INTRODUCTION
INTRODUCTION
Background
1. The Patent Act, 1970 came into force on 20.4.1972 replacing Indian
Patents and Designs Act, 1911. When India became independent, the
Govt. of India appointed the Patent Enquiry Committee under the
Chairmanship of Dr. Bakshi Tek Chand, a retired Judge of Lahore High
Court in 1949 with a view to ensure that the Patent system was more
conducive to national interest. The committee submitted its final report in
April 1950. A bill based on the recommendations of this Committee was
introduced in the Parliament in 1953, but it lapsed due to dissolution of the
Lok Sabha.
2. In 1957, Govt. of India further appointed Justice N. Rajgopalan Ayyanger
to examine and review the Patent law in India who submitted his report in
September 1959 recommending the retention of Patent System despite its
shortcomings. The Patent Bill, 1965 based mainly on his
recommendations and incorporating a few changes, in particular relating
to Patents for food, drug, medicines, was introduced in the lower house of
Parliament on 21st September, 1965. The bill was referred to a joint
committee of Parliament on 25th November 1965. A bill was formerly
moved in lower house of Parliament on 5th December 1966, which
eventually lapsed with the dissolution of Lok Sabha on 3rd March 1967.
Finally the bill was cleared by the Parliament and became law known as
the Patents Act, 1970 after more than two decades. The present law was
suited to changed political situation and economic needs for providing
impetus to technological development by promoting inventive activities in
the country.
3. The present Act contains XXIII chapters, which are relating to Patenting
procedure, International arrangement and other misc. matters. This Act is
regulated by the Patents Rules, 1972 which inter alia include Five
Schedules concerning with fees, forms etc
.
4. Under the existing Act the Government of India is authorized to make
rules for carrying out the purposes of the Act and regulating the Patent
Administration and accordingly Govt. brought into force Patents Rules,
1972 w.e.f. 20.4.1972. These Rules were amended on 2.6.99, under the
present Act and rules in addition to grant of Patents. Provisions of grant of
EMR have also been provided.
5. There are five Schedules to Patents Rules, 1972; the First Schedule
prescribes the fees to be paid in respect of any matter arising out under
the Act. Where any form specified in the Second Schedule to the Patents
Rules, 1972, it shall be accompanied by specified fees or where payment
is made within a prescribed period of time after the forms have been filed,
the specified fee shall be paid within that period. The texts of various
forms required in connection with activities under the Patents Act, 1970
are set out in this schedule. These forms must be used wherever required
and they are not to be modified without the consent of the Controller. The
Third Schedule prescribes form of Patent that to be granted. The Fourth
Schedule prescribes various types of costs to be awarded in various
proceedings under the Act. As stated above, the fifth schedule specifies
certain amendments to the Indian Patents & Designs Rule, 1933.
6. The Patents Act, 1970 in comparison with Indian Patents and Designs Act,
1911 has far more reaching effect in some areas such as food, Drug and
Medicines where all the patents granted under this category and deemed
to be endorsed with the words “Licence of Right”. Further the term of
Patents related to Food, Drug & Medicines is seven years from the date of
Patent or 5 years from its grant whichever is less. More elaborate
definition of invention has been provided. Product Patents for Drugs &
Medicines including certain class of chemicals, which are produced by
chemical reactions, have been abolished. However, inventions relating to
methods or processes of their manufacture are patentable. The area of
search for novelty has been extended to any documents published
anywhere in the world. The provisions for appeals to the High Court from
the decision of Controller have also been provided. The provision for
grant of compulsory license, license of right and revocation of Patent
on the ground of nonworking has also been incorporated. Many of these
provisions are kept in line with the development of Patent law in
developed countries, particularly Great Britain. The major departure is in
the reduction of the term of patent for the invention relating to the drug,
Medicine & food and abolition of Product patent per se for Drug,
Medicines, Food and Chemicals.
7. The chapter XXII provides international arrangements with the countries
outside India, which afford to the applicants for Patents in India or citizens
of India, similar privileges as are granted to its own citizens in respect of
grant of Patent and the protection of their patent rights. Accordingly the
Central Govt. may by notification in the Official Gazette declare such
country/countries to be a conventional country/countries for the purpose of
the Act.
8. India has become a member of the Paris Convention and PCT w.e.f.
7.12.1998 and by virtue of this, the Head Office of Patent Office & its
Branch offices have become receiving offices for the purpose of
international applications filed under PCT. In view of these developments,
the Patents Rules, 1972 have been amended by incorporating a new
chapter IIA dealing with international application which can be filed at
Head office of the Patent office at Calcutta or Branch Offices at Delhi,
Chennai & Mumbai w.e.f. 17.11.99 as applicable.
