The Word Patent Denotes A Monopoly Right In Respect Of A New And Useful Invention. Broadly speaking a Patent is a grant from the Government which confers on the grantee for a limited term, the exclusive privilege of making, selling and using an Invention and also authorizing others to do so. In other words it is a protection given to a Patentee for his Invention for a limited term by the Government in consideration of his full disclosure of his Invention. Accordingly, the grant of Patent gives to the Patentee, the right to exclude others from making, selling and using the Invention throughout India. These Rights Are Territorial In Nature And Are Given By The Government In Exchange Of full Disclosure Of his Invention.
The Three Criterions For Patentability Viz., Novelty, Inventive steps (Non-obviousness) And Industrial Applicability Are Recognized In India. Further The Invention Should Not Fall In The Non-patentable Invention Category as stipulated in Section 3 of Patent Act 1970 and as amended Act 2005. India Recognizes Absolute Novelty.
As Defined In Section 2 (1) (J) Of The Indian Patent Act” Invention” Means A New Product Or Process Involving An Inventive Step And Capable Of Industrial Application.
“Inventive Step” In Section 2 (1) (Ja) 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.
“Capable Of Industrial Application”, In Relation To An Invention, In Section 2 (1) (Ac) Means That The Invention Is Capable Of Being Made Or Used In An Industry.
Background Of Indian Patents Law
Though the first legislation in India relating to patents was enacted in 1856, a proper legislation under the Controller of patents was enacted in 1911, as the Indian Patents & designs Act, 1911. Since then there have been a series of changes in the Act and Rules to bring the Act in consonance with the changing scenario, the last amendment being in 2005. This amendment was the third amendment to the Patents Act, 1970 was introduced through the Patents (Amendment) Ordinance, 2004 w. e .f. 1st January, 2005. This Ordinance was later replaced by the Patents (Amendment) Act, 2005 (Act 15 Of 2005) on 4th April, 2005 which was brought into force from 1st January, 2005.
International Arrangements:–
India is a member of Paris Convention and joined the same on December 7, 1998.
Patent Co-operation Treaty is a treaty administered by the World Intellectual Property Organization (WIPO), a specialized agency of the United Nations Organization (UNO). India became a member of the Patent Co-operation Treaty on 7th December, 1998.
Time Frame:–
It takes about 2-4 years to obtain a patent in India and the time frame may vary depending on the technology involved and complexity of the proceedings.
Salient Features Of Indian Patents Law & Practice Application
A Patent application may be filed in India in the form of :–
Provisional Application: is an application filed with a provisional specification to establish priority of the invention over any other invention. It gives twelve months time to the Applicant to possibly fully develop the invention and ascertain its market potential without the fear of losing the priority right over the invention. Hence If filed in pursuance of a Provisional application then the time limit of filing Complete specification is within twelve months from the date of filing of provisional application.
A provisional specification cannot be filed if the application is a divisional or convention application or an application filed under the Patent Cooperation Treaty designating India. In such cases, only a complete specification is required to be filed.
Complete Application: is an application with a complete specification which fully describes the invention and discloses the best method of performing the invention. Divisional, convention application or PCT national phase applications are always required to be accompanied by a complete specification.
PCT National Phase Application: is an application filed in pursuance of the international application under PCT. Time limit to enter National phase is 31-months from the earliest priority date.
Convention Application: is an application filed in pursuance of the Convention application filed under Paris Convention. Time limit to enter National phase is 12-months from the earliest priority date.
Divisional Application: is an application under section 16 of Patent Act 1970 usually filed when the application made by the Applicant claims more than one invention. The Applicant may file a divisional application either voluntarily or to meet the objections of the Cotroller. A divisional application has to be filed before the grant of the Parent application. The appropriate office for the filing of divisional is the Patent Office where the main application is filed, as a divisional application needs to be examined in conjunction with its main application.
Examination of Divisional Application: includes careful comparison with main patent Application: to avoid double patenting: to avoid claim overlap resulting in double patenting.
Date of filing of Divisional Application: same as that of the main application
Term: Twenty years from the date of filing of main application.
Contents: Claims of the Divisional Application shall not conflict with those of main application.
Filing Fee: Fee is required to be paid for the each proceeding of the Application.
