What is a Patent?
A patent is a kind of an Intellectual Property Right (IPR) that grants statutory monopolistic rights for an invention. It gives the inventor certain rights – such as manufacturing, using, selling, and importing rights – within a specified territory for a limited period of time.
This brings us to the question: what is considered an invention under the Indian Patents Act? According to the website of the Intellectual Property Office (www.ipindia.nic.in), a patentable invention is a product or a process that is new, involving an inventive step, and capable of industrial application. However, there are certain categories of inventions that are not patentable.
Why should you apply for a patent?
Unlike a trademark or a copyright, an inventor has to apply for a patent to enjoy exclusive rights to his invention. If the inventor does not get a patent, anybody can copy his invention and gain out of it. Hence, a patent becomes necessary to restrict others from using, selling, manufacturing or importing the invention without the consent of the inventor.
Who can apply for a patent and what is its term?
An inventor, either alone or jointly, or any person/company assigned by the inventor can obtain a patent over the invention. A patent is valid for a period of 20 years from the date of filing.
Is a patent granted in one country valid everywhere?
No, a patent is a territorial right. For example, a patent granted in a particular country, say India, is effective only within the country. However, due to many multilateral agreements, such as the Patent Cooperation Treaty (PCT) and the European Patent Convention (EPC), patenting systems are increasingly being globalized. For example, the PCT facilitates filing, searching, publication and examination of international applications. It makes the process of obtaining patents easier in contracting states by allowing filing in one international application. However, even under the PCT, the decision of finally granting a patent is left to the respective country.
Where do I register?
In India, there are four patent offices located in New Delhi, Chennai, Mumbai, and Kolkata. A patent application is filed depending on the territorial jurisdiction of the applicant. An international application or a PCT application can be applied in all these four patent offices.
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What is the process of patenting in India?
After a patent application is filed, it is published in the Indian Patent Journal after 18 months from the date of filing or priority date, whichever is earlier. After publishing, a request has to be made for examination of the patent by the applicant. It is important to note that an application is not examined automatically; it is examined only after the examination request is received. Generally, after the examination, a First Examination Report is issued and then the applicant has to satisfy the objections raised in the report within a prescribed time period. After this, the patent is granted and notified in the Patent office Journal. However, any person can make a pre-grant or post-grant opposition against any invention.
What are pre-grant and post-grant oppositions?
According to the website of the patent office, a pre-grant opposition is made after the patent application has been published and before the patent is granted. Anyone can file for a representation and request for an examination. The patent is not granted until the opposition is set aside. In a pre-grant opposition, the burden of proof lies with the applicant.
A post-grant opposition is made after the patent has been granted but within a period of one year from the date of publication of grant of patent. In this case, the burden of proof lies with the person who is raising the opposition.
| What cannot be patented under Section 3 and 4 of the Indian Patent Act? |
| An invention which is frivolous or claims anything contrary to well-established natural laws |
| An invention which could be contrary to public order or morality or which causes serious prejudice to human, animal or plant life, health or to the environment |
| A mere discovery of a scientific principle or the formulation of an abstract theory (or discovery of any living or non-living substances occurring in nature) |
| A 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 mere 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 |
| 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 |
| The mere arrangement or re-arrangement or duplication of known devices each functioning independently of one another in a known way |
| A method of agriculture or horticulture |
| Any process for the medicinal, surgical, curative, prophylactic, diagnostic, therapeutic or other treatment of human beings 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 micro-organisms but including seeds, varieties and species and essentially biological processes for production or propagation of plants and animals |
| A mathematical or business method or a computer program or algorithms |
| A literary, dramatic, musical or artistic work or any other aesthetic creation whatsoever including cinematographic works and television productions |
| A mere scheme or rule or method of performing mental act or method of playing game |
| A presentation of information |
| Topography of integrated circuits |
| An invention which in effect is traditional knowledge or which is an aggregation or duplication of known properties of traditionally known component or components |
| Inventions relating to atomic energy and the inventions prejudicial to the interest of national security. |
Who is a patent agent? Is it necessary to engage his services?
A patent agent is a person who is registered with the Indian Patent Office. He is entitled to prepare patent documents, transact business and perform functions with respect to any proceedings before the Controller. It is not mandatory to engage a patent agent for filing -a patent under the patent law.
What are the renewal terms of a patent?
A renewal fee has to be paid from third year onwards, after the patent is granted, till the twentieth year. The patent can be revoked if the renewal fee is not paid within the prescribed time. However, the patent can be restored if a request for restoration is filed within 18 months. And during this period, that is from when the patent was revoked till the time it is restored, a patentee cannot take any action if his patent is infringed.
Whose responsibility is it to ensure that a patent has not been infringed?
It is the responsibility of the patentee to ensure that his patent is not being infringed. It is his responsibility to file for infringement against the infringer.
How can a patent be licensed or assigned?
A patentee has the right to use, sale, transfer, license, mortgage and pledge his patent. However, it is important that the agreement should be in writing, have consent of all holders of the patent and duly registered with the Controller of Patents. The terms of the agreement must be clear and explicit.
What is compulsory licensing?
The controller of patents can grant compulsory license to interested parties, three years after the patent is granted, under certain circumstances. For example, compulsory licensing can be invoked if there is a national emergency, if the reasonable requirement of the public has not been satisfied, the patented invention is not available to the public at a reasonable price, the invention is not worked commercially to fullest extent in India, etc.
In January 2008, the first petition for compulsory licensing under the Indian Patents (Amendment) Act, 2005 was made by Hyderabad-based cancer drug maker Natco Pharma. The company had sought permission to manufacture and export generic versions of two drugs – Roche’s lung cancer drug Tarceva, and Pfizer’s kidney cancer drug Sutent – to Nepal, using a provision in the patent law that allows local firms to make a patented drug for export to less developed countries. However, the company later withdrew its plea in September 2008.
What precautions need to be taken?
There are some precautions that need to be taken by the inventor. First, a patent application should be filed after the idea is conceived because the first person to file a patent on an innovation is granted the patent.
Second, an invention should never be published in newspapers, scientific journals, etc, or be publicly displayed or commercially used before applying for a patent because then it may not be considered novel due to it. However, under certain conditions, a grace period of 12 months may be given after the invention is published or displayed.
Third, apply for a provisional patent once the invention has taken some definitive shape. This gives the inventor 12 months time to file complete specification of his invention.
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