Mar 13, 2023 | Key Terms of Patents Act
After the patent for an invention has been filed or granted, sometimes inventor feels that he has another invention to be patented, which is modification of the first invention (in this Act the first invention is referred to as the “main invention”). In such a case inventor can file patent of addition for the second invention instead of filling separate application. Such application based on the second invention is called as “Patent of Addition”.
The advantage of filing patent of addition is that no separate renewal fees are required to be paid for patent of addition. When main patent gets expired, patent of addition automatically gets expired and has no separate and independent existence. However, under certain circumstances, the Controller can convert patent of addition into independent patent on request of the applicant.
Illustration
An invention relates to a novel process of making automobile paint. Inventor files patent application for the invention and patent gets granted. After further research inventor finds a better process for making automobile paint which is modification of the main invention but is not a subject matter of a separate patent. In such a case he can file patent of addition and such patent is part of main invention.
An application made for a patent in respect of any improvement or modification of an invention described or disclosed in the complete specification already applied for or has a patent is called as Patent of Addition.
In order to be patentable an improvement, should be something more than a mere workshop improvement and must independently satisfy the test of invention. The major benefit is the exemption of renewal fee so long as the main patent is renewed. A patent of addition lapses with the cessation of the main patent.
U/S 54 [Patents of addition], when an applicant feels that he has come across an invention which is a slight modification of the invention for which he has already applied for or has obtained patent, the applicant can go for patent of addition, since the invention does not involve a substantial inventive step. However, a patent of addition will not be granted unless the date filing of Application was the same or later than the date of filing of the complete specification in respect of the main invention.
U/S 55 [Term of patents of addition], the patent of addition expires on the same day as the main application irrespective of the date on which patent of addition was filed. Though main patent and patent of addition have same term, under certain circumstances, the patent of addition can be made as independent patent.
Illustration
Date of filing main application: 29th January 2006
Date of filing patent of addition: 15th November 2009
Date of expiry for both main application and patent of addition: 29th January 2026
U/S 56 [Validity of patents of addition], the validity of a patent of addition shall not be questioned on the ground that invention ought to have been the subject of an independent patent and on the ground that the invention claimed in the complete specification does not involve any inventive step having regard to the publication and use of the main invention.
Therefore, patent of addition is an effective and economical way to protect improvements in the main patent.
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Mar 12, 2023 | Indian Patents Act 1970, IPR & Business, Key Terms of Patents Act, Patent, PCT, Startups
Patent is a valuable intangible asset, more important today, as India initiates “Vocal for Local movement” because of which importance of patents is much more than before. Before we proceed further, lets understand what a patent is. Well, patent is a kind of Intellectual Property Right, granted by the Government to the inventor for new, useful and non-obvious inventions for a specific period of time. Patent protection for the invention is for 20 years from the date of filing, provided renewal fee is paid in time and patent is not revoked for any reason. Another interesting thing about a patent is that patent rights are territorial. Indian Patent is valid only in India and in order to get patent protection outside India, you must file separately in the countries where you want to have patent protection.
There are lots of advantages for the business to file for a patent
- Disclosure becomes easy: As soon as you file a patent application, the receipt of filing application is generated that contains date of filing patent application, i.e., priority data and application number. Since you obtain date of priority upon filing application, disclosure of the invention becomes easy.
- Protects your inventions: You can protect your invention legally by a patent as patent is a statutory right granted by the Government. Once you have a patent, you can prevent third party’s from making, using, offering for sale, importing the patented invention in the country where you have patent protection. Further, once you have patent, you can always license your patent and join hands with a progressive enterprise to bring product in the market.
- Branding of company/products: After patent is filed, you can label your products as “Patent Applied for” whereas after grant of a patent, you can label the product as “Patented”. You can put status of “Patent applied for” or “Patented” on your web site, corporate presentations, and it helps you to brand your company/products better.
- Better valuation of your company: Like your tangible property, Patent is also a valuable intangible asset. Using specific techniques, value of a patent can be assessed and this adds to overall valuation of your business. This may be useful at the time of acquisition/merging.
- Enforcement of patent right: If your patent is infringed by third party, you can enforce your rights to stop using your patent. For example, VirnetX company had four patents (U.S. Patent Nos. 6,502,135, 7,418,504, 7,921,211 and 7,490,151), which Apple Inc infringed in its FaceTime Video calling service. Apple was sued by VirnetX and in this case Apple paid $368 million to VirnetX as damages.
There are several reasons for the companies to file for patents, however, initial due-diligence is important before filing for a patent to ensure that the patent adds value to the business. For any innovation and research driven company, following steps may be useful to set up right steps to create repository of new ideas and channelize them in right way:
- Perform an internal Audit to take stock of ongoing research projects
- Repository of new ideas shall be created. It is a good idea to create standard Invention Disclosure Form (IDF) where research team can document and submit invention to IP committee
- You can screen and prioritize the inventions received and plan to file for patents for the shortlisted them
- Identify right legal framework to protect them. There may be possibility of protecting the innovations as patent, copyright, design, trademark etc.
- Finally, find out right consultant to help you, based on area of technology and experience of the consultant.
- File your patent application to obtain application number and date of filing. To start with, you can file your application in India and later on, within 12 months from the date of Indian filing, you may, based on business needs, international application may be filed.
Patent could be a valuable asset for your company and systematic steps, processes and policies within the organization can help you in a big way.
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Mar 7, 2023 | Indian Patents Act 1970, Key Terms of Patents Act
The term Post-Dating with respect to Patent law means shifting date of filing patent application to the later date. There are specific reasons for which the applicant desires to post-date the patent application. Provision of post-dating a patent application is available in other countries like New Zealand and United Kingdom. However, the US patent law does not have any provision for post-dating of patent application.
In Indian Patents Act 1970, there is a mention of post-dating in Section 9 [Provisional and Complete specifications] and Section 17 [Power of Controller to make orders respecting dating of application].
Applicant can request the Controller to post-date the application under Section-9, after filing & before the grant of the patent. The date of post-date shall be specified, and the Controller may direct that the application shall be post-dated. Such post date shall not be requested or made for a date later than 6 months from the date on which it was actually made or would, but for the provisions of this sub-section, be deemed to have been made. Applicant shall file complete specifications within 12 month of filing provisional application. On the request of applicant, the Controller may cancel the provisional specification and post-date the application to the date of filing of the complete specification.
