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'''PATENT APPLICATIONS UNDER PCT - NATIONAL PHASE ENTRY IN INDIA

An article written by Kaviraj Singh, Patent Attorney, Trustman & Co, [A patent law firm at Delhi in India'''] http://www.trustman.org, http://delhilaw.firm.in

The Patent Cooperation Treaty is an agreement for international cooperation in the field of patents. It is the most significant advancement in international cooperation in this field since the adoption of the Paris Convention itself. It is, however, largely a treaty for rationalization and cooperation with regard to the filing, searching and examination of patent applications and the dissemination of the technical information contained therein. The PCT does not provide for the grant of “international patents”. The task and responsibility for granting patents remain exclusively in the hands of the patent Offices of, or acting for, the countries where protection is sought (the “regional Offices”). PCT is a special agreement under the Paris Convention open only to states, which are also party to the Paris Convention. The PCT does not compete with but, in fact, complements the Paris convention.

Introduction:

On 7th September 1998, India deposited its instrument of accession to the PCT and on 7th December 1998 thus became a member of the PCT, as the 98th Contracting State of PCT. Furthermore, nationals and residents of India are entitled to file international applications for patents under PCT at Receiving Office at Patent Office at Delhi.

Principal Objectives of the PCT

The principal objective of the PCT is to simplify and to render more effective and more economical—in the interests of the users of the patent system and the offices that have responsibility for administering it—the previously established means of applying in several countries for patent protection for inventions. Before the introduction of the PCT system, virtually the only means by which protection of an invention could be obtained in several countries was to file a separate application in each country; these applications, each being dealt within isolation, involved repetition of the work of the filing and examination in each country.

To achieve its objective, the PCT:

• Establishes an international system which enables the filing, with a single patent Office (the “Receiving Office”), of a single application (the “International Application”) in one language having effect in each of the countries which are party to the PCT which the applicant names (“designates”) in his application;

• Provides for the formal examination of the International Application by a single patent Office, the Receiving Office; • Subjects each International Application to an international search which results in a report citing the relevant prior art (mainly published patent documents relating to previous inventions) which may have to be taken into account in deciding whether the invention is patentable; that report is made available first to the applicant and is later published; • Provides for centralized international publication of International Applications with the related international search reports, as well as their communication to the designated Offices; and • Provides the option of an international preliminary examination of the International Application, which gives to the Offices, that has to decide whether or not to grant a patent, and to the applicant, a report containing an opinion as to whether the claimed invention meets certain international criteria for patentability. The procedure described in the preceding paragraph, comparing it with the traditional procedure, is illustrated by two timelines such as chapter I and chapter II of PCT. It is commonly called the “International Phase” to describe the first part of the patenting procedure, whereas one speaks of the “National Phase” to describe the last part of the patent granting procedure which, as explained in paragraph above, which is the task of the designated Offices, that is, the national Offices of, or Regional offices acting for the countries which have been designated in the International Application. (In PCT terminology, a reference to “national” Office, “national” phase and “national” fees, includes the reference to the procedure before a regional patent Office).

Under the PCT system, by the time the International Application reaches the national Office, it has already been searched by the International Searching Authority and possibly examined by an International Preliminary Examining Authority, thus providing the national patent Offices with the important benefit of reducing their work loads since they have the benefit of these international phase procedures and thus need not duplicate those efforts. Further objectives of the PCT are to facilitate and accelerate access by industries and other interested sectors to technical information related to inventions and to assist developing countries on gaining access to technology.

Functions of The Receiving Office

1. The first step is that the Receiving Office receives the International Application from the applicant. An application for the same invention has to be filed six weeks or necessary permission under section 39 should be taken before the filing of International Application. 2. The second step is that the Receiving Office checks the International Application to determine whether it meets the prescribed requirements as to form and content of International Applications. This check is of a formal nature only and does not go into the substance of the invention. It therefore extends only to a certain number of rather elementary requirements specified in the Treaty as forming part of that check. 3. i) The receiving Office shall accord as the international filing date the date of receipt of the international application, provided that that Office has found that in order in accordance with Article 11, at the time of receipt: ii) (a) If the receiving Office finds that the international application did not, at the time of receipt, fulfill the requirements listed in paragraph (1), it shall, as provided in the Regulations, invite the applicant to file the required correction. (b) If the applicant complies with the invitation, as provided in the Regulations, the receiving Office shall accord as the international filing date the date of receipt of the required correction.

4. Receiving Office checks certain formal and physical requirements (Article 14).

That check by the Receiving Office may show that the International Application does not meet certain requirements as to form and content and that the fees are not, or not fully, paid. In that case, the Receiving Office communicates with the applicant in order to give him an opportunity to correct any defect. 6. If the language of filing of the International Application is one acceptable by the Receiving Office but is not acceptable by the International Searching Authority that is to carry out the international search, the applicant is required to furnish, within one month from the filing date of the application, a translation into a language which is all of the following: (i) a language accepted by the International Searching Authority that is to carry out the international search; (ii) a language of publication; and (iii) a language accepted by the Receiving Office (unless the International Application is filed in a language of publication). In cases where the applicant fails to furnish, within the applicable time limit, a translation for the purposes of international search, the Receiving Office invites the applicant to furnish the missing translation, in certain cases subject to the payment of a late furnishing fee. A separate invitation procedure is provided for the case where the request does not comply with language requirements. Where the applicant does not furnish the missing translation within the time limit fixed in the invitation, the International application will, subject to certain safeguards for the applicant, be considered withdrawn and the Receiving Office will so declare. 7. Not all the requirements of the International Application are required to be examined by the Receiving Office. For instance, the Receiving Office does not deal with substantive questions such as whether the disclosure of the invention in the application is sufficient and whether the requirement of unity of invention is complied with. It also does not check all the many detailed physical requirements of the International Application. Those requirements are only checked to the extent that compliance with such requirements is necessary for the purpose of reasonably uniform international publication.

