Patent System In India and its systems.ppt

Patents in india

1. Patent Protection &Drafting
for SMEs
Dr. S.K. Mitra
Kolkata

2. Intellectual Property Rights
 Patents
 Designs
 Trade Marks
 Copyrights
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3. Patent
An invention on remote
control mechanism can be
protected by Patent Law.
Patent right is valid for 20
years from the date of Patent
as new technology
Trade Mark
Trademark “SONY” can be
protected by Trademark Law.
Trademark right is valid for
10 years from the date of
registration and renewable
for whole life
Design
A design of TV set can be protected by Design
Law. Design right is valid for 15 years from the
date of its registration.
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SONY

4. Pharmaceutical Product
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5. Role of Patent System
Encouragement for Improvement of Technology
Providing Reward as Exclusive Rights for disclosure
Making profits or earning Royalty through putting
the Invention into Practice
Transferring into public property after expiry of
term or cessation of Patent
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6. What is Patent ?
Intellectual Property
Industrial Intellectual Property
Ownership
 Nature of Property Intangible

Transferable
 Grant from the Government
 Monopoly of right  to the owner
 for invention  on application
 for limited period
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7. Validity of Patent not guaranteed
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Importance of Patent Document
Obligation of Patentee to work &
inform Controller to the extent of
commercialization

8. Patent Document
Date of Filing & Publication
 Name & Address of Applicant
 Title, Classification, Abstract,
Drawing, Formula etc.
 Corresponding Priority
Application /Patent
 State of Art
 Description
 Drawings
 Claim(s)
Bibliographic InformationTechnical Information
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9. Patent System Introduced in 1856
Comprehensive Patents & Designs Act,
1911
 Uniform Term of Patent for 16 Years
 No Discrimination on Nature of Invention
PROVIDES
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10. Basics of The Patents Act 1970
 Differential Term of Patent
Reduce Term (7 Years)
Drug and Food
Full Term (14 Years)
Other Inventions
 Restriction of Product Patent
 Product Patent Not Allowable on Drug, Food &
Chemical Produced by Chemical Process
 Process Patent Allowable on Any Kind of Inventions
 Compulsory License & License of Right
with More Grounds
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11. Effect of The Patents Act, 1970
 Substantial Development of Public Sector
and Small Scale Unit
 Increases Collaborative Research in
National Laboratories
 Reduces Activity of Multi National
Companies
Criticized by Multi National Companies for
Narrow Protection
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12. INTELLECTUAL PROPERTY RIGHTS
UNDER TRADE RELATED ASPECTS ON
INTELLECTUAL PROPERTY RIGHTS
 PATENTS  DESIGNS  TRADEMARKS
 COPYRIGHTS  GEOGRAPHICAL INDICATION
 LAYOUT DESIGNS OF INTEGRATED CIRCUITS
 PROTECTION OF UNDISCLOSED INFORMATION
 CONTROL OF ANTI COMPETITIVE PRACTICES
IN CONTRACTUAL LICENCES
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13. Trade Related Intellectual Property Rights(TRIPs)
(Part of WTO Agreement)
Minimum Patent Term : 20 years from filing
 Pharmaceuticals : Patentable as products
 Importation : Accepted as working a Patent
Compulsory licensing : Special circumstances only
 Burden of proof (process) : Reversed
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14.  

Year Indians Foreigners Total
1993-1994 12662603 3869
1994-1995 17413589 5330
1995-1996 16065430 7036
1996-1997 16616901 8562
1997-1998 19268229 10155
1998-1999 22476707 8954
1999-2000 22062618 4824
2000-2001 21796324 8503
2001-2002 23718221 10592
2002-2003 26208846 11466
2003-2004 32189395 12613
2004-2005 3630 13836 17466
2006-2007 6252 22610 28862
2008-2009 6161 30651 36812
Applications of Patents by Indians & Foreigners
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15. Trend of Invention
Chemicals including Foods & Drugs 42%
Electronics & Telecommunication 37%
Mechanical 12%
Textiles 4%
Miscellaneous including Metallurgy, Bio-
technology, Civil, Public health, Bio-
medical etc. 5%
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16. SKM