Illustration
Date of filing Provisional application: 5th June 2009
Date of filing Complete application: 15th October 2009
By postdating under section 9, Priority date could be shifted to 15th October 2009
Postdating can’t be requested beyond 6 months from date of filing
In Standipack Pvt. Ltd. Vs. Oswal Trading Co. Ltd. (AIR 2000 Delhi 23, 80 (1999), wherein the judge while considering the provisions of postdating clearly stated in paragraph 8 it was held that the postdating of the patent can be done only to the date of filing of the complete specifications. Where a complete specification has been filed in pursuance of an application for a patent accompanied by a provisional specification or by a specification treated by virtue of a direction under sub-section (3) as a provisional specification, the Controller may, if the applicant so requests at any time before [grant of patent], cancel the provisional specification and post-date the application to the date of filing of the complete specification.
U/S 17 [Power of Controller to make orders respecting dating of application], the application for patent may be post-dated to a date not later than six months from the date of application on a request made by the applicant at any time before the grant of patent along with the prescribed fee as given in first schedule. However, this provision will not apply if the application is deemed to be abandoned.
Illustration
Date of filing application: 5th June 2009
Postdating can’t be requested beyond 5th December 2009 (6 months from date of filing)
There is no specific form for post-dating the application and hence the request for post-dating can be filed through Form-30 to post-date the application.
Applicant may be required to post-date the application under specific circumstances. If the applicant has filed provisional application, within 12 months the complete application shall be filed, else, the application shall be deemed to be abandoned. However, if the information to file complete application is not ready or there is some financial crisis, the applicant can post-date the application to the maximum time of 6 months and this helps him to extend his deadline to file complete application. It is interesting to note here that the post dating as an option can be availed to post-date the date of filing complete application also if the applicant claims priority date by filing complete application. This may give extra time to file PCT application, if needed.
Even though post dating is helpful for the applicant in few circumstances, it could be very risky at times. After filing patent application, if the applicant has disclosed the invention in public by in any way, followed by post-dating of the application, this might destroy novelty of the invention. Therefore, the applicant shall opt for post-dating the application after calculating the risk.
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Mar 7, 2023 | Indian Patents Act 1970, Key Terms of Patents Act
A plaintiff, also known as a claimant or complainant, is the term used for the party who initiates a lawsuit before a court. Plaintiff seeks a legal remedy, and if successful, the court will issue judgment in favor of the plaintiff and make the appropriate court order like an order for damages.
A defendant is any party who is required to answer the complaint of a plaintiff in a civil lawsuit before a court, or any party who has been formally charged or accused of violating a statute.
In a well-known case, Apple Inc vs VirnetX, relating to FaceTime video calling service, VirnetX sued Apple Inc for infringement of four patents of VirnetX used in its FaceTime video calling service (U.S. Patent Nos. 6,502,135, 7,418,504, 7,921,211 and 7,490,151). Apple was ordered to pay US$368.2 million in damages to VirnetX.
In this case, VirnetX initiatied law suit against Apple Inc for infringement of patents and hence VirnetX is a Plaintiff, whereas Apple Inc is a Defendant.
Following are the important sections of the Patent Act, where the terms Plaintiff and Defendant have been used:
U/S 104A [Burden of proof in case of suits concerning infringement]
Infringement in simple words is violation of rights of a patent holder. In any suit for infringement of a patent, plaintiff (Patentee) has burden of proof and this is specifically for the product patent where a patentee can compare infringed product with his patent claims and assess extent of infringement.
However, where the subject matter of patent is a process for obtaining a new product and the patentee could not establish through reasonable efforts to determine the process actually used by the infringer, the court may direct the defendant to prove that the process used by him to obtain the product, identical to the product of the patented process, is different from the patented process. Hence, in case of process patent infringement, burden of proof shifts from plaintiff to the defendant.
U/S 107 [Defenses, etc., in suits for infringement]
When a law-suit is filed by the plaintiff for infringement of his patent rights, the defendant shall defend himself and prove that he is not infringing rights of the plaintiff. All the grounds of revocation U/S 64 can be used as defense by the defendant.
U/S 109 [Right of exclusive licensee to take proceedings against infringement]
In any suit for infringement of a patent by an exclusive licensee, if the patentee does not join as plaintiff, he is added as a defendant, but a patentee so added as defendant shall not be liable for any costs unless he enters an appearance and takes part in the proceedings.
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Mar 7, 2023 | Indian Patents Act 1970, Key Terms of Patents Act, Patent
Bolar exception is one of the exceptional acts where the use of patented invention without consent of the patentee doesn’t constitute infringement.
U/S 107A [Certain acts not to be considered as infringement] of Indian Patents Act 1970, any act of making, constructing, using, selling or importing a patented invention solely for uses reasonably related to the development and submission of information required under any law for the time being in force, in India, or in a country other than India, that regulates the manufacture, construction, use, sale or import of any product.
Some countries allow manufacturers of generic drugs to use the patented inventions for development and submission of information required under law. For example, from public health authorities, without the patent owner’s permission and before the patent protection expires. The generic producers can then market their version as soon as the patent expires. This provision is called “Bolar Exceptions” or “regulatory exception”.
Case-Study: Roche Products v. Bolar Pharmaceutical
This is a landmark case in the United States related to the manufacturing of generic pharmaceuticals. Bolar was a generic drug manufacturer and Roche was a brand-name pharmaceutical company which made and sold Valium, the active ingredient of which was protected by patent. Before patent expiration, Bolar used the patented chemical in experiments to determine, if its generic product was bioequivalent to Valium in order to obtain FDA approval for its generic version of Valium. Bolar argued that its use of the patented product was not infringement under the experimental use exception to the patent law.
The Court of Appeals for the Federal Circuit rejected Bolar’s contention holding that the experimental use exception did not apply because Bolar intended to sell its generic product in competition with Roche’s Valium after patent expiration and, therefore, Bolar’s experiments had a business purpose. Bolar also argued that public policy in favor of availability of generic drugs immediately following patent expiration justified the experimental use of the patented chemical because denying such use would extend Roche’s monopoly beyond the date of patent expiration.
