BASICS OF PATENT
Attorney of Trustman & Co-
A law Firm at Delhi India
Patent law has been formulated with an objective to promote
and protect the inventions and methods. The object of granting a
patent is to encourage and develop science, technology and industry.
A patent can be defined as a grant of exclusive rights to an
inventor over his invention for a limited period of time. The exclusive
rights conferred include the right to make, use, exercise, sell
or distribute the invention in India. The term of a patent is twenty
years, after the expiry of which, the invention would fall into
the public domain.
In 1957, Govt.
of India appointed Justice N. Rajagopala Ayyangar examine and review
the Patent law in India who submitted his report September 1959
recommending the retention of Patent System despite shortcomings.
The Patent Bill, 1965 based mainly on his recommendations incorporating
a few changes, in particular relating to Patents for food, drug,
medicines, was introduced in the lower house of Parliament on 21st
September, 1965. The bill was passed by the Parliament and the Patents
Act 1970 came into force on 20th April 1972 along with Patent Rules
1972. This law was suited changed political situation and economic
needs for providing impetus technological development by promoting
inventive activities in the country.
of GATT negotiations paved the way for WTO. Therefore India was
put under the contractual obligation to amend its patents act in
compliance with the provisions of TRIPS. India had to meet
the first set of requirements on 1- 1-1995. This was to give a pipeline
protection till the country starts giving product patent. It came
to force on 26th March 1999 retrospective from 1-1-1995. It lays
down the provisions for filing of application for product patent
in the field of drugs or medicines with effect from 01.01.1995 and
grant of Exclusive Marketing Rights on those products.
its Patents Act again in 2002 to meet with the second set of obligations
(Term of Patent etc.), which had to be effected from 1-1-2000. This
amendment, which provides for 20 years term for the patent, Reversal
of burden of proof etc. came into force on 20th May, 2003. The Third
Amendment of the Patents Act 1970, by way of the Patents (Amendment)
Ordinance 2004 came into force on 1st January, 2005 incorporating
the provisions for granting product patent in all fields of Technology
including chemicals, food, drugs & agrochemicals and this Ordinance
is replaced by the Patents (Amendment) Act 2005 which is in force
now having effect from 1-1-2005 .
OF PATENT ADMINISTRATION IN INDIA
in India is administered under the superintendence of the Controller
General of Patents, Designs, Trademarks and Geographical Indications.
The Office of
the Controller General functions under the Department of Industrial
Policy and Promotion, Ministry of Commerce and Industry. There are
four patent offices in India. The Head Office is located at Kolkata
and other Patent Offices are located at Delhi, Mumbai and Chennai.
The Controller General delegates his powers to Sr. Joint Controller,
Joint Controllers, Deputy Controllers and Assistant Controllers.
Examiners of patents in each office discharge their duties according
to the direction of the Controllers.
of Officers in Patent office
General of Patents, Designs, Trademarks & GI
of Patents & Designs
Controller of Patents & Designs
Controller of Patents & Designs
Controller of Patents & Designs
Joint Controller of Patents & Designs
A patent can
be granted for an invention which may be related to any process
or product. The word “Invention “ has been defined under the Patents
Act 1970 as amended from time to time.
means a new product or process involving an inventive step and capable
of industrial application” (S. 2(1)(j))
“ new invention”
is defined as any invention or technology which has not been anticipated
by publication in any document or used in the country or elsewhere
in the world before the date of filing of patent application with
complete specification, i.e. the subject matter has not fallen in
public domain or that it does not form part of the state of the
art; Where, Capable of industrial application, in relation to
an invention, means that the invention is capable of being made
or used in an industry
Therefore, the criteria for an invention to be patentable are,
An invention must be novel
has an inventive step and
is capable of industrial application
To be patentable, an invention should fall within the scope
of patentable subject matter as defined by the patent statute. The
invention must relate to a machine, article or substance produced
by manufacture, or the process of manufacture of an article. A patent
may also be obtained for an improvement of an article or of a process
of manufacture. With regard to medicine or drug and certain classes
of chemicals no patent is granted for the product itself even if
new, only the process of manufacturing the substance is patentable.