17. INVENTION
Statutory Non-Statutory
New Product or
Process involving an
Inventive step &
capable of Industrial
Application
Solution of specific
problem in the field of
technology
(Product/Process)
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18. Application
Industrial
TO WHOM IT IS OBVIOUS
INVENTION
Novel
Product / Process
Inventive Step
Non-obvious
 A skilled technicians acquainted with techniques
 Inventors
 Experts
Obviousness: Open to the eye or mind and perfectly
evident to a person thinking on the subject.
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19. Invention Vs. Know-how
Invention: Does not require to disclose the information in the specification,
be sufficient for Commercial Exploitation of invention
Know-how: Covers all informations necessary to commercialise the
invention e.g. setting up a production plant, details of production method, the
design, drawing, etc. Know-how is traded when transferring technology
Invention Vs. Discovery
Invention: Adds to the amount of human knowledge but not merely by
disclosing something. It involves suggestion of the act while results new
process, products etc.
Discovery: Adds only to the amount of human Knowledge
Unity of Invention: Singh Inventive Concept
Obviousness: Something which is open to the eye or mind and
perfectly evident to a person thinking on the subject
To Whom it is obvious ?
(a) A skilled technician – Acquainted with techniques (b) Inventor (C) Expert
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20. NOVELTY NONOBVIOUSNESS
•LACK OF NOVELTY IS
ANTICIPATION
•EACH ELEMENT IS TO
BE DISCLOSED IN A
SINGLE PRIOR ART
REFERENCE
•LACK OF INVENTIVE
STEP IS OBVIOUSNESS
•IS THE SUBJECT
MATTER OBVIOUS TO
A PERSON SKILLED IN
THE ART
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21. NEW COMPOUNDS
• Industrially useful compounds - patentable
• Theoretically interesting compounds
Not Patentable
• Useful intermediates for the preparation of
other compounds – patentable
• Non-obvious compounds – patentable
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22. New Synthetic Processes
New process for manufacturing known compounds
 Patentable
Known process for manufacturing new compounds
 Patentable
Improvements in known processes
 Patentable
Method of treatment
 Not Patentable
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23. PHARMACEUTICAL COMPOSITIONS
a)Combination preparations
b)New drug delivery system
c)Compound not used previously as a drug +
conventional carrier or excipient.
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24.  Frivolous or contrary to well-established natural laws
 Contrary to law or morality or injurious to public health
 Scientific principle or formulation of abstract theory
 New property or use of known substance
 Mere use of known process, machine or apparatus
 Substance by mere admixing
 Mere arrangement/rearrangement/duplication of known devices
 Method of agriculture/horticulture
 Method of treatment of human beings, animals
 Plants & Animals in whole or any part other than microorganisms
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Inventions Not Patentable

25.  Mathematical/Business method/Computer program per se/
Algorithms
 Mere scheme/Rule/Method of performing mental Act/ Playing
game
 Presentation of information
 Topography of integrated circuits
 Invention on traditional knowledge/Aggregation or duplication
of known properties of traditionally known components
 Related to atomic energy
Inventions Not Patentable
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26. Filing should be made immediate after the invention is
developed for commercial working
Delay in filing may involve certain risks
 Other invention of substantially same nature may
take the advantage of priority, depriving the true and
first inventor
 An inadvertent publication of invention by inventor
or others may damage the novelty of invention
Patent should be filed before any kind of publication or
commercial using or communication to others
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When to File a Patent Application ?

27. Filing Procedure & Formalities
Applicant True & first inventor or assignee or legal
representative separately or jointly
 Application  One application in prescribed form
(duplicate) for one invention in appropriate
jurisdiction with prescribed fee
 Information &  Abroad filing & status of filing in

Undertaking prescribed form (duplicate)
 Declaration of  Filing complete specification after