The divisional application should ideally be filed with response to examination report and certainly before the deadline for placing the parent application in order for grant, which is 12 months from the date of issuance of the First Examination Report. The best time for filing the divisional application is after receipt of the First Examination Report. Based on the Controller’s objection you may decide the claims for the divisional application. In case you wish to file a divisional application, the claims of such divisional application should be made distinct from those of the original application. The complete specification of the divisional application should not include any matter not in substance disclosed in the complete specification of the parent application. There are no limits to the number of divisional filed for one application. While a patent application can be divided into multiple divisional applications at one instance, a divisional application cannot be further divided.
Patent of Addition: is an Application filed when the invention therein is a modification or improvement of an earlier invention for which the Applicant has already applied for or has obtained a patent. Application for a Patent of Addition shall be filed on the same or subsequent date of filing of the Application for main Patent. Granted only after the grant of the main patent. A patent of addition expires along with the main patent Application. No separate renewal fee is required for Patent of Addition. An application for Patent of Addition cannot be challenged on the ground of lack of inventive step with respect to the disclosure in the main application or patent. But the disclosure in main application or patent may be cited for novelty against the application for patent of addition.
Formal Requirements :–
Section 8(1) requirement: Foreign Application Data
Foreign filing details in Form-3 is required to be filed at the time of filing or Within 6 months of Indian filing date and then within 6 months of filing date of each foreign application. The status of each foreign application is required to be updated during prosecution of Indian Application. The detail data of corresponding foreign applications filed by applicant alone or jointly or by other person (such as inventor, assignee) – it basically doesn’t matter who filed foreign application, disclose it here if you are aware of Filing details of same or substantially the same invention. Since it is difficult to update the Indian Patent Office every time with an update, it is a common practice to file Form-3 whenever there is changes in foreign filing details.
Section 8(2) requirement: Foreign Prosecution Data
This requirement is also required to be complied in respect of corresponding application filed outside of India such as foreign search/ examination reports, Office actions, allowed claims with translation within 6 months from the date of invitation by the Controller.
Both S. 8(1) and (2) grounds for pre-grant, post grant opposition and revocation.
Requirement for translation of International application, filing of Priority documents and English Translation thereof are essential.
PCT NATIONAL PHASE APPLICATIONS:
When International PCT application is neither filed nor published in English, duly Verified English translation must be filed within 31 months National Phase deadline (not extendable).
Verification should state that contents are correct and complete translation of International application and such verification can be signed by the Patent attorney.
Translation should include translation of Complete specification, claims, abstract, drawings, .
Where PCT application claims a priority and the priority document was filed in compliance with Rule17.1 of PCT with WIPO, a copy of IB 304 has to be filed with Indian Patent Office along with a verified translation of priority documents if the priority document was not in English. The same must be filed within 3 months from the date of invitation by the Controlle , failing which the priority is disregarded. In case priority documents were not filed in compliance with Rule 17.1, a certified copy of the same must also be filed within the aforesaid deadline.
Convention Applications: For convention applications, certified copy of priority documents with English translation has to be filed within 3 months from date of communication by Controller.
Assignment Documents (Proof Of Right To File Patent Application)
If Inventors are the Applicants, Proof of Right is not needed otherwise the Applicant must file the proof of Right or Deed of Assignment within 6 months from the Date of Indian filing which is extendable on filing of Petitions under Rule 123 of Patent Rule 2003 and as amended Rule 2006.
In this connection it is in practice to file Form-1 duly signed by inventors in favor of applicant is sufficient or else to file certified/ notarized copy of deed of assignment / national law copy if the same provides rights to inventions.
Sequence Listing:
The Application disclosing sequence listing of nucleotides and/or amino acids shall be accompanied by a copy of the sequence listing in electronic form. The sequence listing is considered as part of specification for the purpose of fee calculation thus the fee will be calculated for the sequence listing pages as fee for extra pages of specification.
The following are not Inventions within the meaning of provisions as stipulated under section 3 of Patent Act 1970 which are stipulated below:– (Also called Non patentable inventions)
Section 3 (a): An invention which is frivolous or which claims anything obviously contrary to well established Natural Laws.
Section 3 (b): An Invention the primary or intended use or Commercial exploitation of which could be contrary to public order or Mortality or which causes serious prejudice to Human, animal or plant life or health or to the Environment.
Section 3 (c): 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).
Section 3 (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.
