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Patent

Patents are statutory monopolistic rights granted to protect inventions. Patent rights act as economic incentives to patentee. Patents encourage research and development by providing exclusive rights to patentees to commercially make use of the inventions. Patents are granted to encourage disclosure of information to the public by the applicant for Patent so that the same could be used for further scientific and technological research and development. As the Patents are statutory rights they are enforceable within the territorial jurisdiction of the country by which they are granted.
Invention means a new product or process involving an inventive step and capable of industrial application. That implies that the Inventive step involved in the invention must involve technical advance as compared to the existing knowledge or have economic significance or both and thus making the invention not obvious to the person skilled in the art and must also capable of being made or used in an Industry.
Not all inventions are Patentable. For an invention to be patentable, it must be new, useful and non-obvious and must pass through certain parameters prescribed by Government of India. Such as Inventions that are frivolous or claims anything obviously contrary to well established natural laws, or where primary or intended use or commercial exploitation of invention could be contrary to public order or morality or causes serious prejudice to human, animal or plant life or health or to the environment or mere discovery of a scientific principle or formulation of an abstract theory or discovery of any living thing or non-living thing or non-living substances occurring in nature etc.
Patents can be classified under three categories depending upon their priority claim.
  1. Ordinary patent application
  2. Conventional patent application
  3. PCT national phase patent application

Ordinary patent application in India can be filed in India along with a provisional or complete specification. It is further distinguishable from other patents that it does not claim any priority from any other application. Specification is a technical disclosure statement that enables a person ordinarily skilled in the art to perform the invention. It begins with title of the invention and contains field of invention, prior art, objective of invention, summary of invention, detailed description of the invention, drawings, claims and abstract containing summary of the invention. Provisional application do not contain claims and have to be followed by a complete specification within 12 months.

Convention Patent Application claims priority from a convention application and has to be filed in India within 12 months from date of priority and accompanied by a complete specification.
PCT national phase patent application has to be filed in India after filing of PCT application in WIPO and within 31 months from date of priority and accompanied by a complete specification.
There are four patent office in India located at New Delhi, Mumbai, Chennai and Kolkata and depending upon territorial jurisdiction where the Applicant is located, the application has to be filed. For foreign applicant the application has to be filed before the patent office within whose territorial jurisdiction the agent/ attorney for applicant is located.

The basic mandatory requirements for filing an ordinary patent application in India are as follows:

  1. Name, address, particulars and nationality of applicant/s for patent
  2. Name, address and nationality of inventor/s of patent
  3. Provisional specification or complete specification with description, claims, abstract, drawings (if any) and sequence listing (if any)
  1. Power of authority in favour of Indian Patent Attorney/ agent, to be stamped in India, notarisation not necessary.
  2. Declaration as to inventorship within 1 month of filing application or along with complete specification where completed specification is filed after filing a provisional specification.
  3. Proof of right in favour of applicant from inventor in writing (assignment deed, employment agreement or any other arrangement) preferably notarised within six months from filing of application.
  4. Details of all corresponding foreign application within 6 months of filing of application and/or within 6 months of filing of Patent application in any country outside India.

The basic mandatory requirements for filing a Conventional Patent Application in India are as follows:

  1. 1. Name, address, particulars and nationality of applicant/s for patent
  2. Name, address and nationality of inventor/s of patent
  3. Complete Specification with description, claims, abstract, drawings (if any), sequence listing (if any)- In English Language
  1. Power of authority in favour of Indian Patent Attorney/ agent, to be stamped in India, notarisation not necessary.
  2. Declaration as to inventorship within 1 month of filing application
  3. Certified copy of priority document, within 3 months of filing in India
  4. English translation of priority document along with certificate of translation in support, within 3 months of filing in India
  5. Details of all corresponding foreign application within 6 months of filing of application and/or within 6 months of filing of Patent application in any country outside India.
  6. Proof of right in favour of applicant from inventor in writing (assignment deed, employment agreement or any other arrangement) preferably notarised within 6 months from filing of application.
The basic mandatory requirements for filing a PCT National Phase Patent Application in India are as follows:
  1. Name, address, particulars and nationality of applicant/s for patent
  2. Name, address and nationality of inventor/s of patent
  3. English Translation of PCT Application i.e. description, claims, abstract, drawings (if any), sequence listing (if any)
  1. Power of authority in favour of Indian Patent Attorney/ agent, to be stamped in India, notarisation not necessary.
  2. Declaration as to inventorship within 1 month of filing application
  3. Certified copy of priority document or PCT/IB/304 within 31 months from date of priority
  4. English translation of Priority documents along with certificate of translation in support within 31 months from date of earliest priority
  5. Details of all corresponding foreign application within 6 months of filing of application and/or within 6 months of filing of Patent application in any country outside India.
  6. Proof of right in favour of applicant from inventor in writing (assignment deed, employment agreement or any other arrangement) preferably notarised within 6 months from filing of application.

Please note that as per recent internal procedures issued by the Controller General of Patents, the patent applications shall only be published if the power of Attorney is filed with the application or before or within 3 months of requisitions made by the Controller. Further Abstract should be as per the Indian Patent Law and Practice and the specification should by in Hindi or English only then the application shall be published. The Controller shall issue a letter to this effect and within 3 months same should be rectified to allow the application to proceed towards publication in India. Publication is important as in India right accrues from the date of publication of Application in India.

