PATENT & PATENTING IN INDIA
Introduction A patent is an exclusive monopoly right granted by the Government for a new invention to an inventor for his disclosed invention for a limited period of time. This exclusive monopoly right is valid only within the territorial limits of a country of grant. Exclusivity of right implies that no one else can make, use, manufacture or market the invention without the consent of the patent holder. This right is available only for a limited period of time Requirements of Patenting
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Novelty Non obviousness Marketability and Utility
It is important to remember
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A patent has a time limit (20 years) A patent has a geographical limit A patent is restricted to the claims made in the application
Patenting in India ± Old and under the New Act Item Old Act (1970) Human Life / Genes Not patentable Plants and animals Not patentable Microorganisms Not patentable Non biological processes Patentable Non biological products Not patentable Biochemical and biotechnological Patentable process Bio products Not patentable Crop varieties No protection Animal varieties Excluded Method of Agriculture and Horticulture Not patentable New Act (2005) Not patentable Not patentable Patentable Patentable Patentable Patentable Patentable Protection under PVPFR Excluded Products and process qualifying for novelty are patentable
Basmati is an Indian Rice Variety which could not be patented by other country. Marketability and Utility The turmeric case failed to meet the novelty and non-obviousness criteria Neem:Neem (Azadirachtaindica) is a tree from India and other parts of South and Southeast Asia. two non resident Indians at the University of Mississippi Medical Centre. In case of not obtaining the patent the product may be taken over by others to commercialise its benefits Example of Indian Legal cases Turmeric: In 1995. Director. In 1997. The word means ³fragrant earth´. Technology and Ecology produced the evidence of farmers using this knowledge for a long period and also gave the evidence and information of two Indian scientists conducting research on fungicidal property of Neem before the patent had been granted. the European Patents Office granted a Patent (patent number 436257) to the US chemical multinational company WR Grace & Co. Hyderabad proved that 16 claims are similar to traditional Indian Basmati rice. The US Patent Office upheld the objection and cancelled the patent in 1997 Inventions can be patented if they satisfy three criteria: 1. Agricultural and Processed Food Products Export Development Authority (APEDA) filed for revocation of the patents granted to Rice Tec Co.Cohly) were granted a US patent (patent number 54015041) for turmeric to be used for healing wounds. (patent number 5663484) for a variety called Texmati rice (20 claims). CSIR submitted a document proof in the form of research paper published in 1953 in the Journal of the Indian Medical Association. Neem is used as natural medicine. withdrew these 16 claims. the US Patent Office granted a patent to US firm Rice Tec Co. pesticide and fertilizer and so.Advantages of Patents Patent gives the protection to the Patentee. enabling him to enjoy the right and to raise the capital for working his invention on a commercial scale. Novelty 2. Evidences from IARI. European Patent Office revoked the patent in 2005. by the US Patent Office. Basmati: Basmati is top-quality rice from the Punjab provinces of India.Das and HariHarP. New Delhi and Directorate of Rice Research.Vandana Shiva. As per Geographical Indication. Research Foundation for Science. existing public knowledge . The claim had to be backed by written documentation claiming traditional wisdom. (SumanK.
US patent could affect annual basmati exports of India and thus threaten the livelihood of thousands of Punjabi farmers. Non-obviousness 3. The Indian Council for Scientific and Industrial Research (CSIR) filed a re-examination case with the US Patent Office challenging the patent on the grounds of ³prior art´. However
. and the rice is a slender aromatic and long grain variety that originated in this region and is a major export crop. Rice Tec Co. it has attracted a considerable amount of international interest In 1994. Jackson. i. fungicide. The brand name of Indian Basmati will be largely affected.Texmati rice has 16 claims similar to Indian Basmati rice . and USDA for preparation of a fungicide derived from the seeds of the Neem Dr.e.
´ Mr AsitTripathy. For more information: http://www. however.US Patent Office has not revoked the patent. it is. After the term of patent is over. Aug 7. permitting the use of his invention Patent System helps for industrial growth by introducing new technologies The scientific knowledge contained in the patent specification helps as a ³stepping stone´ for further research Patents provide inventive and creative ideas for further R & D in the field. told . Complete specification must be submitted within 12 months of filing the provisional specification.
