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What is a Patent?


A Patent is a statutory right for an invention granted for a period of time to the patentee 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.


Does Indian Patent give protection worldwide?


Patent protection is a 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. 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.


What can be patented?


Mark includes a device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging or combination of colors or any combination thereof.


What cannot be patented?


The following cannot be patented.

1. an invention which is frivolous or which claims anything obvious contrary to well established natural laws;

2. an invention the primary or intended use of which would be contrary to law or morality or injurious to public health;

3. the mere discovery of a scientific principle or the formulation of an abstract theory;

4. the mere discovery of any new property of 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;

5. 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;

6. the mere arrangement or re-arrangement or duplication of known devices each functioning independently of one another in a known way;

7. a method or process of testing applicable during the process of manufacture for rendering the machine, apparatus or other equipment more efficient or for the improvement or restoration of the existing machine, apparatus or other equipment or for the improvement or control of manufacture;

8. a method of agriculture or horticulture;

9. any process for the medicinal, surgical, curative, prophylactic or other treatment of human beings or any process for a similar treatment of animals or plants to render them free of disease or to increase their economic value or that of their products;

10. inventions relating to atomic energy


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.


How can one apply for a patent?


A patent application can be filed with Indian Patent Office either with complete specification or with provisional specification along with prescribed fee. 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.


What are the criteria of patentability?


An invention to become patentable subject matter must meet the following criteria

1. It should be novel.

2. It should have inventive step or it must be non-obvious

3. It should be capable of industrial application.

It should not fall within the non-patentable categories


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 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.


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


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 the 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.


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. In case of applications filed under PCT the term of 20 years begins from international filing date. Q. What are obligations of the patentee after the grant of patent? Ans. After the grant of patent, every patentee has to maintain the patent by paying renewal fee every year as prescribed. 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 cease. The patentee has choice to pay the renewal fees every year or he can pay in lump sum as well. 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.


What is infringement of patent rights and what are the remedies against it?


A patent confers the exclusive right on the patentee to make, use, distribute, supply or sell the invention in India. An infringement would arise when any of these rights is violated. A patentee may assign or license any or all of these rights. The exercise of the rights so transferred in favor of the assignee or the licensee would not amount to infringement of the patent.

Whether the act of a person other than the patentee amounts to infringement or not would depend upon

The extent of the monopoly right conferred by the patent which is indicated in or implied from the specification and claims contained in the application of the patentee. Any action which falls outside the scope of the claims would not amount to infringement.

Whether he has infringed any of the monopoly rights in the patentee to make, distribute or sell the invention in India.

The following would amount to infringement.

Colorable imitation of an invention

Immaterial variation in the invention

Mechanical equivalents

Taking essential features of the invention

The above often overlap when an infringement of a patent occurs. A colorable imitation or immaterial variation amounting to infringement occurs when an infringer makes slight modification in the process or product but, in fact, takes in essence the basic features of the patentee’s invention. Infringement by mechanical equivalents occurs when he uses mere substitutes for those features so as to get the same result as is obtained by the patentee for the same purpose. Whenever the monopoly rights of a patentee are violated, his rights are secured by the Patents Act through judicial process. The patentee has to institute a suit for infringement in the proper court having jurisdiction over the matter. The conduct of such a suit will be governed by the provisions of Code of Civil Procedure and the reliefs which may be granted in such a suit are

Interlocutory/interim injunction.

Damages or account of profits.

Permanent injunction

An infringement action can be initiated only after the patent is granted. When a specification has been accepted and published i.e., during the period when opposition has been called and is being decided, the applicant cannot institute a suit for infringement, but damages sustained due to the infringement committed during the period i.e., between the date of publication of acceptance of complete specification and the date of grant may be claimed in a separate suit. When the term of a patent has expired and infringement occurred during the term of the patent, a suit for infringement can be instituted even after the expiry of the term. The period of limitation for instituting a suit for infringement is three years from the date of infringement. Only the person who has a right in the patent can institute a suit for infringement. The following persons are entitled to sue.

The patentee

The exclusive licensee if the license is registered

A compulsory licensee when the patentee refuses or neglects to institute proceedings

A licensee other than the above two licensees can bring an action for infringement upon terms of the contract between the licensor and licensee.

Assignee only after the application for registration of the assignment in his favor is filed. If a patent is assigned after the commencement action, the assignee is to be made a co-plaintiff.