9. The present Act under Chapter IVA provides specific provisions for the
grant of EMR (Exclusive Marketing Rights) with a view to fulfill its
international obligation under the provisions of article 70.8 & 70.9 of TRIPs
agreement which are in force w.e.f. 1.1.1995.
ii. GUIDELINES FOR OBTAINING PATENTS IN INDIA
1. The commercial value of any industrial product depends upon a
large number of factors, such as, its utility, cost of production,
attractiveness of appearance and the reputation established for it in trade.
Advantages in respect of utility and cost of production may be gained by
the adoption of “inventions” leading to a new manner of manufacture;
advantage in respect of attractiveness of appearance may be secured by
the adoption of new or original “designs” for the shape, configuration or
ornamentation of the vendible product; and advantage as regards
reputation in the course of trade may be gained by adopting and
popularizing a suitable “trade mark” for marketing the product.
2. TYPES OF PATENT APPLICATIONS
a. Patent applications under Patents Act 1970.
b. International applications under PCT.
3. GENERAL PRECAUTION FOR APPLICANT
3.1 It is a common experience that through ignorance of patent law,
inventors act indiscreetly and jeopardize the chance of obtaining patents
for their inventions. The most common of these indiscretions is to publish
their inventions in newspapers or scientific and technical journals, before
applying for patents. Publication of an invention, even by the inventor
himself, would (except under certain rare circumstances) constitute a bar
for the subsequent patenting of it. Similarly, the use of the invention in
Public, or the commercial use of the invention in public or even in secrecy,
prior to the date of the patent would be a fatal objection to the grant of a
patent for such invention thereafter. Hence inventors should not tell the
world about their inventions before they apply for patents nor should they
use their inventions for commercial purposes. There, is however, no
objection to the secret working of the invention by way of reasonable trial
or experiment, or to the disclosure of the invention to other confidentially.
3.2 Another mistake, which is frequently made by inventors, is to wait until
their inventions are fully developed for commercial working, before
applying for patents. Delay in making application for a patent involves
risks, namely, (i) that other inventors might forestall the first inventor in
applying for the patent, and (ii) that there might be either an inadvertent
publication of the invention by the inventor himself, or the publication
thereof by others independently of him. It is, therefore, advisable to apply
for a patent as soon as the inventor’s idea of the nature of the invention
has taken a definite shape.
3.3 In this connection inventors should note that it is permissible to file an
application for a patent accompanied by a “Provisional Specification”
describing merely the nature of the invention. The application may
therefore, be made even before the full details of working the invention are
developed. The filling of an application for a patent disclosing merely the
nature of the invention would secure “provisional protection”*, and thereby
enable the inventor to work out the practical details of the invention under
protection
.
3.4 Another matter, which should not be neglected by inventors, is the
clarification of their rights with reference to those of their employers, coworkers,
contractors and assistants, if any, with whom they are brought
into contact in the course of the development of their inventions. Neglect
in this direction may lead to costly litigation.
4. DOCUMENTS REQUIRED FOR FILING AN APPLICTION FOR PATENT
a) Application form in triplicate in the prescribed form no. 1.
b) Provisional or complete specification in triplicate. If the provisional
specification is filed it must be followed by a complete specification within
12 months (15 months with extension) to be drawn on prescribed form no.
2.
c) Drawing in triplicate (if necessary).
d) Abstract of the invention in triplicate.
e) Information and undertaking listing the number, filing date and current
status of each foreign patent application in duplicate on the prescribed
form no. 3.
f) Priority document(s) (if priority date is claimed) in case of convention
application.
g) Declaration of inventorship where provisional specification is followed by
complete specification complete specification or in case of convention
application on prescribed form no. 5.
h) Power of attorney (if filed through Patent Agent).
i) Fee (Patent in cash/by cheque/by demand draft).
5. PROVISIONAL SPECIFICATION
Application for patent may be accompanied by the provisional
specification. It should contain the description of the invention with
drawing if required. It is not necessary to include claim. However the
complete specification including claims fairly based on the matter
disclosed in the provisional specification should be filed within 12 months
(extendable by 3 months) from the date of filing of provisional
specification. The date of patent will be the date of filing of complete
specification.
6. COMPLETE SPECIFICATION
Complete specification should fully describe the invention with
drawing if required disclosing the best method known to the applicant and
end with claim/claims defining the scope of protection sought. Normally it
should contain the following matter.
1) Title of invention 2) Field of invention 3) Background of invention
with regard to the drawback associated with prior art 4) Object of invention
5) A summary of invention 6) A brief description of the accompanying
drawing if any 7) Detailed description of the invention with reference to
examples and drawing 8) Claim(s)
7. ABSTRACT
The abstract is the concise summary of the invention preferably
within 150 words. It should be prepared in such a way that one can
understand the technical problem and solution with its usefulness. If
necessary most relevant drawing should also be included in the abstract
particularly in mechanical type inventions. However, it cannot be used for
the purpose of interpreting the scope of protection in legal proceeding.
