PATENT

What is a Patent?
A patent for an invention is the grant of a property right to the inventor.
-In general, the term of a new patent is 20 years.
-Patent grants are effective only within the country territory.
-Under certain circumstances, patent term extensions or adjustments may be available.

Why do I need a patent?

If your invention has market potential and you think that another company could make profits
from your invention, you need protection from a patent. 
-A patent gives you the right to exclude others from making your product.
-As a patent gives exclusivity, the patent holder has time to market the invention without
competition making him/her able to charge higher prices.
-It gives the right to initiate legal action against anyone that is making or selling, without
permission, the patent holder invention.
-You can make money by licensing or selling your invention to someone else.
-It gives you priority over third parties wanting to register their patents in countries that do not
require registration.

Rights Conferred By Registration

Patent represents one of the powerful intellectual property rights. The registration of a patent
confers on the patentee the exclusive right to use, manufacture or sell his invention for the term
of the patent. It means that the invention cannot be commercially made, used, distributed or sold
Without the patentee's consent. The patent Rights can usually be enforced in a court of law.

Who Can Apply 

Any person claiming to be the true and first inventor of the invention;
Any person being the assignee of the person claiming to be the true and first inventor in respect
of the right to make such an application;
Any legal representative of any deceased person who immediately before his death was entitled
to make such application Patent Search;
It is prudent to conduct searches as early as possible to avoid spending time and money re-
inventing a known matter. A patent is not granted to an invention if it is already available with
the public either in the form of published literature or common knowledge.

Patentable Inventions
To be patentable, an invention must, in general, satisfy certain criteria. The invention must be of
industrial applicability, must be new and must show an inventive step which could not be
deduced by a person reasonably skilled in the field. Above all, its subject matter must be
accepted as "patentable" under law. As for example, Inventions which are frivolous or claim
anything contrary to well established natural laws are not patentable. There are also other
specific categories of inventions which are declared as non-patentable

Inventions  Patentable
 Art, Process, Method or Manner of manufacture;
 Machine, Apparatus or other Articles;
 Substances produced by Manufacturing
  Computer Software which has Technical application to Industry or is used with
Hardware
 Product Patent for Food / Chemical / Medicines or Drugs

Inventions Not Patentable

 Frivolous or obvious inventions.
 Inventions which could be contrary to law or morality or injurious to human, animal or
plant life and health or to the environment.
 Mere discovery of the scientific principle or the formulation of an abstract theory or
discovery of any living thing or non-living substances occurring in nature
 Mere discovery of any new property or mere new use for known substance or the mere
use of a known process, machine or apparatus- unless results to new products or
employs one new reactant.
 Producing a new substance by mere admixtures of substances.
 Mere arrangement / rearrangement or duplication of known devices functioning
independently.
 Method of agriculture and horticulture
 Any process for the medicinal or surgical, curative prophylactic, diagnostic, therapeutic
or other treatment of human beings, animals to render them free of disease or to
increase their economic value or that of their products.
 The biological processes for production or propagation of plants and animals in whole
or any part thereof other than micro-organisms but including seeds, varieties and
species (new plant varieties can be protected by the protection of plant varieties and
farmers act 2001).
 A mathematical or business method or algorithms.
 A Computer Programme per se other than its technical application to industry or a
combination with hardware.
 Aesthetic creation including cinematography and television production.
 Method for performing mental act or playing game.
 Presentation of information.
 Topography of Integrated Circuits.
 Invention which in effect, is traditional knowledge or which is an aggregation or
duplication of known properties of traditionally known components.
 Inventions relating to Atomic Energy.
 
Patent Specification
The process of patenting typically involves conducting prior art searches to distinguish the
invention and develop a description that illustrates the best method of working the invention. The
description of the invention is called specification. Depending upon the sufficiency of the
description a specification may be either provisional or complete Specification.

Types Of Patents
 Ordinary Patent
 Patents Of Addition
 Convention
Provisional and Complete Specification
A provisional specification is often the first application filed in respect of an invention, and
usually contains only a brief description of the invention. It need not contain claims. Compared
with the provisional, the complete specification contains the full description of the invention, and
the best method of making the invention work. The complete specification comprises a title, field
of invention, the background of the invention, the description of the related art, drawbacks of the
prior art, the summary of the invention, the brief description of the figures, the detailed
description of the preferred embodiments, claims and abstract. Complete specification must be
filed within 12 months from the date of filing of the provisional specification.
Claims are the most important component in the patent specification as it is the legal operative
part which define and determine the legal protection sought for. The extent of patent protection
for an invention shall be determined by the terms of the claims. The description and the
appended drawings may be used to interpret the claims.