The court rejected this argument, stating that such policy decisions should be made by congress. Likewise, the court decided that apparent policy conflicts between statutes such as the Food and Drug Act and the Patent Act should be decided by congress and not the courts. Shortly after Roche v Bolar was decided, congress did pass a law permitting use of patented products in experiments for the purpose of obtaining FDA approval, which established the modern system for FDA approval of generic drugs.
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Mar 6, 2023 | Indian Patents Act 1970, Key Terms of Patents Act
The term “Resident of India” has not been defined in the Indian Patents Act. However, The Income Tax Act, 1961 defines the term “Resident of India”. Under the Income Tax act, an individual can be termed as a ‘resident’ if he stays for the prescribed period during a fiscal year either for:
- 182 days or more;
- 60 days or more (182 days or more for NRIs) and has been in India in aggregate for 365 days or more in the previous four years.
Any person who satisfies these conditions is termed as a “Resident of India”.
The term “Resident of India” plays an important role while filing a patent application outside India. According to Section 39 [Residents not to apply for patents outside India without prior permission],if the applicant is resident of India but wants to file patent application in foreign country, the applicant should:
- either files application in Indian Patent Office and wait for 21 days to receive any objections.
- or takes permission from Indian patent Office to file patent application in foreign country. Such permission is called as Foreign Filing License (FFL).
Foreign Filing Permission (FFP) or Foreign Filing License (FFL) for making patent application outside India can be made through Form 25 [Request for permission for making Patent application outside India] and the fee applicable is:
- Natural person or Startup or small entity: 1600 INR
- Others, alone or with natural person or start up or small entity: 8000 INR
If a resident of India files a patent application outside India without taking Foreign Filing Permission (FFP), he will be liable to imprisonment or fine under Section 118 [Contravention of secrecy provisions relating to certain inventions].According to this S-118, if any person fails to comply with any direction given under section 35 or makes or causes to be made an application for the grant of a patent in contravention of section 39 he shall be punishable with imprisonment for a term which may extend to two years, or with fine, or with both.
Therefore, if you are resident of India, before filing patent application outside India, you mst either file patent application in India and wait for 21 days before you file foreign application or seek FFP or FFL from Indian Patent Office.
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Mar 6, 2023 | Indian Patents Act 1970, Key Terms of Patents Act
The term “Assignee” refers to a person to whom some right, interest, or title to property is transferred. In Patent law, the term Assignment refers to transfer of patent rights and such transfer of patent rights is often permanent.
According to Section2 [Definitions and interpretation]of Indian Patent Act, the assignment of patent refers to the transfer of patent rights by the patent holder (assignor) to another person (assignee). The term Assignee also includes:
- The assignee of the assignee; and
- The legal representative of a deceased assignee.
After death of the assignee, its legal representatives are also called as assignee.
Illustration
Rahul is a student doing research in a University and has an invention to be patented. As per policy of the University, the ownership of all Intellectual Property generated by the students belongs to the University. In such a case, Rahul has to assign his rights on the invention to the University. Rahul becomes “assignor” and University is “Assignee”. However, if the University (assignee) further assigns its patent right to a company, such company becomes assignee and University becomes assignor. Company can also be called as assignee of the assignee
Assignment is used in the following instances:
- At the time of filing patent application where inventor often assigns the invention to the applicant. However, assignment may happen any time before or after grant of the patent;
- During acquisition / merging, assignment of patent might take place where one company assigns patent (s) to the other company; and
- When a patent is commercialized, the licensee or buyer of such patent might want full or partial assignment of the patent.
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Mar 1, 2023 | Indian Patents Act 1970, Key Terms of Patents Act
To keep patent in force after it has been granted, the renewal fee has to be paid periodically (annually). Failure to pay the renewal fee may lead to lapse of a patent which means that patent ceases to have effect.
Under section 60 to 61 of the Indian Patents Act 1970, the lapsed patent can be restored; if it is proved by the patentee that the failure to pay fees was unintentional and pending renewal fees is paid within 18 months from the date on which the patent ceased to have effect. The evidence must support the patentee’s claim that the failure to pay fee was unintentional and there has been no undue delay in applying for restoration. The Controller may call for further evidence, which may include letters, deeds etc.
Illustration
The due date for payment of renewal fee is 24th June 2009 and the applicant fails to pay the renewal fee, as a result the patent lapses and ceases to be in force. If the applicant wants to restore the application, he shall make request to restore the application before 24th December 2010 i.e., within 18 months from the date patent ceases to be in force.
After hearing the applicant, if the Controller is prima facie[1] satisfied that the failure to pay the renewal fee was unintentional and that there has been no undue delay in the making of the application, he shall publish the application. Any person interested[2] may give notice to the Controller of opposition on the grounds:
- That the failure to pay the renewal fee by the applicant was not unintentional; or
2. That there has been undue delay in the making of the application.
If notice of opposition is given by the opponent to the Controller, the Controller shall notify the applicant, and shall give to him and to the opponent an opportunity to be heard before he decides the case.
If no notice of opposition is given within the period aforesaid or if in the case of opposition, the decision of the Controller is in favor of the applicant, the Controller shall, upon payment of any unpaid renewal fee and such additional fee [as may be prescribed] restore the patent and any patent of addition, which has ceased to have effect on the cesser of that patent.
The Controller may, if he thinks fit as a condition of restoring the patent, require that an entry shall be made in the register of any document or matter which, has to be entered in the register but which has not been so entered.
As, failure to pay renewal fee may lead to lapse of the patent, the time between lapse of patent and date of restoration of patent by the applicant is very crucial and during this time, there is no protection available to the patent in legal sense. During this time, someone may commercialize or use the patented invention assuming that patent has ceased to be in force. In such a case, if anyone has started commercializing the invention and then applicant restores the application and patent comes into force again, situation is extremely sensitive. This situation gives rise to following issues:
- To protect the persons who have begun to use the applicant’s invention between the date when the patent ceased to have effect and the date of publication of the application for restoration, every order for restoration should include the provision and the Controller may impose other conditions for protection and compensation of the persons who have begun to use the applicant’s invention.
