04/12/23 1

PATENTS ACT 1970PATENTS ACT 1970

PATENT- DEFINITION

Exclusive right for being the true and first inventor of a product or process, granted by the govt. for a limited period, to exclude others from making, using, selling or importing the patented product or process without his consent, in exchange of full disclosure of his invention .

• Term- 20 years from the Date of Filing(S.53)

04/12/23 2

INVENTION- DefinitionINVENTION- Definition

Sec. 2(1)(j): ‘Invention’ means a new product or process involving an inventive step & capable of industrial application –

1. Process, method or manner of manufacture,

2. Machine, apparatus or other article,

3. Substance produced by manufacture,

And includes any new & useful improvement of any of them.

04/12/23 3

REQUIREMENTS OF INVENTIONREQUIREMENTS OF INVENTION

– NEW: that no other inventor has obtained a patent for the same invention.

– NON-OBVIOUS that the subject matter of an invention was not obvious at the time the invention was made to a person having ordinary skill in the art to which the said subject matter pertains.

– USEFUL :that the machine, product, or process is one that can be used in industry or commerce.

Novelty Non-Obviousness (an inventive step) Utility (Capable of industrial application)

–

04/12/23 4

NOT INVENTIONS (S.3)NOT INVENTIONS (S.3):

1. An invention which is frivolous, or claims anything contrary to existing natural laws.

2. An invention whose use would be contrary to public order or morality, or which will be prejudicial to health or environment

3. Discovery of a scientific principle or the formulation of an abstract theory.

4. Discovery of any living thing or non living substance occurring in nature

5. Discovery of a new property or use of a known substance, unless it results in a new product

6. A substance obtained by mere admixture7. Arrangement or rearrangement or duplication of known devices .

04/12/23 5

NOT INVENTIONS (S.3)(contd.)NOT INVENTIONS (S.3)(contd.)8. A method of agriculture or horticulture, seeds, etc.9. Any process of medicinal, surgical application on human beings or

animals to render them free of disease.10. Plants, seeds, animals and biological processes for production or

propagation of plants and animals11. Computer program, per se, other than its application to industry or

combination with hardware (embedded software)12. A mathematical method or a business method13. Literary, dramatic, musical, artistic, aesthetic creation including

cinematic work or television production14. A method of playing game, presentation of information15. Integrated circuits 16. Traditional knowledge, or aggregation of traditionally known

components17. Atomic energy

• .

04/12/23 6

Process of Grant of PatentProcess of Grant of Patent

1. Application (s 10)2. Publication (S.11-A), 3. Examination (S.11-B, 12).4. Pre-Grant Opposition (after publication and before grant)5. Grant of patent (Notification)6. Post-Grant opposition (within an year of grant)7. Maintenance of patent (renewal after three years-renewal fee)8. Working of patent (Satisfactory availability of the patented product at

reasonable prices-Compulsory licensing by the Controller , if required)9. Revocation of patent (s 64- wrongfully obtained)10. Remedies against abuse of patent (S . 66, revocation in public interest by

central govt.-mischievous)11. Penalties ( S. 120- falsely representing ‘Patented’, ‘Patent applied for’-fine up

to Rs 1 lakh)12 Infringement (S.108, injunction, either damages or an account for profits)

04/12/23 7

Process of Grant of Patent (contd.)Process of Grant of Patent (contd.)1. Application with complete specifications has to be submitted to Controller

of Patents.2. The application along with an abstract is published after 18 months of filing,

unless the applicant requests early publication3. Applicant may apply for examination of his application within 48 months of

filing (31 months incase of applications under Patent Cooperation treaty)4. The application is then referred to an Examiner.5. Examiner checks its legality and authenticity and reports to the Controller.6. If there are discrepancies in the application , objections are raised

which must be answered within an year from the date of report.7. Any one interested can object after the publication and before grant of the

patent

04/12/23 8

Process of Grant of Patent (contd.)Process of Grant of Patent (contd.)8. Grant of the patent is notified in the Official Gazette, Patent

Office journal published every week 9. Post grant objections can be made within an year of grant of

the patent10. Maintenance (renewal)fee has to be paid after the third year11. Lapse of the Patent on failure to renew, restoration within 18

months from the date of lapse on payment of fee 11. Controller may grant ‘compulsory licence’ if the patent is not

working (product is not available in sufficient quantity at reasonable prices).

