ALIGARH MUSLIM UNIVERSITY

MALAPPURAM CENTRE, KERALA

INTELLECTUAL PROPERTY RIGHTS

PROJECT
Topic- Process of Obtaining Patent: Examination,
Conveyancing & Sealing of Patent

Submitted to Submitted by
Dr.Azmat Ali Kunjali Singh
Assistant Professor GK7931
Department of law 18BALLB34
Content TS Page No.
TABLE OF
Introduction 03

Filing of Application 04

Publication and examination of 05

application

Opposition to grant of patent 05

Grant and sealing of patent 07

Date of patent 10

Term of Patent 13

Patent of Addition 14

Conclusion 15
 INTRODUCTION
Patents are basically, monopolistic rights granted by the govt. of the country to the owner of the
invention in any field whatsoever, to make, use, manufacture and market the invention, provided
the invention satisfies certain conditions stipulated within the law and such rights are granted for
a limited period of time i.e., for 20 years.1

PATENT are granted to encourage inventions and to secure that the inventions work in India on
a commercial scale and to the fullest extent that is reasonably practicable withouundue delay.

Unlike copyright which becomes invested in the author the moment he creates the work, the
invention of a person cannot and does not becomes entitled for patent unless the procedure
prescribed in the PATENT ACT, 1970 are fulfilled, and the invention is approved for the grant
of patent.

There is no ipse dixit claim of patent nor there is suo moto grant of patent by authorities. The act
has prescribed a detailed procedure ehich begins with filing of application and is completed with
grant of patent. Various steps are discussed hereunder.2

FILING OF APPLICATION
The process of claiming The process for claiming patent begins with the filing of application
under Section 6. Following persons either alone or jointly can file the application:

(i) any person claiming to be the true and first inventor of the invention;
(ii) any person being the assignee of the person claiming to be the true and first inventor
in respect of the right to make such an application;
(iii) the legal representative of any deceased person who immediately before his death
was entitled to make such an application; and

1
www.lexology.com

2
Ahuja VK, Law relating to Intellectual Property Rights, Lexis Nexis, Third edition, 2021
 (iv) an application under sub-section (i) may be made by any of the persons and shall be
made in the prescribed form and filed in the patent office.

In case of an invention made by an employee, the application for grant of patent may be made
either by employee or by the employer. It will depend on the contractual terms. Generally the
employee will be entitled to make the application but if there is specific agreement in favour of
employer, the employer will claim patent.

I. Form of Application

Every application for a patent shall be for one invention only. It that two inventions cannot be
clubbed together and separate appliction for each invention is required to be made in prescribed
form before Controller of Patent. 3

Section 7(2) provides that where an application is made by virtue of assignment of the right to
apply for a patent for the invention, there shall furnished with the application and within such
period as may be prescribed after the filing of the application, the proof of the right to make the
application i.e, some document showing that assignment by the true and first invent actually
been made in favour of the applicant.

Section 7(3) lays down that every application under this section shall that the applicant is in
possession of the invention and shall name the claming to be the true and first inventor and
where the person so claiming be true and first inventor is not the applicant (for instance an
employee t application shall contain a declaration that the applicant (for instance, employer or
assignee) believes the person so named to be the true and t inventor.

Section 7(4) provides that an application made by a citizen of India is to be accompanied with a
provisional or complete specification. It also provides the where an application is made by a
foreign national of a convention country, i.e. a country offering the reciprocal right to an Indian
citizen to apply for a patwnt in that country, the patent application is to be accompanied with the
complete specification and not provisional specification.

II. International Patent Application

3
The office of controller of parenting India is situated in Kolkata with its branch office at Mumbai, Chennai and
Delhi.
Where an international application is filed under Patent Co-operation Treaty (PCT) for a patent
in any member country designating India, shall be deemed to be an application under the Indian
Act, provided a corresponding application has also been filed before the Controller in India. The
filing date of such an application shall be deemed as international filing date accorded under the
PCT. This will be based on principle of reciprocity and national treatment

III. Special Provision For Foreign Application

Section 8 provides that foreign applicants shall furnish information setting out the name of the
country where the application is being pursued, the serial number and date of filing of the
application and such other particulars as may be prescribed. A foreign applicant is also required
to give an undertaking that up to the date of acceptance of the complete specification by the
Controller he would keep the Controller informed in writing of the details and developments in
any patent application filed outside India.

IV. Application By Indians in other Countries

By the Patents (Amendment) Act, 2005 no person who is a resident in India shall, except under
the authority of a written permit sought in the manner prescribed and granted by or on behalf of
the Controller, make or cause to be made any application outside India for the grant of a patent
for unless:

(a) an application for a patent for the same invention has been made in India, not less than six
weeks before the application outside India; and

(b) either no direction has been given under sub-section (1) of Section 35 in relation to the
application in India, or all such directions have been revoked.¹

Withdrawal of Application- The applicant may, at any time after filing the application, but
before grant of patent, withdraw the application by making a request in the prescribed manner.