- No suit or other proceeding shall be commenced or prosecuted in respect of an infringement of a patent committed between the date on which the patent ceased to have effect and the date of the publication of the application for restoration of the patent.
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[1]Latin expression meaning on its first appearance, or at first sight.
[2] For details refer Section-2, Chapter-1
Feb 28, 2023 | Indian Patents Act 1970, Key Terms of Patents Act
The word Jurisdiction is a combination of two Latin words, juris ‘law’ + dictio ‘declaration’.
Jurisdiction, in simple words, is the geographic area over which authority extends for the authority to hear and determine causes of action. Jurisdiction also denotes the geographical area or subject-matter to which such authority applies or a court’s power to hear a case.
When an offence has been committed at a particular place, usually the court in whose jurisdiction the crime has been committed has the jurisdiction to inquire into and try that case.
Jurisdiction, usually is categorized as below:
- Jurisdiction bases on the subject-matter: Certain courts entertain suits of particular classes only. For example, there are specific courts to handle environment related cases. So for such cases, right jurisdiction could be the Courts that handle such specific cases.
- Territorial Jurisdiction: Every court has its own limits like a District court is in charge of the district and cannot exercise his power beyond that district.
- Pecuniary Jurisdiction: Different courts have different limits to try suits or hear appeals of different amounts or value. Some of these courts have unlimited pecuniary jurisdiction.
- Original or Appellate Jurisdiction: The jurisdiction of a court may again be Original or Appellate. In District Court one can file original cases whereas supreme court may handle only appeals.
U/S 104 [Jurisdiction] of the Indian Patents Act 1970, no suit for a declaration under section 105 or for any relief under section 106 or for infringement of a patent shall be instituted in any court inferior to a district court having jurisdiction to try the suit.
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Feb 27, 2023 | Indian Patents Act 1970, Key Terms of Patents Act
Parallel Import is an important topic related to Exhaustion of Rights principle whereby the right holders’ IP rights in respect of a product are considered exhausted (i.e. he no longer can exercise any rights) when that product has been put on the market by the IP holder, or by an authorized party. After a patented product has been sold by the patentee or by others with the consent of the patentee, the IP right is said to be exhausted. It can no longer be exercised by the owner of the patent or patentee.
For example, if an inventor obtains a patent on a new oximeter, the inventor can exercise his rights and legally prohibit other companies from making, using, selling, offering for same and even importing such oximeter in the territory where he has patent protection, but cannot prohibit customers who have bought this oximeter from the patent owner from reselling it to third parties.
U/S 107A, [Certain acts not to be considered as infringement], importation of patented products by any person from a person, who is duly authorized under the law to produce and sell or distribute the product, shall not be considered as an infringement of patent rights. Therefore, it is possible to import the patented products from the licensee of the patentee in any country without the permission of the Patentee.
The purpose of Parallel import is to check the abuse of patent rights and to control the price of patented product by taking away the monopolistic power of the patent holder. Parallel import (also called grey market imports) is not unauthorized, unofficial or illegal sale, nor it the sale of pirated and counterfeited products, rather parallel imports are genuine, often branded, products that do not violate an IP right and legal in most of the nations.
Illustration
Suppose a company called Blue Pharma has a patent for a drug in India. This company has licensed its patent to red Pharma in Russia. Here Blue Pharma is Patentee while Red Pharma is Licensee and is authorized by patentee to see the drug. Now Green pharma in India, buys the drug from Red Pharma and imports to India. Even though Blue pharma has patent rights in India and it can prevent Green pharma from importing the drug in India, as principle of exhaustion of patent rights comes into picture. Since Green Pharma is buying and getting drug imported from Red Pharma where red pharma is duly authorized under the law to produce and sell or distribute the product, importation of drug by green pharma in India shall not be considered as an infringement of patent rights.
Parallel import is helpful in controlling prices of the goods and prevents patentee from abusing his/her patent rights.
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Feb 25, 2023 | Indian Patents Act 1970, Key Terms of Patents Act
Inventor has been given a special emphasis and privileges in patent law. This makes it important for the right person to be called as inventor to file patent application. That’s why the term True and first inventor has been used in the act. True and first inventor, under section 2 of Indian Patents Act 1970 is a person who invents an invention for the first time himself and is an inventor in real sense.
“True and first inventor” does not include either the first importer of an invention into India, or a person to whom an invention is first communicated from outside India.
In V.B. Mohd Ibrahim v. Alfred Schafrank, it was held that a person, such as a financial partner, who has not contributed any skill or technical knowledge towards the invention cannot be said to have any capacity to invent, and hence cannot be said to be the inventor.
Section 6 [Persons entitled to apply for patents] describes the persons who can apply for a patent. An application for a patent may be made by any of the following persons:
(a) By any person claiming to be the true and first inventor of the invention. However, “true and first inventor” does not include either the first importer of an invention into India, or a person to whom an invention is first communicated from outside India. The person shall in true sense be the first and true inventor and shall get credit for the invention; hence the patent shall be filed by him.
(b) By assignee of the person claiming to be the true and first inventor in respect of the right to make such an application. The assignee can further assign invention to any other party and after such assignment such other party becomes assignee. Such assignee can also file the patent application [Section 2 (1)(ab)].
(c) By the legal representative of any deceased person who immediately before his death was entitled to make such an application. Legal representative means a person who in law represents the estate of a deceased person [Section 2 (1)(k)]. In case the application is filed by the legal representative of a deceased person, death certificate along with other appropriate legal instruments as proof of right shall be filed along with the application.
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Feb 24, 2023 | Indian Patents Act 1970, Key Terms of Patents Act
Priority Document is a certified copy of the earlier-filed patent application, issued by the Indian Patent Office (IPO) and it has seal of Indian Patent office. When an international patent application is filed, at PCT/Convention country, copy of specification certified by the Controller to authenticate contents of specification, application number and priority date along with other details shall be submitted. And this certified copy of the specification is called as Priority Document.
The request to obtain Priority document shall be made in the national office of the applicant, filing where he claims priority. Where priority document is not in English language, an English translation of it, duly verified by the applicant or the person duly authorized by him shall be filed.
