Patent System In India

K.S.Kardam
Assistant Controller of Patents &
Designs
Patent Office ,New Delhi
E-mail- kskardam116@yahoo.com
 Organisational Chart
Controller General Of Patents, Designs &
Trade Marks
Ministry Of Commerce & Industry
Department Of Industrial Policy And
Promotion (DIPP)
•Patent Office
•Patent Information System
•Trademarks Registry
•G.I. Registry, Chennai
 PATENT OFFICE
GRANT OF PATENTS
AND
REGISTRATIONOF
DESIGNS

CHENNAI
CALCUTTA
NEW DELHI
MUMBAI
PATENT INFORMATION
SYSTEM
RETRIEVAL AND
DISSEMINATION OF
INFORMATION CONTAINED
IN PATENT DOCUMENTS
IPTI

NAGPUR
 TRADEMARKS REGISTRY
REGISTRATION OF
TRADEMARKS UNDER
THE TRADE AND
MERCHANDISE MARKS
ACT, 1999

CHENNAI
CALCUTTA
NEW DELHI
AHMEDABAD
MUMBAI
What is intellectual property ?

Creation of Human Mind

 Intellectual Property

Industrial Copyright

Patents Designs Trademarks

Geographical indications
 INDUSTRIAL PROPERTY

Patents Designs Trade- Geographical

Marks Indications
Inventions any Word Indications of source
relating to modification in Name origin or geography
constructional shape,pattern, Logo
features configuration

e.g. Safety e.g. shape of a e.g. for same Darjeeling tea

Valve, handle or body Pressure Cooker Kanchipuram sarees
Mechanism of portion of a “PRESTIGE” KolhapurI chappals
a PRESSURE pressure “HAWKINS”
COOKER cooker “MAHARAJA”
 Intellectual Property Rights
PATENT

Design

TRADE
MARKS
The RingG-PENTM
Flair, Reynolds, Cello, luxure etc.
© Patent Office ,New Delhi
 What is PATENT ?
• A MONOPOLY RIGHT*
• GRANTED BY THE CENTRAL GOVT.TO
THE APPLICANT (Subjected to certain
Conditions)
• FOR A LIMITED PERIOD ( 20 Yr)
• IN LIEU OF FULL DISCLOSURE OF
INVENTION
• Negative right
• Territorial right
* [Monopoly subsists on expiry of term and
disclosure goes in public domain for commercial
use]
 Objectives of Patent System
TO ENCOURAGE INVENTIONS
TO BREED INVENTIONS
TO UPDATE INDUSTRIAL DEVELOPMENT BY
WORKING OF PATENTED INVENTIONS ON
COMMERCIAL SCALE
AVOIDING REINVENTING WHEEL
 Advantage of Patenting
Avoids duplication of research
Keeps abreast with latest development in different
fields of technology
Helps industry to improve existing technology to
produce cheaper & better product
Serves as an indicator of achievements in R & D
institutions and ability of individual researcher.
Helps to frame business strategy according to trend
of technology
 Rights of Patentee
[Sec 48]

• Where the subject matter of patent is

product, the exclusive right to prevent third
parties from the act of making, using,
offering for sale, selling, or importing for
those purposes that products in India
• Where the subject matter of patent is
process, the exclusive right over the act of
using that process and the act of using,
offering for sale, selling or importing for
those purposes the product obtained from
that process
 What Can be Patented ?
INVENTION which is a-
• New product or process (Novel)

• Involving Inventive Step (Non-obvious)

• Capable of Industrial Application

• Sufficiently Disclosed in the Specification

© Patent Office ,New Delhi

 New (Novel)means ?
Invention should not be
• Published in India or elsewhere.

• In prior public knowledge or prior

public use with in India.

• Claimed before in any specification in

India or elsewhere.
 Inventive Step means ?

A feature of invention that involves

technical advance as compared to
existing knowledge or having
economic significance or both and
that makes invention
not obvious to a person
skilled in the art
Industrial applicable means ?

Invention should be
capable of being made or
used in an industry to result some
tangible technical results
 Inventions Not Patentable
[Sec. 3]

• Frivolous & contrary to natural law

• Contrary to law, morality or injurious to public
health
• Use or commercial exploitation is contrary to
public order or morality or cause serious
prejudice to human,animal or plant life or
health or to the environment
• Mere discovery of scientific principle or
formulation of abstract theory
• Discovery of living or non living substances
occurring in nature
 Inventions Not Patentable
[Sec. 3]
• Mere discovery of new form of known substance
which does not result in the enhancement of the
known efficacy of that substance or mere discovery
of new property or new use of known substance /
process/machine/apparatus.
• Mere admixtures resulting in the aggregation of
properties
• Mere arrangement and rearrangement of known
devices.
• Method of agriculture or horticulture
• Process for any medicinal, surgical, curative,
prophylactic, diagnostic or therapeutic treatment of
human being or animal.
 Inventions Not Patentable
[Sec. 3]

