Principle of Patent, Patentability And Examination Procedure

Transcription

1 Principle of Patent, Patentability And Examination Procedure Dr Jitendra Kumar Pradhan Deputy Controller of Patents & Designs The Patent Office, Kolkata, India E- mail:

2 Outline of the Presentation IPR & Principle of Patent Indian Patents Act and Historical development Filing & Examination Procedure Opposition Procedure (Pre-grant & Post grant) Recent Development Patenting Abroad

3 INTELLECTUAL PROPERTY Needs to be managed in a proper manner to provide optimum benefits to creators and society (Scientist, Writer, Composer etc.) 3

4 PRODUCT OF MIND INTELLECTUAL PROPERTY Patent An invention on remote control mechanism can be protected by Patent SONY Trade Mark SONY can be protected by Trademark Design An aesthetic view of TV set can be protected by Design Copyright TV instruction manual can be protected by Copyright 4

5 Importance of IPR Essential component for the development of Country. Confer exclusive rights on creators and inventors who contribute to the betterment of the society through their creation in different fields of knowledge. IP system not only boost the collective knowledge of the society but also escalate their dissemination. 5

6 WHAT IS A PATENT A Patent is an exclusive territorial right conferred by the state to the inventor/applicant to exploit his/her invention for commercial benefit for a limited period in consideration of his/her complete disclosure of the invention. It is a negative right, it prevents other from using this right without the consent of the patentee. The Patent is granted as per the Patents Act, 1970 as amended by the Patents 6 (Amendment) Act,2005.

7 A Patent Right is territorial in nature. Term of Patent 20 years There is no global Patent. 7

8 IS IT NECESSARY TO FILE AN APPLICATION FOR PATENT An inventor can secretly exploit his/her invention exclusively without disclosing his/her invention to anybody BUT? -- There is a great risk involved by way of leaking out or development of technology by others, LOSS of exclusivity when investment is high SO, it is always beneficial for the inventor to file an application for Patent 8

9 DISCLOSURE OF INVENTION INVENTOR ASSIGNEE OF THE INVENTOR PATENT THE PATENT OFFICE LEGAL HEIR OF AN INVENTOR/HIS ASSIGNEE 20 YEARS EXCLUSIVE RIGHT ON ADVANCEMENT 9

10 Benefits of Patent Provides threshold knowledge for young and promising scientists in their research and development work. Providing reward as exclusive rights Making profits through putting the invention into practice Reinvestment from profits for new research Socio-economic and technological development of country Recognition in society The burden of duplication of the invention is avoided : it saves further spending of time and money; STOPS WASTAGE OF RESOURCES. 10

11 Benefits Of Patent Nice tool for transfer of technology-any interested person may buy the Patent. Patent provides protection to the Patentee, wherein, if the Patent is infringed, the Patentee may seek the legal remedies. Thus Patent is a form of social security to an inventor. Once, the life of the Patent is over, any person may freely, without paying any royalty to the Patentee, may enjoy the invention. 11

12 Use of Technical Information without infringement Lapsed Patent Patent granted from countries other than India Non-patent literature Product not patentable under Indian Law Compulsory licence 12

13 Patent Document Bibliographic Information Date of Filing & Publication Name & Address of Applicant Title, Classification, Abstract, Drawing, Formula etc. Corresponding Priority Application /Patent Technical Information State of Art Description Drawings Claim(s) 13

14 Indian Patent Law HISTORICAL DEVELOPMENT The Act of 1856 based on UK Act Of 1852 The Act of 1859, The Patterns & Designs Protection Act, of 1872 The Protection of Invention Act, of 1883 The Patents & Designs Act 1911 The Patents Act of 1970 Further Amendments to The Patents Act of ,

15 First Patent Granted in 1856 Early bird: George Alfred DePenning (First Indian patent Punkah Pulling Machine ) 15

16 Patents (Amendment) Act, years term Product patent allowed Early publication introduced [Section 11 A(2)] Pre-Grant (any time before grant of patent) opposition [Section 25(1)] Post Grant Opposition (up to one year after grant of patent) [Section 25(2)] 162 Sections, 139 Rules 4 Schedules Schedule I : Prescribed fees for different purposes Schedule II : Prescribed forms for different purposes Schedule III : Prescribed form of the Patent (LP) Schedule IV : Prescribed costs to be awarded in various proceedings before the Controller 16

17 The Patents (Amendments) Act 2005 Product/Process patent for inventions in all fields of technology New forms of known substances excluded in order to prevent ever-greening of patent Rationalization of opposition procedure Introduction of pre-grant opposition by representation and Post grant opposition Compulsory license for manufacture and export of pharmaceutical products to any country having insufficient or no manufacturing capacity 17

18 The Patents (Amendments) Act 2005 Provisions concerning review of secrecy directions-now to be reviewed every six month instead of 12months 18