8. DRWAING
Drawing should be filed on standard A4 size sheet in triplicate one
of which should be on tracing cloth or transparent paper or semi
transparent sheet or plastic/ fiberglass film or thick & durable paper.
Drawing should be drawn in black Indian indelible ink on the sheet with
margin of 2.5 cm on each side. Figure should be shown clearly on
sufficient scale in upright position with respect to top & bottom position of
the sheet. At left-hand top corner of the sheet the name of the applicant
should be mentioned. No. of sheets & sheet no. Should be mentioned at
the right hand top corner. At the right-hand bottom signature of the
applicant/agent should be made mentioning the name there under. A
reference letter/numerals as used in the description should also be used in
denoting the corresponding component/part in the figure (s). No
descriptive matter should appear on drawing except under certain cases
such as flow sheet, chemical & other reaction etc.
The sheets may be of a size, either 13 X8 or 30.00 centimeters X 20.50
centimeters or 13 X 16, or 33.00 centimeters X 41.00 centimeters, the 13 or
33.00 centimeters side being the top to bottom side when the drawing is
placed in the erect position. There should be a clear blank margin of ½ OR
1.50centimeters in width all round.
Photographs are not acceptable.
Sketches or drawings should not be inserted in the letter press or the
specifications.
The same type of reference letters and figures, i.e., italic or Roman should
be used on the drawing and in the letter-press. The following types are
suitable:
A B C D a b c d 1 2 3 4.
The same letters or numerals should be used in different views of the
same parts.
If the scale is given, it should be drawn, and not denoted by words.
In complicated drawings or when there is no room to write the reference
letters in their proper places, the letters should be shown outside the
figures and connected by fine lines with the parts to which they refer.
9. Application Under Patent Cooperation Treaty (PCT)
The Patent Cooperation Treaty is an agreement for international
cooperation in the field of patents. It is the most significant advancement in
international cooperation in this field since the adoption of the Paris
Convention itself. It is, however, largely a treaty for rationalization and
cooperation with regard to the filing, searching and examination of patent
applications and the dissemination of the technical information contained
therein. The PCT does not provide for the grant of “international patents”. The
task and responsibility for granting patents remain exclusively in the hands of
the patent Offices of, or acting for, the countries where protection is sought
(the “regional Offices”).
PCT is a special agreement under the Paris Convention open only to
states, which are also party to the Paris Convention. The PCT does not
compete with but, in fact, complements the Paris convention.
9.1 Principal Objectives Of The PCT
The principal objective of the PCT is to simplify and to render more
effective and more economical—in the interests of the users of the patent
system and the offices which have responsibility for administering it—the
previously established means of applying in several countries for patent
protection for inventions. Before the introduction of the PCT system, virtually
the only means by which protection of an invention could be obtained in
several countries was to file a separate application in each country; these
applications, each being dealt with in isolation, involved repetition of the work
of the filing and examination in each country.
To achieve its objective, the
PCT:
· establishes an international system which enables the filing, with a
single patent Office (the “Receiving Office”), of a single application (the
“International Application”) in one language having effect in each of the
countries which are party to the PCT which the applicant names
(“designates”) in his application;
· provides for the formal examination of the International Application by
a single patent Office, the Receiving Office;
· subjects each International Application to an international search which
results in a report citing the relevant prior art (mainly published patent
documents relating to previous inventions) which may have to be taken
into account in deciding whether the invention is patentable; that report
is made available first to the applicant and is later published;
· provides for centralized international publication of International
Applications with the related international search reports, as well as
their communication to the designated Offices; and
· provides the option of an international preliminary examination of the
International Application which gives to the Offices that have to decide
whether or not to grant a patent, and to the applicant, a report
containing an opinion as to whether the claimed invention meets
certain international criteria for patentability.
The procedure described in the preceding paragraph, comparing it with
the traditional procedure, is illustrated by two timelines such as chapter I and
chapter II of PCT. It is commonly called the “International Phase” to describe
the first part of the patenting procedure, whereas one speaks of the “National
Phase” to describe the last part of the patent granting procedure which, as
explained in paragraph above, which is the task of the designated Offices,
that is, the national Offices of, or Regional offices acting for the countries
which have been designated in the International Application. (In PCT
terminology, a reference to “national” Office, “national” phase and “national”
fees, includes the reference to the procedure before a regional patent Office.)
Under the PCT system, by the time the International Application reaches
the national Office, it has already been examined as to form by the Receiving
Office, searched by the International Searching Authority and possibly
examined by an International Preliminary Examining Authority, thus providing
the national patent Offices with the important benefit of reducing their work
loads since they have the benefit of these international phase centralized
procedures and thus need not duplicate those efforts.
Further main objectives of the PCT are to facilitate and accelerate access
by industries and other interested sectors to technical information related to
inventions and to assist developing countries on gaining access to
technology.