• Plant & animals or their parts including

seeds,varieties and species and essentially
biological process for the production or
propagation of plants and animals
• A mathematical or business method or a
computer programme per se or algorithms
• Literary,dramatic,musical or
artistic/cinematography works and television
productions or any other aesthetic creation.
 Inventions Not Patentable
[Sec. 3]

• Scheme or rule or method of performing

mental act or method of playing game
Presentation of information
• Presentation of information
• Topography of integrated circuit
• Traditional knowledge or aggregation or
duplication of known properties of
traditionally known components
 Inventions Not Patentable
[Sec. 4]

• Inventions falling within the scope of Sec. (1)

of Subsec. 20 of Atomic Energy Act, 1962
For Example : Inventions relating to
Compounds of
Uranium, Beryllium, Thorium, Plutonium,
Radium, Graphite, Lithium and more as
notified by Central Govt. from time to time
 PRODUCT PATENTS
ALLOWED FROM 1.1.2005
DRUG FOOD
COMPOSITIONS 5{1(a)}
CHEMICAL
COMPOSITIONS
INVOLVING
DRUG FOOD CHEMICAL
SBSTANCES REACTIONS
5{1(a)} 5{1(b)}

CHEMICAL ALLOYS, OPTICAL GLASSES,

PRODUCT SEMICONDUCTORS,
INTERMETALLIC COMP. 5{1(b)}
PER SE5{1(b)}
 Privileges to Public

Patented article or patented process

can be freely used, without the consent of
the patentee, for R&D purposes and
imparting instructions to the pupils
 A PROCEDURE FROM FILING TO
GRANT OF PATENT
FILING OF APPLICATION if P.S. is filed C.S. to be filed
within 12 months

PUBLICATION OF APPLICATION after 18 months from P.D.

within 48 months of F.D.

REQUEST FOR EXAMINATION
Pre-Grant Representation
All objections to be completed
EXAMINATION u/s 12 within12 months

Refusal of Representation
GRANT OF PATENT
 A PROCEDURE FROM FILING TO
GRANT OF PATENT (Cont.)

GRANT OF PATENT
Rejection of opposition

Decision of Appellate
POST GRANT OPPOSITION
Controller Board

REVOCATION OF PATENT High Court

 WHERE TO FILE (jurisdiction)
• If THE APPLICANT/FIRST MENTIONED
APPLICANT-RESIDES/HAS DOMICILE/HAS
PLACE OF BUSINESS/HAS ORIGIN OF
INVENTION/HAS SERVICE ADDRESS(in
case of foreign applicant) IN
STATES JURISDICTION
• NORTHERN PATENT OFFICE DELHI
• SOUTHERN PAT. OFFICE CHENNAI
• WESTERN PAT. OFFICE MUMBAI
• REST OF INDIA PAT. OFF. KOLKATTA
 How to Apply ?
 APPLICATION ON FORM –1 with covering letter in the name
of controller
 SPECIFICATION PROVISIONAL/COMPLETE ON FORM –2
 ABSTRACT OF INVENTION
 STATEMENT AND UNDERTAKING OF FOREIGN FILING
PARTICULARS ON FORM -3- if any
 PROOF OF RIGHT—if applicable
 DECLARATION OF INVENTORSHIP ON FORM- 5
 Contd….
 CERTIFIED COPIES OF PRIORITY DOCUMENTS- if
applicable
 POWER OF ATTOERNEY-if applicable
 MAY BE LEFT/SENT TO THE APPROPRIATE OFFICE
IN HINDI/ENGLISH
 MAY BE FILED IN ELECTRONIC FORM WITH ONE
COPY ON WHITE PAPER
 IF APPLICATION DISCLOSES SEQUENCE LISTING
OF NUCLEOTIDES AND/OR AMINO ACIDS,IT SHOULD
BE FILED IN ELECTRONIC FORM
 PROVISIONAL SPECIFICATION
• SECURES PRIORITY DATE
• MAY BE FILED AS SOON AS PATENTABLE
IDEA COMES IN MIND
• DISCLOSES ESSENTIAL FEATURES OF
INVENTION
• PATENT IS GRANTED ON COMPLETE
SPECIFICATION ONLY
• TIMELIMIT TO FILE C.S.: 12 MONTHS FROM
P.S.
• PAGES EXCEEDING 30 INCLUDING
DRAWING SHEETS ARE CHARGEABLE @
100/400 PER PAGE
 Content of Complete Specification