12. PATENTEE CAN SELL OR ASSIGN HIS PATENT TO OTHER PERSONS

04/12/23 9

complete specificationcomplete specification The patent specification generally comprises of

the title of the invention indicating its technical field, (i)prior art, (ii) draw backs in the prior art, (iii) the solution provided by the inventor to obviate the drawbacks of the prior art, (iv) concise but sufficient description of the invention and its usefulness, (v) drawings (if any) and (vi) 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

04/12/23 10

provisional specificationprovisional specification  Indian patent law follows first to file system. 

Provisional specification describes the nature of the invention to   have the priority date of filing of the application in which the inventive idea has been disclosed. It must be followed by a complete specification describing the details of the invention along with a statement of claims within 12 months after filing of the provisional application.  If the complete specification is not filed within the prescribed period, the application is treated as abandoned

04/12/23 11

Prior artPrior art• Prior art ( state of the art) is all information

that has been disclosed to the public in any form about an invention before a given date. Prior art includes things like any patents related to your invention, any published articles about your invention, and any public demonstrations.

• If an invention has been described in prior art, a patent on that invention is not valid.

04/12/23 12

Prior art searchPrior art search How can one find out that an invention is

already patented? • A preliminary search can be made on:1. Patent Office website, the Indian patent data

base of granted patents, or 2. Patent Office journal published every week, or3. Search in the documents kept in the Patent

Office Search and Reference Room, which contains Indian patents arranged according to international patent classification system.

4. One can also make a request for information regarding any patent under section 153 of the Act

04/12/23 13

Priority Dates of Claims of Priority Dates of Claims of Complete Specification (s.11)Complete Specification (s.11)

• Priority date of the claim is the date of filing of specifications-provisional or complete, wherein the matter on which the claim is fairly based was first disclosed. Controller can order post-dating or ante-dating of a claim under section 9, 17 and 16 depending upon when he thinks the matter was actually first disclosed.

04/12/23 14

PUBLICATIONPUBLICATION• Every application for patent is published

after 18 months from the date of its filing or priority date whichever is earlier, except where there is a secrecy direction.  

• Applicant can make a request for early publication with the prescribed fee.  After receiving such request the Patent Office publishes such application within a period of one month provided the invention does not relate to atomic energy or defence purpose.    

04/12/23 15

EXAMINATIONEXAMINATION

• The patent application is examined only on request.

• The request for examination can be filed within a period of 48 months from the date of priority or date of filing of the application whichever is earlier. 

• Request for examination before expiry of 31 months can be made in respect of the applications filed under Patent Cooperation Treaty known as National Phase applications by payment of the prescribed fee.

04/12/23 16

First Examination Report (FER)First Examination Report (FER) After examination, the Patent office issues

an examination report to the applicant which is generally known as First Examination Report (FER). Applicant should comply with the requirements within a period of twelve months from the date of FER.  If the application is in order, the patent is granted and a letter patent is issued to the applicant.  However, if there is a pre-grant opposition, the applicant has to defend his claim.   

04/12/23 17

PATENT INFRINGEMENTPATENT INFRINGEMENT

• A patent is not infringed until proven otherwise

• onus or burden of proving infringement is on the patent owner

04/12/23 18

Infringement- Jurisdiction, Burden of ProofInfringement- Jurisdiction, Burden of Proof

• Jurisdiction-District Court (S.104)• If the defendant makes a counter claim for

revocation of the patent, the case is transferred to the High Court

• Burden of Proof (104-A): If the patentee first proves that the product is identical then if the subject matter is a process, the court may direct the defendant to prove that the process used by him to obtain the product was different.

04/12/23 19

Relief in Suits for Infringement (S 108)Relief in Suits for Infringement (S 108)

• Injunction• Either ‘damages’ or an ‘account of profits’,

at the option of the plaintiff• Seizure, forfeiture or destruction of

infringing goods, as the Court deems fit[Infringement of patent is not an offence. No

criminal action is possible]

04/12/23 20

COMPULSORY LICENSECOMPULSORY LICENSE• After 3 years of patent, anyone can request a

license from the govt. on these grounds

– That the reasonable requirements of the public with respect to the patented invention have not been satisfied

– That the patented invention is not available to the public at reasonably affordable price

– Export of pharmaceuticals to poor countries