9.2 Functions Of The Receiving Office
1. Receiving Office receives the International Application from the applicant.
2. Receiving Office checks the International Application to determine
whether it meets the prescribed requirements as to form and content of
International Applications. This check is of a formal nature only and does not
go into the substance of the invention. It therefore extends only to a certain
number of rather elementary requirements specified in the Treaty as forming
part of that check.
3. Receiving Office accords an international filing date (Article 11).
4. Receiving Office checks certain formal and physical requirements (Article
14). That check by the Receiving Office may show that the International
Application does not meet certain requirements as to form and content and
that the fees are not, or not fully, paid. In that case, the Receiving Office
communicates with the applicant in order to give him an opportunity to correct
any defect.
5. If, possibly after correction, the check by the Receiving Office shows that
the International Application meets the requirements of Article 11(1) for giving
the application an international filing date, the Receiving Office accords the
international filing date.
6. If the language of filing of the International Application is accepted by the
Receiving Office but is not accepted by the International Searching Authority
that is to carry out the international search, the applicant is required to furnish,
within one month from the filing of the application, a translation into a
language which is all of the following: (i) a language accepted by the
International Searching Authority that is to carry out the international search;
(ii) a language of publication; and (iii) a language accepted by the Receiving
Office (unless the International Application is filed in a language of
publication). In cases where the applicant fails to furnish, within the applicable
time limit, a translation for the purposes of international search, the Receiving
Office invites the applicant to furnish the missing translation, in certain cases
subject to the payment of a late furnishing fee. A separate invitation
procedure is provided for the case where the request does not comply with
language requirements. Where the applicant does not furnish the missing
translation within the time limit fixed in the invitation, the International
Application will, subject to certain safeguards for the applicant, be considered
withdrawn and the Receiving Office will so declare.
7. Not all the requirements of the International Application are required to be
examined by the Receiving Office. For instance, the Receiving Office does
not deal with substantive questions such as whether the disclosure of the
invention in the application is sufficient and whether the requirement of unity
of invention is complied with. It also does not check all the many detailed
physical requirements of the International Application. Those requirements
are only checked to the extent that compliance with such requirements are
necessary for the purpose of reasonably uniform international publication.
8. Typical examples of defects which may be corrected without affecting the
international filing date are:
– non-payment or partial payment of fees;
– lack of signature of the request;
– lack of a title of the invention;
– lack of an abstract;
– physical defects.
9. As stated, in all such cases lack of correction leads to the application
being considered withdrawn, except where a physical defect would not
prevent reasonably uniform international publication and except for the
payment of fees. With regard to the later, Rule 16b provides that the
Receiving Office must invite the applicant to pay the missing fees together
with a late payment fee. If the applicant still does not pay the fees within the
time limit fixed in the invitation, the Receiving Office will declare that the
International Application is being considered withdrawn. This solution protects
the applicant against any loss of his application due to an erroneously
delayed or incomplete payment of fees.
10. The third step in the procedure before the Receiving Office is that it must
transmit the “record copy” of the International Application to the International
Bureau and the “search copy” to the International Searching Authority. The
Receiving Office keeps a third copy, the “home copy.” The transmittals do not
take place if and as long as national prescriptions concerning national
security apply. The Receiving Office will then declare that national security
provisions prevent the International Application from being treated as such.
11. The Receiving Office must mail the record copy promptly to the
International Bureau and in any case not later than five days prior to the
expiration of the 13th month from the priority date. In many cases, the
International Application claims the priority of an earlier national application
and is filed at the end of the 12-month priority period; the Receiving Office
has only a few weeks for its processing tasks
12. The search copy must be transmitted by the Receiving Office to the
International Searching Authority at the time of the transmittal of the record
copy to the International Bureau except where the search fees has not been
paid on time, in which case the transmittal of the search copy takes place
after that fee has been paid.
