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WHAT IS THE PROCESS TO OBTAIN A PATENTS?
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WHAT IS THE PROCESS TO OBTAIN A PATENTS?
AUTHORED BY - MAHENDRA HOUSILA YADAV
CLASS- TYLLB
DIV- B
ROLL NO- 92
ACKNOWLEDGEMENT
I have taken efforts in this project. However, it
would have not been possible without the kind support and help of many
individuals and organization. I would like to extend my sincere thanks to all
of them.
I am highly indebted to Dr. A.K. SINGH, the principal for their guidance and constant
supervision and our professor Ms. SHRUTI
PANDIT, for providing necessary information regarding the project and their
support in completing the project.
I would like to thank and appreciate my family and
friends for their kind co-operation and encouragement in developing the project
which help me in the completion of this project and people who have willingly
helped me out in their abilities.
MAHENDRA
YADAV.
CERTIFICATE
This is to verify that Mr.
MAHENDRA YADAV student of THAKUR
RAMNARAYAN COLLEGE OF LAW studying for LLB
Third year, has successfully completed his project as required for the
Sixth semester of three-year LLB for the Academic session 2023-2024.
Signature of professor
INTRODUCTION
Intellectual property, particularly
patents, represents tangible manifestations of an individual's intellectual knowledge
and innovative drive. For creators, patents serve as a means of livelihood and
protection in the realm of intellectual property rights and innovative
industries. They provide exclusive rights to the inventor, allowing them to
prevent others from using, manufacturing, or distributing their patented
technology or inventions. Registering a patent is crucial for creators to fully
capitalize on their innovations. This article delves into the reasons for
patent registration in India and provides a detailed step-by-step guide for the
process.
·
PATENTS IN INDIAN
PATENT ACT, 1970:
The Indian Patent Act defines a
patent as an exclusive monopoly right granted to the creator of an invention.
To be granted a patent, an invention must meet certain criteria outlined in the
Act. These include novelty, inventive step, and industrial applicability.
Novelty refers to the newness of the invention, while an inventive step entails
a technical advancement over existing technology. Industrial applicability
means the invention must be capable of being made or used in the industry.
Section 2(m) of the patent act 1970, defines a patent as
“a patent which is granted for any invention under the provisions of this Act.”
Now, from the mere reading of the above-given definition, it is clear that the
meaning of patent is not explicatory.
Therefore, in an attempt to define the same, a patent is,
in simple terms, an exclusive monopoly right that is granted to the creator or
sole inventor of the invention. This right is only given to the sole inventor
because he is the one who has invested his hard work, sweat, and capital into
the creation of the said invention, which protects the invention from other
competitors in the market by preventing them from selling, manufacturing,
using, and distributing the patented technology or inventions.
As per the Indian Patent Act of 1970, a patent is only
granted when a certain technology or product fulfils the following criteria,
which are also discussed in depth for clear comprehension.
Þ
New or novel
For the grant of a patent in the Indian jurisdiction, any
invention created has to be mandatorily novel in nature. The Act uses the term
“novel invention” in relation to the definition. Therefore, it is necessary to
first define the term ‘invention’ which is given under Section 2(1)(j) of the Indian Patent Act and elucidates that
anything can be termed an invention when it is created through an inventive
step, i.e., introducing technical advances to the existing technology and
giving out a product or process that is capable of industrial use.
Now, on to the novel aspect of this invention. Section 2(1)(l) of the
Act provides that an invention is said to be new or novel when it is not
anticipated in the document or used in India or the world before the filing of
the patent application with the specified subject matter of the invention in
the Indian patent office. What must be seen to consider the invention as new is
that it did not exist in the state of the art because it enables every
individual in the country to access the prior existing technology or invention.
The same aspect was observed in Bishwanath
Prasad Radhey Shyam v. Hindustan Metal Industries (1978),
that an invention must have a novelty of such a nature that it was not known in
society before the date of the patent for the grant of a patent.
Þ
Inventive step
An invention shall only be patented when it involves an
‘inventive step’. The mentioned term, in plain language, means an advancement
to an invention’s technicality, which is new and different from the existing
technology in the particular field. Another criterion by which an invention is
considered to involve an inventive step is when it is non-obvious to a person
skilled in the field.
Let us understand this through an example. Say a person
named ‘A’ works in the field of electric motor vehicles, and he has invented a
system where every time a person hits the brake, the energy goes directly to
the vehicle’s battery cabinet, thereby enabling the charging of the battery
while in use. The said invention is patentable since it involves an inventive
step of such a nature that is new from the existing technology and is
non-obvious to a person skilled in the related field as no one could ever think
of this system.
