GUIDE TO PATENT LAWS IN INDIA - A TO Z ON PROCEDURES

Authors:

Sakshi Metha, OP Jindal Global University

Parul Agarwal, GNLU

Prachi Sharma, Lloyd Law College


Editor:

Megha G., TNNLU

Introduction

In general meaning Patent means an absolute right granted by sovereign authority to an innovator to prevent its use, sale and make of a product or invention. In India, Patents are governed by the Indian Patents Act,1970[1] which became effective from 20th April 1972. Later, Patent laws went on to three amendments i.e. (Amendment) Act, 1999[2];(Amendment) Act, 2002[3] and (Amendment) Act 2005[4]. The Amendment Act of 2005 provides a maximum term of 20 years. However, every type of invention cannot obtain a patent. Sections 3 & 4 of the Indian Patents Act, 1970provides for type of inventions, which are disqualified to obtain Patent in India.


Object And Purpose

In the case of Bishwanath Prasad Radhey Shyam v. Hindustan Metal Industries[5], the Supreme Court identified the object of Patent Law as:

The subject of Patent Law is to encourage scientific research, new technology and industrial progress. Grant of exclusive privilege to own, use or sell the method or the product patented for limited period, stimulates new inventions of commercial utility.

The primary rationale behind patent was to invigorate new innovations and modern advancement. Patents give the owners the exclusive rights to utilise, manufacture, sell, offer to sell or import the patented product till the termination of the patent.

In Shinning Industries v. Shri Krishna Industries[6], the Court held that an invention only when patented is a property right. This further gives the inventors a reason to patent their product and get exclusive monopoly rights and further prevent the exploitation of the product by others. Patent protection implies that the patented invention cannot be manufactured, distributed, utilised, sold or imported commercially without the patent owner’s assent. The patent owner can forestall or prevent others from economically misusing the patented product. This law allows a monopoly to the patent owner to utilise and allow others with prior permission to utilise the patented product, agreeing to certain considerations. This further prevents encroachment and infringement of the patent typifying that the duplication of the patented product will allow the patent owner to enforce their exclusive right against such replicated product. Since they are published, it consequently gives an understanding into current inventions and helps dodging parallel superfluous inventions. The patent law further creates an incentive for scientific research and development and industrial progress by protecting the investments made for innovative work.


Procedure Of Patent In India

Step 1: Check whether the invention is patentable (Patentability search)[7]

An invention will be considered patentable if it satisfies certain criteria. They are:

· Relates to a process or/and product and comprises an inventive step

· Must be novel

· Is not obvious to the person who is accomplished in the area of invention.

· Has Industrial application

· Not fall under Sec 3 & 4 of The Patents Act, 1970

Step 2: Filing of Patent Application

Who Can Apply[8]?

The application can be filed by any person (individually or jointly):

· Who claims himself as being the true and first inventor of the invention;

· Who is the assignee of the above person so claiming and has the right to make such an application;

· Who is legally representing a deceased person and was instantly prior to his death eligible to make such application;

The search for prior patent should be conducted before filing the application to evade wasting time and cash re-inventing a recognized matter. Any patent which is already in the public knowledge through available literature or being common knowledge will not be accepted.

Where to file[9]?

The head office of the patent office or the branch office in the territorial limits of which:

· The Applicant dwells or has his Domicile; or

· Where he conducts his business; or

· The place where the invention took place.

· Where the applicant does not have any of the above, the address for service in India.

How to file[10]?

Documents can be filed in the respective office:

· through e-filing;

· through post;

· can be submitted by hand.

Documents required for filing of A Patent Application

· Cover letter- indicating the list of documents;

· Application for Grant of Patent in Form 1 - It shall include the name along with address of the inventors, name along with address of the applicants, info regarding previous filed patent applications, and some declarations, amid other info.

· Complete/Provisional specification in Form 2[11]- Provisional or a complete patent specification is filed in form 2.The former is the initial application filed concerning the invention, which typically covers lone a summarized account of the invention. There are no claims in it. Alternatively, the complete specification covers a detailed description of the invention along with the finest technique to make the invention run. It encompasses the title of invention, background, the field, about the related art, downsides of the previous art, a summary, figures, abstract and claims. This should be mandatorily filed in 12 months beginning the date of filing of the provisional specification, failing which, the application will be deemed to have been abandoned.