 Fully and particularly describe the invention and the method of

its performing
 Should end with claims defining the scope of the invention
 Claims should be clear and fairly based on the description
 Should relate to A single invention or to A group of inventions
linked so as to form A single inventive concept
 An abstract* to provide technical information
 In case of biological material,the application is completed by
depositing the material to an authorised depository institution
and by fulfilling certain conditions*
 Abstract should contain:
 TITLE:SHALL DISCLOSE THE SPECIFIC FEATURE OF INVENTION-50-
150 WORDS
 CONCISE SUMMERY OF THE SPECIFICATION CONTAINING:
 TECHNICAL FIELD OF THE INVENTION
 TECHNICAL PROBLEM TO WHICH INVENTION RELATES
 SOLUTION TO THE PROBLEM THROUGH THE INVENTION
 PRINCIPAL USE OR USES OF THE PROBLEM
 FIGURES OF THE DRAWINGS WHICH MAY ACCOMPANY IT FOR
PUBLICATION
 CHEMICAL FORMULA: if necessary
 REFERENCE NUMERALS WITH EACH FEATURE OF THE INVENTION
MAY NOT CONTAIN MORE THAN 150 WORDS
 EFFECTS OF PUBLICATION

• Gives opportunity to public for

representation/pre-grant opposition
• Determines fact of the application such as
priority
• Invention becomes prior art
• No other can file similar application for patent
• Interested parties may contact applicant
• Increases credibility of patent granted
[ For not publishing: a request on plain paper within 15 months
from priority date]
 PUBLICLY KNOWN DISCLOSURE OF BIOLOGICAL
OR MATERIAL NOT SUFFICIENT
USED IN INDIA
WRONGFUL
OBTAINING
LACKING
INVENTIVENESS
PRIOR
PUBLICATION
APPLICATION NOT FILED
WITHIN 12 MONTHS GROUNDS OF
OPPOSITION POST PRIORITY
FROM F.D. IN CON. COUNTRY
PUBLICATION
BUT PRIOR CLAIMING

NOT INFORMATION
PATENTABLE REGARDING FOREIGN
U/S 2[1{J}], 3, 4, 5 FILING NOT FILED
INSUFFICIENCY OF
DISCLOSURE TRADITIONAL KNOWLEDGE
OF INDIA OR ELSEWHERE
 DUTIES OF PATENTEE

• Maintenance of the patent

 Pay renewal fees
 Every year till the end of the term
 Time limit: before end of the preceeding year ( 6 months
extn. Available )
• Working of the patents:
 Inventions are to be worked in India on commercial
scale
 Failing which compulsory licence may be issued
 THE FEE SCHEDULE
On what payable Form Individual Company
•Prov./Comp spec. 2 1000 4000
•PAGES EXCEEDING 30 - 100 400
•CLAIMS EXCEEDING 10 - 200 800
*Request for extension of time 4 1000/2000/3000 4000/8000/1200

REQUEST FOR EARLY PUBLICATION 9 2500 10000

•Request for Examination 18 2500 10000
•EXPRESS REQUEST FOR EXAMN. 18 3500 14000
*Change of Applicant 6 1500 2000
*Notice of Opposition 7 1000 6000
*Certified Copy\Certificate 1000 4000
*On a petition -- 1500 4000
*Restoration of lapsed patent 15 1500 6000

RENEWAL FEES
3rd to 6th Year(per year) 500 2000
6th to 10th Year—do-- 1500 6000
11th to 15th Year---do--- 3000 12000
16th to 20th year----do--- 5000 20000
 Amendments to
the Patents Act 1970
The Patents (Amendments) Act 1999
• To provide the provisions for receiving the
applications for the product patent (mail
box)
• Provisions for the grant of EMRs
• Deletion of sec.39
The Patents (Amendments) Act 2002
• Uniform 20 years term of patent for all
inventions
• Scope or non-patentable inventions including
traditional knowledge enlarged
• Publication of all applications after 18 months
• Deferred examination system
• Disclosure of source and geographical origin
of biological material made compulsory
• Non-disclosure or wrongful disclosure of
source and geographical origin of biological
material made ground for opposition and
revocation
The Patents (Amendments) Act 2002 (Cont)

• Anticipation by traditional knowledge ,oral or

otherwise also made ground for opposition
and revocation
• Reversal of burden of proof
• Bolar provisions
• Parallel importation
• Establishment of appellate board
• Compulsory license provisions strengthened
• Simplification of procedures
• Harmonization with PCT provisions
The Patents (Amendments) Act 2005
• Product patent for inventions in all fields of
technology
• Definitions of certain terms redefined
• In order to prevent ever-greening of patent new
forms of known substance, excluded
• Rationalization of opposition procedure-
introduction of pre-grant representation and
post – grant opposition
• Provisional protection from the date of
publication
The Patents (Amendments) Act 2005 (Cont)
• Patent right to accrue from the date of grant
in case of applications filed u/s 5(2) and no
infringement proceedings shall be instituted
but patentee entitled to receive reasonable
royalty
• Compulsory license for export purpose also
if need be
• Compulsory license for manufacture and
export of pharmaceutical products to any
country having insufficient or no
manufacturing capacity
The Patents (Amendments) Act 2005 (Cont)
• Parellel import from anywhere
• Strengthening of security provisions
• Harmonization with PCT
• Rationalization and simplification of
procedure
– Sealing request dispensed with, increase
in the grace period from 6 to 12 months
– Early publication and examination.
publication in patent office journal