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Getting a patent on your innovation (LegalEra)

November 14, 2011
Patenting of innovation is essential to ensure that the company draws benefits from its own innovative and creative capacity. Due process, as laid down in the Patents Act, needs to be followed.

 

Abraham Lincoln once said: “the patent system adds the fuel of interest to the fire of genius”, clearly highlighting

the significance of patents and intel- lectual property rights. The innova- tion, competitiveness and intellectual property rights be it patents, copyright or trademarks are the codependent entities which are also the cornerstone and foundation of global economy.

The Intellectual Property Rights (IPRs) are the statutory rights resulting from intellectual activity in the industrial, scientific, literary and artistic field. The IP rights are exclusive and provide fi- nancial incentives to the owners and creators of the intellectual goods and services. These rights encourage crea- tivity and promote fair dealing that ulti- mately contributes to the economic and social development of the nation.

The history of patents and patent laws is generally considered to have started in Italy with a Venetian Statute of 1474 that  was  issued  by  the  Republic  of Venice. As dissemination of ideas is a significant aspect of world trade, crea- tors  demand  protection  of  the  same. As the extent and enforcement of such rights  varied  across  the  world,  there was  a  need  for  its  harmonization  for efficient    and    healthy    international economic relations. The Paris Conven- tion  for  the  Protection  of  Industrial Property,  signed  in  Paris,  France,  on March  20,  1883,  was  one  of  the  first intellectual property treaties. It estab- lished  a  Union  designed  to  help  the people of one country to obtain protec- tion in other countries for their intel- lectual assets.

World  Intellectual  Property  Organi- zation   (WIPO)   was   created   on   the same  lines  in  1967  to  encourage  crea- tive activity and to promote the protec- tion of intellectual property throughout the   world.   WIPO   administers   about 21  international  treaties  in  the  field of   intellectual   property.   The   Patent Cooperation  Treaty  (PCT)  is  one  such treaty  administered  by  WIPO  for  in- ternational  co-operation  in  the  fields of  patents.  It  presents  a  mechanism by  which  an  applicant  is  required  to make only a single patent application. PCT,  however,  does  not  provide  for grant  of  patent  and  the  responsibility of  granting  the  patent  lies  exclusively in the hands of national patent offices. The World Trade Organization (WTO) Agreement  on  Trade-Related  Aspects of Intellectual Property Rights (TRIPS) came into force in 1995 and gave new dimensions and meaning to the multi- lateral  protection  and  enforcement  of IP rights.

 

Patents

A patent is a monopoly granted by the state for an invention that is new, in- volves an inventive step and is capable of industrial application. The owners are given exclusive rights to prevent others from making, using, selling, of- fering for sale or importing a process or products in respect of which the patent has been granted. The exclusive rights subsist for a period of twenty years from the date of filing the application.

 

Conditions of Patentability

The  essential  features  for  the  grant of  patents  in  India,  laid  down  by  the Patents Act, 1970, are novelty, inven- tive step and industrial applicability.

The aforementioned features as de- fined in the Patents Act are briefly dis- cussed below:

  • Novelty: It is the feature of inven- tion which has not been antici- pated by prior publication in any document or used anywhere in the world before the date of filing of patent application, implying that the subject matter of the invention should not be in the public domain or form part of the state of the
  • Inventive Step: It means the fea- ture of invention that involves technical advance as compared to the existing knowledge or having economic significance or both, and that makes the invention not obvi- ous to a person skilled in the
  • Industrial application: In relation to an invention, industrial applica- bility means that the subject mat- ter of the invention must be capa- ble of being made or used in any kind of industry.

It  is  interesting  to  note  that  from  the year 1970 till January 1, 1995 only proc-ess patents were granted in India. The Patent laws were later amended to meet the   obligations   of   TRIPS   agreement and to be in conformity with Article 27 of TRIPS that allowed for the grant of both the process and product patent.

 

Non patentable inventions

An invention may satisfy the conditions of novelty, inventiveness and useful- ness but it may still not qualify for a patent under the following situations:

  • An invention which is frivolous or which claims anything obviously contrary to well established laws;
  • An invention, the primary or in- tended use or commercial exploita- tion of which would be contrary to public order or morality or which causes serious prejudice to human, animal or plant life or health or to the environment;
  • The mere discovery of a scientific principle or the formulation of an abstract theory or discovery of anyliving thing or non-living substance occurring in nature;
    • The mere discovery of a new form of a known substance which does not re- sult in the enhancement of the known efficacy of that substance or the mere discovery of any new property or new use for a known substance or of the mere use of a known process, machine or apparatus unless such known proc- ess results in a new product or em- ploys at least one new reactant;
    • A substance obtained by a mere admixture resulting only in the ag- gregation of the properties of the components thereof or a process for producing such substance;
    • The mere arrangement or re-ar- rangement or duplication of known devices each functioning independ- ently of one another in a known way;
    • A method of agriculture or horti- culture;
    • Any process for the medicinal, surgi- cal, curative, prophylactic, diagnos- tic, therapeutic or other treatment of human beings or any process for a similar treatment of animals to render them free of disease or to in- crease their economic value or that of their products;
    • Plants and animals in whole or any part thereof other than micro-or- ganisms but including seeds, varie- ties and species and essentially bio- logical processes for production or propagation of plants and animal;
    • A mathematical or business method or a computer program per se or al- gorithms;
    • 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 tra- ditional knowledge or which is an aggregation or dublication of known properties of traditionally known component or components; and
    • Invention relating to atomic ener- gy falling within sub-section (1) of Section 20 of the Atomic Energy Act, 1962 is also not patentable

Procedure

In accordance with the provisions of Patent Act, the inventor, his assignee or legal representative of deceased person, who before his death was either the in- ventor or assignee, can apply for patents at the head office of the Indian Patent Office or its branches depending  upon in whose jurisdiction he resides or has a domicile or has a principle office of busi- ness. In case of a foreign applicant, the application can be filed at the appropriate office, in whose jurisdiction the address for service or patent attorney’s office is situated.

