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Indian Patent law, Office Procedure and Examination Practice in Indian Patent office

WIPO Training program for trainers training on Effective Intellectual Property Asset Management By MSMES. 23 rd OCTOBER 2010. Indian Patent law, Office Procedure and Examination Practice in Indian Patent office. Dr. K.S.Kardam Deputy. Controller of Patents & Designs The Patent Office Delhi.

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Indian Patent law, Office Procedure and Examination Practice in Indian Patent office

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  1. WIPO Training program for trainers training on Effective Intellectual Property Asset Management By MSMES 23rd OCTOBER 2010 Indian Patent law, Office Procedure and Examination Practice in Indian Patent office Dr. K.S.Kardam Deputy. Controller of Patents & Designs The Patent Office Delhi

  2. Outline of the Presentation

  3. INDIAN PATENT LAWHISTORICAL DEVELOPMENT • The Act of 1856 based on UK Act Of 1852 -But withdrawn • The Act of 1859, • The Patterns & Designs Protection Act, of 1872 • The Protection of Invention Act, of 1883 • The Invention & Designs Act of 1888- Further Consolidation • The Patents & Designs Act 1911 • The Patents Act 1970 • This Act has been amended in 1999,2002 and 2005 K.S.Kardam

  4. The Patents (Amendments) Act 1999 • Providing the provisions for receiving the applications for the product patent in the field of Pharmaceuticals and agro-chemicals (mail box) • Provisions for the grant of EMRs for distribution and sale of pharma products on fulfillment of certain conditions • Grant of EMR subject to certain conditions • Deletion of sec.39- relating to permission for filing of patent application abroad K.S.Kardam

  5. The Patents (Amendments) Act 2002 • Uniform 20 years term of patent for all inventions • Scope or non-patentable inventions including traditional knowledge enlarged • Deferred examination system • Disclosure of source and geographical origin of biological material made compulsory • Non-disclosure or wrongful disclosure of source and geographical origin of biological material made ground for opposition and revocation • Provisions concerning Convention countries simplified-GOC, UOC,IGO recognized K.S.Kardam

  6. The Patents (Amendments) Act 2002… • Anticipation by traditional knowledge ,oral or otherwise also made ground for opposition and revocation • Reversal of burden of proof • Bolar provisions • Parallel importation • Establishment of appellate board • Compulsory license provisions strengthened • Simplification of procedures • Harmonization with PCT provisions K.S.Kardam

  7. The Patents (Amendments) Act 2005 • Product patent for inventions in all fields of technology • Definitions of certain terms redefined • New forms of known substances excluded in order to prevent ever-greening of patent • Rationalization of opposition procedure • Introduction of pre-grant opposition by representation and • Post – grant opposition • Compulsory license for export purpose also if need be-to remedy anti-competitive practices • Compulsory license for manufacture and export of pharmaceutical products to any country having insufficient or no manufacturing capacity K.S.Kardam

  8. The Patents (Amendments) Act 2005…… • Extension of grace period to 12 months • Provisions concerning review of secrecy directions-now to be reviewed every six month instead of 12months • Provisions relating to filing application abroad revised • Provisions concerning Penalties strengthened • Importation from any person duly authorised under law K.S.Kardam

  9. Pre-grant Opposition Post-grant Opposition ExaminationProcedure Filing of the application Request For Examination ( RFE) Publication under section 11A Examination Grant of Patent

  10. Filing of the Application Physical filing at the Patent Office Electronic filing (July 20,2007)

  11. Where to file application (Jurisdiction) • If the applicant/first mentioned applicant (in case of joint)-resides/has domicile/has place of business/has origin of invention/has service address (in case of foreign applicant)in the following states: States Jurisdiction • Northern Patent Office Delhi • Southern Patent Office Chennai • Western Patent Office Mumbai • Rest Of India Patent Office Kolkata

  12. How to Apply ? • Application on form –1 • Specification provisional/complete on form –2 • Abstract of invention • Drawings,if any • Statement and undertaking of foreign filing particulars on form -3- if any • Proof of right—if applicable • Declaration of inventor-ship on form- 5