Section 3(d): provides an explanatory clause to make it more clear which reads as follows:–
(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) The complete specification may bring out clearly and categorically in the description, as to how the subject matter differs significantly in properties with regard to efficacy from the known substance thereof, at the time of filing of the application or subsequently by way of an amendment of specification on filing Form-13 under section 57. In a recent case in relation to a pharmaceutical substance (Novartis AG Vs. Union of India, W.P. No. 24760/06). , the Madras High Court held that efficacy means therapeutic efficacy. It was held that going by the meaning for the word efficacy and therapeutic what the patent applicant is expected to show is, how effective the new discovery made would be in healing a disease having a good effect on the body. In other words, the patent applicant is definitely aware as to what is the therapeutic effect of the drug for which he had already got a patent and what is the difference between the therapeutic effect of the patented drug and the drug in respect of which patent is asked for.
Section 3 (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 is not an invention. A mere aggregation of features must be distinguished from a combination features of the invention. The existence of a combination invention requires that the relationship between the features or groups of features be one of functional reciprocity or that they show a combinative effect beyond the sum of their individual effects. The features should be functionally linked together which is the actual characteristic of a combination invention.
An admixture resulting in synergistic properties is not considered as mere admixture, e.g., a soap, detergent, lubricant and polymer composition etc, and hence may be considered to be patentable.
Section 3 (f): Mere arrangement or re-arrangement or duplication of known devices each functioning independently of one another in a known way.
The Manual of patent practice & Procedure says that an improvement on something known before or a combination of different matters already known, should be something more than a mere workshop improvement; and must independently satisfy the test of invention or an inventive step. To be patentable, the improvement or the combination must produce a new result, or a new article or a better or cheaper article than before.
Section 3 (h): Method of agriculture or horticulture.
Section 3 (i): Any process for the medicinal, surgical, curative, prophylactic diagnostic 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 is not patentable.
a) Medicinal methods: As for example a process of administering medicines orally, or through injectables, or topically or through a dermal patch.
(b) Surgical methods: As for example a stitch-free incision for cataract removal.
(c) Curative methods: As for example a method of cleaning plaque from teeth.
(d) Prophylactic methods: As for example a method of vaccination.
(e) Diagnostic methods: Diagnosis is the identification of the nature of a medical illness, usually by investigating its history and symptoms and by applying tests.
Therapeutic methods: The term ―therapy includes prevention as well as treatment or cure of disease. Therefore, the process relating to therapy may be considered as a method of treatment and as such not patentable. Further examples of subject matters excluded under this provision are: any operation on the body, which requires the skill and knowledge of a surgeon and includes treatments such as cosmetic treatment, the termination of pregnancy, castration, sterilization, artificial insemination, embryo transplants, treatments for experimental and research purposes and the removal of organs, skin or bone marrow from a living donor, any therapy or diagnosis practiced on the human or animal body and further includes methods of abortion, induction of labour, control of estrus or menstrual regulation. Application of substances to the body for purely cosmetic purposes is not therapy. Patent may however be obtained for surgical, therapeutic or diagnostic instrument or apparatus. Also the manufacture of prostheses or artificial limbs and taking measurements thereof on the human body are patentable.
Section 3 (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 are not inventions.
The subject matters excluded under this provision are:
(a) plants in whole or in part
(b) animals in whole or in part
(c) seeds
(d) varieties and species of plants and animals
(e) essentially biological process(es) for production or propagation of plants and animals.
Microorganisms, other than the ones discovered from the nature, may be patentable. For instance, genetically modified microorganisms may be patentable subject to other requirements of Patentability. Plant varieties are provided protection in India under the provisions of the Protection of Plant Varieties and Farmers Rights Act, 2002.
Section 3 (k): A mathematical or business method or a computer programme per se or algorithms are not inventions and hence not patentable.