Need to register a patent with the
Indian patent office
The following are the essential reasons for having the
invention patented in India:
Þ
Protection and
possession
In this technology-ridden era where all businesses are
driven by high-tech technology, it is essential for the innovators to protect
their knowledge since it is the only tangible asset that is responsible for all
their operations because of their created technology. So, it is essential for
the running of business operations to protect this very technology from other
players in the market. Apart from this, the concept of the original inventor
also comes into play since what a man invents must be his asset because he is
the only one who has invested his sweat, energy, time, and, most importantly,
knowledge and skills in the creation of the said invention. Unfortunately, in today’s
time, every other corporation, whether it’s small or giant, is indulged in the
race to achieve the best that can be achieved by new inventions and ideas.
Therefore, in order to protect and possess what is yours, it is essential to
patent the invention.
Þ
Monetization
opportunity
Once the inventor of a certain invention acquires its
patent, he is open to monetizing it at his will and can thus amass a handsome
amount of wealth. The patent can no doubt be a source of wealth if handled with
due diligence and financial knowledge. The creator can generate wealth through
the marketing of the new product, licensing it to any other corporation that
provides a great monetary value, and even selling the patent for a massive
amount.
Þ
Encourage innovation
In the patent registration procedure, it is provided that
when a patent application is accepted and completes all its necessary
requirements, the said invention is published in the patent journal to inform
the world that this invention is being patented, and for the same reason, any
opposition is invited. Upon the publication of the invention, the created
technology is directly put out into the world with every minute detail along
with its functions, and other innovators come to know of this invention.
Therefore, through this, the inventor also encourages the spirit of innovation
in society. Since ideas can be taken or can emerge in the minds of other
innovators with the knowledge of existing inventions on the market, other
aspiring inventors or creators can surely indulge in the practice of learning
how to make this certain invention more advanced or how to make another
invention complementary to this one that would benefit society on a greater
level.
OFFICE
JURISDICTIONS OF FILING PATENT APPLICATIONS:
A patent application can be filed in Kolkata, Delhi,
Mumbai, and Chennai either online or at the respective jurisdictional patent
offices for the grant of patents.
The above-mentioned office covers the following
jurisdictions:
|
Patent
office
|
State
jurisdiction
|
|
Mumbai
patent office
|
States of
Maharashtra, Gujarat, Madhya Pradesh, Goa, Chhattisgarh and union territories
of Daman & Diu & Dadra & Nagar Haveli
|
|
Chennai
patent office
|
States of
Andhra Pradesh, Karnataka, Kerala, Tamil Nadu, and the Union Territories of
Pondicherry and Lakshadweep.
|
|
New Delhi
patent office
|
States of
Delhi, Haryana, Himachal Pradesh, Jammu & Kashmir, Punjab, Rajasthan,
Uttar Pradesh, Uttaranchal and the Union Territories of Chandigarh
|
|
Kolkata
patent office
|
The rest of
India.
|
Þ
Online patent
registration process in India
The following is the detailed step-by-step procedure to
file a patent in India through the online system:
Step 1:
Account
log in
Anyone who wants to file for a patent for his invention
first has to visit the site, i.e., E-Filing of Patent Applications, and then has to create an account there. Through
e-signing accounts can be created there.
Patent
search (discretionary/optional)
One of the foremost and most important steps is to search
the technology or invention that one has created to see whether whatever he has
created does exist in the state of the art since, for the grant of a patent,
one of the requirements is the novelty of the product, i.e., its newness. A
patent search can benefit the inventor by allowing him to look for inventions
already existing in the public domain; through this, he could find out what
inventions are patented in India or around the world, whereby he can then make
a decision regarding his further operations with the invention and whether to
follow the patent procedure or not. Through this, he escapes from spending
unnecessary fees on the patent application and other relative work. Moreover,
the patent office’s grant patents to those inventions that are new in the state
of the art to such an extent that they did not exist in the world prior to the
patent filing.
Patent
application
Section 7 of the Indian Patent Act of 1970, requires the true
creator of the invention to file the application for only one invention in the
patent office in the prescribed form. In accordance with the same, he is to
draft a patent application in Form 1. Patent
application drafting refers to the drafting of an invention in legal and
technical language, wherein the patent agent mentions all about the invention
with each and every specification. The motive for the drafting of the patent
application is to state how the present invention is to be used by people
skilled in the art, advocate how the invention created is different from
others, and explain how it can be of industrial application. The most crucial
step in patent filing is the drafting of patent applications.
The individual has to fill out Form 1 provided above to
complete the first step of e-filing the patent.
In this step, only Form 2 is also to be
attached, which is called the patent specification form. In this, the applicant
needs to specify the provisional or complete specification of the invention,
stating the description, claims, and abstract for the same. The description of
the invention has already been discussed above, so let’s discuss the terms “claims”
and “abstract act” of the invention.
