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THE INDIAN PATENT REGIME A GUIDE TO THE INDIAN PATENTS ACT Angela Dsouza [email protected] www.intepat.com

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Page 1: The Indian Patent Regime | Indian Patent Act | Indian Patent Law | Patent Protection in India

THE INDIAN PATENT REGIME

A GUIDE TO THE INDIAN PATENTS ACT

Angela [email protected]

www.intepat.com

Page 2: The Indian Patent Regime | Indian Patent Act | Indian Patent Law | Patent Protection in India

WHAT IS A PATENT?

A Patent is an exclusive

monopoly rights granted by the

Government to an inventor over

his invention for a limited period

of time. Patent is recognition to

the form of intellectual property

manifested in invention.

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Page 3: The Indian Patent Regime | Indian Patent Act | Indian Patent Law | Patent Protection in India

WHAT CAN BE PATENTED?

Any invention can be patented. However, there are certain criteria that such invention should fulfil, including:

• It should be novel.• It should be non obvious.• It should possess an inventive step.• It should have industrial application.

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Page 4: The Indian Patent Regime | Indian Patent Act | Indian Patent Law | Patent Protection in India

WHAT IS MEANT BY ‘NOVELTY’?

Novelty simply means that the

invention comprising of a product

or a process should not have been

anticipated by publication in any

document or should not have been

used in the country or anywhere in

the world before the filing of the

patent application.

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Page 5: The Indian Patent Regime | Indian Patent Act | Indian Patent Law | Patent Protection in India

WHAT IS MEANT BY INDUSTRIAL APPLICABILITY?

Industrial applicability means the

invention should be capable of being

made or used in any kind of industry.

Inventions which lack industrial

applicability are known as utility

models. They are, unfortunately, not

protected in India.

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Page 6: The Indian Patent Regime | Indian Patent Act | Indian Patent Law | Patent Protection in India

WHAT CANNOT BE PATENTED

Inventions that fall under S 3 and

4 of the Patents Act cannot be

patented. These include

inventions with regard to atomic

energy, inventions against public

morality and decency, agricultural

and horticultural methods,

medical and surgical processes

etc. www.intepat.com

Page 7: The Indian Patent Regime | Indian Patent Act | Indian Patent Law | Patent Protection in India

WHOO CAN FILE A PATENT APPLICATION?

Essentially, the first and true inventor

of the patent can apply for a patent

protection. In the event of his/her

death, the legal representatives can

file a patent application.

Further, if the patent is assigned to

someone, then the assignee can

make such application.

Page 8: The Indian Patent Regime | Indian Patent Act | Indian Patent Law | Patent Protection in India

WHERE SHOULD THE PATENT APPLICATION BE FILED?

There are four Patent Offices

in India- Mumbai, Chennai,

New Delhi and Kolkata. The

Kolkata office is the head

office. The territorial

jurisdiction between the four

offices is divided as follows:

Page 9: The Indian Patent Regime | Indian Patent Act | Indian Patent Law | Patent Protection in India

Kolkata Patent Office (Head Office): West Bengal, Bihar,

Jharkhand, Uttarakhand, Odisha, Chhattisgarh, Assam,

Meghalaya, Mizoram, Tripura, Arunachal Pradesh, Manipur,

Nagaland, Sikkim and Andaman & Nicobar Islands

Mumbai Patent Office: Maharashtra, Gujarat, Madhya Pradesh,

Goa, Daman & Diu and Dadra & Nagar Haveli

Chennai Patent Office: Andhra Pradesh, Telangana, Kerala, Tamil

Nadu, Karnataka, Puducherry and Lakshadweep

New Delhi Patent Office: Haryana, Himachal Pradesh, Jammu and

Kashmir, Punjab, Rajasthan, Uttar Pradesh, Chandigarh and Delhi

Page 10: The Indian Patent Regime | Indian Patent Act | Indian Patent Law | Patent Protection in India

HOW DOES ONE DETERMINE THE APPROPRIATE OFFICE?

The appropriate office for filing the patent application

can be identified by:

• Place of residence, domicile or business of the

applicant.

• Place where the invention actually originated.

• Address for service in India given by the applicant. (This

is applicable only in the case of foreign applications.)www.intepat.com

Page 11: The Indian Patent Regime | Indian Patent Act | Indian Patent Law | Patent Protection in India

WHAT SHOULD THE APPLICATION CONTAIN?

Your application for filing a patent should

contain the following documents:

• Application for grant of patent in Form 1.

• Proof of right to file the application from

the inventor. This is applicable if the

invention has been assigned to someone

else.

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Page 12: The Indian Patent Regime | Indian Patent Act | Indian Patent Law | Patent Protection in India

WHAT SHOULD THE APPLICATION CONTAIN?

