the invention and begin with a title stating to which the invention relates.

(2) Requirements of complete specification: Every complete specification is required to –

(a) Describe the invention and its operation or use and the method of performing.

(b) Disclose the best method of performing the invention.

(c) Define the scope of the invention.

(d) Provide technical information on the invention.

However, the Controller may amend the abstract to provide better information to third parties. In case of an international application designating India the title, description, drawings, abstracts and claims filed with the application shall be taken as the complete specification for the purposes of the Act.

(3) Statement of claims: The claims of a complete specification shall relate to a single invention, or to a group of inventions linked so as to form a single inventive concept, shall be clear and succinct and shall be fairly based on the matter disclosed in the specification.

(4) Declaration as to the inventorship: A declaration as to the inventorship of the invention shall be furnished in the prescribed form with the complete specification or within prescribed period after the filing of that specification.

(5) Claims in respect of developments or additions to invention: A complete specification filed after a provisional specification may include claims in respect of developments or additions to invention.

Following are the main points of difference between provisional & complete specification:

The Controller during examination of patent applications can exercise following powers:

(1) Power to refuse or require amended application in certain matters [Section 15]: After hearing the applicant, the Controller can refuse the application or may require applicant to amend the same. If amendments are not carried out, he can refuse the application.

(2) Power to make orders respecting division of application [Section 16]: The Controller has power to order division of application if claim of complete specification relates to more than one invention.

(3) Power to make orders respecting dating of application [Section 17]: The Controller has power to require –

(a) Post dating of application but not later than 6 months from the date of application.

(b) Post dating when application or specification has been amended u/s 15.

(4) Powers of Controller in cases of anticipation [Section 18]: The Controller has the power to order amendment of complete specification if the invention was anticipated, unless the applicant shows that the priority date is earlier than the date on which relevant documents was published.

(5) Powers of Controller to make orders regarding substitution of applications [Section 20]: The Controller can order substitution of application in following cases:

(a) If the claimant is entitled to patent dues due to assignment or agreement.

(b) If one of joint applicant dies.

(c) When there is dispute between joint applicants as to manner in which application should be proceeded with.

Powers of Controller in case of potential infringement [Section 19(1)]: If invention in respect of which application has been made cannot be performed without substantial risk of infringement of other patent, the Controller may direct that a reference to other patent be inserted in the applicants complete specification by way of notice to the public.

The reference is inserted in following manner.

“Reference has been directed in pursuance of Section 19(1) of the Patent Act, 1970 to Patent No. ”

However, no such reference is required to be inserted in the application in following cases:

(a) The applicant shows to the satisfaction of the Controller that there are reasonable grounds for contesting the validity of the said claim of the other patent.

(b) The complete specification is amended to the satisfaction of the Controller.

Deletion of reference to another patent [Section 19(2)]: By making an application to the Controller, a reference to other patent can deleted in following circumstances:

(i) Other patent is revoked.

(ii) Other patent ceases to be in force.

(iii) Other patent specification is amended by deletion of claim.

(iv) If Controller or Court declares the claim of other patent is invalid.

Time for putting application in order for grant [Section 21]: Application for grant of patent shall be deemed to have been abandoned if applicant fails to comply with the requirements within 12 months. Failure to comply requirement may be related to complete specification or application to grant patent. The period of 12 months start from:

• Filing complete specification/other document or
• Filing of 1st statement of objection.

If any document filed with the Controller is returned by him, it will be treated as applicant deemed to have not complied with requirement unless he refills the document.

If at the expiry of above 12 months period the appeal is pending with High Court, then High Court may extend the period of 12 months by such period at it think fix.

If appeal is not pending before High Court, time can be extended by Controller up to 12 months only.

Thus, as a Company Secretary of Ever Innovative Ltd. I will see that strong reasons are built up to make compliance of the requirements and if appeal is pending before High Court advantage of that can be taken.

Opposition to grant of patent [Section 25]: Where an application for a patent has been published but a patent has not been granted, any person can oppose against the grant of patent.

Grounds of Opposition: Various grounds on which patent can be opposed are as follows:

(a) Applicant had wrongfully obtained invention.

(b) Invention was published before priority date of claim.

(c) Invention was already claimed.

(d) Invention was publicly known or publicly used before the priority date of claim.

(e) Invention is obvious and does not involve any inventive step.

(f) Subject of claim is not invention.

(g) Complete specification does not sufficiently & clearly describe the invention.

(h) Applicant has failed to disclose information as required u/s 58.

(i) Application is not made within time.

(j) Complete specification does not disclose or wrongly mentions the origin of biological material used for invention.

(k) Invention was legal known to local community in India.

Except above grounds, on no other grounds opposition will be allowed.

Opposition can also be made even after grant of patent but within 1 year from the date of publication of grant of patent.

Secrecy directions relating to inventions relevant for defense purposes [Section 35]: The Controller can give direction prohibiting or restricting the publication of information with respect to the invention, if Controller is of the opinion that invention is relevant for defense purposes. This order can be revoked if Government is of the opinion that it is no longer prejudicial to defense of India or it is already published outside India.