U/S 138 [Supplementary provisions as to convention applications], priority document should be submitted within three months from the date when required by the Controller. If the document is not in English, then a translated copy should be furnished.
U/R 19 [International applications filed with appropriate office as receiving office], International application shall be submitted in triplicate along with prescribed fee. On receipt of a request from the applicant and on payment of the prescribed fee by him, the appropriate office shall prepare a certified copy of the priority document and promptly transmit the same to the International Bureau of the World Intellectual Property Organization for the purpose of an international application filed with the appropriate office with an intimation to the applicant and the head office.
U/R 21 [Filing of Priority Document], priority document shall be obtained from the national office and shall be submitted by the applicant at PCT at the time of filing PCT application. Where priority document is not in the English language, an English translation of it, duly verified by the applicant or the person duly authorized by him shall be filed.
Instead of getting hard copies of Priority Document, one may request IPO to provide the code unique for each priority application and the code can be shared with second filing office (Convention or PCT). One can request for preparation and transmittal of DAS Code so that IPO will share directly with WIPO once as PCT Application Number is provided at the time of filing request. DAS code may be requested in advance to be entered in the PCT application while filing. IPO may share DAS Code directly with WIPO as well as with registered email ID. Priority document/DAS Code should be submitted to PCT within 16 months from the date of priority
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Feb 23, 2023 | Indian Patents Act 1970, Key Terms of Patents Act
Burden of Proof in simple words means ‘adequate evidence to prove oneself’. In criminal cases, as every person is presumed to be innocent until the contrary is proved, the burden of proof rests on the prosecutor, unless a different provision is expressly made by statute. In civil cases, the plaintiff is normally charged with the burden of proof, but the defendant may be required to establish certain defenses. In patent law, the patentee or plaintiff, who initiates a law suit, has burden of proof in case of patent infringement.
The burden of proof is defined in section 101 of the Indian Evidence Act, 1872, (act) as below:
- Whoever desires any Court to give judgment as to any legal right or liability dependent on the existence of facts which he asserts, must prove that those facts exist.
- When a person is bound to prove the existence of any fact, it is said that the burden of proof lies on that person.
U/S 104A [Burden of proof in case of suits concerning infringement]of Indian Patents Act, in any suit for infringement of a patent, plaintiff has Burden of Proof. When a patent is infringed, patent owner/plaintiff has to establish the fact that the patent has been infringed. Comparison of product of defendant with claims of Patentee’s patent can establish infringement.
However, where the subject matter of patent is a process for obtaining a new product and the patentee could not establish through reasonable efforts to determine the process actually used by the infringer, the court may direct the defendant to prove that the process used by him to obtain the product, identical to the product of the patented process, is different from the patented process. Hence, in case of process patent infringement, Burden of Proof shifts from plaintiff to the defendant.
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Feb 22, 2023 | Indian Patents Act 1970, Key Terms of Patents Act
Generally, a patent application is published in official website of the patent office after expiry of 18 months from date of filing or date of priority, whichever is earlier. In case of the inventions, which are considered by Central Government as relevant for national defence and security, Patent Act 1970provides for secrecy directions, meaning that such inventions shall not be published till the time it is considered relevant for national defense.
According to Section 35 [Secrecy directions relating to inventions relevant for defense purposes],
- In case it appears to the Controller that the invention falls in one of a class notified to him by the Central Government and is relevant for defence purposes, he may give directions for prohibiting or restricting the publication of information with respect to the invention or the communication of such information.
- Once such secrecy direction is given by the Controller, he shall give notice of the application as well as the directions to the Central Government. The Central Government shall decide whether the publication of the invention would be prejudicial to the defence of India or not. If the publication of the invention doesn’t appear to be so prejudice, notice to the Controller shall be given by the Central Government; the Controller shall revoke the directions and notify the applicant accordingly.
- In case the Central Government is of opinion that an invention in respect of which, the Controller has not given any directions is relevant for defense purposes, it may at any time before the grant of patent notify the Government. If the invention belongs to one of the class notified by the Central Government, the provisions of secrecy directions apply and Controller shall give notice to the Central Government of the directions issued by him.
Section 36 [Secrecy directions to be periodically reviewed], explains that the question whether an invention in respect of which directions have been given continues to be relevant for defence purposes shall be reconsidered by the Central Government at intervals of 6 months or on a request made by the applicant. If request of the applicant is found to be reasonable by the Controller or if it appears to the Central Government that the publication of the invention would no longer be prejudicial to the defence of India or in case of an application filed by a foreign applicant, it is found that the invention is published outside India, it shall give notice to the Controller to revoke the direction and the Controllers, shall revoke the directions previously given by him. The result of every re-consideration shall be communicated to the applicant within prescribed time and manner (within 15 days of the receipt of the notice by the Controller).
The result of every re-consideration of secrecy direction by Central Government are communicated to the applicant within 15 days of the receipt of the notice by the Controller, under Rule 72 [Communication of result of reconsideration under section 36(2)].
Section 37 [Consequences of secrecy directions] saysthatas long as the secrecy directions are in force, the Controller shall not pass an order refusing to grant of the patent. The orders passed by the Controller in this regard cannot be appealed. The application may proceed up to the stage of grant of the patent, but the application and the specification found to be in order for grant of the patent shall not be published, and no patent shall be granted in pursuance of that application.
- Where a complete specification for an invention in respect of which directions have been given (Section-35) is found to be in order for grant of the patent during the continuance in force of the directions, then:
- If during the continuance in force of the directions, any use of the invention is made by or on behalf of, or to the order of the Government, the provisions of sections 100, 101, 103 shall apply in relation to that use as if the patent had been granted for the invention and
- If it appears to the Central Government that the applicant for the patent has suffered hardship due to secrecy directions, the Central Government may make to him reasonable payment by way of solatium having regard to the novelty and utility of the invention and the purpose for which it is designed, and to any other relevant circumstances.
- Where a patent is granted in pursuance of an application in respect of which directions have been given (Section-35), no renewal fee shall be payable in respect of any period during which those directions were in force.
There is prescribed time to perform a particular task under this Act e.g., prescribed time to pay examination fee is within 48 months from date of filing or priority date, whichever is earlier. But when secrecy direction is imposed and later revoked, the Controller may extend the time within which any step or any act shall take place under section 38 [Revocation of secrecy directions and extension of time], The time line for paying examination fee is 48 months from date of filing but if the secrecy directions were imposed on the application, the Controller may extend this time line of 48 months.