However, product patents would be available for drugs and food materials
from 2005 as India’s obligations under the TRIPs Agreement would
kick in from that point of time. If any substance falls outside
the scope of patentable subject matter, it cannot be patentable.
There are some
products and processes, which are not patentable in India They are
classified into two categories in the patent act
Those which are not inventions (S.3)
Invention relating to atomic Energy (S.4)
types of non-patentable inventions under Section 3 are as follows-
3(a) An invention
which is frivolous or which claims anything obvious contrary to
well established natural laws.
in one piece, articles, previously made in two or more pieces is
frivolous. Mere usefulness is not sufficient (Indian vacuum brake
co. ltd vs. Laurd (AUR 1962 CAK 152).
machine alleged to be giving output without any input is not patentable
as it is contrary to natural law.
3(b) An invention
the primary or intended use or commercial exploitation of which
could be contrary to public order or morality or which causes serious
prejudice to human, animal or plant life or health or to the environment
3(c) The 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;
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.
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.
amendment of Section 3 (d) by the Patents (Amendments) Ordinance
2004 it reads as “mere discovery of any new property or new use
for a known substance or mere use of a known process, machine or
apparatus…”The insertion of the word “mere” before ‘new use for
a known substance’ in this clause by the Patents (Amendment) Ordinance
2004, is for the purpose of drafting clarity only as without it
the sub-section would have remained ambiguous. This does not restrict
the non patentability and give rise to ambiguity and possible misuse.
There is no need of giving wider meaning to it.]
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
3(f) The mere
arrangement or re-arrangement or duplication of known devices each
functioning independently of one another in a known way.
3(h) A method
of agriculture or horticulture.
(i) A method
of producing a new form of a known plant even if it involved a modification
of the conditions under which natural phenomena would pursue their
inevitable course is not patentable. (N.V. Philips Gloeiammpenfabrieken's
Application 71 RFC 192).
3(i) Any process
for the medicinal, surgical, curative, prophylactic diagnostic therapeutic
or other treatment of human being 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.
Plants and animals
in whole or any part thereof other than microorganisms but including
seeds, varieties and species and essentially biological processes
for production or propagation of plants and animals;
and new variety of plants are not patentable. But process / method
of preparing Genetically Modified Organisms are patentable subject
3(m) A mere
scheme or rule or method of performing mental act or method of playing
3(n) A presentation
of integrated circuits;
RELATING TO ATOMIC ENERGY (S.4)
Patent shall be granted in respect of an invention relating to atomic
energy falling within subsection (1) of section 20 of the Atomic
Energy Act, 1962
types of Patent Applications in India
PCT international application
PCT National phase application
Application for Patent of addition
An application for a patent in the prescribed form along with
the prescribed fee has to be filed in the appropriate patent office.
Examiners of patents scrutinize the application accompanied by a
specification so that it satisfies the requirements. After examination,
the Patent Office will raise objections and once the applicant convinces
the Controller Of Patents will put the specification in the Official
Gazette and on its acceptance without any controversy, a patent
shall be granted.
A patent grant gives the patentee the exclusive right to make
or use the patented article or use the patented process by preventing
all others from making or using the patented article or using the
patented process. The patentee can assign, grant licenses or deal
The patent application passes through the following stages:
An application for a patent can be filed by the true
and first inventor. It can also be filed the by the assignee
or legal representative of the inventor. If an application is filed
by the assignee, proof of assignment has to be submitted along with
the application. The applicant can be national of any country.
Form of Application
Every application shall be accompanied by a provisional or
complete specification. Provisional applications are generally filed
at a stage where some experimentation is required to perfect the
Filing of a provisional specification allows the applicant
to get an early application date.