Software per se not patentable. Technical applicability of the software claimed as a process or method claim, is required to be defined in relation with the particular hardware components. Computer Implemented Inventions can be patented if: They have technical character and solve a technical problem. They are new. They involve an inventive technical contribution to the prior art. The method claims should clearly define the steps involved in carrying out the invention. It should have a technical character. The claims should incorporate the details regarding the mode of the implementation of the invention via. hardware or software, for better clarity. The claim orienting towards a process/method should contain a hardware or machine limitation. Business Methods claimed in any form are not patentable subject matter. The term Business Methods involves whole gamut of activities in a commercial or industrial enterprise relating to transaction of goods or services. With the development of technology, business activities have grown tremendously through e-commerce and related B2B and B2C business transactions. The claims are at times drafted not directly as business methods but apparently with some technical features such as internet, networks, satellites, telecommunications etc. This exclusion applies to all business methods and, therefore, if in substance the claims relate to business methods, even with the help of technology, they are not considered to be a patentable subject matter.
d. Algorithms in all forms including but not limited to, a set of rules or procedures or any sequence of steps or any method expressed by way of a finite list of defined instructions, whether for solving a problem or otherwise, and whether employing a logical, arithmetical or computational method, recursive or otherwise, are excluded from patentability.
e. Patent applications, with computer programme as a subject matter, are first examined with respect to (b), (c) and (d) above. If the subject matter of an application does not fall under these categories, then, the subject matter is examined with a view to decide whether it is a computer program me per se.
f. If the claimed subject matter in a patent application is only a computer programme, it is considered as a computer program me per se and hence not patentable. Claims directed at computer program me products are computer program me per se stored in a computer readable medium and as such are not allowable. Even if the claims, inter alia, contain a subject matter which is not a computer program me, it is examined whether such subject matter is sufficiently disclosed in the specification and forms an essential part of the invention.
g. If the subject matter of a patent application is not found excluded under the foregoing provisions, it shall be examined with respect to other criteria of patentability.
Section 3 (l): A literary, dramatic, musical or artistic work or any other aesthetic creation whatsoever including cinematographic works and television productions is not patentable.
Section 3 (m): A mere scheme or rule or method of performing mental act or method of playing game is not patentable.
Section 3 (n): A presentation of information is not patentable.
Section 3 (o): Topography of integrated circuits is not patentable.
Section 3 (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 is not patentable.
Traditional Knowledge Digital Library (TKDL)
Traditional Knowledge Digital Library or TKDL as it is known came into being by collaborative efforts of Council of Scientific and Industrial Research (CSIR), Ministry of Science and Technology and Department of AYUSH, Ministry of Health and Family Welfare.
The project TKDL involves documentation of the traditional knowledge available in public domain in the form of existing literature related to Ayurveda, Unani, Siddha and Yoga, in digitized format in five international languages which are English, German, French, Japanese and Spanish.
At present the access to TKDL database has been given to European Patent office, USPTO and the German Patent Office. Over the past one year, the EPO has rejected 15 patent applications based on the relevant findings on TKDL.
E-FILING
It is possible to file a patent application electronically in India. While the e-filing module of the IPO requires some expertise and training, it is certainly a good investment to eliminate the problem of data entry mistakes by the IPO which lead to numerous publication and data errors.
Request for examination: In ordinary applications or PCT or Convention applications, the time period to file the request for examination is Forty eight months (strictly non extendible) from the date of filing or priority, whichever is earlier.
In case of Divisional applications the time period to file the request for examination is Forty eight months (strictly non extendible) from date of filing or priority of first mentioned application, or within six months from date of filing of further application, whichever expires later.
No means to expedite examination of applications since applications are examined in the chronological order in which the requests for examination are filed. An Application corresponding to International Application designating India ie National Phase Application cannot be processed for examination before 31 Months from the date of Priority. However an applicant of National Phase application may make an express request by filing Form-18 with requisite fee so as to examine the application before the expiry of 31 Months from the date of Priority.
For urgent cases, it is advisable to file the Request for examination simultaneously with filing the application.
Examination Reports:—
The First Examination report is issued within 2-3 years of filing of the Request for Examination.
The total time period to comply with the objections of the examination report is 12 months from the date of issuance of the examination report.
It has to be noted that the complying of all the objections have to be within the 12 months period. No further time period is given beyond this period.
If the Examiner is not satisfied with the reply to examination report he may issue a second or third examination report within the 12 months period. No extra time would be provided to reply to the additional reports.
After the expiry of the said 12 month period or even before that if the Controller along with the Examiner are not satisfied with the reply provided, the Applicant may be provided an opportunity to attend a hearing.
It is quite common to have oral proceedings in India and the costs are not as expensive as in other countries.