  13. Contd…. • Certified copies of priority documents- if applicable • Power of attorney-if applicable • Application,Specification and other documents should be either in Hindi or English language • If application discloses sequence listing of nucleotides and/or amino acids, it should be filed in electronic form

  14. Filing of the patent application • Application for patent can be filed only on the payment of full Fee • Filing fee is now charged on the basis of number of pages and number of claims made in the patent document • No extra fee is charged upto 30 pages and 10 claims • Different fee for natural person and legal entity

  15. Publication

  16. PUBLICATION • UNEXAMINED APPLICATIONS AFTER 18 MONTHS • EARLY PUBLICATION ON REQUEST • GRANTED PATENTS

  17. Time limit for publication • Ordinary application: After 18 months of filing of the application • Conventional applications : After 18 months from priority • Applications for which secrecy directions are issued: After cessation of the secrecy directions or after 18 months whichever is later • Divisional application: After18 months from priority of parent application/immediately after filing divisional application whichever is later • National phase PCT application: within one month after filing of the application • Patent of addition : 18 months after filing Patent of addition application whichever is later • Early Publication- within one month after receiving the request

  18. Publication of Patent Application • Every application shall be published after expiry of 18 months from the date of filing or date of priority of the application except the following • Application in which secrecy direction is imposed or • Abandoned under section 9(1) or • Has been withdrawn before 3 months prior to expiry of 18 months • However the applicant can make specific request for early publication prior to 18 months on form 9 with prescribed fee of Rs.2500 or Rs.10000 by individual or legal entity respectively

  19. Where published- Official Journal This journal is published every week This has replaced gazette First issued out on 21st January 2005 Available online on Patent office website: www.ipindia.nic.in

  20. Contents of the unexamined published patent application

  21. Contents of Publication under section 43(2)

  22. Examination

  23. Examination • Examination: Not automatic • Request to be made by applicant or third parties • Examination report to applicant only • Fees: Rs 2500/ 10000

  24. Request For Examination • A request for examination can be filed in form 18 within 48 months from the priority date or filing date whichever is earlier • A request for examination in respect of applications filed before 1-1-2005 can be filed within the period of 48 months from the date of filing of the application instead of date of priority ( as provided prior to the Patents (amendment) Act. 2005

  25. Request for examination…….. • In case of application in which secrecy direction is imposed • 48 months from priority date or date of filing or • 6 months from the date of revocation of secrecy direction,whichever expires later • In case of divisional application- • After publication of main application • 48 months from priority date or date of filing of main application or • 6 months from the date of filing of divisional application , whichever is later

  26. Formal Examination • Jurisdiction • Fee • Form of the documents • Specification including claims and abstract • Drawings • Power of attorney • Assignment/Endorsement • Priority date and supporting document • Language of the documents or their translation if language is not Hindi or English • Information about corresponding foreign applications

  27. Technical groups • All the controllers and examiners have been divided into 4 groups • Groups have been constituted according to field of technology namely Chemical, Biotechnology, Electrical and electronics and Mechanical and allied engineering • The applications are referred to examiners as per their field of Specialization • Applications are examined as per serial order of the request for examination

  28. Substantive Examination • Patentable invention( sec-2(1)(j) • Novelty • Inventive step • Industrial application • Is the Invention excluded under any of the provisions of section 3 and 4 • Description • Sufficiency, ambiguity, succinctness • Reference of deposition of biological resources • Disclosure of source of origin • Claims • Unity of invention • dependency

  29. New (Novel) means ? • Invention should not have been • Published in India or elsewhere. • In prior public knowledge or prior public use with in India. • Claimed before in any specification in India and published after the filing of the application K.S.Kardam

  30. Inventive Step means ? • A feature of invention that involves technical advance as compared to existing knowledge or having economic significance or both and that makes invention not obvious to a person skilled in the art K.S.Kardam

  31. Industrial applicable means ? • Invention should be capable of being made or used in an industry to result some tangible technical results K.S.Kardam

  32. Inventions Not Patentable-1 • Frivolous & obviously contrary to natural law • Contrary to law,morality • Injurious to public health • Use or commercial exploitation is contrary to public order or morality • Causing serious prejudice to human,animal or plant life or health or to the environment K.S.Kardam

