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FAQ's on Patent
1. What is a Patent?
A Patent is a statutory right for an invention granted for a limited
period of time to the patentee by the Government, in exchange of
full disclosure of his invention for excluding others, from making,
using, selling, importing the patented product or process for producing
that product for those purposes without his consent.
2. Does Indian Patent give protection worldwide?
Patent protection is territorial right and therefore it is effective
only within the territory of India. However, filing an application
in India enables the applicant to file a corresponding application
for same invention in convention countries, within or before expiry
of twelve months from the filing date in India. Therefore, separate
patents should be obtained in each country where the applicant requires
protection of his invention in those countries. There is no patent
valid worldwide.
3. Is it possible to file international application under
Patent Cooperation Treaty (PCT) in India?
It is possible to file an international application known as PCT
application in India in the Patent Offices located at Kolkata, Chennai,
Mumbai and Delhi. All these offices act as Receiving Office (RO)
for International application. The addresses of these offices are
available on the website of CGPDTM i.e. www.ipindia.nic.in.
4. What can be patented?
An invention relating either to a product or process that is new,
involving inventive step and capable of industrial application can
be patented. However, it must not fall into the categories of inventions
that are non- patentable under section 3 and 4 of the Act.
5. Who can apply for a patent?
A patent application can be filed either by true and first inventor
or his assignee, either alone or jointly with any other person.
However, legal representative of any deceased person can also make
an application for patent.
6. How can I apply for a patent?
A patent application can be filed with Indian Patent Office either
with complete specification or with provisional specification along
with fee as prescribed in schedule I. In case the application is
filed with provisional specification, then one has to file complete
specification within 12 months from the date of filing of the application.
There is no extension of time to file complete specification after
expiry of said period.
7. Is there provision for filing patent application electronically
by online system?
From 20th July, 2007 the Indian Patent Office has put in place
an online filing system for patent application. More information
for filing online application is available on the website of Patent
Office i.e. www.ipindia.nic.in. This facility is also available
for filing trademarks application.
8. What are the criteria of patentability?
An invention to become patentable subject matter must meet the
following criteria -
i) It should be novel.
ii) It should have inventive step or it must be non-obvious
iii) It should be capable of Industrial application.
iv) It should not fall within the provisions of section 3 and 4
of the Patents Act 1970.
9. Should application for patent be filed before or after,
publication of the details of the invention?
The application for patent should be filed before the publication
of the invention and till then it should not be disclosed or published.
Disclosure of invention by publication before filing of the patent
application may be detrimental to novelty of the invention as it
may no longer be considered novel due to such publication. However,
under certain conditions, there is grace period of 12 months for
filing application even after publication.
10. Can any invention be patented after publication or display
in the public exhibition?
Generally, a patent application for the invention which has been
either published or publicly displayed cannot be filed. However
the Patents Act provides a grace period of 12 months for filing
of patent application from the date of its publication in a journal
or its public display in a exhibition organised by the Government
or disclosure before any learned society or published by applicant.
The details conditions are provided under Chapter VI of the Act
(Section 29-34).
11. How a Patent Specification is prepared?
A patent specification can be prepared by the applicant himself
or his registered and authorized agent. The patent specification
generally comprises of the title of the invention indicating its
technical field, prior art, draw backs in the prior art, the solution
provided by the inventor to obviate the drawbacks of the prior art,
a concise but sufficient description of the invention and its usefulness,
drawings (if Any) and 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 for.
12. What is a provisional 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 deemed to have been abandoned
13. Is it necessary to file a provisional application?
Generally, an application filed with provisional specification
is known as provisional application which is useful in establishing
a priority date for your invention. Moreover, filing of a provisional
application is useful as it gives sufficient time to the applicant
to assess and evaluate the market potential of his invention before
filing complete specification. However, it is not necessary to file
an application with provisional specification and one can file application
directly with complete specification.
14. Does the Patent Office Keep information of the invention
Secret?
Yes. All the patent applications are kept secret upto 18 months
from the date of filing or priority date whichever is earlier and
thereafter they are published in the Official Journal of the Patent
Office which is published every week and also available on the IPO
website. After its publication, public can inspect the documents
and also may take the photocopy thereof on payment of the fee as
prescribed.
