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April 10, 2023
Indian Patent law, Office Procedure and Examination Practice in
Indian Patent office
Dr. K.S.Kardam
Deputy. Controller of Patents & Designs
The Patent Office Delhi
23rd OCTOBER 2010
WIPO Training program for trainers training on Effective Intellectual Property Asset Management By
MSMES
April 10, 2023
Outline of the Presentation
April 10, 2023K.S.Kardam
INDIAN PATENT LAWHISTORICAL DEVELOPMENT
The Act of 1856 based on UK Act Of 1852 -But withdrawn
The Act of 1859, The Patterns & Designs Protection Act, of 1872 The Protection of Invention Act, of 1883 The Invention & Designs Act of 1888- Further
Consolidation The Patents & Designs Act 1911 The Patents Act 1970 This Act has been amended in 1999,2002
and 2005
April 10, 2023K.S.Kardam
The Patents (Amendments) Act 1999
Providing the provisions for receiving the applications for the product patent in the field of Pharmaceuticals and agro-chemicals (mail box)
Provisions for the grant of EMRs for distribution and sale of pharma products on fulfillment of certain conditions
Grant of EMR subject to certain conditions Deletion of sec.39- relating to permission for
filing of patent application abroad
April 10, 2023K.S.Kardam
The Patents (Amendments) Act 2002
Uniform 20 years term of patent for all inventions Scope or non-patentable inventions including
traditional knowledge enlarged Deferred examination system Disclosure of source and geographical origin of
biological material made compulsory Non-disclosure or wrongful disclosure of source
and geographical origin of biological material made ground for opposition and revocation
Provisions concerning Convention countries simplified-GOC, UOC,IGO recognized
April 10, 2023K.S.Kardam
The Patents (Amendments) Act 2002…
Anticipation by traditional knowledge ,oral or otherwise also made ground for opposition and revocation
Reversal of burden of proof Bolar provisions Parallel importation Establishment of appellate board Compulsory license provisions strengthened Simplification of procedures Harmonization with PCT provisions
April 10, 2023K.S.Kardam
The Patents (Amendments) Act 2005
Product patent for inventions in all fields of technology
Definitions of certain terms redefined New forms of known substances excluded in
order to prevent ever-greening of patent Rationalization of opposition procedure
Introduction of pre-grant opposition by representation and Post – grant opposition
Compulsory license for export purpose also if need be-to remedy anti-competitive practices
Compulsory license for manufacture and export of pharmaceutical products to any country having insufficient or no manufacturing capacity
April 10, 2023K.S.Kardam
The Patents (Amendments) Act 2005……
Extension of grace period to 12 months Provisions concerning review of secrecy
directions-now to be reviewed every six month instead of 12months
Provisions relating to filing application abroad revised
Provisions concerning Penalties strengthened
Importation from any person duly authorised under law
April 10, 2023
Examination Procedure
Filing of the applicationRequest For Examination
( RFE)
Request For Examination
( RFE)
Publication under section 11A
Examination
Grant of Patent
Pre-grant Opposition
Post-grant Opposition
April 10, 2023
Electronic filing
(July 20,2007)
Physical filing at the Patent Office
Filing of the Application
Where to file application (Jurisdiction)
If the applicant/first mentioned applicant (in case of joint)-resides/has domicile/has place of business/has origin of invention/has service address (in case of foreign applicant) in the following states:
States Jurisdiction Northern Patent Office Delhi Southern Patent Office Chennai Western Patent Office Mumbai Rest Of India Patent Office Kolkata
How to Apply ?
Application on form –1 Specification provisional/complete on form –2 Abstract of invention Drawings,if any Statement and undertaking of foreign filing
particulars on form -3- if any Proof of right—if applicable Declaration of inventor-ship on form- 5
Contd….