Inventorship provisional specification or filing
convention application
 Priority  Certified copy of basic application in
Document convention country
 Provisional / Complete Specification (duplicate)
 Power of Attorney (Where applicable)
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28. Jurisdiction for Filing Patent Applications
Head Office (Kolkata)
Branch Office (Delhi)Branch Office (Mumbai)Branch Office (Chennai)
Haryana, Punjub, Delhi,
Himachal Pradesh (HP)
Jammu & Kashmir (J&K)
Rajasthan, Chandigarh (UT)
Uttar Pradesh (UP),
Uttarakhand
Maharashtra, Gujarat,
Madhya Pradesh (MP)
Goa, Daman & Diu (UT)
Dadar & Nagar Haveli (UT),
Chattisgarh,
Andhra Pradesh (AP), Kerala,
Tamil Nadu, Karnataka,
Pondicherry (UT), Laccadive,
Minicoy & Amindivi Island (UT)
Rest of States
and Union Territories (UT)
Kolkata
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29.  Provisional Specification
 Description of essential features of invention
 Need not include claims & manner of performing invention
Advantage
 Provisional protection from early stage of invention
 Cognating of two or more provisional specifications &

constitute one final complete specification during different
stages of invention
 Complete Specification
Field of invention (Title)  Prior art/state of art
Setting for invention  Object of invention
Statement of invention  Statement of Drawings (if any)
Description with Ex. Set of claims  Abstract
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Contents in Specification

30. Prior Art
 Prior knowledge from the publication both in Patent and
Non- patent literature
 Required to establish novelty and non-obviousness of invention
 Information given in prior document must be sufficient to
enable the instructed reader to perceive and understand
discovery without making further experiments
 Not mandatory in specification
 Advantage :
 Better understanding of invention by way of finding out
lacuna in Prior Art
 Setting up the invention by removing the defects
 Improvements over Prior Art
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31.  Essential before filing patent application
 To draft the complete specification,
particularly in prior art portion
 To justify the invention novel and
nonobviousness
 To face the future opposition, if entered
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Patent Search

32. Access to Technical Information
 Non-Patent Literature Search
 Patent Search
Where to get Search Materials ?
 Books, Journals, Patent Specifications
 Electronic Database in CD-ROMs
 Website of different foreign Patent Offices
 Website of Indian Institutions e.g. TIFAC, CSIR etc.
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33. PROCEDURE
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Patent Application filed at Appropriate Patent Office
Notified at the end of 18 months
Substantive Examination
on request within 48 months from
First Application

Refused Granted
Appeal to IPAB Allowed Notified in Official Journal
Rejected Post Grant Opposition
Opposition decided
Appeal to IPAB in favour or against
applicant

Rejected Allowed
12 months from FER to meet Official Requirements
& No Pre-grant representation U/S 25(1)

34. Opposition to Grant of Patent
 Grant Notification
 Opponent enters within twelve months
Grounds of Opposition
(1) Wrongful obtaining (2) Prior publication (3) Prior claiming
(4) Prior public knowledge and use in India (5) Obviousness
(6) Not an invention or not patentable invention (7) Insufficiency
(8) Information regarding foreign filing not filed or false
(9) Convention application not made within 12 months
(10) Not disclosed or wrongly mentioned source/geographical origin
(11) Anticipated by knowledge, oral/otherwise
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35. Criteria for Grant
Not opposed through Pre-grant Representation
[Sec 25(1)]
Opposed but decided in favour of applicant
Not refused (U/S 15)
Granted with Serial Number & Simultaneous
Notification in Official Journal
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36. SKM

37. Term of Patent
Twenty years for any invention from date of
patent
Date of Patent
Date of application filed in India
(Ordinary Application)
International Application date in Receiving
Office (PCT Application)
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38. Rights of Patentee
Use, Exercise, Sell or Distribute of
Article/Substance from Date of notification but
after grant of Patent
Use or Exercise the method/process of
manufacturing Article/Substance from Date of
notification but after grant of Patent
Use or Exercise the product & method for Mail
Box Application from the grant of Patent
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39. IMPORTANT FEES IN DIFFERENT PROCEEDINGS
Individual Legal Entity
 Application for Grant of Patent 1000 4000
 Request for Examination of Application2500 10000
 Request for Publication 2500 10000
 Substitution of Applicant 500 2000
Notice of Opposition 1500 6000
 Restoration of Lapsed Patent 1500 6000
 Renewal Fees (for 20 years) 48000 192000
(Amount in Rupees)
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40. Patent Cooperation Treaty (PCT) System
 International Phase
 Filing of international application
 International search
 International publication in PCT gazette
 International preliminary examination
 National Phase
 Before designated office/elected office
 Decision on granting patent
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41.  Patent filing system
 Patent granting system
 International filing system
 Filing in single office in one language having
effect in each contracting state