Specification shall contain:
b. Written Description,
c. Drawings, if necessary and
d. Sample or model if required.
complete specification shall contain:
c. Written Description,
d. Drawings (where necessary),
e. Sample or Model (if required by the examiner),
f. Enablement and BestMode,
g. Claims and
h. Deposit (Microorganisms)
Priority date is the date of first filing allotted by the patent
office to an application. If a provisional application is followed
by a complete application, the priority date shall be date of filing
of the provisional application. If an Indian application is filed
after a foreign or PCT application, the priority date shall be the
date of filing of the foreign or PCT application. If an application
is divided into two applications, the priority date shall be date
of filing of the parent application.
Priority date is the date of reference used by the patent to
determine the newness of the invention. If the claimed invention
is part of public knowledge before the priority date, it will not
be eligible for a patent. Under US Law, priority date is pushed
back to the date of conception for determining novelty and Non-obviousness.
Patent Application can be filed at any of the four patent offices
in India. Patent Offices are located at Kolkata, New Delhi, Chennai
to be submitted at the time of filing
The following documents have to be submitted at the time of
filing a patent application:
Form 1 - Application for the grant of patent.
Form 2 - Provisional or Complete Specification.
Form 3 - Statement and undertaking by the applicant.
Form 5 - Declaration as to inventorship.
Form 26 - Authorization of patent agent or any other person.
Priority document details have to be filed for a Convention
A patent application will be published on expiry of eighteen
months after the priority date. It can be published earlier, if
such a request is made by the applicant. The application will not
be published if directions are given for secrecy, until the term
of those directions expires. It will also not be published if the
application is withdrawn three months before publication date.
On publication, specification including drawings and deposits
shall be open for public inspection. The rights of the patentee
start from the date of publication but they cannot be enforced until
after patent grant.
1. Request for Examination
The process of examination starts with a request for examination.
The request has to be made within 36 months from the date of priority
or filing. However, if secrecy directions have been given for the
application, the request can be made six months after the directions
are revoked or thirty six months from the date of priority or filing,
if that date is later.
On receiving the request, the controller shall direct the patent
application to the Examiner for examination. To start with, the
examiner makes a formal examination by verifying the propriety and
correctness of all documents filed with the application. Later,
he verifies the patentability of the application. The patentability
analysis includes all patentability requirements.
After confirming that the application falls within the scope
of patentable subject matter, the examiner conducts a prior art
search to check if there is prior art, which anticipates the invention
claimed. Prior art search for anticipation includes search for anticipation
by publication, filing of complete specification, etc. He then verifies
the existence of inventive step, Industrial application, and Enablement
and Best mode.
The examiner will give the examination report within 1 month
from the date of reference by controller and that term shall not
exceed three months. If the examination report is adverse, the controller
sends a notice to the applicant and gives him an opportunity to
correct and if necessary an opportunity of hearing. The Controller
might ask the applicant to amend the application in order to proceed
further. If the applicant does not make such changes, the application
might be rejected.
The Controller has the power to divide the application, post
date the application, substitute applicants and reject the application.
An order of division will be given if the application contains more
than one invention and if it is required to file separate applications
for each invention. The application might be post dated to a period
of six months if requested by the applicant. Substitution of inventors
is generally done if the inventor has been wrongfully mentioned
or if a joint inventor has not been mentioned in the application.
The controller has the power to reject the application, if
the applicant does not comply with his requirements.
1. Pre-grant Opposition
Any person can file an opposition for grant of patent after
the application has been published. Opposition may be filed on any
of the following grounds:
a. Non compliance of patentability requirements.
b. Nondisclosure or Wrongful disclosure of genetic resources
or traditional knowledge.
2. Post-grant Opposition
Any person can file an opposition within a period twelve months
after the grant of a patent. It can be filed based on the following
a. Wrongful obtainment of the invention by the inventor.
b. Publication of the claimed invention before the priority
c. Sale or Import of the invention before the priority date.
d. Public use or display of the invention.
e. The invention doesn’t satisfy the patentability requirements.
f. Disclosure of false information to patent office.
g. Application for the invention is not filed within twelve
months from the date of convention application.
h. Nondisclosure or wrongful disclosure of the biological source.
i. Invention is anticipated by traditional knowledge.