19 Brief Patenting Procedure Pre-filing : Filing: Processing: Granting: Why? Who? When? What & What not? Drafting of specification Unity of invention Types of application Types of patent specification Where? How? Formal requirements Technical requirements Term of patent Date of patent 19

20 Pre-filing Who??? Individual (Natural Person) i.e, Inventor Assignee Legal entity When??? Sooner the better (First to file practice) Immediately after invention is completed/developed for commercialisation (in certain cases immediately after conceptualization). Before any publication or commercial usage or communication to others Delay in filing may cause Other invention of substantially same nature by competitor may the advantage of priority, depriving the true and first inventor Prior publication of invention by inventor or others may damage the novelty 20 take

21 Pre-filing What??? Patentable Inventions which are u/s 2 (1) j of the Act Novel Inventive Industrially Applicable Prior Art Invention [So, complexity of invention is not a criterion for patentability] What Not???? Non-patentable Inventions as detailed u/s 3, 4, 35 of the Act 21

22 Pre-filing Types of Application Ordinary : Application originating from India (Sec 7) Convention PCT National Phase Patent of Addition Divisional Application : Application originating from convention countries (Sec 135) : Application entered India through PCT route : When application is made in respect of improvement or modification of the main invention : When more than one invention is disclosed in a single specification (Sec 16) 22

23 How??? E-Filing 1. Application on Form Full disclosure on Form 2 Provisional or Complete Specification Complete has to be filed within 1 year of provisional filing 3. Foreign filing details on Form 3 4. Declaration of Inventor ship on Form 5 5. Priority document if applicable (certified copy of basic applicn.) 6. Translated copy of priority document 7. Assignment where applicant is other than inventor 8. Power of attorney if filed thorough patent agent 9. Request on Form - 9 (If early publication required) 10. Request for examination on Form Prescribed fees ( 23

24 Types of Specification PROVISIONAL Description of essential features of invention Need not include claims & manner of performing invention Advantage: To obtain priority i.e, protection from early stage of invention COMPLETE Should fully and particularly describe the invention & method of performing Must contain a set of claims Should be filed within 1 yr of filing provisional specification Contd. 24

25 Drafting (Contents of complete specification Title Field of Invention Introduction Background Information Prior Art (Patent/Non-patent lit.) Objective of Invention Summary of Invention Detailed Description Language : English/Hindi Paper : White, A-4, 29.7 x 21.0 cm Margin : 4 cm (Left & Top) 3 cm (Right & Bottom) Preferred embodiment/best mode to carryout the Invention Examples Set of CLAIMS Drawings (if any) u/r 15 Sequence listing (if any) [ also soft copy to be submitted] Abstract : 150 words, drawing, chemical formula Models (when controller requires u/r 16) Contd. 25

26 Patent Filing Jurisdiction As per place of Residence/ Business/ Origin of invention Haryana, Punjub, Delhi, HP, J&K, Rajasthan, Chandigarh, UP, Uttarakhand Maharashtra, Gujarat, MP, Goa, Daman & Diu, Dadra & Nagar Haveli, Chattisgarh, Rest of India Jurisdiction for foreign applicants depends upon the address of service in India AP, Kerala, TN, Karnataka, Pondicherry, Laccadive, Minicoy 26

27 Filing of the Application Physical filing at the Patent Office Electronic filing (July 20,2007) 27

28 Filing of the patent application Application for patent can be filed only on the payment of full Fee Filing fee is now charged on the basis of number of pages and number of claims made in the patent document No extra fee is charged upto 30 pages and 10 claims Different fee for natural person, Small entity, and Other Legal Entity 28

29 Fees(Rs) at the time of application (Schedule I)(E-Filing) Natural person Small Entity OTHERS Application for Grant of Patent (For 30 sheets & 10 claims) Request for Examination (Form-18) Request for Expedite Examination (Form-18A)(only online) Request for Early Publication (optional)(form-9) Fees After Grant of Patent 76,800 1,92,000 3,96,000 Renewal Fees (for 20 years) (For physical filing 10% more) (Declaration of Small entity on Form-28) 29

30 Inventions Related to Biological Materials If any invention is based on research on biological resources obtained from India, the applicant has to get the approval from National Biodiversity Authority, India, before grant of the patent. Section 6 of Biodiversity Act,

31 Scheme for Startup Application Startup means any entity where more than 5 years have not lapsed. Turn over not exceeding 25 Cr and involved in R & D or commercialization of new product, processes or services by technology or IP. Free assistance from Facilitators(drafting, prosecution till the final disposal). 31

32 Examination Procedure Filing of the application Request For Examination ( RFE) Publication under section 11A Pre-grant Opposition Examination Grant of Patent Post-grant Opposition 32

33 Examination Examination: Not automatic Request to be made by applicant or third parties, Examination report to applicant only A request for examination can be filed in form 18 within 48 months from the priority date or filing date whichever is earlier Expedite Examination for startup applicant or application where India is elected as ISA/IPEA 33