8. Typical examples of defects, which may be corrected without affecting the international filing date, are: – Non-payment or partial payment of fees; – Lack of signature of the request; – Lack of a title of the invention; – Lack of an abstract; – Physical defects. 9. As stated, in all such cases lack of correction leads to the application being considered withdrawn, except where a physical defect would not prevent reasonably uniform international publication and except for the payment of fees. With regard to the later, Rule 16b provides that the Receiving Office must invite the applicant to pay the missing fees together with a late payment fee. If the applicant still does not pay the fees within the time limit fixed in the invitation, the Receiving Office will declare that the International Application is being considered withdrawn. This solution protects the applicant against any loss of his application due to an erroneously delayed or incomplete payment of fees. 10. The third step in the procedure before the Receiving Office is that it must transmit the “record copy” of the International Application to the International Bureau and the “search copy” to the International Searching Authority. The Receiving Office keeps a third copy, the “home copy.” The transmittals do not take place if and as long as national prescriptions concerning national security apply. The Receiving Office will then declare that national security provisions prevent the International Application from being treated as such. 11. The Receiving Office must mail the record copy promptly to the International Bureau and in any case not later than five days prior to the expiration of the 13th month from the priority date. In many cases, the International Application claims the priority of an earlier national application and is filed at the end of the 12-month priority period; the Receiving Office has only a few weeks for its processing tasks 12. The search copy must be transmitted by the Receiving Office to the International Searching Authority at the time of the transmittal of the record copy to the International Bureau except where the search fees has not been paid on time, in which case the transmittal of the search copy takes place after that fee has been paid. 13. If an applicant who is a resident or national of a PCT Contracting State; erroneously files his International Application with a national office which acts as a Receiving Office under the Treaty but which is not competent under Rule 19.1 or 19.2, having regard to the applicant’s residence and nationality, to receive that International Application, or if an applicant files his International Application with the competent Receiving Office in a language which is not accepted by that Office under Rule 12.1(a) but is in a language accepted under that Rule by the International Bureau as Receiving Office, the International Application will be considered to have been received by the national Office on behalf of the International Bureau as Receiving Office on the date on which it was received by the national Office, and will be promptly transmitted to the International bureau as Receiving Office (unless such transmittal is prevented by national security prescriptions). The transmittal may be subjected by the national Office to the payment of a fee equal to the transmittal fee. All other fees already paid to that Office will be refunded by that Office to the applicant and the applicable fees will have to be paid to the International bureau as Receiving Office

The following conditions should be fulfilled for according an international filing date:

The applicant should be a resident or national of the Contracting State for which the Receiving Office acts, and has consequently the right to file with that Receiving Office (note, however, that the International Application is to be transmitted to the International Bureau as Receiving Office under Rule 19.4(a)(i) if that condition is not fulfilled); (ii) The International Application should be in the language, or one of the languages, accepted by the Receiving Office for the purpose of filing International Applications (note, however, that the International Application is to be transmitted to the International Bureau as Receiving Office under Rule 19.4(a)(ii) if that condition is not fulfilled); (iii) The International Application should contain at least the following elements: (a) an indication that it is intended to be an International Application, (b) the designation of at least one Contracting State(c) the name of the applicant in a form allowing the applicant’s identity to be established, (d) a part which on the face of it appears to be a claim or claims. (iv) If one of these requirements is only complied with after correction, the international filing date will be the date on which the correction was received. In other words, in these cases a defect, which is corrected later, affects the international filing date. If all such defects are not properly corrected, the application will not be treated as an International Application. (v) For all the other cases, non-compliance with the formal requirements does not affect the international filing date. In other words, if the applicant corrects a defect in such cases, the international filing date remains unchanged. If the applicant does not correct, the defect properly, the International Application will, however, be considered withdrawn by the Receiving Office. Extension of the time limit fixed by the Receiving Office for the correction of defects under Article 14 may be requested.

Monitoring of time limits

Easy supervision and monitoring of only a few time limits and events is required by applicants, namely: (i) Monitoring the receipt of the confirmation of receipt of the International Application by the Receiving Office;

(ii) Monitoring the time limits for payment of fees; (iii) Checking the notification from the International Bureau confirming the receipt of the International Bureau confirming the receipt of the record copy (Form PCT/IB/301) for correctness of the designations indicated on the Form and if needed and confirm precautionary designations within 15 months from the priority date;] (iv) Deciding, after receipt of the international search report, whether or not to file a demand for international preliminary examination (which must be filed prior to the expiration of 19 months from the priority date. (v) Deciding, after receipt of the international search report, whether or not to file amended claims under Article 19, within the applicable time limit; This will usually be considered only if demand for international preliminary examination is not filed; (vi) Monitoring the receipt, during the 19th month from the priority date, of the notice from the International Bureau (Form PCT/IB/308) that the publication of the International Application and its communication to the designated Offices (Article 20) has been effected; (vii) entering the national phase before the expiration of 30/31 months from the priority date by paying the national fees and furnishing (if required) a translation of the International Application.