The transitional provision of the Amendment requires to treat every application for the grant of
exclusive marketing rights filed before the 1st day of January, 2005, in respect of a claim for a
patent covered under sub-section (2) of Section 5 of the principal Act. Such application shall be
deemed to be treated as a request for examination for grant of patent.
V. Filing of Provisional and Completed Specification

Section 9 provides that where an application is accompanied by a provisional specification, the

complete specification has to be filed within twelve months from the date of filing of the
application and if the complete specification is not so filed, the application shall be deemed to
have been abandoned. The said period of time shall be reckoned from the date of filing of
earliest provisional specification.

In Standipack Put. Ltd v. Oswal Trading Co. Ltd4., the Delhi High Court held that where the
application for grant of patent was originally filed by plaintiff on 11.4.1989 and the complete
specification was filed on 11.10.1990 the postdating of patent by Controller to 11.7.1989 prima
facie appeared to be in violation of provisions of section 9 of the Patent Act, 1970.

A patent specification is a technical document describing the invention A specification may be

provisional which gives the initial description of an invention when the application is filed. The
purpose of filing a specification is to make available the invention to the public on the expiry of
the term of the patent.

Section 10 of the Act lists the contents of the complete specification as follows:

(1) title sufficiently indicating the subject-matter to which the invention relates;
(2) a full and particular description of the invention and its operation of use and the method
by which it is to be performed:
(3) a disclosure of the best method of performing the invention which is known to the
applicant and for which he is entitled to claim protection;
(4) v claim/claims defining the scope of the invention. The claim/ claims must relate to one
invention only. Claimts) should be clear and succinct and should be fairly based on the
matter disclosed in the specification;
(5) Section 10(2) provides that a controller may require drawings to be supplied which shall
form part of the specification. (A claim is a feature of the invention over which the
applicant claims an exclusive right. It defines the monopoly. The function of a claim is to
define and limit with precision what is it which is claimed to have been invented and,

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AIR 2000 Del 23
 therefore, entitled for patent protection); and (vi) a declaration as to inventorship of the
invention.

Claim

In a patent or patent application, the claim defined in technical terms, the atentie. the scope of
protection conferred by a patent or the protection sought na patent application. The claims are of
utmost importance both during prosecution and litigation alike.

In F. Hoffman la Roche Limited v. Cipla Limited, the Delhi High Court stated that claim should
not only describe the invention and its operation but also disclose the best method of performing
the invention.

VI. Claim of Priority Date

The priority date is important in claiming the novelty aspect of patent. It is the date on which
patentee claims his invention. Since a provisional specification is generally filed much before the
filing of complete specification, the priority date is the date of filing of the provisional
specification provided the claims contained therein are fairly based on the description of the
invention as given in the provisional specification. Where the provisional application is not filed
and the application is directly accompanied by complete specification or if any application is
post-dated to the date of filing of complete specification, as aforesaid, the priority date shall be
the date of filing of the complete specification. The novelty of an invention is tested with
reference to the existing state of knowledge on such priority date. If the applicant's invention is
novel and not obvious to a person skilled in the art appropriately aware of the recent
developments on such date, the invention qualifies the test of novelty and non sbviousness.

VII. Amendment of Specification

The application, the complete specification and documents relating thereto accompanying the
application may be amended by the applicant before after the grant of patent. The controller may
upon application by a patentee allow the complete specification to be amended subject to certain
conditions
The Controller publishes the proposed amendment in the prescribed manner so that any person
interested if desires, may oppose both the application and the opponent. The High Court or the
Appellate Board, in any proceedings before it for the revocation of patent, may subject to
provisions contained in Section 59, allow the patentee to amend his complete specification. And
if the High Court or the Appellate Board decides the patent as invalid, it may allow the
specification to be amended under this Section instead of revoking the patent."

Section 59 provides that no amendment shall be made except by way of disclaimer, correction or
explanation, and no amendment thereof shall be allowed, except for the purpose of incorporation
of actual fact, and no amendment of complete specification shall be allowed, which would claim
ur describe matter not in substance disclosed or shown in the specification before the amendment
or that any claim as amended would not fall wholly within the scope of a claim of the
specification before the amendment.

PUBLICATION AND EXAMINATION OF APPLICATION

(SECTION 11A-14)

(1) Publication

The application for patent shall not be open to the public for the prescribed period ie, 18 months
from the date of filing of the application or the date of priority of the application. As per the
Patent (Amendment) Act, 2005, the applicant can request the controller to publish the
application at an earlier date.

