What is the Governing Law of Patent?

In India, the law of Patent is governed by Patent Act, 1970 as amended till date and Rules there under. The Patent Act, 1970 was lastly amended by The Patent (Amendment) Act, 2004 became effective from January 1, 2005. The substantial amendment is effected by this last amendment.

What is Patent?

A Patent is a Statutory privilege granted by the Government to inventors (or to other persons obtaining rights from the Original Inventors) for a fixed and limited period of years, to exclude other persons from manufacturing, selling or using any patented product or process or method. Thus, the Patent is a monopoly right on an invention for a limited period of time.

Thus, the Patent is a monopoly right on an invention for a limited period of time.

What is Patentable Invention?

All the invention is patentable which is new and industrially useful barring few as described herein below.

In nutshell, all the inventions including any art, process, method or Manner of Manufacture, Machine, Apparatus, Article or Substance produced by manufacture or process of manufacture and Improvement thereof.

What is not patentable?

• Invention which is frivolous and contrary to established natural laws.


• An invention which could be contrary to public order or morality or which causes serious prejudice to human, animal or plant life or health or to environment.
• Discovery of any living thing or non-living substance occurring in nature.
• The mere discovery of mere new use of a known process, substance, machine or apparatus unless such known process or machine results into a new product or employs at least one new reactant.


• A substance obtained merely by admixture resulting only in aggregation of properties of the components.


• Mere arrangement / rearrangement of known devices each functioning independently in known way.


• A method of agriculture or horticulture.


• A process of medical, surgical, diagnostic, therapeutic or other treatment of human beings.


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


• A mathematical or business methods or algorithms.


• Computer program per se other than technical application to industry or a combination with hardware.


• Aesthetic creation, literary, dramatic, musical or artistic work


• A mere scheme or rule or method of performing mental act or method of playing game.


• A presentation of information


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

What are the filing requirements for a Patent application?

Who can be the applicant in a Patent application?

Any of the following may become the Applicant in an application:

What is the Procedure of publication and examination of a patent application?

With effect from January 1, 2005, the procedure for Publication and Examination is amended substantially. Following is the brief idea of the procedure:

PUBLICATION:

However, no suit for infringement can be filed till the patent is granted.

EXAMINATION:

Representation of Opposition:

Once the application is published, any aggrieved person may in writing represent by way of an opposition to the Controller against the grant of patent on any of the following grounds:

Upon receiving representation of opposition, the Controller shall consider and dispose of the representation as he deems proper.

None of the party including the aggrieved party who has made representation will be party to the proceeding.

Grant:

Once the application is found to be order with compliance of all the requirements including objections on patentability of the invention or disposed off by the Controller if represented for opposition, the patent is granted as soon as possible (but not before expiry of six months from the date of publication) and information of grant is published in an Official Journal.

OPPOSITION:

Once the patent is granted, the same can be opposed within a period of one (1) year from the date of grant upon following grounds:

• Wrongfully obtained invention.


• Prior Publication


• Prior Claiming


• Prior public knowledge or public use in India


• Obviousness and lack of inventive steps


• The invention is not properly described


• Lack of subject matter (invention is not patentable)


• Failure to disclose information relating to the applications filed in foreign countries for the same inventions.


• Non disclosure or wrong disclosure of the source or geographical origin of biological material used for the invention; and


• Invention is known due to the prior knowledge, oral or other wise available within any local or indigenous community in India or elsewhere.

Once the opposition is filed, the matter will be decided after taking into consideration all the written and oral evidences.

What happens after an opposition period is over?

After the Opposition period is expired or no opposition is filed or the opposition is won by the patentee, the grant of a patent is confirmed.

What is the term of a Patent?

The term of a Patent is 20 years from the date of filing of Patent.

Whether my invention is protected once I file an application in India?

No. The protection is granted only after the application is formally published in an Official Journal upon expiry of 18 months or earlier (if expedited). Till that time, no protection is granted or conferred upon.

What is the normal time period within which a patent could be granted?

There is no specific time within which an application would be accepted. However, approximately it would be about 2 -4 years.

Do I have to pay any fees or annuities to keep the Patent alive?

No fees are required to be paid for first 2 years of the term of Patent after its sealing. To keep the Patent in force, it is imperative to pay the Annuities till the term of Patent. Non payment of annuities will result into laps of the Patent.

What happens if I do not pay or miss to pay the annuity with in a time period?

The patent will be lapsed. However, within a period of 12 months from the due date of payment of annuity i. e. date on which the Patent becomes lapsed, it may be restored upon payment of additional fees. It is to be noted here that no protection will be conferred upon the patentee within this period of non payment of annuity.

What is the monopoly rights conferred upon a Patentee?

The following exclusive rights are conferred to a patentee:

• To make, use, sell or distribute the patented article and use or exercise the method or process if a patent is for process.


• To assign or grant license or deal with a patent for any consideration.


• Right to surrender a patent.


• During the period from date of advertisement and date of sealing of the patent, the applicant for the patent can exercise all the privileges and rights of a patentee EXCEPT filing of a suit for the infringement of a patent.

What is the infringement of a Patent?

• Any person who is unauthorizedly making, using, selling or distributing a Patented Article or composition is considered as an infringement of a patent.

What are the remedies available against such infringement?

A registered patentee may take civil action against an infringer by:

• Suit for temporary or interlocutory injunction;


• Permanent injunction;


• Damages OR Account of Profit (at the option of Plaintiff);


• The delivery of the infringing goods, labels and advt. materials for destruction;


• A defendant can be ordered to reveal the identity of any third persons involved

Is it possible to revoke a Patent even after grant?

Yes. A patent may be revoked anytime after grant during its validity upon any of the below mentioned grounds;