15. When an application for patent is published?
Every application for patent is published after 18 months from
the date of its filing or priority date whichever is earlier. However,
following applications are not published.
A) Application in which secrecy direction is imposed
B) Application which has been abandoned u/s 9(1) and
C) Application which has been withdrawn 3 months prior to 18 months
16. Is there any provision in the law for early publication?
Yes, the applicant can make a request for early publication in
Form 9 along with the prescribed fee. After receiving such request
the Patent Office publishes such application within a period of
one month provided the invention contained thereon does not relate
to atomic energy or defence purpose.
17. Is patent application once filed is examined automatically?
The patent application is not examined automatically after its
filing. The examination is done only after receipt of the request
of examination either from the applicant or from third party.
18. When the request for examination can be filed?
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. For more details kindly refer to rule 24B
of the Patents Rules 2003 as amended upto 2006.
19. Is there any provision for early examination?
There is no provision for filing a request for early examination.
The applications are examined in the order in which requests for
examination are filed. However, an express 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.
20. What happens to a patent application once it is examined?
After examination, the Patent office issues an examination report
to the applicant which is generally known as First Examination Report
(FER). Thereafter the applicant is required to comply with the requirements
within a period of twelve months from the date of FER. In case,
the application is found to be in order for grant, the patent is
granted, provided there is no pre-grant opposition is filed or pending.
A letter patent is issued to the applicant. However, in case a pre-grant
opposition is pending, the further action is taken after disposition
of the pre-grant opposition.
21. What happens when applicant is not able to meet the
requirement within the prescribed time?
If the applicant is not able to comply with or meet the requirement
within 12 months, or does not submit the documents which were sent
to him for compliance within the said period, the application is
deemed to have been abandoned.
22. Is there provision for extension beyond time limit of
12 months?
There is no provision for extension of time beyond the period of
12 months.
23. Does applicant get an opportunity of being heard before
his application is refused?
If applicant has not complied with the requirements within the
prescribed time, and no request for hearing has been made by the
applicant, the controller may not provide the opportunity of being
heard. However the Controller shall provide an opportunity of being
heard to the applicant before refusing his application if a request
for such hearing has been made by the applicant at least 10 days
in advance before expiry of the statutory period.
24. What are the various stages involved in the grant of
patent?
After filing the application for the grant of patent, a request
for examination is required to be made by the applicant or by third
party and thereafter it is taken up for examination by the Patent
office. Usually, the First Examination Report is issued and the
applicant is given an opportunity to correct the deficiencies in
order to meet the objections raised in the said report. The applicant
must comply with the requirements within the prescribed time otherwise
his application would be treated as deemed to have been abandoned.
When all the requirements are met, the patent is granted and notified
in the Patent office Journal. However before the grant of patent
and after the publication of application, any person can make a
representation for pre-grant opposition.
25. What is time limit for filing the representation for
pre-grant opposition?
A representation for pre-grant opposition can be filed within six
months from the date of publication of the application u/s 11A or
before the grant of patent. The grounds on which the representation
can be filed are provided u/s 25(1) of the Patents Act 1970.
26. Is there any fee for filing such representation for
pre-grant opposition?
There is no fee for filing representation for pre-grant opposition?
This can be filed by any person.
27. What are the grounds for filing representation for pre-grant
opposition?
The grounds for filing post-grant opposition are contained in section
25(1) of the Patents Act 1970.
28. Is it possible to file pre-grant opposition even though
there is no request for examination filed?
Yes, it is possible to file representation for pre-grant opposition
even though there is no request for examination has been filed.
However, the representation will be considered only when a request
for examination is received within the prescribed period.
29. What is the time limit for filing post-grant opposition
in the patent office?
The time for filing post-grant opposition is 12 months from the
date of publication of the grant of patent in the official journal
of the patent office.
30. Is there any fee for filing post-grant opposition?
The post grant opposition has to be filed in the prescribed form
7 along with prescribed fees of Rs.1500 for natural person and Rs.6000
for person other than natural person. The post grant opposition
has to be filed by the person interested and not by any other person.