Claims
Patent claims are the most important part of the patent
specification since they act as a show book for the patent applicant. Through
patent claims, the patentee states the subject matter of the patent, wherein he
or she specifies the elements and boundaries of the said invention. After
stating the subject matter of the same, the patentee then notifies the patent
office of what he sought to protect in the invention through a patent so that
no other individual can sell, manufacture, or distribute it without prior
permission.
Statement
and undertaking
Section 8 of the
Patent Act and Rule 12 of the Patent Rules govern the provisions regarding
the statements and undertakings of a patent, where Section 8(1)(a) elucidates
that the patentee must provide a statement regarding any other application that
he has filed outside India, providing the particulars about the same or
substantially similar invention. It is necessary for the patentee to notify the
patent office about the same within six months of the patent application’s
filing date.
Section 8(1)(b) further makes it mandatory for the patentee
to produce an undertaking to the patent controller to give a timely update
regarding the filing of any application outside India.
Power
of attorney
the patentee is
required to give a power of attorney in case a patent agent is assigned. The
power of attorney plays a crucial role in the grant of the patent since the
patentee acts through this legal document and only gives authority to his agent
to act on his behalf.
Declaration
of inventorship
Section 28 specifies that the person filing the patent
application must be the true inventor or joint inventor of the said invention,
and for the same, he is to file a declaration of inventorship in Form 5, wherein the true inventor makes a declaration that he
is the original inventor or joint inventor of the invention.
Fees
payment
The last step is to pay the payment fees through the
payment gateway.
Step 2
The patent rules talk about the publication of a patent
application in an official journal which provides that after the expiration of
18 months, the patent application will be made available to the public. After
the submission of all the above-stated requisite documents and forms, and after
an expiration of 18 months from the date of filing of the application, the
application is officially published in the journal, where the title, abstract,
application no., and names of the application and inventor are mentioned.
Step 3
Rule 55 provides that after the publication of the patent
application in the journal, the said application is open for any opposition by
any person within 3 months from the date of publication or before the grant of
a patent, along with the statement, evidence, and request for hearing of the
opposition. Further, if there is opposition, the patent controller will forward
the opposition to the applicant. Upon receiving the opposition from the
controller, the applicant will file the statement along with supporting
evidence in reply. And after having all the relevant evidence along with the
statement, there will be a hearing if it is so requested. If not, then the
controller will finally either reject the opposition or accept it and not grant
the patent.
Step 4
Request
for examination
In order to protect the invention, as per Rule 24B, the applicant has to file a request for examination of
the patent within 48 months from the date of filing the application. Section 11B of the
Act states that no application for the grant of a patent will be examined
unless the applicant requests the same. Where the application is not filed
within the above-stated time period, the application is treated as withdrawn by
the applicant. Therefore, it is absolutely mandatory for the applicant to
apply for examination of the patent if he truly wants his invention protected.
First
examination report
After the request for examination of the patent
application, the examiner at the patent office will thereby examine the
invention in order to ascertain whether the created invention fulfils the
essentials for a patent, which are novelty, inventiveness, and industrial
application.
After examining the invention, the office will issue a
first examination report (FER) and send it along with specifications to the
applicant, highlighting the objections and suggestions contained therein. Usually,
an examiner sends the report within one month.
Step 5
After receiving the first examination report (FER), the
applicant gets an opportunity to submit a response to the objections raised to
overcome all of them. And if the controller finds the responses submitted by
the applicant satisfactory in light of the raised objections, the patent will
be granted to the applicant.
OFFLINE PATENT REGISTRATION
PROCESS IN INDIA
For the purpose of offline patent filings, there are
jurisdictional patent offices in the Kolkata, Delhi, Mumbai, and Chennai
regions.
The applicant can protect his invention through patent
protection by filing the patent application in offline mode by visiting the
office and submitting the requisite documents and doing the necessary formalities.
An applicant has to submit the following documents at the counter of the
jurisdictional patent office:
Step 1
Covering
indicating the list of documents
At the outset of the patent application in offline mode,
the applicant first needs to attach a cover indicating the list of documents.
This list of documents is simply an index that primarily showcases the required
documents that are attached to the application.
Application
for grant of patent
The second step is to attach the application for the
grant of a patent to Form 1 in duplicate.
Specification
The application for grant of a patent is followed by the
specification of the invention, either provisional or complete. The
specification refers to the description of the invention that is sought to be
protected through the grant of a patent. It is important to note that the
provisional specification is only optional, while the complete specification is
mandatory.
The specification also comprises a description, claims,
drawings, and an abstract. which have already been discussed above under the
“online patent filing” heading.