• Provisional or complete specification

in Form 2.

• Power of authority in Form 26 if filed

through a patent agent.

• Application should bear the signature

of the application or authorized

person/ patent agent along with the

name and date.

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Page 13: The Indian Patent Regime | Indian Patent Act | Indian Patent Law | Patent Protection in India

WHAT IS MEANT BY A SPECIFICATION?

In order to obtain a patent, an applicant must fully

and particularly describe the invention for which the

protection is claimed. It can be either provisional or

complete in nature. A complete specification is given

when the invention is complete i.e. ready to use. On

the other hand, a provisional specification is given

when the invention has reached a stage wherein it

can be disclosed on paper, but has not attained the

final stage.

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Page 14: The Indian Patent Regime | Indian Patent Act | Indian Patent Law | Patent Protection in India

WHAT IS MEANT BY A SPECIFICATION?

The disclosure of the invention in a complete specification

must be such that a person skilled in the art may be able to

perform the invention. This is possible only when an applicant

discloses the invention fully and particularly including the best

method of performing the invention. However, this will not

lead to misappropriation of your invention. Any person who

comes up with a similar invention after you have filed for a

patent will be barred from doing so.

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Page 15: The Indian Patent Regime | Indian Patent Act | Indian Patent Law | Patent Protection in India

WHAT IS MEANT BY ‘PRIORITY DATE’?

Priority date is the date on

which the first application is

filed for the invention. A

priority date is very important

as this gives precedence to your

invention over all other similar

inventions that may come up in

the future.

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Page 16: The Indian Patent Regime | Indian Patent Act | Indian Patent Law | Patent Protection in India

HOW SHOULD THE APPLICATION BE SUBMITTED?

There are two modes of filing an application- manual and online. For the manual filing,

the documents will have to be submitted at the appropriate patent office.

The E-filing of a patent application requires adherence to the following procedure:

• First, the applicant or agent should possess a digital signature.

• The applicant or agent should register as a new user and create a login ID on the Patent

Office Portal (http://ipindia.nic.in)

• The Client Software on the portal should be downloaded and installed. It will generate

an XML file wherein the soft copies of the documents can be uploaded.

• On successful uploading, the application number and CBR receipt along with the date

and time of submission is generated. www.intepat.com

Page 17: The Indian Patent Regime | Indian Patent Act | Indian Patent Law | Patent Protection in India

WHAT HAPPENS AFTER THE APPLICATION IS SUBMITTED?

Once the Patent office receives your application, a date and serial

number is allotted to it. The application is digitized, verified, classified

and uploaded to the internal server of the office. Next is the screening

of the application. The application is screened for any international

patent classification, technical field of invention for allocation to an

examiner in the respective field. The application is also screened to see

whether it bears any relevance to defence or atomic energy and

whether the abstract requires any correction or completion.

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Page 18: The Indian Patent Regime | Indian Patent Act | Indian Patent Law | Patent Protection in India

WHAT HAPPENS AFTER THE APPLICATION IS SUBMITTED?

Next, comes the scrutiny. The

application is scrutinized for

appropriate jurisdiction, proof of

right to file and whether all the

relevant documents have been

submitted. The invention is then

examined by the examiner and a

report is prepared for the approval

of the Controller General.www.intepat.com

Page 19: The Indian Patent Regime | Indian Patent Act | Indian Patent Law | Patent Protection in India

WHAT HAPPENS AFTER THE APPLICATION IS SUBMITTED?

After 18 months of the date of filing or the priority date (whichever

is earlier), the application for patent is published in the official

journal. Now comes the part where the invention is open for pre-

grant opposition.

Though the Patent Office scrutinizes the applications, in order to be

absolutely sure, a chance is given to the public to file an opposition

under the grounds listed under S 25 (1) of the Patents Act. This

opposition has to be filed within 6 months from the date of

publication.

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Page 20: The Indian Patent Regime | Indian Patent Act | Indian Patent Law | Patent Protection in India

WHAT HAPPENS AFTER THE APPLICATION IS SUBMITTED?

In the event of

absence of an

opposition, the patent

is granted and it is

published in the

official journal.www.intepat.com

Page 21: The Indian Patent Regime | Indian Patent Act | Indian Patent Law | Patent Protection in India

WHAT ARE THE RIGHTS SECURED THROUGH A PATENT?

With the grant of a patent, the inventor gets the exclusive

right to prevent any third party from making, using, offering

for sale, selling or importing for such purposes that product

in India.

Also, in the case of a process patent, the inventor gets the

exclusive right to prevent any third party from using,

offering for sale, selling or importing for such purposes the

product obtained directly by such process in India.www.intepat.com

Page 22: The Indian Patent Regime | Indian Patent Act | Indian Patent Law | Patent Protection in India

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