31. What are the grounds for filing the post grant opposition?
The grounds for filing post-grant opposition are contained in section
25(2) of the Patents Act 1970.
32. Is it necessary to go to the Indian Patent Office
to transact any business relating to patent application?
No, normally all the communications with the office are done through
written correspondence. However, interviews relating to patent application
can be had with examiners with prior appointment on any working
day during prosecution stage.
33. Where the information relating to patent application
is notified?
The information relating to the patent application is published
in the Patent office Journal issued on every Friday. This is also
available in electronic form on the website of the Patent Office
34. What are the contents of the Patent office Journal?
The Patent office Journal contains information relating to patent
applications which are published u/s 11A, post grant publication,
restoration of patent, notifications , indexes, list of non-working
patents and notices Issued by the Patent Office relating to Patents,
etc.
36. Where could one find a copy of the Patent office Journal
without purchasing the publication?
The Patent office Journal is freely available on patent office
site i.e. www.ipindia.nic.in.This is also available in the technical
libraries maintained by the Patent Offices. The library facilities
are available to the public free of charge from Monday to Friday
on working days except holidays.
37. Can one use the words "Patent Pending" or
"Patent Applied For"?
These words are normally used by the patent applicant to their
products after filing his application for patent so that the public
is made aware that a patent application has been filed in respect
of that invention. Use of these words where no application has been
made is prohibited under the Patent law. However, use of such words
by the patent applicant does not prohibit the third party to plead
as innocent unless the patent number is indicated.
38. How useful is the marking of a product with "patent
pending" or "patent applied for" before the grant?
Marking of a product with the words “patent pending”
or “Patent applied for” after filing of the application
for patent serve as a notice to the public that an application for
patent is pending with the Patent Office but there is no legal significance
of these words. The infringement action can be initiated only after
the patent is granted.
39. Does patent office help in finding users for patent?
The Patent Office has no role in the commercialization of patent.
However, the information relating to patent is published in the
Patent Office journal and also published on the Patent Office website
which is accessible to the public worldwide. This certainly helps
the applicant to attract potential user or licensee. The patent
office also compiles a list of patents which are not commercially
worked in India.
40. How can one find out that an invention is already patented?
The person concerned can perform a preliminary search on Patent
Office website in the Indian patent data base of granted patent
or Patent Office journal published every week or by making search
in the documents kept in the Patent Office Search and Reference
Room, which contains Indian patents arranged according to international
patent classification system as well in serial number. It is open
to the general public from Monday to Friday, except Gazetted holidays.
The public can also conduct search free of charge on the website
of Patent Office. The person concerned can also make a request for
such information under section 153 of the Act
41. What is the term of patent?
Term of every patent in India is 20 years from the date of filing
of patent application, irrespective of whether it is filed with
provisional or complete specification. However, in case of applications
filed under PCT the term of 20 years begins from International filing
date.
42. Is there any difference in the amount of fees to be
paid by an individual or a legal entity for filing a patent application?
Yes, the application filing fees for an individual person(natural
person) is Rs.1, 000/- and for a legal entity other than individual
is Rs.4, 000/- up to 10 claims and 30 pages. However, in case, the
number of pages exceed beyond 30, then natural person has to pay
Rs.100/- each extra page and person other than natural person has
to pay Rs.400/- per page. Similarly if the number of claims exceed
beyond 10, then natural person has to pay Rs.200/- for each additional
claim and person other than natural person has to pay Rs.800/- for
each additional claim.
43. What are obligations of the patentee after the grant
of patent?
After the grant of patent, every patentee has to maintain the patent
by paying renewal fee every year as prescribed in the schedule I.
For first two years, there is no renewal fee. The renewal fee is
payable from 3rd year onwards. In case the renewal fee is not paid
the patent will be ceased.
44. Can the patentee pay renewal fee at a time or has
to pay every year?
The patentee has choice to pay the renewal fees every year or he
can pay in lump sum as well.
45. When a patent can be restored after its cessation ?
A request for restoration of patent can be filed within 18 months
from the date of cessation of patent along with the prescribed fee.