Procedure for patent application
There are two types of patent documents usually known as patent specification.american. Chairman of the Agricultural & Processed Food Products Export Development Authority (APEDA). Syarikat FaizaSdn. a Delhi-based intellectual property attorney. Although. (Govt to contest µPonni¶ trademark to Malaysian firm. the patented invention is available to the public for free use. Business Line. It is not necessary to file an
. a patent application accompanied with provisional specification does not confer any legal patent rights to the applicants. the Patentee is not able to work the invention commercially. The Union Government has decided to formally contest the grant of registration for µPonni¶ rice as a trademark to a Malaysian company. thus the strength of patent portfolio of the company is the indication of the good economic health of the company. with just 4 claims. to file a cancellation application with the Malaysian Trade Marks Registry for removal of µPonni¶ from the register. The Hindu. They will be doing so shortly. Improved white ponni is a variety released by TNAU in 1986 In this context TamilNadu Agricultural University is preparing to challenge this trademark.htm Ponni:A rice dealer in Malaysia has obtained the µPonni¶ Trademark for a rice variety. he would be able to make a profitable use of his invention by selling his patent or by granting license to others. 2008)
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In case. a very important document to establish the earliest ownership of an invention. ³We have authorised a legal firm to appeal against the registration. Patent acts as tradable industrial asset for the enterprise and. namely
Provisional Specification and (ii) Complete Specification
Provisional Specification A provisional specification is usually filed to establish priority of the invention in case the disclosed invention is only at a conceptual stage and a delay is expected in submitting full and specific description of the invention. or patent is not kept in force.APEDA has engaged K&S Partners.edu/ted/basmati. This period can be extended by 3 months. Bhd. The patent was issued to Rice Tec Co.
Cost of Filing Application in India The Government fee for filing a patent application (complete/provisional) in India is Rs. Drawings etc.for legal entities.5. and the same will be notified in the Official Gazette. 000/. Publication of applications All the applications for patents will not be open to the public for 18 months from the date of filing or date of priority whichever is earlier. 000/. An individual has to pay Rs. essential for understanding the invention. Therefore the claims have to be drafted very carefully.000/. An applicant is now required to make a request for examining the patent application within 48 months of filing of the application.for legal entities. these aspects are thoroughly studied by the Examiner. which are statements. After 18 months. Request for Examination No application for a patent will be required to be examined unless the applicant or any other interested person makes a request in Form 19 within 48 months from the date of filing of the application for patent. and also various other sources.1. using the databases available at the patent office after the subject matter of invention is classified according to Indian & International classification. A sealing fee of Rs. As the novelty. inventive step and industrial application are the criteria for the Grant of Patent.
. Field to which the invention belongs Background of the invention including prior art giving drawbacks of the known inventions & practices. number of application.1. related to the invention on which legal proprietorship is being sought. An application with complete specification can be filed right at the first instance. name and address of the applicant and abstract. Examination and First examination Report
All the applications filed at the appropriate office shall be first subjected to formal screening and then to substantive Technical examination by the examiner [when a request in Form 19 is made].000/.750/. Complete Specification Submission of complete specification is necessary to obtain a patent The contents of a complete specification would include the following
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Title of the invention. every application will be published except the applications in which a secrecy direction is given under section 35.3.for individuals and Rs. Further.as examination fee and Rs. Complete description of the invention along with experimental results.application with provisional specification before the complete specification.4. 500/. The publication includes the particulars of date of application.for individuals and Rs. Claims.for legal entities has to be paid at the time of grant (sealing) of patent. the examiner will conduct a search for novelty.
the European Patent Office (EPO) and the African Regional Intellectual Property Organization (ARIPO). extendable by another month. in the member States of that region.Acceptance & Notification of Complete Specification
The controller of Patent shall accept the complete specification and inform the acceptance of complete specification to the applicant. being a quasi-judicial authority. accepts regional patent applications. Patent rights will accrue to the applicant only when the patent is sealed and the rights are granted to him. the acceptance of complete specification will be notified in the Gazette of India. Opposition to the Grant of Patent Any person interested can oppose the grant of patent within a period of four months. the Controller. The notice of opposition should be followed by full written statement explaining the various ground of opposition. Further. in accordance with the law of that country. The period is extendable by three months. In general. section 2 which is published weekly. The desire to oppose the grant should be put in an appropriate form with appropriate fee. also the reply statement and evidence filed subsequently by the Applicant. Grant of Patent If the application is not opposed or the opposition is decided in favour of the applicant or is not refused otherwise. then the patent is granted and sealed upon request made by the applicant in the prescribed manner along with fees on payment of Sealing Fee within 6 months from the date of advertisement of acceptance of complete specification. an application for a patent must be filed. Renewal Fee is to be paid in the Patent Office annually.