· Statement and Undertaking in Form 3[12] - It provides the Controller the authority to require the Applicant to supply info regarding the corresponding applications filed outside India.

· Power of Attorney in Form 26 When filed by a Patent Agent.

· Declaration of Inventorship in Form 5

· Request for examination in form 18

· Necessary Statutory charges

Step 3: Publication after 18 months[13]

The application of patent shall be published in the Official Gazette after the completion of eighteen months from the date of filing or date of priority whichever is prior in time. Thereafter, the Patent office will make the Specification, both provisional and complete, and drawings filed concerning the Application accessible in public domain. Furthermore, the applicant may request for early publication in Form-9 with the agreed fee. In case of such request, the application is published in a time span of 1 month from the date of such request.

Step 4: Pre Grant-Opposition /Representation by any person[14]

After the application has been published, any individual may, in writing, oppose the grant of patent within 3 months from the date of publication in the Official Journal. A copy of which shall be forwarded to the applicant. The applicant shall then file a reply within a month from the date of such receipt. Then the procedure of giving evidences and hearing shall commence after which the matter is heard and decided. When the application is accepted without opposition, the patent shall be granted.

Step 5: Request for examination[15]

The Application or any other interested person will have to make a request for it in Form 18 within Forty-eight months from the date of priority or the date of filing, whichever is prior in time. The failure to do so will cause the application to be considered as withdrawn.

Step 6: Publication of Grant of patent

Where an application for a patent checks all the boxes, the patent will be granted to the applicant or applicants with the seal of the patent office. Furthermore, the date on which the patentee got the exclusive rights to the invention shall be recorded in the register.[16] Thereafter, the information that the patent has been granted will be published by the controller and consequently the application, the specifications and other related documents shall be open for the public to scrutinize.

Step 7: Renewal of Patent[17] The process of keeping a patent active is through paying the renewal fee timely.


Conclusion

In today’s globalised economy, to deal with the rising numbers in inventions & developments, patents law works as solution to benefit an individual & companies. The main idea of the act is to stimulate an exclusive right to inventors. Hence, Patents law are designed to foster new innovation & to achieve sustainable development goals, which further results in higher returns to an inventor.

[1] The Patents Act, 1970, No. 39, Acts of Parliament, 1970 (India). [2] The Patents (Amendment) Act, 1999, No. 17, Acts of Parliament, 1999 (India). [3] The Patents (Amendment) Act, 2002, No. 38, Acts of Parliament, 2002 (India). [4] The Patents (Amendment) Act, 2005, No. 15, Acts of Parliament, 2005 (India). [5] Bishwanath Prasad Radhey Shyam v. Hindustan Metal Industries, AIR 1982 SC 1444. [6] Shinning Industries v. Shri Krishna Industries, AIR 1975 All 231. [7] Patent office Procedures, IP INDIA, http://www.ipindia.nic.in/writereaddata/images/pdf/oatent-office-procedures.pdf. [8] The Patents Act, 1970, § 6, No. 39, Acts of Parliament, 1970 (India). [9] Patents Rules, 2003. [10] Patents Rules, 2003. [11] The Patents Act, 1970, § 9,10, No. 39, Acts of Parliament, 1970 (India). [12] The Patents Act, 1970, § 8, No. 39, Acts of Parliament, 1970 (India). [13] The Patents Act, 1970, § 11(a), No. 39, Acts of Parliament, 1970 (India); Patents Rules, 2003. [14] The Patents Act, 1970, § 25, No. 39, Acts of Parliament, 1970 (India). [15]The Patents Act, 1970, § 11(b), 12, No. 39, Acts of Parliament, 1970 (India); Patents Rules, 2003. [16] The Patents Act, 1970, § 43, No. 39, Acts of Parliament, 1970 (India). [17] The Patents Act, 1970, § 53, No. 39, Acts of Parliament, 1970 (India).

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