13. If an applicant who is a resident or national of a PCT Contracting State;
erroneously files his International Application with a national office which acts
as a Receiving Office under the Treaty but which is not competent under Rule
19.1 or 19.2, having regard to the applicant’s residence and nationality, to
receive that International Application, or if an applicant files his International
Application with the competent Receiving Office in a language which is not
accepted by that Office under Rule 12.1(a) but is in a language accepted
under that Rule by the International Bureau as Receiving Office, the
International Application will be considered to have been received by the
national Office on behalf of the International Bureau as Receiving Office on
the date on which it was received by the national Office, and will be promptly
transmitted to the International bureau as Receiving Office (unless such
transmittal is prevented by national security prescriptions). The transmittal
may be subjected by the national Office to the payment of a fee equal to the
transmittal fee. All other fees already paid to that Office will be refunded by
that Office to the applicant and the applicable fees will have to be paid to the
International bureau as Receiving Office
9.3The following conditions should be fulfilled for according an
international filing date:
(i) the applicant should be a resident or national of the Contracting
State for which the Receiving Office acts, and has consequently the right
to file with that Receiving Office (note, however, that the International
Application is to be transmitted to the International Bureau as Receiving
Office under Rule 19.4(a)(i) if that condition is not fulfilled);
(ii) the International Application should be in the language, or one of
the languages, accepted by the Receiving Office for the purpose of filing
International Applications (note, however, that the International Application
is to be transmitted to the International Bureau as Receiving Office under
Rule 19.4(a)(ii) if that condition is not fulfilled);
(iii) the International Application should contain at least the following
elements:
(a) an indication that it is intended to be an International Application,
(b) the specific designation of at least one Contracting State under
Rule 4.9(a),
(c) the name of the applicant in a form allowing the applicant’s
identity to be established,
(d) a part which on the face of it appears to be a claim or claims.
(iv) If one of these requirements is only complied with after correction,
the international filing date will be the date on which the correction was
received. In other words, in these cases a defect which is corrected later
affects the international filing date. If all such defects are not properly
corrected, the application will not be treated as an International
Application.
(v) For all the other cases, non-compliance with the formal
requirements does not affect the international filing date. In other words, if
the applicant corrects a defect in such cases, the international filing date
remains unchanged. If the applicant does not correct, the defect properly,
the International Application will, however, be considered withdrawn by the
Receiving Office. Extension of the time limit fixed by the Receiving Office
for the correction of defects under Article 14 may be requested.
9.4 Monitoring of time limits
Easy supervision and monitoring of only a few time limits and events is
required by applicants, namely:
(i) monitoring the receipt of the confirmation of receipt of the International
Application by the Receiving Office;
(ii) monitoring the time limits for payment of fees;
(iii) checking the notification from the International Bureau confirming the
receipt of the International Bureau confirming the receipt of the record
copy (Form PCT/IB/301) for correctness of the designations indicated on
the Form and if needed, confirm precautionary designations within 15
months from the priority date;
(iv)deciding, after receipt of the international search report, whether or not
to file a demand for international preliminary examination (which must be
filed prior to the expiration of 19 months from the priority date in order to
delay entry into the national phase until at least 30 months from the
priority date);
(v) deciding, after receipt of the international search report, whether or not
to file amended claims under Article 19, within the applicable time limit;
this will usually be considered only if demand for international preliminary
examination is not filed;
(vi)monitoring the receipt, during the 19th month from the priority date, of
the notice from the International Bureau (Form PCT/IB/308) that the
publication of the International Application and its communication to the
designated Offices (Article 20) has been effected;
(vii) entering the national phase before the expiration of 20 months from
the priority date, or 30 months if Chapter II applies (in some designated or
elected Offices, even later), by paying the national fees and furnishing (if
required) a translation of the International Application.
9.5 Filing of the International Application:
a) Request form :
1. International Application must be filed with any of the receiveing offices
i.e. Patent office ,Calcutta,New Delhi,Mumbai, and Channai or IB of
WIPO.
2. The International Application must contain a request, a description,
one or more claims, one or more drawings (where required) and an
abstract; it must comply with the prescribed physical requirements; it
must be in one of the prescribed languages; finally, the required fees
must be paid. These requirements will be dealt with one by one.
3. The request may be made on a printed form, copies of which can be
obtained free of charge from the Receiving Office or from the
International Bureau of WIPO. The request may also be presented as
a computer printout as prescribed by Section 102(h) of the
Administrative Instructions or, alternatively, as a computer printout
prepared using the PCT-EASY software, in which case it must be
accompanied by a computer diskette containing a copy in electronic
form of the data contained in the request and of the abstract.
4. The request must first of all contain a petition, that is, a request that the
International Application be processed according to the PCT. It must
further contain the title of the invention, the necessary data concerning
the applicant, the inventor and the agent representing the applicant,
the designation of the Contracting States for which protection is
desired, that is, a list of the Designated States. It must be signed by
the applicant or his agent. Where there are two or more applicants,
each applicant must sign at his choice either the request or, if the
request is signed by an agent, a separate power of attorney.
5. The request may contain some optional indications, in particular a
priority claim according to the Paris Convention for the Protection of
Industrial Property. Further, when a Designated State offers several
kinds of protection for inventions, such as patents for invention and
utility models, the applicant can indicate his choice in the request.
b) Priority
1. Only one certified copy is required of each priority application, within 6
months from the priority date; no copies for each designated Office are
needed. The copies for the designated Offices are prepared—at no
additional cost to the applicant—by the International Bureau.