Amendments
Applicant may make a request on Form-13 with prescribed fee under section 57 of the Patent Act 1970 for leave to amend an application for Patent or Complete Specification or any document related thereto.
Amendments shall be only for the purpose of incorporation of actual fact as stipulated under section 59 of the Patent Act 1970.
Amendments are possible only by way of disclaimer, correction or explanation.
The amendment must not be made beyond the scope of invention as well as the original claims. In particular no amendment of complete specification shall be allowed the effect of which would be that any claim of the specification as amended would not fall wholly within the scope of a claim of the specification before the amendment.
It implies that narrowing is possible, broadening and new claims not possible.
Amendments can be filed anytime before grant. However it is advisable to file amendments before or with the Request for Examination so that the appropriate set of claims is examined.
Unity Of Invention:
Claim(s) 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.
If claims relate to a plurality of invention, it may be objected on ground of lack of unity of invention. The application may be divided in order to meet the objection of plurality of distinct inventions.
The determination whether a group of inventions is so linked as to form a single general inventive concept shall be made without regarding to whether the inventions are claimed in separate claims or as alternatives within a single claim.
One independent claim in each category is allowed. In some cases more than one independent claims are also allowed in the same category but it is not common practice.
Independent claims of different categories must relate to a single inventive concept.
For example:
Claims for a product and process specially adapted for manufacture of the product.
Claims for a process and apparatus or means specifically designed for
A locking system containing plug and socket wherein separate independent claims for a plug and socket may constitute a single inventive concept.
In case of a drug or pharmaceutical product, claims may be directed to a drug or pharmaceutical product, a process of making the product, a composition containing the drug.
Oppositions proceedings:—
Pre-Grant Opposition under section 25(1) :—
Pre-grant Opposition Can be filed by any person by way of representation.
Time period: Anytime after publication of patent Application but before the grant of Patent.
The representation shall include a statement and evidence, if any, in support of such representation and a request for hearing, if desired.
The Controller shall consider the representation only after a Request for Examination for that Application has been filed.
Hearing before the Controller
Post-Grant opposition under section 25(2):—
Post-grant Opposition Can be filed by any person interested by way of Notice of Opposition.
Time Period: within 12 months from the date of publication of Grant of Patent.
After receipt of Notice of Opposition, an Opposition Board is constituted by the Controller, by order.
Hearing before the Controller on recommendation of the Opposition Board.
Opposition Board
Constituted by the Controller after receipt of Notice of Opposition
It consist of three members with one of them as Chairman
An Examiner may be a member of the Board, however that examiner who was part of the prosecution proceedings for the grant of patent shall not be included.
The board shall examine such notice and all the documents filed by the opponent as well as the patentee.
The Board shall submit report on each ground.
The Opponent shall file a written statement setting out the nature of the Opponents interest, the facts upon which he bases his case, relief which he seeks and evidence and delivers a copy to the patentee.
If the patentee desired to contest the opposition he shall file a reply statement and evidence within a period of 2 months from the date of receipt of written statement of opponent.
Following are Grounds of Opposition: (Same for both Pre-grant and Post-Grant Opposition):—
(a) Wrongful obtaining of invention.
(b) Claimed invention already published in India or elsewhere before the priority date.
(c) Claimed invention is already claimed in a complete spec which is published later than claimed invention but its priority date is earlier than claimed invention.
(d) Claimed invention was publicly known or used in India before priority date. For the purpose of this clause the invention would be deemed to have been publicly known if the product is imported into India before the filing date except when such importation is for the purpose of reasonable trials and experimentation.
(e) Claimed invention is obvious.
(f) Claimed invention is not an invention as per the Patent Act 1970.
(g) Complete specification does not sufficiently and clearly describe the invention.
(h) Applicant has failed to disclose information under section 8 or has furnished false information.
(i) In case of convention application the application was not made within 12 months from the date of first application.
(j) Complete spec does not disclose or wrongly mention the source or geographical origin of biological material used in invention.
(k) Invention is anticipated having regard to the traditional knowledge.
Compulsory License:–
Compulsory licensing is a system whereby the Government allows third parties (other than the patent holder) to produce and market a patented product or process without the consent of the patent owner.
Grounds for grant of Compulsory license:
That the reasonable requirements of public have not been satisfied, or
That the patented invention is not available to the public at reasonably affordable price, or
That the patented invention is not worked in the territory of India.