34 Technical groups All the controllers and examiners have been divided into 4 groups Groups have been constituted according to field of technology namely Chemical, Biotechnology, Electrical and electronics and Mechanical and allied engineering The applications are referred to examiners as per their field of Specialization Applications are examined as per serial order of the request for examination 34

35 Examination [u/s 12, 13] Formal Examination (prior to technical examination) Forms, Fees, Dates, Documents (Priority, assignments etc.) Specification,Abstract,Sequence list (also soft copy), Power of attorney Technical/Substantive Examination Patentability - Exclusions - u/s 3 (non-patentable) u/s 4 (atomic energy inventions) u/s (defense related) Sec 2(1) j Novelty test Inventive step Industrial applicability 35

36 Inventions Not Patentable Sec 3 (a) Contrary to well established natural laws (machine alleged to be giving output without any input is not patentable as it is contrary to natural law ) Sec 3 (b) Contrary to public order or morality or which causes serious prejudice to human, animal or plant life or health or to the environment (Food adulteration method, machine or method for counterfeiting of currency notes, method for pre-natal sex determination) 36

37 Contd. 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 [Discovery of a plant, animal, microorganism occurring in nature (identified or isolated) Natural Gene sequence, DNA sequence or amino acid sequences. Non biological materials such as new mineral, ore, crude oil, gas, an element, salt etc. discovered or identified] 37

38 Contd. Sec 3 (d) 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. (Aspirin for use of treatment of cardiac disease cannot be considered patentable as, it is known earlier for analgesic use but an alternative process for preparation of Aspirin is patentable) 38

39 Inventions Not patentable Section(3e) 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. (Paracetamol and Ibuprofen for curing fever and pain or process of preparation thereof is not patentable for the reason that the composition is a mere admixture of two drug components resulting into aggregation of properties thereof; since Paracetamol is well known for treatment of fever and Ibuprofen for treatment of pain.) However, if the combination results in a synergistic effect/unexpected properties, it s patentable Sec 3 (f) Mere arrangement or re-arrangement or duplication of known devices each functioning independently. (A Pencil with eraser) 39

40 Inventions Not Patentable Sec 3(h)Method of agriculture or horticulture Sec 3(i) Process for any medicinal, surgical, curative, prophylactic, diagnostic or therapeutic treatment of human being or animal. Sec 3(j) Plant & animals or their parts, Seeds, varieties and species and essentially biological process for the production or propagation of plants and animals Sec 3(k) A mathematical or business method or a computer programme per se or algorithms 40

41 Inventions Not Patentable Sec 3(l) Literary, dramatic, musical or artistic/cinematography works and television productions or any other aesthetic creation. Sec 3(m) Scheme or rule method of performing mental act or method of playing game Sec 3(n)Presentation of information Sec 3(o) Topography of integrated circuit Sec 3(p) Traditional knowledge or aggregation or duplication of known properties of traditionally known components 41

42 Section 4 Inventions relating to Atomic energy [Substances falling within section 20 (1) of the Atomic Energy Act not patentable] (A process for preparation of Uranium chloride useful in radio diagnosis the process comprising..) Cases referred to the DAE. Decision is final. No Appeal Section Defence related inventions referred to Ministry of Defence Empower the Central Govt. to use [Section 100, 101] such inventions and also empower it to prohibit the publication (secrecy direction) of the information relating to such inventions by any person. No patent granted till secrecy direction is in force 42

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44 Revocation [Section 64-66] At any time during term of patent, on petition of any person or of the Central Government, by the Appellate Board or on a suit for infringement of the patent, by the High Court on any of the following grounds Not in public interest (Section 66) Failure to comply with the request of the Govt. to make the patented invention Non-working of the patent Prior claiming in patent granted in India wrongfully obtained Lacking in novelty with regard to prior knowledge or prior use Does not involve inventive step Invention is not useful (invention will not work out/or may not give desired result) Not enabled (does not describe the method by which invention is to be performed ) Claims are not fairly based on the matter disclosed in the specification Anticipated by traditional knowledge Wrongly mentioning or not disclosing geographical origin Failure to disclose information regarding foreign filing 44

45 Compulsory License Provided to any person only after 3 years of grant of patent, if Public requirement not satisfied, or Not available to public in affordable price, or Not worked in India SURRENDER OF PATENT A patentee at any time by giving notice to the Controller, may offer to surrender his/her patent 45

46 Modernised Intellectual Property Offices INDIA Infrastructure HRD IPO Delhi Digitisation e-examination e-filing IPO Mumbai Publication (Official Journal of The Patent Office) Online search facility Computerization of office procedures Functioning as ISA & IPEA w.e.f IPO Kolkata IPO Chennai 46

47 Major Achievements Online filing of patent applications ( Search facilities enhanced by procuring paid database Online search through published Indian patent applications (these facilities are also available to public free of cost) Online search through Indian granted patents (also free of cost to public) Dissemination of information(status, e-register) 47

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