  33. Inventions Not Patentable-2 • Mere discovery of scientific principle or formulation of abstract theory • Discovery of living or non living substances occurring in nature • Mere discovery of new form of known substance which does not result in the enhancement of the known efficacy of that substance • However, salt, esters, polymorphs, metabolites, pure forms, isomers ,complexes etc, shall be considered to be the same unless they differ significantly in properties with regard to efficacy K.S.Kardam

  34. Inventions Not Patentable-3 • Mere discovery of new property • New use of known substance , process, machine, apparatus. • Mere admixtures resulting in the aggregation of properties • Mere arrangement and rearrangement of known devices. • Method of agriculture or horticulture K.S.Kardam

  35. Inventions Not Patentable-4 • Process for any medicinal, surgical, curative, prophylactic, diagnostic or therapeutic treatment of human being or animal. • Plant & animals or their parts • Seeds, varieties and species and essentially biological process for the production or propagation of plants and animals • A mathematical or business method or a computer programme per se or algorithms • Literary,dramatic,musical or artistic/cinematography works and television productions or any other aesthetic creation. K.S.Kardam

  36. Inventions Not Patentable-5 • Scheme or rule • method of performing mental act or method of playing game • Presentation of information • Topography of integrated circuit • Traditional knowledge or aggregation or duplication of known properties of traditionally known components K.S.Kardam

  37. Inventions Not Patentable-6 • Inventions falling within the scope of Sec. (1) of Sub-sec. 20 of Atomic Energy Act, 1962-For Example : Inventions relating to Compounds of - Uranium, Beryllium, Thorium, Plutonium, Radium, Graphite, Lithium and more as notified by Central Govt. from time to time K.S.Kardam

  38. Novelty Search • Indian Patents Since 1912 • DWPI(DELPHION) • STN • Questel • QPAT And QWEB • MMS and NPL • E- Journals • EPOQUENET(Since April 2009)

  39. Time to comply with the Requirements • 12 months from the date of issue of First Examination Report (FER) • This time limit is not extendable

  40. OPPOSITION Pre-grant opposition by representation Post –grant opposition

  41. Pre-grant Opposition by representation • It can be filed by any person • Within SIX months from the date of publication of the application under sec.11A Or • before the grant of patent • Note: date of patent is the date when the controller grant patent by generating the patent number with date!!!! • Date of patent however in no case is the date of publication of grant of patent

  42. Grounds for Opposition • Wrongful obtaining • Prior publication • Prior claiming • Prior public knowledge or use in India • Obviousness or lack of inventive step • Not an invention or not patentable under the Act

  43. Grounds for Opposition…. • Insufficiency of description • Failure to disclose the information regarding corresponding foreign application or furnishing false information • Failure to file convention application within twelve months from the date of first application made in the convention country

  44. Grounds for Opposition…. • Non-disclosure or wrongful mentioning of the source and geographical origin of biological material used in the invention • Anticipation of invention by knowledge, oral or otherwise available within any local or indigenous community in India or elsewhere • No account will be taken for personal document or secret trial or secret use

  45. Pre-grant opposition REPRESENTATION Request for examination is filed FORWARDED TO THE APPLICANT Copy of reply given to the opponent if requested YES NO 3 Months REPLY AND EVIDENCE OF APPLICANT Application refused Patent granted HEARING

  46. Post-grant Opposition • Any time but before expiry of one year from the date of publication of the grant of patent • By interested person only • By giving a notice of opposition to the Controller • On the prescribed grounds only • The grounds are same as under pre-grant opposition • No provision for extension of time to file notice of opposition

  47. Procedure for Post grant Opposition Grant of patent Notification Notice of opp. Reply statement& Evd.by applicant F.W.S.& Evd. By opp. Reply Evd. by opp. Constitution of Opposition Board Further Evd. If any Hearing Appointment of hearing Recommendations of OPPOSITION BOARD Decision Revoked Patent Cont

  48. Patent Applications filed 35,218 28940 24505 17466 12613 11466 4824

  49. Patents granted 15.262 7539 4320 2469 1318 1911 1379

  50. THE FEE SCHEDULE

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