Filing of the International Application:

a ) Request form (PCT/RO/101) 1. International Application must be filed with any of the receiving offices i.e. Patent office, Kolkata, New Delhi, Mumbai, and Chennai(RO/IN) or International bureau (RO/IB) of WIPO. The request form and the documents attached therewith should be in triplicate. 2. The International Application must contain a request, a description, one or more claims, one or more drawings (where required) and an abstract; it must comply with the prescribed physical requirements; it must be in one of the prescribed languages; finally, the required fees must be paid. These requirements will be dealt with one by one. 3. The request may be made on a printed form, copies of which can be obtained free of charge from the Receiving Office or from the International Bureau of WIPO. The request may also be presented as a computer printout as prescribed by Section 102(h) of the Administrative Instructions or, alternatively, as a computer printout prepared using the PCT-SAFE (PCT-EASY) software, in which case it must be accompanied by a computer diskette containing a copy in electronic form of the data contained in the request and of the abstract. Online application filing also is possible now. 4. The request must first of all contain a petition, that is, a request that the International Application be processed according to the PCT. It must further contain the title of the invention, the necessary data concerning the applicant, the inventor and the agent representing the applicant. It must be signed by the applicant or his agent. Where there are two or more applicants, each applicant must sign at his choice either the request or, if the request is signed by an agent, a separate power of attorney. 5. The request may contain some optional indications, in particular a priority claim according to the Paris Convention for the Protection of Industrial Property.

b) Priority

1. Only one certified copy is required of each priority of the application and to be furnished within 6 months from the filing date; no copies for each designated Office are needed. The copies for the designated Offices are prepared—at no additional cost to the applicant—by the International Bureau. 2. Transmittal of the priority document need not be monitored if a request for transmittal by the Receiving Office to the International Bureau of an application filed with that Receiving Office was made in the Request Form and the applicable fee for a priority document was paid to the Receiving Office.

c) Description

1. The description of the invention in the International Application must disclose the invention in a manner sufficiently clear and complete for the invention to be carried out by a person skilled in the art. 2. The description first repeats the title of the invention. It then specifies the technical field to which the invention relates. It indicates the so-called “background art,” that is, the technical and, in particular, patent literature, pertaining to that technical field, constituting the “prior art” or “state of the art” or known technology for the newly filed application. It discloses the intention in a way, which allows the technical problem and its solution to be understood. It states the advantageous effects of the invention as compared with the known technology. It briefly describes the figures in the drawings. It sets forth the best mode contemplated by the applicant for carrying out the invention and any other mode he wants to include.

Finally, it indicates the way in which the invention is capable of exploitation in industry.

d) Sequence Listing: -

1. Section 806 of PCT allows a designated Office to require that a copy of a sequence listing part filed only on an electronic medium under new Section 801 be furnished, for the purposes of the national phase, on paper.

2. For applicants who do not wish to file the sequence listing part of their international applications under new Section 801, the current provisions will continue to apply, including the filing in written form only (under Rule 5.2) and the concurrent or subsequent furnishing, as provided under PCT Rule 13ter and Section 208, of the sequence listing parts in computer readable from but only for the purposes of international search and/or international preliminary examination. In such cases the current system for calculating the basic fee, on the basis of the total number of sheets of the international application including the sequence listing part, will continue to apply (see item 1(b) of the Schedule of Fees). 3. It is important to note that international application filed under new section 801 may only be filed with receiving Offices, which are prepared to accept them, and on such electronic media as specified by the receiving Offices (for further details pl. see PCT Applicant’s Guide).

e) Claims:

1. The claims must define the subject matter of the invention for which protection is sought. They must be clear and concise and fully supported by the description. 2. With respect to the structure and drafting of claims, the PCT requirements are largely similar to what is accepted in most patent Offices.

f) Drawings:

The drawings are only required where they are necessary for the understanding of the invention. This will be the case for an engineering type of invention. It will not be the case when an invention cannot be drawn, as is the case for a chemical product. Here again, the requirements are similar to those of most patent Offices.

g) Abstract:

1. The abstract is intended to serve the purpose of technical information. The Treaty says clearly that it cannot be taken into account for any other purpose. This means in particular that it cannot be used for the purpose of interpreting the scope of the protection sought. 2. The abstract consists of a concise summary of the disclosure of the invention as contained in the description, claims and drawings in preferably within 50 to 150 words. It must be drafted in a way, which allows the clear understanding of the technical problem, the gist of the solution of that problem through the invention, and the principal use of the invention.

h ) Language of filing

1. The International Application must be filed in the language, or one of the languages, which the Receiving Office accepts for that purpose (Rule 12.1(a)). If the application is filed in any receiving office in India it has to be either in English or Hindi.

