Patents – An Overview

Introduction

Patents are exclusive rights given for an invention that is unique or new or resolves any technical issues. To get the patent one must disclose the invention in the public. Patent is to be applied within a short or a limited time frame. Patents with help of Patents Act, 1970 protect the original invention of the owner for about 20 years, later which it will be available to the public domain.

Patent gives a statutory and exclusive rights to the owner. The exclusive rights protect from making, using selling, importing, exporting, or processing, publishing, exhibiting, the patented product without the consent of the owner.

The Patent system in India is governed by the Patents Act 1970 and is regularly amended in consonance with the changing environment and circumstances. Patent being a territorial right to the owner, the rights are conferred only to the territory of India and not worldwide. Patents are to be filed by the respective owner in their own country. Nevertheless, the application filed in India enabled the applicant to apply for the same invention in other countries within 12 months after applying in India. The applicant can file in multiple countries only for the same invention and the Patent owner shall be the first inventor in such case.

What can be Patented?

Any invention relating to product or service or process which is new and has a unique way of resolving any technical issues, and /or capable of industrial application can be Patented. Such Patents should not be falling under the category of non-patentable sections of the Indian Patent Act 1970. The patentable product or process are as follows:

1. It should be novel
2. It should be having an inventive step or it must be non-obvious
3. It should be capable of industrial application
4. It should not attract the provision of non-patentable.

These inventive steps and novelty should not be claimed before by any specification and neither reach the public domain before Patenting. The invention should have technical advances, economic applications, and makes the invention not only a personally skilled art but also recognizes the originality and passion of the person.

As referred earlier, the invention should not be following the various non-patentable inventions laid down under the Indian Patents Act 1970 Section 3 and Section 4 as below:

1. Inventions that are frivolous or contrary to the established laws
2. Inventions that are primarily for the use of commercial exploitation
3. Inventions that are a mere discovery of the scientific principle that leads to an abstract theory or discovered any living organism in nature or a new known substance or even formed by the mixture of many aggregate properties or plants and animals part of the micro-organisms such as seeds, varieties or species
4. An arrangement or rearrangement of devices that function duplication or independently
5. A mathematical or business method or computer program or algorithms
6. A literary, drama, theatre, musical, artistic work or performing mental act or playing of the game
7. The topography of integrated circuits

Further, Section 4 states that any inventions that relate to atomic, not patentable, which creates harm to the public domain are considered as non-patentable inventions.

Hence, before filing the Patent application, one needs to keep in mind these Patents or inventions contribute or benefit majorlyindustry, economy,and mankind at large.

Procedure and Where to file?

Let us now look at how and what are the procedures for filing a Patent. Once the party has identified what to be Patented, the next procedure is to file the Patent under Section 6 of the Patents Act. Here, the person who files the patent shall be the ‘True and First Inventor’ of the Patent filed. Also, any assignee of the person claiming ‘True and First Inventor’  who has a right to make an application and even a legal representative of the deceased person who is bound to make the application and obtained the entitlement prior to the death,  can also apply for the same.

Under section 7 of the Patent Act, the Form shall be filled with the PatentOffice with respect to a single invention with applicable fees. Also,International Application for Patent filed under Patent Cooperation Treaty designating India, is deemed to be an application under this act, if a an application corresponding to the invention is also filed before the controller.

One has to specify the invention and its subject matter related to the invention clearly and if the controller feels that a sample model or any other illustrations related to the invention is needed, the same shall be furnished before the controller and this won’t be considered as part of the specialization form.

Patent application can be done through online using the e-filing system. For which, the inventor needs to obtain digital signatures from the certifying body ie, The Controller of Certifying Authorities of India, whowork with the e Patent Office.To obtain class II/III digital signature, the inventor has to register through the website of CGPTDM. The inventoroptions to fill various forms including Provisional application, Ordinary application, Convention application, PCT application, Patent application and Divisional application form etc. These forms are to be filled under the specifications mentioned as per the provisional application filed with Patent Office. Provisional form is the first form to be filled by an applicant.