After receipt of the request the matter is notified in the official
journal for further processing of the request.
47. Is it necessary to engage a registered patent agent
for filing an application for patent?
No, it is not necessary under the patent law to engage a registered
patent agent for filing an application for patent. The applicant
is free to file an application by himself or through the patent
agent. However, an applicant who is not a resident of India is required
to file either through the registered patent agent or must give
an address for service in India
51. Is it mandatory to obtain prior permission from the
Patent Office to file application for patent outside India or abroad!
Generally speaking, it is not necessary to obtain prior permission
from the Patent Office to file patent application abroad under following
circumstances.
(a) Applicant is not Indian resident and invention is originated
abroad about.
(b) If the applicant is Indian resident, a patent application has
been filed in India and six weeks period is over from that date.
(c) The invention does not belong to Atomic Energy or defence purpose.
In other circumstances, the prior permission is required. For further
details kindly refer to section 39 of the Patents Act, 1970.
52. Under what circumstances, it is necessary to obtain
a prior permission from the Patent Office?
The person is required to take prior permission from the Patent
Office under following circumstances.
(a) The applicant is Indian resident and invention is originated
in India,
(b) Applicant does not wish to file patent application in India
prior to filing abroad.
(c) If the applicant is Indian resident, a patent application has
been filed in India and six weeks period is not yet over from that
date
(d) The invention relates to atomic energy or defence purpose.
53. Is it essential to deposit biological material in the
international depository authority!
If the invention uses a biological material which is new, it is
essential to deposit the same in the International Depository Authority
(IDA) prior to the filing of the application in India in order to
supplement the description. The description in the specification
should contain the name and address of the International Depository
Authority and, date and number of deposition of Biological material.
If such biological material is already known, in such case it is
not essential to deposit the same. For more details log on to www.ipindia.nic.in
54. Is there any International Depository Authority in India!
Yes, there is an International Depository Authority in India located
at Chandigarh which is known as Institute of Microbial Technology
(IMTECH). The more details about this depository authority can be
had on its website http://imtech.res.in/
55. Does Indian Patent give protection worldwide?
Patent protection is territorial right and therefore it is effective
only within the territory of India. However, filing an application
in India enables the applicant to file a corresponding application
for same invention in convention countries, within or before expiry
of twelve months from the filing date in India. Therefore, separate
patents should be obtained in each country where the applicant requires
protection of his invention in those countries. There is no patent
valid worldwide.
56. Is there any provision in the law for early publication?
Yes, the applicant can make a request for early publication in
Form 9 along with the prescribed fee. After receiving such request
the Patent Office publishes such application within a period of
one month provided the invention contained thereon does not relate
to atomic energy or defense purpose.
57. Can any invention be patented after publication or
display in the public exhibition?
Generally, a patent application for the invention which has been
either published or publicly displayed cannot be filed. However
the Patents Act provides a grace period of 12 months for filing
of patent application from the date of its publication in a journal
or its public display in a exhibition organized by the Government
or disclosure before any learned society or published by applicant.
The details conditions are provided under Chapter VI of the Act
(Section 29-34).
58. Should application for patent be filed before or after,
publication of the details of the invention?
The application for patent should be filed before the publication
of the invention and till then it should not be disclosed or published.
Disclosure of invention by publication before filing of the patent
application may be detrimental to novelty of the invention as it
may no longer be considered novel due to such publication. However,
under certain conditions, there is grace period of 12 months for
filing application even after publication.
59. Why should one patent his invention?
A1: To enjoy exclusive rights over the invention. If the inventor
does not obtain patent rights for his invention and introduces his
product/process based on his invention in the market, any body can
copy his invention and exploit it commercially. To debar others
from using, selling, offering for sale or manufacturing the inventor
must obtain a patent. The inventor can use it himself/herself, sell
or licence it to profit commercially.
Patents are useful in preventing your competitors from exploiting
your invention.
- You can force your competitors to design around your invention
(if that is possible) which can cost them time and money.
- It may put you in a stronger position with other companies
who have Patents in which you are interested.
- Customers are often impressed by 'Patented Technology' so patenting
can have a positive role to play in your marketing strategy.