How can a patent be obtained worldwide? At present. in each country in which you seek patent protection for your invention. which have the same effect as applications filed. Part III. no ³world patents´ or ³international patents´ exist. The opposition to the Grant of Patent coming before the controller is a bi-party proceedings wherein. any resident or national of a Contracting State of the Patent Cooperation Treaty (PCT) may file an international application under the PCT. and a patent shall be granted and enforced. on every Saturday. or grants patents. A single international patent application has the same effect as national applications filed in each designated Contracting State of the PCT Patent offices in India
. for example. will decide the case based on the written statement and evidence placed by the opponent and. Further. a regional patent office. In some regions. An opponent shall file a Notice of Opposition giving details of the grounds on which he wishes to oppose the Grant of Patent. In order to keep the patent in force. or patents granted.
The Patent Office. No. India 7368 9050 3372
General CGO -
of Patents Building. Ministry of Commerce & Industry.patentoffice.: : No.in Regional Patent Offices Address:
. performs the statutory duties in connection with the grant of patents for new inventions and registration of industrial designs.:
and 101. Road. Chennai and Delhi to deal with the applications for patents originating within their respective territorial jurisdictions.nic. under the Department of Industrial Policy & Promotion. 400002
Designs M . Mumbai. Patent Offices are located at Kolkata (Head Office). Head Controller Old Mumbai Phone Office Trademarks. 91-22-201 91-22-203 91-22-205
in Note : Application Patents for Design can also be received by any of the Patent Office located at Designs New Delhi. Antop Hill. Road.Controller General of Patents. 033-23671945-46. Near Antop Hill Head Post Office. Kolkata-700091 Phone No.Road.nic.Patents & patent@nic. FAX-033-2367. New Delhi-110075. Phone : 011-28031032. Dwarka.T. Phone: 044-22502081. 32.M. Intellectual Property Office. Salt Deputy Lake City. MumbaiI .S.Patents & patent@nic. Assistant Controller of Patents & Designs Designs Wing of the Patent Office The Patent Office(Designs Wing).in Designs .400 037. Email: Controller of chennai-patent@nic. Guindy. 1987.kolkata-patent@nic. Chennai & Mumbai. Designs & Trade Marks BhoudhikSampadaBhavan. 28031039. 24171457 FAX : 24130387 EMAIL: mumbai. Intellectual Property Office Building. 1946.in Designs. Antop Hill. Assistant Controller of Patents & Designs Patent Office BoudhikSampadaBhawan. FAX: 044-22502066. 23671987 Controller of & FAX-033-23671988.Controller of 1988. FAX:011-28031583. Fax : 022-24123322 Web site : www. Mumbai-400037.in Patents & Designs. 24148165. Email:. Phone : 24137701.Plot No.kolkata-patent@nic.G. 28031432 Email: delhi. S.in Patent Offices Address Contact Persons The Patent Office.Intellectual Property Office Building.CP-2 Sector Assistant V. Controller of 24150381. Salt Lake City. Phone : 23671945. 28031053.M. Deputy Chennai-600032. Assistant Controller of Patents & Designs The Patent Office. SectorDeputy 14. Assistant Controller of Patents & Designs The Patent Office.Intellectual Property Office Building. Road. Email:. Controller of 28031044.in Patents & Designs . 24141026.
