Patent is a monopoly right granted by the State to an inventor for a limited period, in respect of the invention, to the exclusion of all others. In turn, it is obligatory for the inventor to disclose complete details of the invention to ensure that it can be worked on a commercial scale.
Once the term of patent expires, the invention comes into the public domain. In India, all patents are granted for period of 20 years.
Patent protection is territorial right and therefore it is effective only within the territory of India. However, filing an application in India enables the applicant to file a corresponding application for same invention in convention countries, within or before expiry of twelve months from the filing date in India. Therefore, separate patents should be obtained in each country where the applicant requires protection of his invention in those countries. There is no patent valid worldwide.
An invention relating either to a product or process that is new, involving inventive step and capable of industrial application can be patented. However, it must not fall into the categories of inventions that are non- patentable under section 3 and 4 of the Act.
The application for patent should be filed before the publication of the invention and till then it should not be disclosed or published. Disclosure of invention by publication before filing of the patent application may be detrimental to novelty of the invention as it may no longer be considered novel due to such publication. However, under certain conditions, there is grace period of 12 months for filing application even after publication.
After examination, the Patent office issues an examination report to the applicant which is generally known as First Examination Report (FER). Thereafter the applicant is required to comply with the requirements within a period of twelve months from the date of FER. In case, the application is found to be in order for grant, the patent is granted, provided there is no pre-grant opposition is filed or pending. A letter patent is issued to the applicant. However, in case a pre-grant opposition is pending, the further action is taken after disposition of the pre-grant opposition.
If the applicant is not able to comply with or meet the requirement within 12 months, or does not submit the documents which were sent to him for compliance within the said period, the application is deemed to have been abandoned.
If applicant has not complied with the requirements within the prescribed time, and no request for hearing has been made by the applicant, the controller may not provide the opportunity of being heard. However the Controller shall provide an opportunity of being heard to the applicant before refusing his application if a request for such hearing has been made by the applicant at least 10 days in advance before expiry of the statutory period.
Stages involved in grant of Patent
After filing the application for the grant of patent, a request for examination is required to be made by the applicant or by third party and thereafter it is taken up for examination by the Patent office. Usually, the First Examination Report is issued and the applicant is given an opportunity to correct the deficiencies in order to meet the objections raised in the said report. The applicant must comply with the requirements within the prescribed time otherwise his application would be treated as deemed to have been abandoned. When all the requirements are met, the patent is granted and notified in the Patent office Journal. However before the grant of patent and after the publication of application, any person can make a representation for pre-grant opposition.
Use of words like “Patent pending”
Marking of a product with the words “patent pending” or “Patent applied for” after filing of the application for patent serve as a notice to the public that an application for patent is pending with the Patent Office but there is no legal significance of these words. The infringement action can be initiated only after the patent is granted.
Term of patent
Term of every patent in India is 20 years from the date of filing of patent application, irrespective of whether it is filed with provisional or complete specification. However, in case of applications filed under PCT the term of 20 years begins from International filing date.
The patent application has to be filed by
the inventor(s), or
an assignee of the inventor(s), or
legal representative of any deceased person who was entitled to make such an application before his death, or
a patent attorney on behalf of the inventor(s) to the appropriate Patent Office, which is in his territorial jurisdiction.
There are four regional offices authorized to accept the patent applications, and these are located in New Delhi, Chennai, Mumbai, and Calcutta. The addresses and their territorial jurisdiction, etc can be found in the Indian Patent office website. The patent application in the prescribed Performa, accompanied by the requisite fees has to be filed along with the provisional and, if possible, complete specifications.
Filing of complete specification
A complete specification comprises of
the title of the invention indicating its technical field,
draw backs in the prior art,
the solution provided by the inventor to obviate the drawbacks of the prior art,
a concise but sufficient description of the invention and its usefulness,
drawings (if any) and
details of best method of its working.
The complete specification must contain at least one claim or statement of claims defining the scope of the invention for which protection is sought for.
If the complete specification has not been filed at the time of first filing, (which is usually the case), the complete specification must be filed within 12 months from the date of filing the provisional specification.
Filing of the complete specification may be extended by further 3 or 6 months upon making a request by postdating the filing date of provisional application and filling in the prescribed form along with the prescribed fees.
This is another ground where a patent application may be rejected in some countries like US, Australia, Canada, etc. In the USA, the patent law specifies that the rights to a patent belong to the person who was first to invent the product or the process and not to the person who first filed the application. But for this to be established the inventor is required to maintain a Laboratory Notebook to establish the priority of his claims. However, there are many procedural requirements for maintaining a Laboratory Notebook such as
The laboratory manual/notebook must be hardbound so that it cannot be tampered with and the pages numbered.
It must have a title page showing when it was issued.
Every laboratory notebook should be numbered. This is to be followed by a "preface" recording relevant details of the inventor such as his
Project commencement date
Record of previous notebooks where progress was recorded, etc
Every page has to be dated and the entries signed by the inventor,with each page countersigned by an independent witness.
Amendment Of Application And Specifications
An applicant has the option to amend the complete specification of his patent at various stages. Only amendments which are either by way of a disclaimer, correction or explanation are allowed. Therefore, the amendment should not claim or describe matter not in substance disclosed in the original specification. Also, the amended claims should fall wholly within the scope of a claim in the specification as it stood before the amendment. Thus, no new matter can be incorporated or claimed which will have the effect of broadening the scope of the invention or even changing the meaning of the invention as originally filed.
An application has to be made to the controller to introduce any amendment. Such amendments on application can be made during the examination of the patent application, as part of opposition, revocation or even infringement proceedings.
When any amendment of the specification is allowed by the controller or by the High Court after the advertisement of the accepted complete specification, the amendments become a part of the complete specification. This must again be advertised in the official gazette in public interest as it would enable anyone in the public to raise objection to the allowed amendments.
The records of the Indian patent office show this activity to be prevalent during various stages of the patenting process.
Restoration of lapsed patents and surrendering patents which are granted and sealed are to be kept in force by payment of the annual renewal fees within the prescribed time. A patent is declared lapsed if the renewal fee is not paid on time or at least within the extended period. The period for renewal of fees can be extended by a maximum of six months by making a request to the controller along with the appropriate extension fee before the completion of this period.