- Patents are often a good 'keep off the grass' warning to other
businesses. Many competitors are now more aware of Patents and
the consequences of being found to be infringing a Patent.
60. How can one find out that an invention is already patented?
The person concerned can perform a preliminary search on Patent
Office website in the Indian patent data base of granted patent
or Patent Office journal published every week or by making search
in the documents kept in the Patent Office Search and Reference
Room, which contains Indian patents arranged according to international
patent classification system as well in serial number. It is open
to the general public from Monday to Friday, except Gazetted holidays.
The public can also conduct search free of charge on the website
of Patent Office. The person concerned can also make a request for
such information under section 153 of the Act.
61. Patentable Inventions:
Invention means a new product or process involving inventive step
and capable of industrial application. Not all inventions are patentable.
For an invention to be patentable, it must be new, useful and non-obvious.
Invention means a new product or process involving inventive step
and capable of industrial application. Inventive step is defined
as a feature of an invention that involves technical advance as
compared to the existing knowledge or having economic significance
or both and that makes the invention not obvious to the person skilled
in the art. The national laws of a number of countries prescribe
limitations on the patentability of inventions. As for example,
the Indian law declares that Inventions which are frivolous or which
claim anything obviously contrary to well established natural laws
as not patentable. Inventions, the commercial exploitation of which
could be contrary to public order or morality or which cause serious
prejudice to human, animal or plant life or health or to the environment
are also declared as non-patentable. Similarly there are several
other specific categories of inventions, which are declared as non-patentable
in India.
62. Not Patentable Inventions:
The following are not invention within the meaning of this Act,-
a. an invention which is frivolous or which claims anything obviously
contrary to well established natural laws;
b. an invention the primary or intended use or commercial exploitation
of which could be contrary public order or morality or which causes
serious prejudice to human, animal or plant life or health or to
the environment;
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;
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, isomer, mixtures
of isomers, complexes, combinations and other derivatives of known
substance shall be considered to be the same substance, unless thy
differ significantly in properties with regard to efficacy.
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;
f. the mere arrangement or re-arrangement or duplication of known
devices each functioning independently of one another in a known
way;
g. a method of agriculture or horticulture;
h. any process for the medicinal, surgical, curative, prophylactic
diagnostic, therapeutic or other treatment of human beings 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.
i. 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;
j. a mathematical or business method or a computer program per se
or algorithms;
k. a literary, dramatic, musical or artistic work or any other aesthetic
creation whatsoever including cinematographic works and television
production;
l. a mere scheme or rule or method of performing mental act or method
of playing game;
m. a presentation of information;
n. topography of integrated circuits;
o. an invention which in effect, is traditional knowledge or which
is an aggregation or duplication of known properties of traditionally
known component or components.
63. What technology is protectable under a patent?
The invention must be new, useful, and non-obvious. Typically inventions
are aesthetic designs, functional items, functional methods, or
asexually reproduced plants.
64. Can I keep some information about my invention a secret?
There is a requirement that the invention be completely disclosed.
Failure to disclose will invalidate the resulting patent. One cannot
maintain information important to the patent as trade secret if
the information was known as of the filing date.
65. What rights does a patent provide?
The right to prohibit (see previous question) does not automatically
include the right for the inventor to make, use, sell, import and/or
offer the invention for sale. Anyone is free, however, to engage
in such activities unless there is a law prohibiting it.
66. Up to what extent the inventor has to disclose his/her
invention to get a patent?
An inventor has to disclose his/her invention in such a manner
that any person, other than the inventor, skilled in the art should
be able to work the invention.
67. How to prepare Patent Specification?
A patent specification can be prepared by the applicant himself
or his registered and authorized agent. The patent specification
generally comprises of the title of the invention indicating its
technical field, prior art, draw backs in the prior art, the solution
provided by the inventor to obviate the drawbacks of the prior art,
a concise but sufficient description of the invention and its usefulness,
drawings (if Any) and 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 for.