2. Transmittal of the priority document need not be monitored if a request
for transmittal by the Receiving Office to the International Bureau of an
application filed with that Receiving Office was made in the Request Form
and the applicable fee for a priority document was paid to the Receiving
Office.
c) Description
1. The description of the invention in the International Application must
disclose the invention in a manner sufficiently clear and complete for the
invention to be carried out by a person skilled in the art.
2. The description first repeats the title of the invention. It then specifies the
technical field to which the invention relates. It indicates the so-called
“background art,” that is, the technical and, in particular, patent literature,
pertaining to that technical field, constituting the “prior art” or “state of the
art” or known technology for the newly filed application. It discloses the
intention in a way which allows the technical problem and its solution to be
understood. It states the advantageous effects of the invention as compared
with the known technology. It briefly describes the figures in the drawings. It
sets forth the best mode contemplated by the applicant for carrying out the
invention and any other mode he wants to include. Finally, it indicates the
way in which the invention is capable of exploitation in industry.
d) Sequence Listing : -
1. Section 806 of PCT allows a designated Office to require that a copy
of a sequence listing part filed only on an electronic medium under new
Section 801 be furnished , for the purposes of the national phase, on
paper.
2. For applicants who do not wish to file the sequence listing part of their
international applications under new Section 801, the current
provisions will continue to apply, including the filing in written form only
(under Rule 5.2) and the concurrent or subsequent furnishing, as
provided under PCT Rule 13ter and Section 208, of the sequence
listing parts in computer readable from but only for the purposes of
international search and/or international preliminary examination. In
such cases the current system for calculating the basic fee, on the
basis of the total number of sheets of the international application
including the sequence listing part, will continue to apply (see item 1(b)
of the Schedule of Fees).
3. It is important to note that international application filed under new
section 801 may only be filed with receiving Offices, which are
prepared to accept them, and on such electronic media as specified by
the receiving Offices (for further details pl. see PCT Applicant’s Guide).
e) Claims :
1. The claims must define the subject matter of the invention for which
protection is sought. They must be clear and concise and fully supported
by the description.
2. With respect to the structure and drafting of claims, the PCT requirements
are largely similar to what is accepted in most patent Offices.
f) Drawings:
1. The drawings are only required where they are necessary for the
understanding of the invention. This will be the case for a mechanical
invention. It will not be the case when an invention cannot be drawn, as is
the case for a chemical product. Here again, the requirements are similar
to those of most patent Offices.
g) Abstract :
1. The abstract is intended to serve the purpose of technical information.
The Treaty says clearly that it cannot be taken into account for any other
purpose. This means in particular that it cannot be used for the purpose of
interpreting the scope of the protection sought.
2. The abstract consists of a concise summary of the disclosure of the
invention as contained in the description, claims and drawings in
preferably not more than 50 to 150 words. It must be drafted in a way
which allows the clear understanding of the technical problem, the gist of
the solution of that problem through the invention, and the principal use of
the invention..
9.6 International Search.
1. A high quality international search report is established by the International
Searching Authority. For the purpose of Indian applicant following are
Competent International Searching Authorities( ISAs)
Austrian Patent Office(AT)
Australian Patent Office (AU)
European Patent Office(EP)
China Intellectual Property Office(CN)
United States Patent & Trademark Office (US)
Swedish Patent Office(SE)
2. If the International Application did not claim any priority, the international
search report is available within nine months from the international filing
date, which is before the payment of designation fees becomes due. If
priority is claimed, that report is available usually during the 16th month
from the priority date.
Even where priority is claimed, the international search report is normally
available in time before publication of the International Application. This
allows time for the applicant to withdraw the application before publication, if
desired.
9.7 Language :
1. The International Application must be filed in the language, or one of the
languages which the Receiving Office accepts for that purpose (Rule 12.1(a)).
Neither the Treaty nor the Regulations enumerate the languages in which
International Applications may be filed. Whether a given language can be
used depends on the readiness of the Receiving Office to accept International
Applications in that language. Each Receiving Office must, however, accept
at least one language for the filing of International Applications which is both a
language accepted by the International Searching Authority or, if applicable,
by at least one International Searching Authority, competent for the
international searching of International Applications filed with that Receiving
Office and one of the languages of publication (that is, Chinese, English,
French, German, Japanese, Spanish or Russian), so that applicants always
have the option of filing the international search or international publication
purposes; in other words, either words, either the International Application in
its original language or the translation will be sufficient for the processing by
the Receiving Office, for international search and for international publication.
2.If the language of filing of the International Application is accepted by the
Receiving Office but is not accepted by the International Searching Authority,
the applicant is required to furnish, within one month from the date of receipt
of the application, a translation into a language which is all of the following: (i)
a language accepted by the International Searching Authority that is to carry
out the international search; (ii) a language of publication; and (iii) a language
accepted by the Receiving Office (unless the International Application is filed
in a language of publication) (Rule 12.3).