List of Forms
.84.ipindia. CP-2 Sector V. S. Phones : 02224123311.Kolkata-700091. Near Antop Hill Post Joint Office.
and also sections 84 and 92 as modified by section 24C. rule 13 Provisional/Complete Specification. Notice of opposition to grant of a patent. Section 11B and Rule 24(1). 13. 25(1). 28(3) or 28(4) and rules 66. 3. 78(5) and 87(2) Notice of opposition to and rules 49(1). 53(3) and rules 12(4). Sections 57(4). 28(4). Declaration as inventorship. 9. 43(3). Statement and undertaking. change in applicant for patent. Section 43 and rule 73(1). 13(6). Sections 28(2). 20(4). 98(1). Sections 20(1). 11. Application for amendment of patent. 24(5). and also Application for revocation of a section 85(1) as modified by section 24C. 68. Application for direction of the controller. 18. 96 Application for compulsory licence. Claim or request regarding any 35 or 36. 20. Request for sealing of a patent.Form No. 101(3) or 124 and also section patent/grant of compulsory licence 87 (2) as modified by section 24C. 51(2) and rules 76. Section 85(1) and rules 47. 19. Section 52(2) and rule 79. Sections 51(1). Request or claim regarding mention 67. patent or exclusive marketing right. 4. 7. 16. 77. Section 25 and rule 55. Section 57 and rule 81(1). 2. Section 44 and rule 75. Section 8 and rule 12. Application for restoration of patents. Sections 5(2). Sections 8(2). 96. 14. 85(1). Section 10. of inventor as such in a patent. 7. 5. 10. 54. Section 60 and rule 84. 81(3)(b). Application for amendment of the application for patent/complete specification. 63(3). Request for examination of application for patent. 91 or 92(1) and rules 47. Section and rule Title 1. Sections 69(1) or 69(2) and rules 90(1) and Application for registration of 90(2) title/interest in a patent or share in it or registration of any document purporting to affect proprietorship of the patent. Request for grant of patent. 20(5) and rules 34(1). 15. Request for extension for time. or revision of terms thereof or to a correction of clerical errors. amendment/restoration/surrender of 87(2).A Section 7(1A). 6. rule 20(1) Application for grant of patent on an application corresponding to an International application under PCT. 56(1). 12. Sections 84(1). 8. Section 10(6) and rule 13(6). Application for registration of a document. 1. 135 and rule 39 Application for grant of a patent. 73(3) or 130. 61(1). 9(1).
. Section 68 and rule 89. 52(3). 17.
1000 4000 . conditions of licence.400 (each sheet of specn. Sections 127. Application for the restoration of the name in the register of Patent Agents. -in addition to 30) .Multiple of 4000 in case of priority. 100 and also Application for revision of terms and section 88(4) as modified by section 24C.
27. Rules 109 and 112. Sections 77(1)(f).
Section 88(4) and rules 51. Section 24A and rule 40. every multiple priority.800 (for each claim in addition to 10) No fee No fee . -in addition to 30) . . Section 146(2) and rule 131(1) Statement regarding the working of the Patented invention. 1
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Legal Entity other than natural person(s). 24.100 (each sheet of specn.200 (for each claim in addition to 10) addition to 30) . -in . -in .
25.200 (for each claim in addition to 10) addition to 30) . 30. controller¶s decision/order.800 (for each claim in addition to 10) No fee No fee 300 per month 1200 per month No fee No fee 500 2000 1500 6000 500 2000 2500 10000
. Form of authorisation of a Patent Agent/or any person in a matter or proceeding under the Act. Section 94 and rule 102(1) and also section Request for termination of 94 as modified by section 24C. Section 39 Request for permission for making patent application outside India
Forms and Fees Amount of fees (in rupees) Natural Person
Form no. Rule 46. Section 130 (2) and rule 117.400 (each sheet of specn. 26. Form for the grant of exclusive marketing rights. Application for registration of Patent Agent. 77(1)(g) and rules 130(1) Application for review/setting aside or 130(2). Application for grant of exclusive marketing rights. 132 and rule 135.Multiple of 1000 in case of every multiple .100 (each sheet of specn. 22.21. 28. 29. 23. compulsory licence.
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1500 1500 1500 500 1000 200 1500 1500 1000 1500 2500 3500 1500 1500 1500 2000 1000 1000 1000 No fee No fee
6000 6000 6000 2000 4000 800 6000 6000 4000 6000 10000 14000 6000 6000 6000 No fee No fee 4000 4000 No fee No fee