68. What is a provisional 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 deemed to have been abandoned.
69. Is it necessary to file a provisional application?
Generally, an application filed with provisional specification
is known as provisional application which is useful in establishing
a priority date for your invention. Moreover, filing of a provisional
application is useful as it gives sufficient time to the applicant
to assess and evaluate the market potential of his invention before
filing complete specification. However, it is not necessary to file
an application with provisional specification and one can file application
directly with complete specification.
70. What is "Patent Pending" and "Patent
Applied for"?
The terms "Patent Pending" and "Patent Applied For"
are used to inform the public that an application for a patent has
been filed. Patent protection does not start until the actual grant
of a patent. Marking of an article as patented, when it is not,
is illegal and subject to penalty.
71. How useful is the marking of a product with "patent
pending" or "patent applied for" before the grant?
Marking of a product with the words “patent pending”
or “Patent applied for” after filing of the application
for patent serve as a notice to the public that an application for
patent is pending with the Patent Office but there is no legal significance
of these words. The infringement action can be initiated only after
the patent is granted.
72. Is it possible to file International Patent Application
under Patent Cooperation Treaty (PCT) in India?
Yes, It is possible to file an international application known
as PCT application in India in the Patent Offices located at Kolkata,
Chennai, Mumbai and Delhi. All these offices act as Receiving Office
(RO) for International application.
73. What is the Patent Cooperation Treaty (PCT)?
The PCT is an international treaty, administered by the World Intellectual
Property Organization (WIPO), between more than 125 Paris Convention
countries. The PCT makes it possible to seek patent protection for
an invention simultaneously in each of a large number of countries
by filing a single “international” patent application
instead of filing several separate national or regional patent applications.
The granting of patents remains under the control of the national
or regional patent Offices in what is called the “national
phase”.
Briefly, an outline of the PCT procedure includes the following
steps:
Filing: You file an international application, complying with the
PCT formality requirements, in one language, and you pay one set
of fees.
International Search:
an “International Searching Authority (ISA)” (one of
the world’s major patent Offices) identifies the published
documents which may have an influence on whether your invention
is patentable and establishes an opinion on your invention’s
potential patentability.
International Publication:
as soon as possible after the expiration of 18 months from the earliest
filing date, the content of your international application is disclosed
to the world.
International Preliminary Examination:
an “International Preliminary Examining Authority (IPEA)”
(one of the world’s major patent Offices), at your request,
carries out an additional patentability analysis, usually on an
amended version of your application.
National Phase:
After the end of the PCT procedure, you start to pursue the grant
of your patents directly before the national (or regional) patent
Offices of the countries in which you want to obtain them.
74. What can be patent in India? Which are Patentable
Inventions?
An invention relating either to a product or process that is new,
involving inventive step and capable of industrial application can
be patented. However, it must not fall into the categories of inventions
that are non- patentable under section 3 and 4 of the Act.
Definition of invention:
According to Indian Patent Law:
Section 2(1) (j): ‘Invention’ means a new product or
process involving an inventive step and capable of industrial application.
Section 2(1)(ja) : ‘Inventive step’ means a feature
of an invention that involves technical advance as compared to the
existing knowledge or having economic significance or both and that
makes the invention not obvious to a person skilled in the art.
Section 2(1)(jl): ‘New invention’ means 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.
The word ‘invention’ is an abstract concept defining
a situation which cannot be explained in terms of known things.
It derives its meaning from the context or circumstances in which
it is used.
Patentable Inventions:
According to Indian Patent Law:
Definition of invention: Section 2(1) (j): ‘Invention’
means a new product or process involving an inventive step and capable
of industrial application.
Section 2(1)(ja) : ‘Inventive step’ means a feature
of an invention that involves technical advance as compared to the
existing knowledge or having economic significance or both and that
makes the invention not obvious to a person skilled in the art.
Section 2(1)(jl): ‘New invention’ means 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.
The word ‘invention’ is an abstract concept defining
a situation which cannot be explained in terms of known things.
It derives its meaning from the context or circumstances in which
it is used.
75. When should an application for a patent be filed?
Filing of an application for a patent should be completed at the
earliest possible date and should not be delayed until the invention
is fully developed for commercial working. A provisional application
can be filed with a brief synopsis disclosing the essence or the
nature of the invention.