3.If the language of filing of the International Application is accepted by the
Receiving Office and the International Searching Authority but is not a
language of publication (at present, this is the case only where the
International Application is filed in Dutch and certain Nordic languages), the
International Application will be published in English, the translation into that
language being prepared under the responsibility of the International
Searching Authority which undertakes the search (see Rule 48.3).
4.The request must always be filed in a language which is accepted by the
Receiving Office and which is also one of the seven languages of publication.
9.8 Fees:
1.International Application filing fees can be paid in the national currency and
to one Office, the Receiving Office. They may all be paid within one month
after filing (for the designation fee, however, see next paragraph).
2.Designation fees must be paid before the end of the priority year or within
one month after filing, whichever time limit expires later. If no priority is
claimed and designation to all Contracting States has been made in the
International Application, the option is kept open–at no cost–for one year to
select designations and pay designation fees only for those countries where
the applicant wants the International Application to remain in effect.
3.Only one designation fee must be paid under the PCT for a regional patent
independent of the number of States party to the regional patent treaty which
are designated for a regional patent. It is therefore advisable to designate in
the International Application all States party to the regional patent treaty
concerned and make the selection of individual States at the start of the
regional phase (for example, in respect of a European patent, at 21 months
from the priority date, or 31 if Chapter II applies, when payment of the
European designation fee for each individual State is required). The same
observation applies to the designation of states for the purpose of an ARIPO
patent.
4.A maximum designation fee under the PCT (which corresponds to 6
designation fees) permits the designation of all Contracting States. Each
designation in excess of 6 is free of charge. This makes it possible to
designate all Contracting States at reasonable cost at the time of filing and to
thereby keep the option for a foreign patent open in any Contracting State
until at least 21 months from the priority date, or at least 31 months if Chapter
II applies.
5. Failure to pay fees or underpayment of fees can be corrected under Rule
16b is. An invitation to pay missing amounts will be issued by the Receiving
Office. Payment can be made later, together with a late payment fee.
6. Mode of Payment: To facilitate the payment in US Dollar, as required by
International Bureau of World Intellectual Property Organisation and
International Searching Authority selected by the applicant, an account has been
opened by RO/IN in the name of the controller General of Patents, Designs &
Trade Marks, with the State Bank of India, New York Branch, 460, Park Avenue,
New York-NY-10022 assigning account No. 2111-250821-001.
THE PCT FEES, AN INDIAN APPLICANT REQUIRED TO PAY:
a. To Receiving Office (The Patent Office, Calcutta and its branch
offices at New Delhi, Mumbai, Chennai)
i. Transmittal fee : INR 1,500 [for individual(s)]
INR 5,000 [for legal entity]
ii. Basic fee : USD 382*
iii. Designation fee : USD 82* per designation
(maximum 6, any designation
over 6 being free of charge)
iv. Supplement per sheet : USD 9*
in excess of 30
v. Search fee : ISA/AT – USD 170
ISA/EP – USD 846**
ISA/AU – USD 510
ISA/CN – USD 100
ISA/US – USD 700
ISA/SE – USD 990
vi. Fee for preparing : INR 1,000 [for individual(s)]
certified copy of priority INR 3,000 [for legal entity other
than
document and transmission
of the same IB.
b. To the International Preliminary Examination Authority (IPEA) (Optional).
i. Handling fee*
IPEA/AT – ATS 2022.76
IPEA/AU – AUD 238
IPEA/EP – DEM 287.57 OR EUR 147
IPEA/CN – CNY EQUIVALENT TO CHF 233
IPEA/US – USD 153
IPEA/SE – SEK 1,270
ii. Preliminary Examination Fee (Optional)
IPEA/AT – ATS 2,200
IPEA/AU – AUD 450
IPEA/EP – DEM 2,998.29** (OR EUR 1,533)
IPEA/CN – CNY 800
IPEA/US – USD 750***
IPEA/SE – SEK 4,200
In view of above, an Indian applicant, filing an International Application for
Patent under Patent Cooperation Treaty, is required to remit the consolidated
amount in US Dollar by Demand Draft, payable to the Controller of Patents at
State Bank of India, New York Branch, for payment towards basic fee,
designation fee and search fee.
7.The required fees which must be paid to receiving office are the
Transmittal Fee, the International Fee and the Search Fee. They must all be
paid to the Receiving Office.
8.The Transmittal Fee is for the benefit the Receiving Office. It is intended to
compensate that Office for the work which is required to be performed in
connection with the International Application. The amount is left to be fixed by
the Receiving Office. It is due within one month from the date of receipt of the
International Application.
9.The International Fee is for the benefit of the International Bureau. It is
intended to cover the cost of the work the International Bureau must perform
under the PCT. The international fee consists of the basic fee and as many
designation fees as there are national or regional Offices designated in the
application by the applicant, with a maximum of 10 designation fees. The
amounts are fixed in the Schedule of Fees which forms part of the
Regulations. The basic fee is due within one month from the date of receipt of
the International Application. The designation fees are due within one year
from the priority date or one month from the said date of receipt, whichever is
later.