Secrecy directions to be periodically reviewed [Section 36]: Secrecy directions shall be reviewed by the Government at every 6 months. The order of secrecy may be revoked if Government is of opinion that it is no longer prejudicial to defence of India or it is already published outside India.

Revocation of secrecy directions and extension of time [Section 38]: When any direction given under section 35 is revoked by the Controller, then, specifying the time within which any step should be taken or any act done in connection with an application for the patent, the Controller may extend the time for doing anything required to be done in connection with the application, whether or not that time has previously expired.

Liability for contravention of Section 35 or Section 39 [Section 40]: If directions of secrecy are contravened, the application for patent deemed to have been abandoned. If patent was granted, it can be revoked.

Restrictions upon publication of specifications [Section 143]: An application for a patent and any specification filed are kept secret up to 18 months from the date of application or the priority date of application or before application is opened for public inspection.

Grant of patents subject to conditions [Section 47]: The patent is granted subject to following condition:

• Government can make or import for its own use any machine apparatus for which patent is granted.
• Government can use any process for it is own use for which patent is granted.
• Any person can make or use patented thing or process for the purpose of –

1. 1. Experiment
   2. Research
   3. Imparting instructions to pupils.

• Government can import any medicine or drug for

1. 1. Its own use or
   2. Distribution in any dispensary, hospital specified by the Government.

Term of patent [Section 53]:

1. Validity period of patent: The term of every patent shall be 20 years from the date of filing application for patent.
2. Term of patent in case of International applications: The term of patent in case of International applications filed under the Patent Cooperation Treaty designating India, shall be 20 years from the international filing date accorded under the Patent Cooperation Treaty.
3. Cessation of patent: A patent shall cease to have effect on the expiration of the period prescribed for the payment of any renewal fee, if that fee is not paid within the prescribed period or within such extended period as may be prescribed.
4. No protection after Cessation of patent: The subject matter covered by the patent shall not be entitled to any protection if:

• • Patent right is ceased due to non-payment of renewal fee.
  • The term of patent is over.

Patents of addition [Section 54]: A patent of addition is a patent for improvement in or modification of an invention for which a patent has already been applied or granted.
An application for a patent of addition may be made if the original patent is pending or even after grant of patent.

A patent of addition shall not be granted before grant of the patent for the main invention.

Term of patents of addition [Section 55(1)]: A patent of addition remains in force only as long as the patent for original invention remains in force.

In case the original patent is revoked, the patents of addition may be made independent patent and will continue for the unexpired terms of the original patent.

Renewal fees [Section 55(2)]: No renewal fee is payable in respect of patent of addition. But if such patent of addition becomes independent patent then fee is payable.

Following are the main points of difference between provisional & complete specification:

Applications for restorations of lapsed patents [Section 60]:

• Time limit for making application for restoration of lapsed patent: Application for restoration of lapsed patent can be made within 18 months from the date of lapse. Such application can be made only when patent lapse due to non-payment of renewal fee.
• Who can make for restoration of lapsed patent: Application for restoration of lapsed patent can be made by:

1. Patentee himself or
2. His legal heir or
3. One of the joint holders when patent is held jointly by two or more person.

• Procedure for making application: Application has to be made in prescribed form along with prescribed fee.

Procedure for disposal of application for restoration of lapsed patents [Section 61]:

1. On being receipt of application for restoration of lapsed patents, if Controller is satisfied that default in payment of renewal fee was unin- tentional, he will advertise the application in Official Gazette.
2. If any person wants to oppose the renewal, he has to give notice within 2 months in prescribed form along with necessary fees.
3. The Controller will hear both the parties and will allow the restoration or refuse the restoration as the case may be.

Surrender of patents [Section 63]:

1. A patentee can surrender his patent at any time by giving notice to the Controller.
2. After receiving such offer the Controller issues an advertisement in official gazette inviting objection for such surrender.
3. If any person has to make opposition to surrender of patent, then he has to give notice to the Controller regarding such opposition.
4. On being satisfied that patent can be properly surrendered, the Controller can accept the offer & revoke the patent.

Revocation of patents [Section 64(1)]: A patent may be revoked by the High Court on a petition of any interested person or on a petition of the Central Government. In case of counter-claim in a suit for infringement of the patent, power of revocation is also exercised by the High Court.

A patent can be revoked for various grounds mentioned in section 64(2).

Following are the main points of difference between surrender of patent & revocation of patent:

General principles applicable to working of patented inventions [Section 83]: The general principal is that patents are granted to encourage inventions. However, patent is for use and not for hoarding or exploitation.

General principles applicable to working of patented inventions are as follows:

• To encourage invention.
• To secure that inventions are worked on commercial scale and to the fullest extent.
• Not granted to enjoy monopoly.
• To contribute the promotion of technological inventions and to the transfer and dissemination of technology.
• To protect the public health & nutrition.
• To act as instrument to promote public interest especially in sectors of socio-economic and technological development of India.
• To see that patent right is not abused by the patentee or any other person.
• To give benefit of patent at affordable price.
• To see that patented invention is available at reasonably affordable prices to the public.