76. What is the term for patent?
In India, generally the term for patent is twenty years.
77. Can patent rights be transferred?
The proprietor of a patent or its registered grantee can assign,
license or mortgage the patent for any consideration. This power
is wide enough to include transfer of patent rights in whole or
in part, or a licensing of patent whether exclusively to one person
or several persons. The creation of any interest in a patent, including
assignment, license or mortgage is not valid unless it satisfies
the following requirements: 1. The assignment, mortgage or license
is reduced to writing in a document and embodies all the terms and
conditions between the parties. 2. The application for the registration
of the document is filed within six months of its execution.
78. What is considered as the date of patent?
The date of patent is the priority date, which is the date on which
first application (provisional / Complete / PCT) filed disclosing
the invention. However, the date of publication is also important
because it is from this date that the legal protection of an invention
disclosed in the patent takes effect. The term of the patent is
counted from this date of application.
79. What is the nature of information needed while consulting
a patent attorney?
- An explanation of the history of the invention, where you got
the idea from, how you developed it, any early failures and possibly
prototypes, with all your laboratory note books, etc., if possible.
This will help the patent agent to explain the inventive step
which is necessary for obtaining the patent. It also increases
his or her understanding of the invention so as to maximize the
skill with which he or she can draft claims and specifications
for it.
- What you think is the most inventive element or most useful
aspect, together with what other similar prior inventions you
know of or have developed the idea from or improved upon. If you
have developed an improved version of your competitor's products,
admit it; be totally honest. It is vital to be such so that the
patent agent can describe your invention properly while drafting
the application and avoid excessive claims which might be struck
down.
- Drawings if any, which may illustrate the invention, should
be attached.
80. What are advantages of Patent to Inventor and/or Applicant?
To the inventor a patent system confers certain definite advantages.
The incentive for technological innovations is monetary reward.
It is not compulsory for an invention to be patented. An inventor
may use his invention secretly for as long as he can keep it secret.
But the chances of keeping the formula secret are meager especially
when he has to engage workmen to carry out the invention. In the
case of machines or apparatus it is well-night impossible to keep
the invention secret since knowledge of the invention may be obtained
by dismantling the machine. If other people start manufacturing
the article by independent discovery or by pilferage of the secret,
the original inventor has no effective legal remedy. There is also
the danger of a competitor taking out a patent for the article and
suing the secret user for infringement. On the other hand, if a
patent is obtained for the invention the patentee gets the exclusive
right to use the invention for a definite period, which right can
be lawfully enforced against infringers. If he has not the financial
resources to work the patent, he can get monetary reward by granting
licences to others or by assigning the patent.
81. Is patent application once filed is examined automatically?
The patent application is not examined automatically after its
filing. The examination is done only after receipt of the request
of examination either from the applicant or from third party.
82. Is there provision for extension beyond time limit
of 12 months?
There is no provision for extension of time beyond the period of
12 months.
83. Does applicant get an opportunity of being heard before
his application is refused?
If applicant has not complied with the requirements within the
prescribed time, and no request for hearing has been made by the
applicant, the controller may not provide the opportunity of being
heard. However the Controller shall provide an opportunity of being
heard to the applicant before refusing his application if a request
for such hearing has been made by the applicant at least 10 days
in advance before expiry of the statutory period.
84. What are the various stages involved in the grant of
patent?
After filing the application for the grant of patent, a request
for examination is required to be made by the applicant or by third
party and thereafter it is taken up for examination by the Patent
office. Usually, the First Examination Report is issued and the
applicant is given an opportunity to correct the deficiencies in
order to meet the objections raised in the said report. The applicant
must comply with the requirements within the prescribed time otherwise
his application would be treated as deemed to have been abandoned.
When all the requirements are met, the patent is granted and notified
in the Patent office Journal. However before the grant of patent
and after the publication of application, any person can make a
representation for pre-grant opposition.
What is time limit for filing the representation for pre-grant opposition?
A representation for pre-grant opposition can be filed within six
months from the date of publication of the application u/s 11A or
before the grant of patent. The grounds on which the representation
can be filed are provided u/s 25(1) of the Patents Act 1970.
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