Section 39 [Residents not to apply for patents outside India without prior permission], says if the applicant is resident of India but wants to file patent application in foreign country, it is important that he either files application in Indian Patent Office and waits for 6 weeks to receive any objections or takes permission from Indian patent Office to file patent application in foreign country.
- Section-39 is one of the important Sections of the Act which says that the applicant who is resident of India and interested in filing application in foreign country shall:
- Either file application first in India before foreign filing and wait for 6 weeks to receive any objections from the Controller or
- Shall take permission from the Controller on Form-25 [Request for permission for making patent application outside India] before filing application in foreign country in order to safeguard national defense and security.
- There shall not be any secrecy direction imposed on the application in relation to the application in India, or all such directions have been revoked.
- If the invention is relevant for defence purpose or atomic energy, the Controller shall not grant permission to file patent in foreign country without the prior consent of the Central Government.
- This section shall not apply in relation to an invention for which an application for protection has first been filed in a country outside India by a person resident outside India.
Under Rule 71 [Permission for making patent application outside India under section 39], the request for permission for making patent application outside India shall be made in Form-25 [Request for permission for making patent application outside India]. The time within which the Controller disposes of such request shall ordinarily be within a period of 21 days from the date of filing of such request. In case of inventions relating to defense or atomic energy, period of 21 days shall be counted from the date of the receipt of consent from the central government.
Under Section 40 [Liability for contravention of section 35 or section 39], applicant shall not disobey any direction by the Controller under:
- Section-35 [Secrecy directions relating to inventions relevant for defense purposes] or
- Section-39 [Residents not to apply for patents outside India without prior permission]
If applicant violates any of the direction under Section 35 or 39, the application of patent is:
- Deemed to be withdrawn or
- If the patent has been granted already, it is deemed to be revoked.
All orders of the Controller giving directions as to secrecy as well as all orders of the Central Government under this Chapter shall be final and shall not be called in question in any court on any ground [Section 41: Finality of orders of Controller and Central Government].
Section 42 [Savings respecting disclosure to Government] explains that even if the application has been imposed secrecy direction and such application shall not be disclosed, the Controller can disclose information concerning the application or a specification filed to the Central Government for the purpose of the application or specification being examined for considering whether an for secrecy direction should be made or whether an order so made should be revoked.
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Feb 21, 2023 | Indian Patents Act 1970, Key Terms of Patents Act
When a patent application is filed, it is necessary that one patent application is filed for one invention. If more than one inventions are claimed in a single patent application, such inventions shall be related to each other or we can say that such inventions shall have unity of invention. Unity of invention is a formal administrative requirement that must be met by the inventor to comply with the provisions of patent law. Basically, a patent application should relate to one and only one invention or a group of closely related inventions.
The purpose of this requirement is administrative, as well as financial and prevents applicant from filing single application for more than one inventions, while paying only one set of fees (filing fee, search fee, examination fee, renewal fees, and so on). However, if the inventions are related to each other, single patent application may be filed. For example, the inventions such as, micro organism as a product, its process of isolation, preparation of genetic recombinant strain are related to each other and form a single inventive step. Therefore, all of them have unity of invention and can be claimed and filed as single patent application.
Unity of invention also makes the classification of patent documents easier. If multiple and unrelated inventions are permitted to be claimed and filed as single patent application, assigning multiple classes will be extremely confusing and cumbersome process, further making patent search also difficult. The International Patent Classification (IPC) is a hierarchical patent classification system used by majority of the countries to classify the content of patents in a uniform manner based on the area of technology. Though there are very fine and detailed sub-classes, the broad classes are as below:
A: Human Necessities
B: Performing Operations, Transporting
C: Chemistry, Metallurgy
D: Textiles, Paper
E: Fixed Constructions
F: Mechanical Engineering, Lighting, Heating, Weapons
G: Physics
H: Electricity
During examination of patent application, the application may be objected due to lack of unity. However, such application is not denied the grant due to lack of unity. The applicant is given opportunity to break the parent applications into divisional applications. And this way, all divisional applications continue to exist and are taken for further prosecution. While filing the divisional application, in order to claim priority from the parent application, a statement is required to be added in divisional application, Form-1 & 2 in following format:
This is a divisional application and claims priority from the parent patent application number XXXX/CHE/XXXX with a priority date of Date/Month/year. Separate fee for filing, examination, depending upon the number of claims and pages is applicable for the divisional patent application.
If the Controller feels that one application contains more than one invention (lacks unity of invention), he may direct the applicant to split the application and file divisional application i.e., one application shall be split into more than one application. Section 16 [Power of the Controller to make orders respecting division of application] of Indian Patents Act 1970 says that when an application made by applicant claims more than one invention, the applicant on his own or to meet the official objection during examination of patent application by the examiner, may divide the application and file two or more applications, as applicable for each of the inventions. This type of application, divided out of the parent one, is called a Divisional Application. It is interesting to note that the priority date for all the divisional applications will be same as that claimed by the Parent Application (Ante-dating).
- If claims of the complete specification relate to more than one invention, applicant shall file a further application in respect of an invention disclosed in the provisional or complete specification already filed in respect of the first mentioned application.
- Such further application (or divisional application) shall be accompanied by a complete specification, but such complete specification shall not include any matter which was not disclosed in the complete specification filed in pursuance of the first mentioned application.
- The Controller may require such amendment of the complete specification filed in pursuance of either the original or the further application as may be necessary to ensure that neither of the said complete specifications includes a claim for any matter claimed in the other.
- The further application (or divisional application) and the complete specification accompanying it shall be deemed to have been filed on the date on which the first mentioned application had been filed, and the further application shall be proceeded with as a substantive application and be examined when the request for examination is filed within the prescribed period.
Illustration
- Date of filing provisional application and priority date: 15th November 2006
- Date of filing complete specification: 13th November 2007
- Upon examination of the application, the Controller raises the objection that the invention lacks unity of invention and hence, the application should be split into 2 applications i.e., main or parent application and divisional application.