Certified copies of priority documents- if applicable
Power of attorney-if applicable
Application,Specification and other documents should be either in Hindi or English language
If application discloses sequence listing of nucleotides and/or amino acids, it should be filed in electronic form
Filing of the patent application
Application for patent can be filed only on the payment of full Fee
Filing fee is now charged on the basis of number of pages and number of claims made in the patent document
No extra fee is charged upto 30 pages and 10 claims
Different fee for natural person and legal entity
Publication
April 10, 2023
April 10, 2023
PUBLICATION
UNEXAMINED APPLICATIONS AFTER 18 MONTHS
EARLY PUBLICATION ON REQUEST GRANTED PATENTS
April 10, 2023
Time limit for publication
Ordinary application: After 18 months of filing of the application
Conventional applications : After 18 months from priority Applications for which secrecy directions are issued: After
cessation of the secrecy directions or after 18 months whichever is later
Divisional application: After18 months from priority of parent application/immediately after filing divisional application whichever is later
National phase PCT application: within one month after filing of the application
Patent of addition : 18 months after filing Patent of addition application whichever is later
Early Publication- within one month after receiving the request
April 10, 2023
Publication of Patent Application
Every application shall be published after expiry of 18 months from the date of filing or date of priority of the application except the following Application in which secrecy direction is imposed or Abandoned under section 9(1) or Has been withdrawn before 3 months prior to expiry
of 18 months However the applicant can make specific request
for early publication prior to 18 months on form 9 with prescribed fee of Rs.2500 or Rs.10000 by individual or legal entity respectively
April 10, 2023
Where published- Official Journal
This journal is published every week
This has replaced gazette
First issued out on 21st January 2005
Available online on Patent office website:
www.ipindia.nic.in
Contents of the unexamined published patent application
(12) PATENT APPLICATION PUBLICATION (19) INDIA (22) Date of filing of Application :19/08/2008
(21) Application No.1967/DEL/2008 A (43) Publication Date : 17/04/2009
(54) Title of the invention : AN ELECTRONIC SYSTEM AND METHOD FOR PROCESSING FINANCIA DATA
(51) International classification (31) Priority Document No (32) Priority Date (33) Name of priority country (86) International Application No Filing Date (87) International Publication No (61) Patent of Addition to Application Number Filing Date (62) Divisional to Application Number Filing Date
:G06Q20/00 :NA :NA :NA :NA :NA :NA :NA :NA
(71)Name of Applicant : 1)MEENA MISHRA Address of Applicant :B-1, SECTOR-41, NOIDA, (U.P) Uttar Pradesh India (72)Name of Inventor : 1)MEERA MISHRA 2)SH.ANJANI KUMAR MISHRA 3)SH.VIKAS PANDEY
(57) Abstract : A system for processing financial data comprising electronically controlled multiple stages comprising an input stage, a processing stage wherein the system performs specific functions including means to calculate cert ain fixed parameters, means to generate appropriate data sheets, means to store the relevant data in the form of codes for retrieval at any later point of time, means to allow for modification of calculation parameters for different types of financial data and calculation, and means to execute the function and an output stage to generate data ready to be transmitted exported to the concerned authorities" module of software as well as on servers also either through internet or any other mode with each stage being controlled by input device, processing device and output device.
April 10, 2023
Contents of Publication under section 43(2)
Examination
April 10, 2023
April 10, 2023
Examination
Examination: Not automatic Request to be made by applicant or
third parties Examination report to applicant only Fees: Rs 2500/ 10000
April 10, 2023
Request For Examination
A request for examination can be filed in form 18 within 48 months from the priority date or filing date whichever is earlier
A request for examination in respect of applications filed before 1-1-2005 can be filed within the period of 48 months from the date of filing of the application instead of date of priority ( as provided prior to the Patents (amendment) Act. 2005
April 10, 2023
Request for examination……..
In case of application in which secrecy direction is imposed 48 months from priority date or date of filing or 6 months from the date of revocation of
secrecy direction,whichever expires later In case of divisional application-
After publication of main application 48 months from priority date or date of filing of
main application or 6 months from the date of filing of divisional
application , whichever is later
April 10, 2023
Formal Examination Jurisdiction Fee Form of the documents Specification including claims and abstract Drawings Power of attorney Assignment/Endorsement Priority date and supporting document Language of the documents or their
translation if language is not Hindi or English Information about corresponding foreign
applications
Technical groups
April 10, 2023
All the controllers and examiners have been divided into 4 groups
Groups have been constituted according to field of technology namely Chemical, Biotechnology, Electrical and electronics and Mechanical and allied engineering
The applications are referred to examiners as per their field of Specialization
Applications are examined as per serial order of the request for examination
April 10, 2023
Substantive Examination Patentable invention( sec-2(1)(j)
Novelty Inventive step Industrial application
Is the Invention excluded under any of the provisions of section 3 and 4
Description Sufficiency, ambiguity, succinctness Reference of deposition of biological resources Disclosure of source of origin
Claims Unity of invention dependency
April 10, 2023K.S.Kardam
New (Novel) means ?
Invention should not have been Published in India or elsewhere. In prior public knowledge or prior public use
with in India. Claimed before in any specification in India
and published after the filing of the application
April 10, 2023K.S.Kardam
A feature of invention that involves technical advance as compared to existing knowledge or having economic significance or both and that makes invention not obvious to a person skilled in the art
Inventive Step means ?
April 10, 2023K.S.Kardam
Invention should be capable of being made or used in an industry to result some tangible technical results
Industrial applicable means ?
April 10, 2023K.S.Kardam
Inventions Not Patentable-1
Frivolous & obviously contrary to natural law
Contrary to law,morality Injurious to public health Use or commercial exploitation is
contrary to public order or morality Causing serious prejudice to
human,animal or plant life or health or to the environment
April 10, 2023K.S.Kardam
Inventions Not Patentable-2
Mere discovery of scientific principle or formulation of abstract theory
Discovery of living or non living substances occurring in nature
Mere discovery of new form of known substance which does not result in the enhancement of the known efficacy of that substance
However, salt, esters, polymorphs, metabolites, pure forms, isomers ,complexes etc, shall be considered to be the same unless they differ significantly in properties with regard to efficacy
April 10, 2023K.S.Kardam
Mere discovery of new property New use of known substance ,
process, machine, apparatus. Mere admixtures resulting in the
aggregation of properties Mere arrangement and
rearrangement of known devices. Method of agriculture or horticulture
Inventions Not Patentable-3
April 10, 2023K.S.Kardam
Process for any medicinal, surgical, curative, prophylactic, diagnostic or therapeutic treatment of human being or animal.