It is pertinent to note the difference be- tween the inventor and applicant. While the person who conceived the invention is the inventor, the person (or company) who files the application is the applicant. Though in some cases, the applicant and inventor may be the same, they are often different entities. More often than not, the applicant is the company or research institution that employs the inventor.

Before an applicant files and applies for patents, it is generally advisable to perform a prior art search. The huge amount of data available in the patent and non-patent lit- erature, scientific journals, textbooks, con- ference proceedings, websites and trade publications may render the  invention obvious and non-novel. A prior art patent- ability search can thus prevent wastage of resource and time on patent application if the search uncovers prior art reference that may preclude patenting of invention.

 

Types of Applications:

Following types of applications are recognized by the Patent Act:

  • Ordinary Applications:
  • These applications are filed with the Indian Patent Office without claiming priority from other applications.

  • Convention Applications:
  • These  applications  claim  priority  from the corresponding application(s) filed for the same/substantially similar invention filed in convention country. The conven- tion application must be filed within 12 months from the date of filing the similar application in the convention country.

  • International Patent Application:
  • A patent application filed under the PCT is called an international application. It represents a mechanism by which an applicant  is  required  only  to  make  a single patent application. After filing an international application through PCT, the applicant has up to 30/31 months to enter the national phase in the member country.  It  should,  however,  be  men- tioned here that the PCT does not pro- vide for grant of Patent, the responsibil- ity of granting or rejecting the patents lies exclusively with the regional patent offices on the basis of their local Patent law and rules. PCT thus is only a “filing system” and not a “grant system”.

  • PCT National Phase Application:

The international application designating and filed in India, within 31 months from the date of the earliest priority is known as the PCT national phase application.

Documents for Submission

Every application for a patent shall be made on Form 1, and shall be for one invention only or a group of inventions which are linked to each other by a sin- gle inventive concept.

Along with the application for appli- cation for grant of patent and speci- fication, the applicant is required to submit the following:

  • Declaration as to Inventorship: It is filed for Applications accompa- nying a Provisional Specification or a Convention Application or a PCT Application designating
  • Statement and undertaking: If an applicant has filed and is prosecut- ing an application for the same or substantially the same invention in other countries, then he has to sub- mit statement setting out detailed particular such as “date of filing, publication number, status of ap- plication etc. He is also  required to submit an undertaking that up to the grant of patent in India, he would keep the Controller informed about the detailed particular of ap- plications relating to same or sub- stantially the same application filed in any other country outside
  • Proof of right to make an appli- cation: If the invention has been assigned by the inventor to other person or to the company, by virtue of assignment of right, then the ap- plicant is required to file the proof of right either at the time of filing the ap- plication or within six months from the date of filing the application.
  • The authorization  of  an  agent: If the applicant has authorized an agent to act on his behalf in respect of prosecution of an application for patent, then the authorization of an agent should be made on Form 26 or in the form of Power of Attorney.

Filing for Patent Abroad The person resident in India who wishes to file an application for grant of patent

outside India has to first file the applica- tion in India not less than six weeks be- fore filing the application abroad. How- ever, he is required to take permission from the Controller (by filing request on Form 25) if he wishes to first file the ap- plication in any country outside India.

  • Publication: Once the application for patent is filed, it is published 18 months after the date of filing or the date of priority, (whichever is earlier). Except for the right to initiate infringement pro- ceedings, the Indian Patent Act provides similar rights to the applicant on and from the date of publication of applica- tion, as that provided to the
  • Examination: India follows de- ferred examination system, according to which, the application is not exam- ined automatically. To initiate the ex- amination proceedings, the applicant is required to file a request with the Patent If the examination report is adverse to the grant of patent, the same is communicated to the applicant. As per the provisions of the Patent Act, the applicant has to comply with the requirements imposed on him within a period of one year from the date on which objections are forwarded to him, or else the application is deemed to be abandoned by the Patent Office.
  • Grant of Patent: When the applica- tion for patent is found in order of grant, the patent is granted as expeditiously as possible with the seal of the Patent The term of patent is twenty years from the date of application or pri- ority date, whichever is earlier.

Annuity fee is payable every year to keep the patent in force.

  • Opposition: The Indian Patent Office also provides a period during which third parties may oppose the grant of Opposition proceedings may be pre-grant/post-grant and may be initiated within specified time limits.

 

The steps for prosecuting patent application in India are represented in the following flowchart

 

geeting-pat

Benefits of Patent:

Companies innovate to improve their manufacturing processes and to introduce new products to meet actual and emerg- ing needs of business and clients. Patenting of innovation is essential to ensure that the company draws benefits from its own innovative and creative capacity.

A patent would also help companies in following ways:

  • Exclusive rights to prevent others from commercially exploiting their
  • Recovering R&D cost and obtaining returns on
  • A Patent could become a source of additional income if the same is
  • The company can also opt for cross licensing and use technology owned by

 

It would not be wrong to state that the innovative industry in India can gain impetus and competitive and economic ad- vantage in the global market if it develops the necessary expertise for manufacturing new products, which are patented. The incentives that one derives from patenting would prove to be beneficial and extremely useful in promoting innova- tions and IP protection in industries, academic institutions and R&D sectors.

  • The article intends to provide general information only and should not be taken as legal advice or opinion related to specific situations. The authors’ views expressed in this report do not reflect the views of the Indian Patent Office, or any body of the Government of India.

 

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