- Applicant again files the divisional application on 10th Jan 2009
- In such a case, both parent application and divisional application will have priority date of 15th November 2006 even though the divisional application was filed 10th Jan 2009.
This assignment of earlier date to the divisional application is called as Ante-dating.
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Feb 9, 2023 | Indian Patents Act 1970, Key Terms of Patents Act
Novelty is one of the prime requirements of patentability. An invention is considered to be not patentable, if the claimed subject matter was disclosed before the date of filing or before the date of priority. The word “Anticipation” means a prior action that takes into account or forestalls a later action or visualization of a future event or state.
With reference to Patent laws, “anticipation” means any description of the invention, which destroys the element of novelty of the invention.
U/S 13 [Search for anticipation by previous publication and by prior claim], the examiner to whom an application for a patent is referred under section 12 shall make investigation for the purpose of ascertaining whether the invention has been anticipated by means of claiming in any claim of the complete specification or has been published previously.
Chapter 6 [Anticipation] deals with certain exceptional acts, wherein even if the invention is disclosed before the priority date, but still not deemed to be anticipated. When examination of application takes place and examiner checks novelty of the invention, the provisions of this chapter (Section 29-33) are taken into consideration.
Important section under Chapter 6 of Indian Patents Act 1970 are as follows:
Section 29: Anticipation by previous publication
Section 30: Anticipation by previous communication to Government
Section 31: Anticipation by public display, etc
Section 32: Anticipation by public working
Section 33: Anticipation by use and publication after provisional specification
Section 34: No anticipation if circumstances are only as described in Sections 29, 30, 31and 32.
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Feb 7, 2023 | Indian Patents Act 1970, Key Terms of Patents Act
The objective of the Patent system is not only to grant a monopoly right to the patentees but also to ensure that the granted patents are commercialized or worked in India without undue delay. The term The word “working of the patent” means that the patented invention shall be commercialized, in order to meet reasonable requirements of the public and patented products are available at reasonable price to the public. Patents are granted to enhance industrial development and, therefore, should be worked in its fullest extent within the territory of India.
Patentee or licensee shall inform Patent Office every year about working of his patent by submitting the statement of working. It a statutory obligation of the Patentee/licensee to provide the declaration regarding the patent commercialization status to the Patent Office. The onus is on the patentee or licensee to state the working status of the patent and to pay the renewal fee annually until the lifetime of the patent. Failure to submit the statement of working may create a presumption of non-working of the patent, which may be one of the grounds for third parties to apply for compulsory license.
Legal Perspective
Section 83 in The Patents Act, 1970 states
(a) that patents are granted to encourage inventions and to secure that the inventions are worked in India on a commercial scale and to the fullest extent that is reasonably practicable without undue delay;
(b) that they are not granted merely to enable patentees to enjoy a monopoly for the importation of the patented article
To oblige to Section 83, Section 146 of the Indian Patents Act, 1970, states the “Power of Controller to call for information from patentees” which mandates that the Patentee/licensee shall furnish the details of the working status of the patented invention in India for the respective financial year.
The statement of working of patents is furnished through Form 27 as prescribed in the Second schedule of the Patents Act, 1970 read with Rule 131.
The information to be submitted includes:
- Information whether the patent was worked in India during the year
- If worked, the value generated
- If not worked, a brief reason for not working and steps being taken to work the invention
- If manufactured in India or imported from other countries
- Licences and sub-licences granted during the year
There is no fee to file Form 27 and from the year 2012, the working of Patents filed by Patentees are made available to public (E-Register) by the Indian Patent Office.
Initially, Form 27 to be filed within 3 months from the end of every calendar year i.e., March 31st of each year. However, the amendments to the Patent Rules, 2020, the Form 27 shall be furnished within 6 months from the end of the financial year. As per the amended rules, the due date to file the statement of working via Form 27 is September 30th of each year for the preceding financial year.
Implications
Any failure in furnishing of the working of patents des not invalidate the Patent but have the following consequences:
- Considered as a punishable offence that includes a fine that may extend up to 10 lakh rupees
- Furnishing wrong information is punishable offence with imprisonment up to six months, or with fine or both
- Patent can be revoked on the ground of non-working
To conclude, the statement of working of patents creates a transparency in providing the status of commercialization of the patented invention, provides an updated information of the patented inventions to the interested person, value of the patented inventions, the adequate steps taken by the Patentee/licensee to work on the patented invention, encourages the innovators and their interest in trade and business in the fields of science and technology.
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Feb 7, 2023 | Indian Patents Act 1970, IPR & Business, Key Terms of Patents Act, Patent, Startups
As per the Indian Patent Law, one patent application shall relate to a single invention. However, if more than one invention is to be claimed in a single application, it is necessary to establish that the inventions so claimed in a single patent application have unity and they form a single inventive concept. The golden rule is that the claim (s) of a complete specification shall relate to a single invention, i.e. the concept of unity of invention shall be there.
According to Section 10 of the Patents Act 1970, if claims refer to a group of inventions, such inventions shall form a single inventive concept. The claims shall be clear and succinct and shall be fairly based on the subject-matter disclosed in the specification and moreover, a single inventive concept may be recognized between independent claims of different categories.
The invention comprising a polymer, process to prepare polymer and commercial utility of polymer can be claimed in the single patent application because even though the invention has three main components, all of them relate to a single invention and have unity. On the other hand, the invention relating to two independent formulations used to treat cancer and HIV/AIDS shall not be claimed in a single patent application as both formulations are independent of each other and hence lack unity of invention.
The purpose of this requirement of unity of invention is administrative, as well as financial. That is, the requirement serves to prevent the option of filing one patent application for several inventions, while paying only one set of fees, such as, fee for filing application, examination, early publication or annual renewal etc. Moreover, the concept of unity of invention also makes the technical classification easier.
Under Section 16 of the Indian Patents Act, 1970, if a single patent application has been filed with more than one invention and inventions so claimed lacks unity, the applicant shall be required to divide main application into divisional application (s). However, the further application (divisional application) and the complete specification accompanying it shall be deemed to have been filed on the date on which the first mentioned application had been filed, and the further application shall be proceeded with as a substantive application and be examined when the request for examination is filed within the prescribed period.