Neither the Treaty nor the Regulations enumerate the languages in which International Applications may be filed. Whether a given language can be used depends on the readiness of the Receiving Office to accept International Applications in that language. Each Receiving Office must, however, accept at least one language for the filing of International Applications which is both a language accepted by the International Searching Authority or, if applicable, by at least one International Searching Authority, competent for the international searching of International Applications filed with that Receiving Office and one of the languages of publication (that is, Chinese, English, French, German, Japanese, Spanish or Russian), so that applicants always have the option of filing the international search or international publication purposes; in other words, either words, either the International Application in its original language or the translation will be sufficient for the processing by the Receiving Office, for international search and for international publication. 2. If the language of filing of the International Application is the one acceptable by the Receiving Office but is not accepted by the International Searching Authority, the applicant is required to furnish, within one month from the date of receipt of the application, a translation into a language which is all of the following: (i) a language accepted by the International Searching Authority that is to carry out the international search; (ii) a language of publication; and (iii) a language accepted by the Receiving Office (unless the International Application is filed in a language of publication) (Rule 12.3). 3. If the language of filing of the International Application is accepted by the Receiving Office and the International Searching Authority but is not a language of publication (at present, this is the case only where the International Application is filed in Dutch and certain Nordic languages), the International Application will be published in English, the translation into that language being prepared under the responsibility of the International Searching Authority which undertakes the search (see Rule 48.3). 4. The request must always be filed in a language that is accepted by the Receiving Office and which is also one of the seven languages of publication

International Search.

A high quality international search report is established by the International Searching Authority. For the purpose of Indian applicant following are Competent International Searching Authorities( ISAs) Austrian Patent Office (AT) Australian Patent Office (AU) European Patent Office (EP) China Intellectual Property Office (CN) United States Patent & Trademark Office (US) Swedish Patent Office (SE) 2. If the International Application did not claim any priority, the international search report is available within nine months from the international filing date, If priority is claimed, that report is available usually during the 16th month from the priority date. Even where priority is claimed, the international search report is normally available in time before publication of the International Application. This allows time for the applicant to withdraw the application before publication, if desired.

PCT FEES (may vary from time to time)

Receiving Office (RO/IN) (The Patent Office, Kolkata, New Delhi, Mumbai and Chennai) Transmittal fee: INR 2,000 [for individual(s)], INR 8,000 [for legal entity] ii. International Fee: USD 1134* USD 1211 (from 1-3-2005) iii. Supplement per sheet in excess of 30: USD 12* USD 13 (from 1-3-2005) (* Amounts on 1 February 2005 unless otherwise indicated). iv. Search fee: (Amounts on 1 February 2005, unless otherwise indicated) ISA/AT – USD 182 USD 214** ISA/EP – USD 1920** USD 2,075* ISA/AU – USD 865 ISA/CN – USD 181 ISA/US – USD 1000 USD 300*** ISA/SE – USD 1920 USD 2,075* vi. Fee for preparing certified copy of priority document and transmission of the same to IB INR 1,000 [for individual(s)] INR 4000 [for legal entity] (* from 15-3-2005, Failure to pay fees or underpayment of fees can be corrected under Rule 16b. An invitation to pay missing amounts will be issued by the Receiving Office. Payment can be made later, together with a late payment fee. (*** -- Refer PCT Fee Tables [Footnotes to Fee Tables Para.18]) An Indian applicant, filing an International Application for Patent under Patent Cooperation Treaty, is required to remit the consolidated amount in US Dollar by Demand Draft, payable to the Controller of Patents at State Bank of India, New York Branch, for payment towards basic fee, designation fee and search fee.The required fees, which must be paid to receiving office, are the Transmittal Fee, the International Fee and the Search Fee. They must all be paid to the Receiving Office.
 * from 1-3-2005)

The Transmittal Fee is for the benefit the Receiving Office. It is intended to compensate that Office for the work, which is required to be performed in connection with the International Application. The amount is left to be fixed by the Receiving Office. It is due within one month from the date of receipt of the International Application. The International Fee is for the benefit of the International Bureau. It is intended to cover the cost of the work the International Bureau must perform under the PCT. The amounts are fixed in the Schedule of Fees, which forms part of the regulations. The international fee is due within one month from the date of receipt of the International Application. The Search Fee is for the benefit of the International Searching Authority. It is intended to compensate that Authority for the work it must perform in connection with the establishment of the international search report. It is due within one month from the date of receipt of the International Application. The amount is fixed by the International Searching Authority.

Withdrawal of the application

An International Application can be withdrawn at any time during the international phase. Where the intent of the withdrawal is to prevent publication, the notice of withdrawal must reach the International Bureau before technical preparations for international publication have been completed (that is, not later than 15 days before the date of publication). 2. A withdrawal of an International Application can be made with the condition that the withdrawal be effective only if the international publication can still be prevented.

Amendments:

1.The claims can be adjusted to the results of the international search report by amending them once (under Article 19) with effect in all designated States. Such amendments save costs for preparation of different sets of amendments and for local agents filing such amendments before designated Offices, and guarantee better provisional protection and patents in registration countries. Individual amendments before each designated Office are also permitted in the national phase (under Article 28 or 41) and all parts of the application can be amended (under Article 34(2)) during the international preliminary examination procedure under Chapter II.