Patent prosecution in India includes the following stages:

  1. Filing of patent application
  2. Publication of patent application on request or after 18 months from date of filing or priority whichever earlier
  3. Filing of request for Examination within 48 months from date of application or priority whichever is earlier
  4. Issuance if First Examination Report containing all the objections to grant of patent for complying within 12 months from date of issuance of same
  5. Responding to the examination report and compliance
  6. Issuance of further Examination report/s till all objections are complied as per satisfaction of the Examiner
  7. Responding to further Examination reports till all objections are complied or objections are contested
  8. Interviewing the Examiner
  9. Hearing with Controller, if requested within prescribed time and objections are contested
  10. Acceptance of patent application on or before final date of acceptance i.e. 12 months from date of issuance of first examination report
  11. Grant of Letter Patent Document by Patent office within 7 days of acceptance of application

The Patent applications are ordinarily published after 18 months from date of filing or priority whichever earlier or when a request is made in this behalf provided no secrecy directions are imposed in this regard by Controller of Patents or Central Government. From the date of publication the applicant for patent has same right as a patentee but the right can be exercised only after grant of patent. The right can be exercised retrospectively from date of publication of application subject to Indian Limitation Act.

From the date of publication of the patent application in the Indian Patent Journal till the patent is granted, any person by way of representation can file an opposition to the Patent Application provided a request for examination has been filed. Thereupon, the patent shall not be granted until the opposition is set aside.

For substantive examination of the patent application a request for examination has to be filed within 48 months from date of filing of application or date of priority whichever is earlier. In case of secrecy directions the request has to be made within aforesaid period or within 6 months from date of revocation of secrecy direction whichever is later. In case of divisional applications the request has to be made within periods stated above or within 6 months from date of filing of divisional application whichever is later.

Once all the objection in respect of a Patent Application are complied /satisfied, a Letter of Patent Grant i.e. Letter Patent Document shall be issued. Within 3 months of issuance of the Grant Certificate, all pending annuities are to be paid to keep the Patent alive.

The patent grant can be opposed by any interested person within 12 months from the date of publication of the Grant of patent in the Patent Office Journal by a notice of opposition.

Duration of Patent is 20 years from date of filing in India for ordinary as well as conventional patent applications and for PCT national phase patent applications 20 years from date of filing of International PCT application. After grant of patent renewal fee has to be paid in respect of 3rd year onwards till the 20th year and must be paid before the expiration of respective years. The patent shall be revoked if renewal fee is not paid in prescribed time and during the period between the revocation of patent till it is restored, the patentee cannot take any action against any infringement of patent by anyone.

Every year from the date of Grant of Patent, a statement in respect of working of Patented invention in India for preceding calendar year is to be filed by March 31 of next year. Non-filing of such statement can result in penalty by the Indian Patent office.

Patent are like moveable property and the patentee has the right to use, sale, transfer, license, mortgage and pledge the patent. However the agreement must be in writing, properly stamped and by all the owners of the patents and should be registered within six months of execution of agreement by filing an application for registration of agreement with the Controller of Patents. The terms of the agreement must be clear and explicit

After 3 years from Grant of Patent compulsory Licensing can be granted by Controller of Patents to any interest persons, including the license under the Patent, on the following grounds:

  1. the reasonable requirements of the public with respect to the patented invention have not been satisfied; and
  2. the patented invention is not available to the public at a reasonable price.
  3. the invention is not worked commercially to fullest extent in territory of India.

The circumstances constituting "failure to meet the reasonable requirements'' of public in respect of a patent are as follows:

  1. Prejudice to an existing trade or industry or its development,
    1. Prejudice to the establishment of a new trade or industry in India,
    2. Prejudice to the trade or industry of any person or class of persons,
    3. Demand for the patented article not being met adequately by local manufacture,
    4. Failure to develop an export market for the patented articles made in India,
    5. Prejudice to the establishment of commercial activities in India;
    6. Prejudice to the establishment or development of trade or industry in India in goods not protected by the patent arising from restrictive conditions imposed by the patentee;
  2. Non-working of the patent in India on a commercial scale;
  3. Demand for the patented articles being met by importation from abroad; and
  4. Commercial working of the patented invention in India being hindered or prevented by import of the patented articles from abroad.

Grant of Compulsory license is for the remaining term of patent unless a shorter period looks reasonable and required in case to the Controller.

While granting the license the Controller shall take into account the nature of invention, time elapsed, ability of applicant, his efforts for obtaining a license on reasonable terms. While granting a compulsory license reasonable royalty is also paid to the patentee having regard to nature of Invention, its utility, expenses incurred in maintaining patent grant in India and other factors.

Normally request for grant of Compulsory License is published and Patentee and other interested persons are afforded reasonable opportunity to defend the grant. But in case of national emergency and other urgent condition in public interest the Controller may first grant the License and then notify the Patentee and other interested persons.

Under special circumstances of medical emergency supported by notification by foreign country in this regard controller may grant compulsory license to meet the medical emergency in that country.

India allows 80% discount in official fee to natural persons. However in the event the patent or application is assigned to non-natural person, the entire discounted fee has to be paid at the time of registration of assignment.

Further w.e.f. February 28, 2014, small entity has been introduced in India and a discount of 50% in official fee is allowed to small entities. Small entity means an entity whose investment in plants/ machines in case indulged in manufacturing/ production of goods is less than 10 crores (approx. 1.6 Millions US Dollars, RBI reference rate shall prevail) and in case indulged in service industry the investment in equipment is less than 5 crores (approx 0.8 Million US Dollar, RBI reference rate shall prevail). It is to be noted that while calculating investment in plants and machinery, the cost of pollution control, research and development, industrial safety devices, and such other things specified under THE MICRO, SMALL AND MEDIUM ENTERPRISES DEVELOPMENT ACT, 2006 is to be excluded.

An affidavit duly executed and notarised could be filed along with Form 28 to claim the small entity status.

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