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Patent Cooperation Treaty (PCT)

42. Patent Cooperation Treaty (PCT)
Benefit of Filing International Application

 Seeking Protection Simultaneously
 More Decision Time to Enter National Phase
 Strength of Invention through Search and Examination
 Opportunity to have Foreign Counterparts
 90% Rebate in Fees for Natural Persons of India
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BRAZIL
CANADA
FRANCE
DENMARK

43. Elements to accompany International Application
 Request (Form PCT/RO/101)
Bibliography
Fees Calculation Sheet
Check List
 Description with one or more claims
 Abstract
 Drawings (Where applicable)
 Fees
 Power of Attorney (PA) / General Power of Attorney (GPA)
(Where applicable)
 Requirement RO/IN : Three copies [Home copy (RO/IN),
Record copy (IB), Search copy (ISA)]
RO/IB : One copy
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44. Where International Application to be Processed ?
The Patent Office, Kolkata
& its Branch Offices at Delhi,
Competent Chennai & Mumbai (RO/IN)
Receiving Office (RO)
International Bureau (RO/IB)
What Language to be Filed ?
RO / IN: Hindi or English
RO / IB: Any Language
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45. Fees for International Application
Natural Person Legal Entity
 Transmittal Fee (RO/IN) INR 2000 8000
Fee for Priority Document INR 1000 4000
& Transmission
Application Fee (IB) US$ 1300
*
1300
(For 30 pages Including PCT/RO/101 & Excluding GPA & Calculation Sheet)
Fee per sheet over 30: USD15*
PCT Easy – US $98 (Rebate)
 ISA / AT  US $ 2515

ISA / AU  US $ 1397

ISA / EP  US $ 2485
**

ISA / CN  US $ 307

ISA / SE  US $ 2485

ISA / US  US $ 2080
* 90%&**75% Rebate for Natural Person of Contracting States
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46. International Search & Preliminary
Examination Authorities
Austrian Patent Office (AT)
 Australian Patent Office (AU)
 Chinese Patent Office (CN)
 European Patent Office (EP)
 Swedish Patent Office (SE)
 United States Patent & Trade Mark Office (US)
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47. Available Technical Information
 70% Technical information published in Patent Literature
 About 40 million off Patents left for utilization
 Less than 1% Foreign Patents granted from India
 99% Technical Knowledge not covered under Indian Patent
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48. Technology Development through Patent
Technology Development
 Off Patent (Ceased /
Term Over)
 Invention not protected
by Indian Patent Law
 R&D Activity
 Transfer of Technology
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49. Essential for Industries
 Follow weekly Publication of Patent in Gazette of
India
Make License Agreement with Applicant for
Working with Right
 Avoid Penalty for Infringing the Right of Patent
Holder
 Show Encouragement for Further Research &
Development
 Utilize Potential Manpower to Stop Brain Drain
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50. Transfer of Technology
 The Patents Act, 1970
 License Agreement
(Exclusive/Non-exclusive)
 Compulsory License
 The Contract Act, 1872
 Contractual License
Patent Know-How
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51. Network of R&D
Resource
Academia
Distribution of Knowledge
Research Institutions
Industries
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52. Role of Patent Attorney
Drafting of Specification
Possible equivalent variations
Broadest valid claim
Avoid any pitfall
Submission against Office Objections and
related Proceedings
To face Opposition Proceedings
Execution of Licence Agreement, Deed of
Assignment and other Legal Matters
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53. SKM

54. Role of SSI in Indian Economy
3.5 Million Units generate direct 45 Million Employments
35% Direct contribution in Economy
45% Overall contribution in Production
300 Million Overall Employment Generation through
Service Institute
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55. What to Do ?
 Share Benefit of Patent System
 Utilize Resource through Organized R&D Activities
 Capture Global Market Judiciously
 Earn Profit through Protected Market
Suggestions
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56. THANK YOU
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