International Preliminary Examination (Optional)

The following are Competent International Preliminary Examining Authorities [IPEAs] for the purpose of Indian applicant:] Austrian Patent Office (AT) Australian Patent Office (AU) European Patent Office (EP)(only if ISA was AT, EP or SE) China Intellectual Property Office (CN) United States Patent & trademark office (US) Swedish patent Office (SE) 2. The use of International Preliminary Examination (i) Is optional for the applicant; (ii) Provides, in addition to the international search report, an international preliminary Examination report containing an opinion on the usual criteria of patentability before expenses are incurred for the national phase (for translation, fees and foreign agents); (iii) Helps the applicant to adapt the International Application to the results of the international search report; (iv) Allows, with effect for all elected Offices, the amending of all parts of the International Application (description, claims and drawings) during international preliminary examination; (v) The international preliminary examination report gives, for minimal cost, an opinion and the probability of obtaining a patent: (viii) The application will be more or less ready for acceptance by the elected Offices after receiving international preliminary examination report. (ix) If the report is negative and it is decided to abandon the application, the applicant has saved all the expenses otherwise incurred before the elected Offices for the payment of national fees, the preparation of translations and the appointment of local agents. Preliminary examination fees (Amounts on 1 February 2005 unless otherwise indicated) IPEA Preliminary examination fee Handling fee (CHF 200) AT EUR 159 EUR 129 AU AUD 550 1000** AUD 218 CN CNY 1,500 CNY eq CHF 200 EP EUR 1,530 EUR 129 SE SEK 5,000 SEK 1,160 US USD 600 USD 162 173 (From 1-3-2005) (** Refer PCT Fee Tables (footnotes to Fee Tables para.20.)

The National Phase

1) The national phase follows the international phase. In the national Phase before processing and examination in the designated or elected Offices, the applicant must perform certain acts thereby effecting “entry into the national phase.” If the applicant does not enter the national phase, namely, if he does not perform these acts within the prescribed time limit, the International Application loses its effect in the designated or elected States concerned with the same consequences as the withdrawal of any national application in that State (Article 24). 2. For entry into the national phase before a designated or elected Office (if Preliminary examination is undertaken and countries elected), it is necessary that the national fee be paid to it and, where the International Application has not been filed or published in the official language, or one of the official languages of that Office, a translation into an official language be filed. The time limits for entry into the national phase are, in some Offices, even longer than 31 months. 3. The national fees to be paid are usually same as the fees required for the filing of a national or regional application. Some Offices, not in India however, levy lower national or regional filing, search or examination fees, or refund certain fees, on account of the existence of the international search report or where an international preliminary examination report has been established. This offsets, at least partly, the costs of filing an International Application. 4. Where the original drawings are of a good quality, the applicant is not required to file additional formal drawings with the Designated or Elected Offices, permitting substantial economies in some cases. It is therefore important to file drawings with the Receiving Office that fully comply with the format requirements of the Regulations under the PCT. 5. Where the priority of an earlier application is claimed and a certified copy of that application has been provided, it is not necessary to submit a certified copy of the priority document to each designated or elected Office. The International Bureau sends any required copies of the priority document to the Offices concerned.

Legal Remedies; Protection against Loss of Rights

Where, as a result of a mistake which was not timely corrected, an International Application is considered withdrawn, the applicant may request review of that decision by each of the designated Offices. In addition to requesting review, the applicant has the opportunity to submit at the same time, to each designated Office, a request for excuse of failure to comply with a time limit. The legal basis of, and the conditions for, such a request are to be found in the applicable national law or regional convention, which applies equally to International Applications. Where that law or convention provides for reinstatement, this can be requested. Where there is a possibility of requesting further processing of the application, this can also be done. Procedural safeguards are thus available in each designated State to PCT applicants in the same way, as they are to applicants for national or regional applications not made via the PCT.

Preparation of Patent Applications

1. Any patent application, drafted in accordance with the requirements of the PCT, allows a maximum flexibility and benefit from the advantages of the PCT: (i) The same application documents can then be used for filing national and/or SJinternational applicants; (II) No adaptation of the original application is then required in a much as the PCT format is valid for all designated Offices (including the EPO, the Japanese Patent Office and the United States Patent and Trademark Office). Fee savings. National fees are reduced or completely dispensed with for the procedure before some Offices which provides considerable savings, for example: European Patent Office (EPO): – European search fee waived if international search report by AT, EP, ES, SE; 20% reduction of European search fee if search report by AU, CN, JP, RU, US; – 50% reduction of European examination fee if international preliminary examination report by EP. German Patent Office: – Filing fee waived if the Office was the Receiving Office; – Examination fee reduced if an international search report has been established. Hungarian Patent Office: – Filing fee waived if the Office was the Receiving Office; Japanese Patent Office: – Approximately 80% reduction of examination fee if international search report established by JPO; – Approximately 20% reduction of examination fee if international search report established by ISA other than JPO. United Kingdom Patent Office: refund of part of preliminary examination and search fee.

Patent Law Firm Delhi India (Intellectual property law IPR)
BASICS OF PATENT LAW INDIA

[Kaviraj Singh, Attorney of Trustman & Co- A law Firm at Delhi India] http://www.trustman.org, http://delhilaw.firm.in

Patent law has been formulated with an objective to promote and protect the inventions and methods. The object of granting a patent is to encourage and develop science, technology and industry.

A patent can be defined as a grant of exclusive rights to an inventor over his invention for a limited period of time. The exclusive rights conferred include the right to make, use, exercise, sell or distribute the invention in India. The term of a patent is twenty years, after the expiry of which, the invention would fall into the public domain.