Once the Patent application is filed, after the expiry of 18 months from the date of filing or the priority date given, it will be published in the Patent Journal issued by the Patent Office of India. In case if the applicant wants an early publication,applicant can request for the same using Form-9 within one month of filing the application.  However, such request can be provided only if the patent does not refer to any products as per the Section 4 of Patent Act.

Steps involved in filing Patent

• STEP1– Patent Application: Drafting and filing a provisional/complete specification for the patent
• STEP 2 – Publication of Patent: The publication of patent will happen in the Patent Journal issued by the Patent Office; it may take more than 18 months depending on the filing of patent
• STEP 3 – Examinationof Patent Application: Examination of the Patent application by the Controller of Indian Patent Office (where one needs to request for examination RFE after the publication of patent within 48 months)
• STEP 4 – Response to FER: Responses to First Examination Report (FER) needs to be submitted within 6 monthswhereby which the FER is made on the grounds of patentable criteria
• STEP 5 – Hearing: After the response submission the controller verify the grounds of all objections and clarify them, for which communication/hearing between the applicant and the controller is most essential
• STEP 5 – Grant of the Patent: application would be placed for the same.

Time Limitations

Section 11 of Patents Act 1970 specifies the time for applying for a Patent. The Patent Office providestwo forms which bear a time frame. The first form to be filled partly at time of application along with the specification. The next part, in another form based on the completed specifications with the filed application. This needs to be filed within 12 months from the date of application and should be ensured that the application is bonafide and is inline with matters disclosed in the previously filed application.

Procedures of Opposition and Revocation of Application

The controller as defined in Section 2 (b) of Patents Act who acts as the General Controller of the Patents Office has complete authority and has the discretion to grant or reject the patent. Section 25 of the Patents Act elaborates more about this. Anyone can approach or represent to the controller requesting to reject or withhold or even not grant the patent on the following grounds that:

1. One has obtained a wrongful invention through filing the patent, irrespective of the claimant. The controller needs to check the complete specification that one has used the right forms and the content of the specification and its need.
2. Whether it was publicly used in India before the date of the claimant and also the specification does not involve any inventive step.

In the case of Convention application(An application for patent filed in the Patent Office, claiming a priority date based on the same or substantially similar application filed in one or more of the convention countries is known as a Convention Application), the application was not made before 12 months from the date of the first application for the protection of an invention, as the applicant from whom he derives the title.

One can also approach the controller after the grant ofpatent but within the expiry period of one year from the date of such grant, under the Clause (2) of Section 25, under various prescribed circumstances.

The controller shall constitute a board for examination and recommendation on receipt of notice of opposition for the grant of patent. Based on the recommendation of board, controller after being heard the applicant and the opponent, controller has the full authority to amend or change or revoke the patent granted or about to grant.

How to obtain license for Patents?

Through Patent licensing,  one can increase the chance of building a healthy competition and fetch good customers in the market allowing the product to reach infinite places that can help in the creation of exclusive revenue for the company or person or organization.

The registration of Patents shall be done at the Patents Office with details such as name and addresses of Patentees of the granted Patents, assignment notification, extensions and matters relating to the validity of the proprietorship of the Patents as per Section 67 of Patent Act, 1970

As per the Section 68 of Patent Act 1970, the license of a Patent is  not valid unless they are in writing and the agreement between the parties is concerned and having all terms and conditions that govern the rights and obligations of the parties are laid down clearly

The Patent licensing is based on the requirements of the Patent owner. The Patent licensing can be done in two ways:

• Exclusive licensing – this includes the transfer of ownership to any third party or organization by the holder with the restriction that one cannot further transfer the same to anyone else so this helps in curbing the infringement risks faced by the owner.
• Non-Exclusive licensing – the normal way of licensing where the Patent owner provides the same right to  a number of of licensees and makes use of the invention for people who have the license for the product.