Compulsory licence [Section 84]: Compulsory licence can be granted on application to any person on any of the following grounds:

1. When reasonable requirement of public with respect to patented invention have not been satisfied.
2. When patented invention is not available to public at a reasonably affordable price.
3. When patented invention is not worked to territory of India.

Who can apply for compulsory licence: Application for compulsory licence can be made even by a person who is already a licensee under the patent.

Requirements for obtaining compulsory licence: Person interested in obtaining licence for patented invention should first make efforts to obtain licence from patentee on reasonable terms. If he is unable to get it within reasonable period, he can apply for compulsory licence. Normally six months should be considered as reasonable period for this purpose.

Factors to be considered by the Controller: While deciding whether reason- able requirement of public are satisfied or not, factors specified in section 84(7) shall be taken into consideration by the Controller.

Sometime patentee or licencee cannot use effectively their own patent because it may affect the right of other related patent owned by some other person. In such case remedy is provided u/s 91.

Licensing of related patents [Section 91]: A patentee or licencee can make an application to grant of licence of some other patent due to which former patent cannot be worked effectively. However, before making application as above, the patentee or licencee has to satisfy to the Controller that the owner of another patent has refused to grant license on request to him.

On being satisfied the Controller can give a compulsory licence for such related patent.

The section also clears that licence granted under this section is not assignable.

Appeals to High Court [Section 117A]:

1. No appeal relating to decision, order or direction: No appeal shall lie from any decision, order or direction made or issued under the Act by the Central Government, or from any act or order of the Controller for the purpose of giving effect to any such decision, order or direction.
2. To whom appeal can be made: An appeal shall lie to the High Court from any decision, order or direction of the Controller of Central Government.
3. Procedure for making appeal: Every appeal shall be in the prescribed form and shall be verified in prescribed manner and shall be accompanied by a copy of the decision, order or direction appealed against and by prescribed fees.
4. Tme limit for filing appeal: Every appeal shall be made within 3 months from the date of the decision, order or direction, as the case may be, of the Controller or the Central Government or within such further time as the High Court may, in accordance with the rules made by it, allow.

The work relating to drafting of specifications, making of application for a patent, subsequent correspondence with the Patent office on the objections raised, representing the applicant’s case at the hearings, filing opposition and defending application against opposition is entrusted to a qualified Patent Agent. Sections 125 to 132 deals with provisions relating to Patent Agent.

Qualifications for registration as patent agents [Section 126(1)]: A person shall be qualified to have his name entered in the register of patent agents if he fulfils the following conditions:

(a) He is a citizen of India.

(b) He has completed the age of 21 years.

(c) He has obtained a degree in science, engineering or technology from any University established under law for the time being in force in the territory of India or possesses such other equivalent qualifications as the Central Government may specify in this behalf and in addition —

(i) has passed the qualifying examination prescribed for the purpose; or

(ii) has, for a total period of not less than 10 years, functioned either as an examiner or discharged the functions of the Controller or both, but ceased to hold any such capacity at the time of making the application for registration.

(d) He has paid such fee as may be prescribed.

A person who has been registered as a patent agent before the commencement of the Patents (Amendment) Act, 2005 shall be entitled to continue to work as a patent agent. [Section 126(2)]

Thus, if company Secretary fulfils the conditions laid down in Section 126, he can act as patent agent.

Rights and powers of the Patent Agent:

Rights of patent agents [Section 127]: Every patent agent whose name is entered in the register shall be entitled:

(a) To practice before the Controller.

(b) To prepare all documents, transact all business and discharge other functions as may be prescribed.

Subscription and verification of certain documents by patent agents [Section 128]: All applications and communications to the Controller may be signed by a patent agent authorized in writing in this behalf by the person concerned.

Various important provisions of the Patent Act, 1970 relating to ‘international arrangement’ are given below:

(1) Convention Countries [Section 133]: Patents can be granted to persons outside India, on the basis of international arrangement. Such grant is available only if there is a convention, treaty or arrangement with foreign country for grant of patents on reciprocal basis i.e. if that other country also grants patents to Indian applicants.

India has signed Paris Convention in August 1998. Hence, any country which is signatory to Paris Convention is convention country.

(2) Stoppage or withdrawal of right [Section 134]: If convention country does not give the protection to Indian applicants, protection given u/s 133 to person outside India may not be given in India.

(3) Convention Applications [Section 135]: If application for patent is made in any convention country it is known as convention application. It is also known as basic application. If after making basic application or convention application subsequently application is filed in India within 1 year, then priority date of claim of the complete specification will be taken as the date of making basic application in convention country.

Special provisions relating to convention applications [Section 136]:

(1) Requirements of convention application: Every convention application shall –

(a) Be accompanied by a complete specification.

(b) Specify the date on which and the convention country in which the application for protection, the first of such applications was made.

(c) State that no application for protection in respect of the invention had been made in a convention country before that date by the applicant or by any person from whom he derives title.

(2) Developments or additions to the invention: A complete specification filed with a convention application may include claims in respect of developments or additions to the invention in respect of which the application for protection was made in a convention country.

(3) Dating of convention application: A convention application shall not be post-dated to a date later than the date on which under the provisions of the Act the application could have been made.