History

In 1957, Govt. of India appointed Justice N. Rajagopala Ayyangar examine and review the Patent law in India who submitted his report September 1959 recommending the retention of Patent System despite shortcomings. The Patent Bill, 1965 based mainly on his recommendations incorporating a few changes, in particular relating to Patents for food, drug, medicines, was introduced in the lower house of Parliament on 21st September, 1965. The bill was passed by the Parliament and the Patents Act 1970 came into force on 20th April 1972 along with Patent Rules 1972. This law was suited changed political situation and economic needs for providing impetus technological development by promoting inventive activities in the country.

Uruguay round of GATT negotiations paved the way for WTO. Therefore India was put under the contractual obligation to amend its patents act in compliance with the provisions of TRIPS. India had to meet the first set of requirements on 1- 1-1995. This was to give a pipeline protection till the country starts giving product patent. It came to force on 26th March 1999 retrospective from 1-1-1995. It lays down the provisions for filing of application for product patent in the field of drugs or medicines with effect from 01.01.1995 and grant of Exclusive Marketing Rights on those products.

India amended its Patents Act again in 2002 to meet with the second set of obligations (Term of Patent etc.), which had to be effected from 1-1-2000. This amendment, which provides for 20 years term for the patent, Reversal of burden of proof etc. came into force on 20th May, 2003. The Third Amendment of the Patents Act 1970, by way of the Patents (Amendment) Ordinance 2004 came into force on 1st January, 2005 incorporating the provisions for granting product patent in all fields of Technology including chemicals, food, drugs & agrochemicals and this Ordinance is replaced by the Patents (Amendment) Act 2005 which is in force now having effect from 1-1-2005.

ESTABLISHMENT OF PATENT ADMINISTRATION IN INDIA

Patent system in India is administered under the superintendence of the Controller General of Patents, Designs, Trademarks and Geographical Indications.

The Office of the Controller General functions under the Department of Industrial Policy and Promotion, Ministry of Commerce and Industry. There are four patent offices in India. The Head Office is located at Kolkata and other Patent Offices are located at Delhi, Mumbai and Chennai. The Controller General delegates his powers to Sr. Joint Controller, Joint Controllers, Deputy Controllers and Assistant Controllers. Examiners of patents in each office discharge their duties according to the direction of the Controllers.

Hierarchy of Officers in Patent office

Controller General of Patents, Designs, Trademarks & GI Examiners of Patents & Designs Assistant Controller of Patents & Designs Deputy Controller of Patents & Designs Joint Controller of Patents & Designs Senior Joint Controller of Patents & Designs

Patentable Inventions:

A patent can be granted for an invention which may be related to any process or product. The word “Invention “ has been defined under the Patents Act 1970 as amended from time to time.

“An invention means a new product or process involving an inventive step and capable of industrial application” (S. 2(1)(j))

“ new invention” is defined as any invention or technology which has not been anticipated by publication in any document or used in the country or elsewhere in the world before the date of filing of patent application with complete specification, i.e. the subject matter has not fallen in public domain or that it does not form part of the state of the art; Where, Capable of industrial application, in relation to an invention, means that the invention is capable of being made or used in an industry

(S.2 (1)(ac)) Therefore, the criteria for an invention to be patentable are, (1) An invention must be novel (2) has an inventive step and (3) is capable of industrial application

To be patentable, an invention should fall within the scope of patentable subject matter as defined by the patent statute. The invention must relate to a machine, article or substance produced by manufacture, or the process of manufacture of an article. A patent may also be obtained for an improvement of an article or of a process of manufacture. With regard to medicine or drug and certain classes of chemicals no patent is granted for the product itself even if new, only the process of manufacturing the substance is patentable. However, product patents would be available for drugs and food materials from 2005 as India’s obligations under the TRIPs Agreement would kick in from that point of time. If any substance falls outside the scope of patentable subject matter, it cannot be patentable.

NOT PATENTABLE INVENTIONS

There are some products and processes, which are not patentable in India They are classified into two categories in the patent act

a) Those which are not inventions (S.3) b) Invention relating to atomic Energy (S.4) Various types of non-patentable inventions under Section 3 are as follows- 3(a) An invention which is frivolous or which claims anything obvious contrary to well established natural laws.

Merely making in one piece, articles, previously made in two or more pieces is frivolous. Mere usefulness is not sufficient (Indian vacuum brake co. ltd vs. Laurd (AUR 1962 CAK 152).

Perpetual motion machine alleged to be giving output without any input is not patentable as it is contrary to natural law.

3(b) An invention the primary or intended use or commercial exploitation of which could be contrary to public order or morality or which causes serious prejudice to human, animal or plant life or health or to the environment

3(c) The mere discovery of a scientific principle or the formulation of an abstract theory or discovery of any living thing or non-living substances occurring in nature;

3(d) The mere discovery of a new form of a known substance which does not result 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 process results in a new product or employs at least one new reactant.

Explanation- For the purposes of this clause, salts, esters, ethers, polymorphs, metabolites, pure form, particle size, isomers, mixtures of isomers, complexes,  combinations and other derivatives of known substance shall be considered to be the same substance, unless they differ significantly in properties with regard to efficacy.