The application for the patent shall be published within one month after the expiry of the said
period of 18 months or on receipt of request of publication as mentioned above, except in cases
where the secrecy direction is imposed under Section 35 or the application has abandoned under
Section 91 for failure to submit complete specification within 12 months from filing of
provisional specification or the application has been withdrawn.
Where there is a secrecy direction under Section 35 of the Act, the application shall be published
after the prescribed period or after the secrecy direction has ceased to operate whichever is later.

(2) Examination

The examination of an application for patent is only on request by application or other interested
person/s, within the prescribed period ie, 48 months from the date of the priority of the
application or from the date of filing ed the application whichever is earlier.

In case, such a request for examination is not made within a prescribed period, the application
shall be treated as withdrawn.

The examination or search of the specification is done by the examiners in the patent office on a
reference by the Controller, to determine its compliance, procedurally as well as substantively,
with the provisions of the Act and the rules framed thereunder. For the sake of convenience, the
examination of the application may be divided into two types: (i) Formal examination which
determines whether the application complies with the prescribed form, fee, particulars to be
furnished and documents to be submitted; and (ii) Substantive Examination, which determines
whether the matter is an invention and whether the specification requirements under the Act are
complied with. This includes a search to determine prior use, prior claims, prior publication and
prior public working.

Section 13(4) of the Act clearly states that the examination and investigation mentioned above
does not warrant the validity of any patent. The Delhi High Court has explained the presumption
of validity in M/s. Stand Pack Put. Ltd. v. M/s. Oswal Trading Co. Ltd.5

Section 13(4) of the Patenta Act provide that the examination and investigation required under
Sections 12 and 13 shall not be deemed in any way to warrant the validity of any patent, and no
liability shall be incurred by with, any such examination or investigation or any report or other
proceeding the Central Government or any officer thereof by reason of, or in connection
consequent thereon. Thus, grant of patent in any manner does not guarantee the validity of the
patent.

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AIR 2000 Del 23.
(3) Time for putting application in order for grant

Section 21 provides that an application for a patent shall be deemed have been abandoned if, the
applicant has failed to comply with, all the requirements imposed on him by or under this Act
within the prescribed period 12 months, from the date on which the first statement of objections
to the application or complete specification or other documents related thereto are forwarded to
the applicant by the Controller.

However, if at the expiration of the period as mentioned above, an appeal to the High Court is
pending in respect of the application for the patent, the time within which the requirements of the
Controller shall be complied with shall, on an application made by the applicant before the
expiration of the aforesaid period be extended until such date as the High Court may determine.

Anticipation.- Novelty is an important parameter to assess the patentability of an invention.

Novelty is assessed on the basis that the subject of invention is not anticipated. In simple words,
if someone else knows about or used the invention before the application was filed by applicant
for patent, that patent applicant will not be eligible for patent, In other words, if the invention is
already in public domain, it is a prior art and thus not patentable.

OPPOSITION TO GRANT OF PATENT (SECTION 25)

In the Amendment Act of 2005 provision for both pre-grant and post rant opposition has been
made. This provision will provide ample opportunity or local generic companies, as well as other
interested parties, to challenge and prevent the issuing of trivial patents. Pre-grant opposition is
important, ince it could prevent the issuing of trivial patents without litigation, which is often
time consuming and expensive, and may be beyond the means of local companies and
organizations. Where an application for a patent has been published but a patent has not been
granted, any person may, in writing, represent by way of opposition to the Controller against the
grant of patent.
The basic difference between the pre-grant opposition and post-grant opposition is that, in pre-
grant opposition any person can file a representation under Section 25(1), while in post-grant
opposition only the interested persons can file the opposition, under Section 25(2).

The meaning given to the term 'Interested Person' under Section 2(1)(t) i.e., a person engaged in,
or promoting research in the same field as that to which the invention relates, is not exhaustive
and can be broadly interpreted.

After the grant of patent but before the expiry of a period of one year from the date of
publication of grant of a patent, any person interested may give notice of opposition to the
Controller. After receipt of notice the Controller will constitute Opposition Board. On the basis
of report of Board, the Controller may revoke the patent. Appeal against decision of Controller
can be filed before Appellate Board.