There is a national emergency;
There is an extreme urgency; or
There is public non-commercial use.
Procedure for grant of Compulsory license:
THE APPLICANTS TO MAKE FOLLOWING MEASURE:–
Any person interested may make an application to the Controller for grant of Compulsory License for a patent after the expiry of three years from the date of grant
Such an application shall contain:
a statement setting out the nature of the applicants interest
the facts upon which the application is based
the terms and conditions of the license the applicant is willing to accept.
THE CONTROLLERS TO TAKE FOLLOWING ACTIONS:–
In considering such an application, the Controller shall take into account:
(a) The nature of the invention, the time which has elapsed since the grant of the patent
and the measures already taken by the patentee or any licensee to make full use of the invention;
(b) The ability of the applicant to work the invention to the public advantage;
(c) The capacity of the applicant to undertake the risk in providing capital and working of the invention.
(d) As to whether the applicant has made efforts to obtain a license from the patentee on reasonable terms and conditions and such efforts have not been successful.
INFRIGEMENT OF PATENT
A patent confers the exclusive right on the patentee to make, use, offer for sale, sell or import a product or a product directly obtained by a process in India. An infringement would be when any of above rights are violated.
Exceptions to infringement:
Any act of making, constructing, using, selling or importing a patented invention solely for uses reasonably related to the development and submission of information required under any law for the time being in force in India, or in a country other than India that regulates the manufacture, construction, use, sale or import of any product.
Importation of patented products by any person from a person who is duly authorized under the law to produce and sell or distribute the product.
Reliefs in suit for infringement:
(1) Interlocutory/ interim injunction.
(2) Damages or account of profits.
(3) Permanent injunction.
Defenses:
Every ground on which it may be revoked under section 64 shall be available as ground for defense.
In any suit for infringement of a patent by the making, using or importation of any machine, apparatus or other article or by using of any process or by the importation, use or distribution or any medicine or drug, it shall be a ground of defense that such making, using, importation or distribution is in accordance with any one or more of the conditions specified under section 47.
GRANT OF PATENT
The grant of the patent takes place within 3-5 years from the date of filing of application in India.
Term Of Patent
The term of patent is 20 years from the date of filing of application in respect of all the patents, or for PCT applications 20 years from the International filing date.
RIGHTS OF PATENTEE
In case of a patented product, the patentee shall have the exclusive right to prevent third parties, from the act of making, using, offering for sale, selling or importing for those purposes that product in India.
In case of a patented process, the patentee shall have the exclusive right to prevent third parties, from the act of using that process, and from the act of using, offering for sale, selling or importing for those purposes the product obtained directly by that process in India.
Post-Grant Procedures
Annual Working Report:–
Every patentee and licensee have to furnish details of working of the invention as to the extent to which the patented invention has been Commercially worked in India in Form-27 in respect of every calendar year within two months from the date of Notice by the Controller or within such further time as the Controller may allow as per sub-section (1) of 146 Patent Act 1970 or within three months of the end of each year (by March 31st every year) as per sub-rule 2 of Patent Rule 2003.
Working means: An act of making, using, offering for sale, selling or importing for those purposes that product in India.
Its a mandatory provision.
Essential ingredients of report:- Invention whether worked or not
If not worked: reasons for not working of the invention and the steps taken for working of the invention
If worked:
Sold: quantum and value of sold products
Imported: Quantum, value and country of import
If the reasonable requirements of the public are being met
Offence:
Refusal/ Failure to furnish information or furnishing of false information
Penalties:
Refusal/Failure: Fine which may extend to Rs.Ten Lakhs (Sub-section 1(b) of section 122)
Furnishing False Information: Imprisonment of 6 months or fine or both (sub-section 2 of section 122).
Annuity Fee
Annuity payable after grant of patent: (only after receiving the Letters Patent Document) all pending annuities from the expiration of second year (ie from 3rd year) till date of grant have to be paid. Thereafter, annuity are payable for each year.
Deadline of annuity payment depends on the date of grant.
The pending dues have to be paid within 3 months from the date of recordable of grant which is extendable by six months on payment of requisite fee.(Total nine months)
The application lapses on non-payment of annuity fee.
MINIMUM DOCUMENTS REQUIRED FOR FILING PCT APPLICATION (required before 31 months)
(a) Name, address and Nationality of Applicants and inventors.