[Note: Before amendment of Section 3 (d) by the Patents (Amendments) Ordinance 2004 it reads as “mere discovery of any new property or new use for a known substance or mere use of a known process, machine or apparatus…”The insertion of the word “mere” before ‘new use for a known substance’ in this clause by the Patents (Amendment) Ordinance 2004, is for the purpose of drafting clarity only as without it the sub-section would have remained ambiguous. This does not restrict the nonpatentability and give rise to ambiguity and possible misuse. There is no need of giving wider meaning to it.]

3(e) A substance obtained by a mere admixture resulting only in the aggregation of the properties of the components thereof or a process for producing such substance:

3(f) The mere arrangement or re-arrangement or duplication of known devices each functioning independently of one another in a known way.

3(h) A method of agriculture or horticulture. (i) A method of producing a new form of a known plant even if it involved a modification of the conditions under which natural phenomena would pursue their inevitable course is not patentable. (N.V. Philips Gloeiammpenfabrieken's Application 71 RFC 192).

3(i) Any process for the medicinal, surgical, curative, prophylactic diagnostic therapeutic or other treatment of human being or any process for a similar treatment of animals to render them free of disease or to increase their economic value or that of their products.

Plants and animals in whole or any part thereof other than microorganisms but including seeds, varieties and species and essentially biological processes for production or propagation of plants and animals; Example: Clones and new variety of plants are not patentable. But process / method of preparing Genetically Modified Organisms are patentable subject matter.

3(m) A mere scheme or rule or method of performing mental act or method of playing game;

3(n) A presentation of information

3(o) Topography of integrated circuits;

INVENTIONS RELATING TO ATOMIC ENERGY (S.4)

“No Patent shall be granted in respect of an invention relating to atomic energy falling within subsection (1) of section 20 of the Atomic Energy Act, 1962

Various types of Patent Applications in India

1. Ordinary application 2. Convention application 3. PCT international application 4. PCT National phase application 5. Application for Patent of addition 6. Divisional Application

Procedural requirements

An application for a patent in the prescribed form along with the prescribed fee has to be filed in the appropriate patent office. Examiners of patents scrutinize the application accompanied by a specification so that it satisfies the requirements. After examination, the Patent Office will raise objections and once the applicant convinces the Controller Of Patents will put the specification in the Official Gazette and on its acceptance without any controversy, a patent shall be granted.

A patent grant gives the patentee the exclusive right to make or use the patented article or use the patented process by preventing all others from making or using the patented article or using the patented process. The patentee can assign, grant licenses or deal for consideration.

The patent application passes through the following stages:

FILING

An application for a patent can be filed by the true and  first inventor. It can also be filed the by the assignee or legal representative of the inventor. If an application is filed by the assignee, proof of assignment has to be submitted along with the application. The applicant can be national of any country.

Form of Application

Every application shall be accompanied by a provisional or complete specification. Provisional applications are generally filed at a stage where some experimentation is required to perfect the invention.

Filing of a provisional specification allows the applicant to get an early application date.

Provisional Specification shall contain:

a. Title, b. Written Description, c. Drawings, if necessary and d. Sample or model if required.

The complete specification shall contain:

a. Title, b. Abstract, c. Written Description, d. Drawings (where necessary), e. Sample or Model (if required by the examiner), f. Enablement and BestMode, g. Claims and h. Deposit (Microorganisms)

Priority Date

Priority date is the date of first filing allotted by the patent office to an application. If a provisional application is followed by a complete application, the priority date shall be date of filing of the provisional application. If an Indian application is filed after a foreign or PCT application, the priority date shall be the date of filing of the foreign or PCT application. If an application is divided into two applications, the priority date shall be date of filing of the parent application.

Priority date is the date of reference used by the patent to determine the newness of the invention. If the claimed invention is part of public knowledge before the priority date, it will not be eligible for a patent. Under US Law, priority date is pushed back to the date of conception for determining novelty and Non-obviousness.

Place of Filing

Patent Application can be filed at any of the four patent offices in India. Patent Offices are located at Kolkata, New Delhi, Chennai and Mumbai.

Documents to be submitted at the time of filing The following documents have to be submitted at the time of filing a patent application:

Form 1 - Application for the grant of patent. Form 2 - Provisional or Complete Specification. Form 3 - Statement and undertaking by the applicant. Form 5 - Declaration as to inventorship. Form 26 - Authorization of patent agent or any other person.

Priority document details have to be filed for a Convention application.

PUBLICATION

A patent application will be published on expiry of eighteen months after the priority date. It can be published earlier, if such a request is made by the applicant. The application will not be published if directions are given for secrecy, until the term of those directions expires. It will also not be published if the application is withdrawn three months before publication date.

On publication, specification including drawings and deposits shall be open for public inspection. The rights of the patentee start from the date of publication but they cannot be enforced until after patent grant.

EXAMINATION

1. Request for Examination

The process of examination starts with a request for examination. The request has to be made within 36 months from the date of priority or filing. However, if secrecy directions have been given for the application, the request can be made six months after the directions are revoked or thirty six months from the date of priority or filing, if that date is later.

2. Examination

On receiving the request, the controller shall direct the patent application to the Examiner for examination. To start with, the examiner makes a formal examination by verifying the propriety and correctness of all documents filed with the application. Later, he verifies the patentability of the application. The patentability analysis includes all patentability requirements.