In the case of J. Mitra & Co. v. Asst. Controller of Patents & Design 6, the Honorable
Supreme Court has explained the rationale and the relationship between pre-grant and post-grant
opposition as provided under Section 25 of the Patent Act, 1970, in the following words:

“……There is a radical shift due to incorporation of Section 25(2) of the Act where an interested
party is granted the right to challenge the patent after its grant. The ground of challenge under
Section 25(1) is identical to Section 25(2) of the 1970 Act. However, Section 25(1) is wider than
Section 252) as the latter is available only to a "person aggrieved The main difference between
Sectin 2011 and Section 252), an brough about by Patents (Amendment) Act, 2005, is that even
after a patent granted, "post grant apposition can be filed under Section 252) period of one year.
The reason is obvious. In relation to patents that a of recent origin, a higher scrutiny is necessary.
This is the main rationale saderlying Section 2521 of the 1970 Act. Therefore, the Legislatur
intended an appeal under Section 117-A (2) to the Appellate Board from any decision, order or
direction of the Controller, inter alio, under Secti 354) of the Act."7

GRANT AND SEALING OF PATENT ( SECTION 43 & 47)

6
Civil appeal of 2008 arising out of S.L.P (c) No. 15729 of 2008.
7
Dr. M.K Bhandari, Law relating to Intellectual Property Rights Central Law Publications, 6th Edition, 2021
Where an application for patent has been found to be in order for grant of patent, the patent shall
be granted as expeditiously as possible if the application has not been refused by the controller
by virtue of any power vested in him by this Act, or the application, has not been found to be in
contraventie of any of the provisions of this Act.

On the grant of the patent, the controller shall publish the fact that the patent has been granted
and thereupon the application, specification and other documents shall be open for public
inspection. If the decision of the controller goes against the applicant, he can appeal against such
order before the Appellate Board.

The grant of patent shall be subject to certain conditions under Section 47 They are as follows:

(a) any machine, apparatus or other article in respect of which the patent is granted or any article
made by using a process in respect of which the patent is granted, may be imported or made by
or on behalf of the Government for the purpose merely of its own use;

b) any process in respect of which the patent is granted may be used by or on behalf of the
Government for the purpose merely of its own use:

c) any machine, apparatus or other article in respect of which the patent is granted or any article
made by the use of the process in respect of which the patent is granted, may be made or used,
and any process in respect of which the patent is granted may be used, by any person, for the
purpose merely of experiment or research including the imparting of instructions to pupil; and

(d) in the case of a patent in respect of any medicine or drug, the medicine or drug may be
imported by the Government for the purpose merely of its own use or for distribution in any
dispensary, hospital or other medical institution maintained by or on behalf of the Government
or any other dispensary, hospital or other medical institution which the Central Government
may, having regard to the public service that such dispensary, hospital or medical institution
renders, specify in this behalf by notification in the Official Gazette.

DATE OF PATENT (SECTION 45)

Subject to the other provisions contained in this Act, every patent be dated as of the date on
which the application for patent was filed of every patent shall be entered in the register.
Notwithstanding anything contained in this section, no suit or other proceeding shall be como or
prosecuted in respect of an infringement committed before the date of publication of the
complete specification.

TERM OF PATENT (SECTION 53)

Prior to Patent Amendment Act, 2002, the term of patent in India ranging between 5 and 14
years (from date of sealing) depending upon the categories of invention. But as required under
Section 27 of TRIPs are a uniform term of 20 years has been provided. This period of 20 years
shall be reckoned from date of filing of application for patent. But to keep the patent alive and
effective, a periodic renewal fee is also required to be deponted failing which the patent shall
cease to have effect, and shall not be eligible to any protection.

PATENT OF ADDITION (SECTION 54)

Patent of addition is a patent granted in respect to any improvement in or modification of a
pervious invention called the main invention for which a patent has been granted or an
application has been made. The rights conferm by a patent of addition are the same as those for
other patents. An applicati for a patent of addition may not proceed unless it is in respect of one
main application or patent.

However, when a patent of addition which is applied for could be combined with an earlier
application for patent of addition in one application, it can be granted as a patent of addition. A
patent of addition may be applied for, and granted, in respect of another patent of addition."

After the amendment of the Patents Act in 2005, a patent of addition will not be granted before
the grant of the patent for the main invention.
The term of the patent of addition will run concurrently, that is fira term equal to that of the
patent for the main invention. If the patent for the main invention is revoked under the Act, the
patent of addition shall be an independent patent for the remainder of the term of patent for the
ma invention if the court or Controller so orders on the application made by the patentee.

CONCLUSION
Patent is granted to the owner of the Patent when his/her invention satisfies the conditions for
Patentability. Patenting in India has protected the intellectual property of many innovators and
has been useful in the growth of commerce and technology in India. One has to go through a
certain process for the grant of Patent. Grant of Patent confers monopolistic rights upon the
Patentee excluding the third party to sell, use, manufacture or import of the patented product
without the consent of the patentee. If someone tries to use, sell, manufacture or import such
patented products leading to the infringement of the rights of the patentee, the patentee can sue
the person.

BIBLIOGRAPHY

Book

1- Ahuja VK, Law relating to Intellectual Property Rights, Lexis Nexis, Third edition,
2021

2- Dr. M.K Bhandari, Law relating to Intellectual Property Rights Central Law
Publications, 6th Edition, 2021

Website

1-www.advocatekhoj.com
2-www.lexology.com