Filing and Prosecuting Patent Applications

The procedure for the grant of a patent starts with filing of the patent application along with the
prescribed fees at the patent office followed by filing of request for examination in the prescribed
format, after the publication of the application. The applications are examined substantively and
a first examination report stating the objections is communicated to the applicant. Application
may be amended in order to meet the objections. If the applicant does not comply with the
objection, the application will be abandoned. After complying off the requirements the
application is published in the Official Journal. At that time, opposition can be filed on limited
grounds, but hearing is not mandatory. Patent will be granted if the application is found to be in
order. Then, the application and other related documents will be open for public inspection.
Thereafter, at any time after the grant but before the expiry of a period of one year from the date
of publication opposition on substantive grounds is available. The whole process typically takes
at least two years.

Duration Of A Patent
The tenure for patents is 20 years from the date of filing of the application for the patent before
the patent office. It is the responsibility of the patentee to maintain an issued patent by paying the
annuities until the patent expires. After 20 years term the invention claimed in the patent falls
into the public domain.

Appropriate Office For Filing An Application

Application is required to be filed according to the territorial limits where the applicant or the
first mentioned applicant in case of joint applicants for a patent normally resides or has domicile
or has a place of business or the place from where the invention actually originated .If the
applicant for the patent or party in a proceeding having no business, place or domicile in India.,
the appropriate office will be according to the address of service in India given by the applicant
or party in a proceeding.

Rights Of Patentee
A patent grant gives the patentee the exclusive right to make or use the patented article or use the
patented process. He can prevent all others from making or using the patented process. A
patentee has also the right to assign the patent, grant licenses under, or otherwise deal with it for
any consideration. These rights created by statute are circumscribed by various conditions and
limitations.

Renewal Fee
Renewal fees are payable every year. The first renewal fee is payable for third year of the
patent’s life, and must be paid before the patent’s second anniversary. If the patent has not been
issued within that period, renewal fees may be accumulated and paid immediately after the
patent is sealed, or within three months of its recordal in the Register of the Patents.
Date of payment of Renewal fees is measured from the date of the patent. Six months’ grace is
available With Extension fee. No renewal fees are payable on patents of addition, unless the
original patent is revoked and the patent of addition is converted into an independent patent;
renewal fees then become payable for the remainder of the term of the main patent.
No renewal fees are payable during the pendency of the application for a patent; renewal fees
that become overdue during pendency are payable upon sealing within three months of recordal
in the Patent Register.

Working
Annual reports as to the extent of working, by every patentee and licensee, are a statutory
requirement and must be submitted by March, 31 each year for the previous year ending
December, 31.

Compulsory License And License Of Right

On failure to work a patent within three years from the date of its sealing, an interested party
may file petition for grant of a compulsory license.
Every patent for an invention relating to a method or process for manufacture of substances
intended for use, or capable of being used, as food, medicines, or drugs, or relating to substances
prepared or produced by chemical process (including alloys, optical glass, semi-conductors and
inter-metallic compounds) shall be deemed to be endorsed "Licenses of Right" from the date of
expiry of three years from the date of sealing the patent

Patent & Intellectual Property Attorneys

Our lawyers include those admitted to bar in in India, and the United States of America. They
understand the multi-cultural and the multi-jurisdictional aspects of international business in this
age of globalization. They those educated at Harvard Law School, Harvard University in the
USA and premier universities in India
Restoration
Restoration of a patent that lapses due to non-payment of renewal fees can be made within one
year of lapse. However, certain limitations will be imposed on the rights of the patentee when the
patent is restored.

Information Required for Patent Registration

1. Name address of the applicant. 
2. Complete Specification. 
3. Drawing. 
4. Request. 
5. Abstract. 
6. Power of Attorney. 
7. Priority documents (if any).

There is no international or world patent. An inventor has to file an application in each country,
where he seeks to protect his invention. However, there are regional and/or International treaties
to facilitate the procedure to seek protection like Patent co-operation Treaty (PCT) or European
Patent Convention (EPC).

Patent Administration in India

The Head Office is in Kolkata
Four branches:
Kolkata
Mumbai
Delhi
Chenna
PATENT GRANT PROCEDURES

Patent Grant Procedure

Filing of patent application

Early publication Publication after 18 months

Pre Grant Opposition / Representation by any person.

Request for examination

Examination: Grant or Refusal

Publication of Grant of patent

Post Grant Opposition to grant of patent

(Constitution of Opposition Board)

Decision By Controller