Plant & animals or their parts Seeds, varieties and species and essentially
biological process for the production or propagation of plants and animals
A mathematical or business method or a computer programme per se or algorithms
Literary,dramatic,musical or artistic/cinematography works and television productions or any other aesthetic creation.
Inventions Not Patentable-4
April 10, 2023K.S.Kardam
Inventions Not Patentable-5
Scheme or rule method of performing mental act or
method of playing game Presentation of information Topography of integrated circuit Traditional knowledge or aggregation or
duplication of known properties of traditionally known components
April 10, 2023K.S.Kardam
Inventions Not Patentable-6
Inventions falling within the scope of Sec. (1) of Sub-sec. 20 of Atomic Energy Act, 1962-For Example : Inventions relating to Compounds of -
Uranium, Beryllium, Thorium, Plutonium, Radium, Graphite, Lithium and more as notified by Central Govt. from time to time
Novelty Search
April 10, 2023
Indian Patents Since 1912 DWPI(DELPHION) STN Questel
QPAT And QWEB MMS and NPL E- Journals
• EPOQUENET(Since April 2009)
April 10, 2023
Time to comply with the Requirements
12 months from the date of issue of First Examination Report (FER)
This time limit is not extendable
OPPOSITION
April 10, 2023
Post –grant oppositionPost –grant opposition
Pre-grant opposition by representationPre-grant opposition by representation
Pre-grant Opposition by representation
It can be filed by any person Within SIX months from the date of
publication of the application under sec.11A Or
before the grant of patent Note: date of patent is the date when the
controller grant patent by generating the patent number with date!!!!
Date of patent however in no case is the date of publication of grant of patent
Grounds for Opposition
Wrongful obtaining Prior publication Prior claiming Prior public knowledge or use in India Obviousness or lack of inventive step Not an invention or not patentable under
the Act
Grounds for Opposition….
Insufficiency of description Failure to disclose the information
regarding corresponding foreign application or furnishing false information
Failure to file convention application within twelve months from the date of first application made in the convention country
Grounds for Opposition….
Non-disclosure or wrongful mentioning of the source and geographical origin of biological material used in the invention
Anticipation of invention by knowledge, oral or otherwise available within any local or indigenous community in India or elsewhere
No account will be taken for personal document or secret trial or secret use
Pre-grant opposition
REPRESENTATION
FORWARDED TO THE APPLICANT
REPLY AND EVIDENCE OF APPLICANT
HEARING
Copy of reply given to the opponent if requested
Patent grantedApplication
refused
Request for examination is
filed
YESNO
3 Months
Post-grant Opposition
Any time but before expiry of one year from the date of publication of the grant of patent
By interested person only By giving a notice of opposition to the
Controller On the prescribed grounds only The grounds are same as under pre-grant
opposition No provision for extension of time to file
notice of opposition
Procedure for Post grant Opposition
NotificationGrant of patent Notice of opp.
Reply Evd. by opp.Reply statement&Evd.by applicant F.W.S.& Evd. By opp.
Further Evd. If any
Appointment of hearing
Hearing
Decision RevokedPatent Cont
Recommendations of OPPOSITION BOARD
Constitution of Opposition Board
Patent Applications filed
0
5000
10000
15000
20000
25000
30000
35000
40000
1999-2000
2002-032003-042004-052005-062006-072007-08
April 10, 2023
4824
11466
12613
17466
24505
28940
35,218
Patents granted
0
2000
4000
6000
8000
10000
12000
14000
16000
2001-02 2002-03 2003-04 2004-05 2005-06 2006-07 2007-08
April 10, 2023
1318 13792469 1911
4320
7539
15.262
April 10, 2023
THE FEE SCHEDULEOn what payable Prov./Comp spec.PAGES EXCEEDING 30CLAIMS EXCEEDING 10
*Request for extension of time
REQUEST FOR EARLY PUBLICATIONRequest for ExaminationEXPRESS REQUEST FOR EXAMN.
*Change of Applicant
*Notice of Opposition *Certified Copy\Certificate
*On a petition
*Restoration of lapsed patent
Form
2
-
-
4
9
18
18
6
7
--
15
Individual
1000
100
200
1000/2000/3000
2500
2500
3500
1500
1000
1000
1500
1500
Company
4000
400
800
4000/8000/1200
10000
10000
14000
2000
6000
4000
4000
6000
RENEWAL FEES
3rd to 6th Year(per year)
6th to 10th Year—do--
11th to 15th Year---do---
16th to 20th year----do---
500
1500
3000
5000
2000
6000
12000
20000
April 10, 2023
April 10, 2023
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