3. Process of Opposition
On receiving a notice of opposition, the controller notifies
the patentee. He then constitutes an Opposition board to deal with
the opposition. The Opposition board decides the issues after giving
reasonable opportunity of hearing to both the parties. The Opposition
board might invalidate the patent, require amendments or maintain
the status quo. If amendments are required, they have to be made
within the prescribed period in order to maintain the patent.
GRANT OF PATENT
If the application satisfies all the requirements of the patent
act, the application is said to be in order for grant. An application
in order for grant shall be granted expeditiously. A granted patent
shall be published in the official gazette and shall be open for
public inspection. Every granted patent shall be given the
filing date. The patent will be valid throughout India. A granted
patent gives the patent holder the exclusive right to make, use,
sell, offer for sale and import the product or use the process.
However, the government can make use of the patent for its own purposes
or for distributing an invention relating to medicine to hospitals
and dispensaries. Furthermore, any person can make use of the patent
for experiment or education.
A patentee may assign the whole or any part of the patent rights
to the whole of India or any part thereof. There are three kinds
of assignments: legal assignment, equitable assignment and mortgages.
An assignment of an existing patent is a legal assignment where
the assignee may enter his name as the patent owner. A certain share
given to another person is called an equitable assignment and a
mortgage is when patent rights are wholly or partly transferred
to obtain money.
A patentee may, by a license, permit others to make, use, or
exercise, the invention which otherwise would not be allowed. The
license should be in writing and the terms of which must be given
in the application filed with the Controller. A license maybe given
in express terms or implied from the circumstances. An exclusive
license excludes all other persons including the patentee from the
use of invention In a limited license the limitation may arise as
to persons, time, place, manufacture, use or sale.
Compulsory Licenses and Government use of inventions
Under certain circumstances like when reasonable requirements
are not satisfied, a very high royalty is quoted, when a patent
cannot work without another related patent or on notification by
the Central government, the Controller can grant a license to an
The Central or State government can use for a purpose of its
own all patented inventions or processes either with or without
Revocation of a patent
A patent may be revoked by various modes namely revocation
in the public interest by the Government or relating to atomic energy
by Controller. A patent may also be revoked for non-working. The
High Court may revoke a patent on noncompliance with the requirements
for use of an invention or on petition by a person interested on
various specified grounds.
A patentee may at any time offer to surrender his patent by
giving notice to the Controller, whom after hearing the parties
may revoke the patent.
Patent enforcement and Infringement of patents
Infringement of a patent is the violation of the exclusive
rights of the patentee.
Determination of infringement depends on the scope of exclusive
rights of the patentee, whether the infringer’s acts amount to making,
using, selling or distributing a product or using a method and if
in fact the acts amount to an infringement. The burden of proof
is on the patent owner for proving infringement.
The defendant in a suit for infringement may plead one or more
defenses. He can claim the patent owner is not entitled to sue for
infringement or deny any infringement. Any leave or license
express or implied to use the invention does not amount to infringement
and where infringement is invalid on certain grounds.
Acts done in connection with government use, experiment, research,
education and falling within the scope of innocent infringement
or done after failure to pay renewal fee or before the date of amendment
of the specification do not amount to infringement. A defendant
may also counter claim for revocation of patent.
Injunctions act as a preventive relief to the patentees. The
patent owner at the start of a trial can request for an interim
injunction in order to restrain the infringer from continuing the
infringement to prevent further losses. Permanent injunction is
given based on the merits of the case at the end of the trial. A
patent owner is entitled to the relief of damages as compensation
to the patentee and not punishment to the infringer. The patent
owner may also opt for the account of profits where he has to prove
use of invention and the amount of profit derived from such illegal