The parties need to obtain a compulsory license if the Patented product has expired three years after. To continue the license, the parties need to obtaina renewed license from the controller under the grounds if it is a reasonable requirement of public, where product is not available at the affordable price, and the nature of the invention is genuine, further, the applicant is capable enough to take risks in providing capital as per Section 84 of Patent Act 1970.

If the controller wishes he can also revoke the Patents for non-working of the product and can   also remove the applicant’s nature of work under Section 85 of Patent Act 1970.

What does the Patent License agreement contain?

Like any other license agreement, the PatentLicense Agreement has the following terms and conditions:

• Date and place of execution of the license
• The PatentParties and Addresses of each respectively
• Specification of the Type of License (exclusive or non-exclusive)
• Any Royalties /payments /fees

The termination depends on the parties at will or for a particular project deciding the term of the agreement which includes any default of any obligations made by anyone a written notice to be given to the defaulted party by the non-defaulting party, also the timeline to cure the default must be mentioned in the agreement.

• Rights and limitations of the licensed Patented parties
• The dispute resolution methods adopted by the Patented parties
• Miscellaneous and other information

According to Section 82 of Patent Act of 1970, the license is granted to the parties to ensure that they do not enable the monopoly of the market rather it should be useful to the producers and users of the technological knowledge that resolves the issue by creating social and economic welfare.

International applicants for Patent

The Patent application can be filed under the Patent Cooperation Treaty. One can file directly to the treaty through special applications at the same time with the residing country and outside the country of residence. For eg., if one needs to file a Patent in the Paris convention,the application to be filed within 12 months from the filing date of the first Patent application at the residing country and the patent can get the benefit of claiming in the outside country also.Through the Paris Cooperation treaty, one can mainly seek protection for the invention through one single patent registered internationally, and which can be accessed at regionally also.

Procedure to File

STEP1 – File Application:File the International Application in a Receiving Office (RO) at the outside country, even though corresponding application is filed in India the offices the offices are in Delhi, Chennai, Mumbai or Kolkata.  One should keep in contact with the Patent Office of respective countries, where the application is filed.

STEP 2 – Examination: International Searching Authority investigate the genuineness of the Patent application and the original invention also (an applicant may opt for a preliminary examination by IPEA – International Preliminary Examining Authority)

STEP 3 – Paymentof fee: Applicant to submit all applicable fees for international filing within one month of filing the application.

STEP 4 – Publication: After the expiry of 18 months of filing the application for international, the WIPO – World Intellectual Property Organization, publication of patent is done along with a report called, International Search Report.

A Patent Agency

The application of one’s invention is an important and difficult task where one needs to have an expert advice nature of work, the Patent agent can work in both technological and legal ways irrespective ofInternational or regional affairs. The Patent agent should be a registered one with the registrar of the controller, under the Indian Patent Office. Controller maintains a list of Agents as per the Section of 126 and 125 of Indian Patent Act of 1970.

Qualifications for a Patent Agent

The qualifications for a patent agents are:

1. he is a citizen of India.
2. he has completed the age of 21 years.
3. he has obtained a degree in science, engineering or technology from any university established under the law for the time being in force in the territory of India or possesses such other equivalent qualifications as the Central Government may specify in this behalf, and, besides,
4. has passed the qualifying examination prescribed for the purpose; or
5. has, for a total period of not less than ten years, functioned either as an examiner or discharged the functions of the controller under section 73 or both, but ceased to hold any such capacity at the time of making the application forregistration;
6. he has paid such fee as may be prescribed section 126 of IPA 1970

Conclusion

The Patent work is original, novel and inventive and that should be genuine and helpful for the public domain at large and one can obtain a Patent by applying internationally that helps not only many business and people but also binds healthy competition in the market leading to more creative inventions at the timely need for industrial, economic prosperity of nation and worldwide.