Statement
and undertaking
It is mandatory for the applicant to provide a statement
and undertaking for the grant of the patent for his invention.
Power
of attorney
A power of attorney is to be attached with the
application in Form 26 in case a patent agent is assigned.
Declaration
of inventorship
In Form 5 in duplicate, the applicant has to provide a
declaration of inventorship in relation to the invention.
Statutory
fees
At last, the applicant has to pay the required statutory
fee for the processing of his application for further procedures.
Statutory fees are:
|
Particulars
|
Natural
person
|
Small
entity
|
Large
entity
|
|
For patent
filing application
|
Rs. 1,750
|
Rs. 4,400
|
Rs. 8,800
|
|
For each
sheet of specification
|
Rs. 180
|
440
|
880
|
|
For each
claim
|
Rs. 350
|
Rs. 880
|
Rs. 1,760
|
After the above-mentioned first step, the application
would then go through the same steps that were followed in the online patent
filing process, i.e., the publication of the application, opposition to the
application, including post-grant opposition, followed by a request for the
examination, and receiving the first examination report where, after satisfying
the controller through the filed statements, the applicant acquires the patent
for his created invention.
Who can apply for a patent in India?
Section 6 of the Indian Patent Act, 1970, provides that
any person claiming to be the true and first applicant, or being the assignee
of the person claiming to be the true and first inventor in respect of the
right to make such an application, or being the legal representative of any
deceased person who, immediately before his death, was entitled to make such an
application, can apply for a patent in India.
What is the need to file a patent in
India?
The paramount purpose of filing a patent is to protect
the creation or invention from authoritative sale and manufacture in the market
because it is the true creator who has invested his time, money, skill, and
knowledge in its creation.
Through whom can a person file a patent
application?
Although Section 6 of the Act provides that any person
can file a patent application in India, in most cases, the inventor does not
have the required knowledge about the filing process and system. Therefore,
many organisations and companies in the innovative world hire patent agents and
attorneys to assist the inventor in filing a patent efficiently.
What is the term of patent protection in
India?
According to Section 53 of the Act, the term of patent protection in India
is 20 years from the date of filing of the application for the patent.
CASE LAW:
Novartis
AG v. Union of India & Others (Supreme Court of India, 1 April 2013)
The
facts:
Gleevec is based
on the original drug “Imatinib”. In 1992, Novartis filed a patent
application for “imatinib”, which also covered pharmaceutically acceptable salt
forms of “imatinib”. This patent was granted by the US Patent and Trademark
Office (USPTO). Novartis received US Food and Drug Administration (FDA) approval
for one salt form of imatinib, i.e. “imatinib mesylate”, in 2001. As opposed to
the original (“free base”) substance imatinib, the salt form (i.e. mesylate) is
soluble in the human body. In 1997, Novartis filed a US patent application for
a specific variation of imatinib mesylate, i.e. its “beta crystalline form”,
for which the USPTO eventually granted a patent. The beta crystalline form
enables oral administration of imatinib mesylate. In 1998, Novartis also
applied for product patent protection for the beta crystalline form of imatinib
mesylate in India. The Indian Patent Office rejected this application in 2006,
based inter alia on the failure by Novartis to show “significantly enhanced
efficacy” of the beta crystalline form over its original salt, i.e. imatinib
mesylate, as required under Section 3(d) of the Indian Patents Act. This
consideration was confirmed by the Indian Intellectual Property Appellate Board
(IPAB) on 26 June 2009. Novartis appealed to the Supreme Court. In order to
meet the statutory requirement of enhanced efficacy under Section 3(d),
Novartis in 2005 conducted studies to show inter alia a 30% increase in
bioavailability of beta crystalline imatinib mesylate over the original
substance imatinib.
Summary:
On 1
April 2013, the Supreme Court of India confirmed the rejection by the Indian
Patent Office of a patent application filed by Swiss drug maker Novartis on the
anti-cancer medicament “Gleevec”. The Supreme Court (hereinafter “the Court”)
considered that Gleevec did not qualify as a patentable “invention” under
Section 3 (d) of the Indian Patents Act.
CONCLUSION
Patent protection in Indian law aims to safeguard inventions
and innovations, providing creators with exclusive rights and economic
opportunities. Registering patents is essential for creators to assert their
ownership and capitalize on their inventions. It also fosters innovation by
sharing knowledge and inspiring further advancements.
Article Information
WHAT IS THE PROCESS TO OBTAIN A PATENTS?
Authors: MAHENDRA HOUSILA YADAV
- Journal IJLRA
- ISSN 2582-6433
- Published 2024/04/01
- Issue 7
About Journal
International Journal for Legal Research and Analysis
- Abbreviation IJLRA
- ISSN 2582-6433
- Access Open Access
- License CC 4.0
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