(b) International PCT Application number.
(c) Priority application number, date of filing and country.
All this information is available in first page of WIPO International Publication. Hence, you may send a copy of the same or we may download a copy from WIPOs website.
Original Patent specification, claims and drawings in English. (Preferably send by email)
Amended claims, if any, filed under Art. 19 or 34 of PCT. (Preferably send by email)
COMPLETE FILING REQUIREMENTS (may be filed after 31 months)
A copy of
International Publication,
Form PCT/IB/304,
Proof of Right to file Patent (like Form-1 signed by inventors, Certified Copy of Assignment Deed or Employment contract),
International Search Report,
IPRP, and
International Preliminary Examination Report, if any.
Power of Attorney (may be filed later, no late fee)
Following information (as far as available) regarding the application filed in other countries, if any:
Name of the Country
Date of Application
Application No.
Status of the application
Date of publication
Date of grant
CONVENTION PATENT APPLICATION
TIME LIMIT
The Indian application has to be filed within 12 months of first filing in convention country.
MINIMUM DOCUMENTS REQUIRED (required before 12 months)
Name, address and Nationality of Applicants and inventors.
Priority application number, date of filing, country, title of invention and applicant in convention country
Patent specification, claims and drawings in English.
COMPLETE FILING REQUIREMENTS (may be filed after 12 months)
Certified copy of Priority documents (within 6 months).
True Translated copy of complete specification filed in convention country, if original application was not in English (within 6 months).
Proof of Right to file Patent (like Assignment Deed or Employment contract or Form-1 signed by inventors): within 6 months.
Power of Attorney (may be filed later; no late fee).
Following information (as far as available) regarding the application filed in other countries, if any (If filed later than application, late fee is required to be paid.
Name of the Country
Date of Application
Application No.
Status of the application
Date of publication
Date of grant.
The Patent (Amendment) Rules, 2014 has been published by the Government of India, Ministry of Commerce and Industry (Department of Industrial Policy and Promotion) by notification vide dated 28/02/2014 in Part II, Section 3, Sub-Section (i) of the Gazette Of India, Extraordinary on 28-2-2014 and has been made effective from the date of publication.
1. The salient aspects of the amended rules include:
a). A revised fee structure has been provided for filing of patent application as well as other proceedings before the Patent Office in the First as well as Fourth Schedule of the amended rules.
b). A third category of applicant for patent has been introduced in the form of “small entity” and the fees charged to them has been fixed in between the fees for a natural person and for all persons other than natural persons (except a small entity). The criteria for “small entity” have been elaborated in the amended rules.
c). A new Form-28 has been introduced in the rules, which has to accompany every new application. For subsequent documents for which a fee has been specified and for which the fee applicable for a small entity is claimed, it should be ensured that Form-28 is filed at-least once against the application number. In case of any change of status of the applicant(s) such that the benefit derived by the applicant due to its claimed status does not remain valid or applicable, it will be the responsibility of the applicant(s) to inform the Patent Office about the said change.
d). The amended rules provide for 10% additional fee when the applications for patent and other documents are filed through the physical mode, i.e., in hard copy format as opposed to the online mode.
e). In case an application processed by a small entity is fully or partly transferred to a person other than a natural person (except a small entity), the difference, if any, in the scale of fee(s) between the fee(s) charged from a small entity and the fee(s) chargeable from the person other than a natural person (except a small entity) in the same matter, shall be paid by the new applicant with the request for transfer.
f). A new Form 7 (A) has been provided for filing ” Representation Opposing Grant Of Patent” under sub-section (1) of section 25 and sub-rule (1) of Rule 55 of the principal rules. However no fee shall be payable for the same. In case of joint applicants, the highest fee category of the applicant among the joint applicants will be taken into consideration for the purpose of fee calculation. It shall be the sole responsibility of the applicant(s) to select the correct category of applicant and file all supporting documents in respect thereof while filing an application or other documents. Failure of this may attract the provisions of section 142(3) of the Patents Act 1970.
Microbial Culture Collection Centre
Microbial Culture Collection Centre (MCC), Pune (which is located in the NCCS, Pune) is
recognized International Depository Authority (IDA) under the Budapest Treaty on the International Recognition of the Deposit of Micro-organisms for the Purpose of Patent Procedure”