After confirming that the application falls within the scope of patentable subject matter, the examiner conducts a prior art search to check if there is prior art, which anticipates the invention claimed. Prior art search for anticipation includes search for anticipation by publication, filing of complete specification, etc. He then verifies the existence of inventive step, Industrial application, and Enablement and Best mode.

The examiner will give the examination report within 1 month from the date of reference by controller and that term shall not exceed three months. If the examination report is adverse, the controller sends a notice to the applicant and gives him an opportunity to correct and if necessary an opportunity of hearing. The Controller might ask the applicant to amend the application in order to proceed further. If the applicant does not make such changes, the application might be rejected.

The Controller has the power to divide the application, post date the application, substitute applicants and reject the application. An order of division will be given if the application contains more than one invention and if it is required to file separate applications for each invention. The application might be post dated to a period of six months if requested by the applicant. Substitution of inventors is generally done if the inventor has been wrongfully mentioned or if a joint inventor has not been mentioned in the application.

The controller has the power to reject the application, if the applicant does not comply with his requirements.

OPPOSITION

1. Pre-grant Opposition

Any person can file an opposition for grant of patent after the application has been published. Opposition may be filed on any of the following grounds: a. Non compliance of patentability requirements. b. Nondisclosure or Wrongful disclosure of genetic resources or traditional knowledge.

2. Post-grant Opposition

Any person can file an opposition within a period twelve months after the grant of a patent. It can be filed based on the following grounds: a. Wrongful obtainment of the invention by the inventor. b. Publication of the claimed invention before the priority date. c. Sale or Import of the invention before the priority date. d. Public use or display of the invention. e. The invention doesn’t satisfy the patentability requirements. f. Disclosure of false information to patent office. g. Application for the invention is not filed within twelve months from the date of convention application. h. Nondisclosure or wrongful disclosure of the biological source. i. Invention is anticipated by traditional knowledge.

3. Process of Opposition

On receiving a notice of opposition, the controller notifies the patentee. He then constitutes an Opposition board to deal with the opposition. The Opposition board decides the issues after giving reasonable opportunity of hearing to both the parties. The Opposition board might invalidate the patent, require amendments or maintain the status quo. If amendments are required, they have to be made within the prescribed period in order to maintain the patent.

E. GRANT

If the application satisfies all the requirements of the patent act, the application is said to be in order for grant. An application in order for grant shall be granted expeditiously. A granted patent shall be published in the official gazette and shall be open for public inspection. Every granted patent shall be given the filing date. The patent will be valid throughout India. A granted patent gives the patent holder the exclusive right to make, use, sell, offer for sale and import the product or use the process. However, the government can make use of the patent for its own purposes or for distributing an invention relating to medicine to hospitals and dispensaries. Furthermore, any person can make use of the patent for experiment or education.

Assignments

A patentee may assign the whole or any part of the patent rights to the whole of India or any part thereof. There are three kinds of assignments: legal assignment, equitable assignment and mortgages. An assignment of an existing patent is a legal assignment where the assignee may enter his name as the patent owner. A certain share given to another person is called an equitable assignment and a mortgage is when patent rights are wholly or partly transferred to obtain money.

Licenses

A patentee may, by a license, permit others to make, use, or exercise, the invention which otherwise would not be allowed. The license should be in writing and the terms of which must be given in the application filed with the Controller. A license maybe given in express terms or implied from the circumstances. An exclusive license excludes all other persons including the patentee from the use of invention In a limited license the limitation may arise as to persons, time, place, manufacture, use or sale.

Compulsory Licenses and Government use of inventions

Under certain circumstances like when reasonable requirements are not satisfied, a very high royalty is quoted, when a patent cannot work without another related patent or on notification by the Central government, the Controller can grant a license to an interested person.

The Central or State government can use for a purpose of its own all patented inventions or processes either with or without royalty.

Revocation of a patent

A patent may be revoked by various modes namely revocation in the public interest by the Government or relating to atomic energy by Controller. A patent may also be revoked for non-working. The High Court may revoke a patent on noncompliance with the requirements for use of an invention or on petition by a person interested on various specified grounds.

A patentee may at any time offer to surrender his patent by giving notice to the Controller, whom after hearing the parties may revoke the patent.

Patent enforcement and Infringement of patents

Infringement of a patent is the violation of the exclusive rights of the patentee. Determination of infringement depends on the scope of exclusive rights of the patentee, whether the infringer’s acts amount to making, using, selling or distributing a product or using a method and if in fact the acts amount to an infringement. The burden of proof is on the patent owner for proving infringement.

Defenses

The defendant in a suit for infringement may plead one or more defenses. He can claim the patent owner is not entitled to sue for infringement or deny any infringement. Any leave or license express or implied to use the invention does not amount to infringement and where infringement is invalid on certain grounds. Acts done in connection with government use, experiment, research, education and falling within the scope of innocent infringement or done after failure to pay renewal fee or before the date of amendment of the specification do not amount to infringement. A defendant may also counter claim for revocation of patent.

Remedies

Injunctions act as a preventive relief to the patentees. The patent owner at the start of a trial can request for an interim injunction in order to restrain the infringer from continuing the infringement to prevent further losses. Permanent injunction is given based on the merits of the case at the end of the trial. A patent owner is entitled to the relief of damages as compensation to the patentee and not punishment to the infringer. The patent owner may also opt for the account of profits where he has to prove use of invention and the amount of profit derived from such illegal use.