However, during the process of examination of the patent application, the examiner may also ask the applicant to divide the application into two or more applications and file divisional application. It is interesting to note that both parent application and divisional application will have the same priority date though divisional application is often filed later than parent application. For example:
- Date of filing provisional application and priority date: 15th November 2006
- Date of filing complete specification: 13th November 2007
Publication and examination of the patent application takes place and the Controller raises the objection that the invention lacks unity of invention and hence the application shall be split into two applications i.e., main parent application and divisional application. Here, the date of filing divisional application will be 10th Jan 2009.
In such a case, both parent application and divisional application will have priority date of 15th November 2006 even though the divisional application was filed 10th Jan 2009, which also mean that both parent application and divisional application expire on the same date irrespective of the date of filing.
A specification in respect of a divisional application under section 16 shall contain specific reference to the number of the original application from which the divisional application is made. The request for examination in case of divisional application shall be filed within 48 months from the date of filing or priority of the parent application or within six months from the date of filing the divisional application, whichever expires later. Request for divisional application shall be filed only after filing request for the parent application to ensure the requirement of section 16(3).
Moreover, the complete specification of a divisional application should not include any matter not in substance disclosed in the complete specification of the first application. The reference of parent application should be made in the body of the specification. A divisional application has to be filed before the grant for a parent application.
Though it sounds economical to club multiple inventions together and file for a single application, it is logical to follow the concept of unity of the invention and ensure that separate applications are filed for each invention.
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Feb 1, 2023 | Indian Patents Act 1970, Key Terms of Patents Act
Person interested under Section 2 [Definitions and interpretation] of Indian Patents Act 1970 is a person (legal or natural), who has some concern or interest in the patent/application for the reason of being in the same area of technology. It includes a person engaged in, or in promoting, research in the same field as that to which the invention relates. Person interested includes a person engaged in, or in promoting, research in the same field as that to which the invention relates.
For example, if applicant who filed the patent application is a company, Nokia [legal person or entity] that is in the business of mobile phones, the person interested in its patent may be its competitors involved in the same business of mobile phones such as Motorola or Sony Ericson i.e., person who is engaged in or doing research in the same area, which invention of Nokia relates to.
Person interested has an important role to play in law of patents. Some of the actions that a person interested can perform are:
- File for post-grant opposition for the patent
- Request for examination of patent application on behalf of the applicant.
- File petition for revocation of a patent
- Apply for compulsory license
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Mar 6, 2022 | Indian Patents Act 1970, Key Terms of Patents Act, Patent
The term “Convention application” refers to any patent application which is filed in the convention countries.
According to Section 133 [Convention countries] of Indian Patents Act 1970, convention country is any country, which is a signatory or party or a group of countries, union of countries or intergovernmental organizations which are signatories or parties to an international, regional or bi-lateral treaty, convention or arrangement to which India is also a signatory or party and which affords to the applicants for patents in India or to citizens of India similar privileges as are granted to their own citizens or citizens to their member countries in respect of the grant of patents and protection of patent rights shall be a convention country or convention countries for the purposes of this Act. Convention country accords the same rights in respect of the grant of patents and protection of patent rights to citizens of India, as it accords to its own nationals.
For example:
- India and US, both are members of Paris convention and hence both are convention countries.
- Applicant from US can file patent application in India within 12 months from the date, he filed application in US and vice versa
- The members of convention countries shall grant similar privileges to citizen of India as granted to its own citizens in respect of the grant of patents and the protection of patent rights.
Section 135 of Indian Patents Act defines the term Convention Application. According to Section 135, the applicant usually files patent application for the first time in his/her national office and claims priority. This application is called as “Basic Application”. Within 12 months of filing basic application, he/she can file application in one or more convention countries. Where applications for protection have been made in one or more convention countries in respect of two or more inventions which are cognate [similar] or of which one is a modification of another, a single convention application may [subject to the provisions contained in section 10, Contents of specifications] be made in respect of those inventions at any time within 12 months from the date of the earliest of the said applications for protection.
For example:
- Robert files a patent application: 15th July 2005
- Basic Application and 15th July 2005 is Priority Date
- Robert has 12 months’ time from 15th July 2005 to file application in any of the convention countries.
- Applications filed in other convention countries are called Convention Applications
- Priority date of all application in such a case shall be 15th July 2005.
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Mar 1, 2022 | Indian Patents Act 1970, Key Terms of Patents Act, Patent
The term Anti dating refers to assign a date to an event that is earlier than its previously assigned date. This term is mostly used in Indian Patent law with respect to the divisional application.
Generally, a divisional application is filed when a patent application contains more than one invention. Section 16 of the Indian Patents Act defines the provisions related to divisional application.
According to Section 16 [Power of the Controller to make orders respecting division of application], when an application made by applicant claims more than one invention, the applicant on his own or to meet the official objection during examination of patent application by the examiner, may divide the application and file two or more applications, as applicable for each of the inventions. This type of application, divided out of the parent one, is called a Divisional Application. The priority date for all the divisional applications will be same as that claimed by the Parent Application and this concept of claiming priority from the earlier filed application is called as Ante-dating.
For Example:
- Date of filing provisional application and priority date: 15th November 2006
- Date of filing complete specification: 13th November 2007
- Upon examination of the application, the Controller raises the objection that the invention lacks unity of invention and hence, the application should be split into 2 applications i.e., main or parent application and divisional application.
- Applicant again files the divisional application on 10th Jan 2009
- In such a case, both parent application and divisional application will have priority date of 15th November 2006 even though the divisional application was filed 10th Jan 2009.
So, this assignment of earlier date to the divisional application is called as Ante-dating.
Section 16 [Power of Controller to make orders respecting division of application], also says that an applicant, at any time [before the grant of the patent], if he so desires, or with a view to remedy the objection raised by the Controller on the ground that the claims of the complete specification relate to more than one invention, file a further application in respect of an invention disclosed in the provisional or complete specification already filed in respect of the first mentioned application.
One patent application shall have one invention but if the applicant has filed more than one invention in one patent, the Controller may ask the application to divide the application and file separate application for each invention. Such application, which has been divided from the main application, is called as divisional application [Section-16]. In such a case priority date of the divisional application is same as priority date of the main application.
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