10.The Search Fee is for the benefit of the International Searching Authority.
It is intended to compensate that Authority for the work it must perform in
connection with the establishment of the international search report. It is due
within one month from the date of receipt of the International Application. The
amount is fixed by the International Searching Authority.
9.9 Withdrawal:
1.An International Application can be withdrawn at any time during the
international phase. Where the intent of the withdrawal is to prevent
publication, the notice of withdrawal must reach the International Bureau
before technical preparations for international publication have been
completed (that is, not later than 15 days before the date of publication).
2.A withdrawal of an International Application can be made with the condition
that the withdrawal be effective only if the international publication can still be
prevented.
9.10 Amendments:
1.The claims can be adjusted to the results of the international search report
by amending them once (under Article 19) with effect in all designated States.
Such amendments save costs for preparation of different sets of amendments
and for local agents filing such amendments before designated Offices, and
guarantee better provisional protection and patents in registration countries.
Individual amendments before each designated Office are also permitted in
the national phase (under Article 28 or 41) and all parts of the application can
be amended (under Article 34(2)) during the international preliminary
examination procedure under Chapter II.
9.11 International Preliminary Examination:
1. The following are Competent International Preliminary Examining
Authorities[IPEAs] for the purpose of Indian applicant:
Austrian Patent Office(AT)
Australian Patent Office(AU)
European Patent Office (EP)(only if ISA was AT,EP or SE)
China Intellectual Property Office (CN)
United States Patent & trademark office (US)
Swedish patent Office (SE)
2. The use of International Preliminary Examination
(i) is optional for the applicant;
(ii) provides, in addition to the international search report, an international
preliminary examination report containing an opinion on the usual criteria
of patentability before expenses are incurred for the national phase (for
translation, fees and foreign agents);
(iii) helps the applicant to adapt the International Application to the results
of the international search report;
(iv)allows, with effect for all elected Offices, the amending of all parts of
the International Application (description, claims and drawings) during
international preliminary examination;
(vi) defers until at least 30 months from the priority date entry into the
national phase if the demand is filed within 19 months from the priority
date.
(vii) The international preliminary examination report gives, for minimal
cost, an opinion and the probability of obtaining a patent:
(viii) The application will be more or less ready for acceptance by the
elected Offices after receiving international preliminary examination report.
(ix)if the report is negative and it is decided to abandon the application,
the applicant has saved all the expenses otherwise incurred before the
elected Offices for the payment of national fees, the preparation of
translations and the appointment of local agents.
9.12 The National Phase
1. The national phase follows the international phase. In the national Phase
before processing and examination may start in the national phase in the
designated or elected Offices, the applicant must perform certain acts
thereby effecting “entry into the national phase.” If the applicant does not
enter the national phase, namely, if he does not perform these acts within the
prescribed time limit, the International Application loses its effect in the
designated or elected States concerned with the same consequences as the
withdrawal of any national application in that State (Article 24).
2. For entry into the national phase before a designated or elected Office, it
is necessary that the national fee be paid to it and, where the International
Application has not been filed or published in the official language, or one of
the official languages, of that Office, that a translation into an official
language be filed. This must be done within a certain time limit, which is
different depending on the circumstances: if the designated State concerned
has been elected for the purpose of international preliminary examination
within 19 months from the priority date, the time limit is 30 months from the
priority date; in all other cases (that is, if the designated State concerned has
been elected after 19 months from the priority date or if the Chapter II
procedure has not been used in relation to that designated State), the time
limit is 21 months from the priority date. The time limits for entry into the
national phase are, in some Offices, even longer than 21 or 31 months. See
Volume II of the PCT Applicant’s guide for further information.
3. The national fees to be paid are usually about the same as the fees
required for the filing of a national or regional application. Some Offices, not
in India however, levy lower national or regional filing, search or examination
fees, or refund certain fees, on account of the existence of the international
search report or where an international preliminary examination report has
been established. This offsets, at least partly, the costs of filing an
International Application.
4. Where the original drawings are of a good quality, the applicant is not
required to file additional formal drawings with the Designated or Elected
Offices, permitting substantial economies in some cases. It is therefore
important to file drawings with the Receiving Office that fully comply with the
format requirements of the Regulations under the PCT.
5. Where the priority of an earlier application is claimed and a certified copy
of that application has been provided, it is not necessary to submit a certified
copy of the priority document to each designated or elected Office. The
International Bureau sends any required copies of the priority document to
the Offices concerned.
6. Apart from the payment of the national fee and, where necessary, the
filing of a translation, no designated or elected Office may require compliance
with further requirements within the 21- or 31-month time limit. Certain
additional requirements, such as appointment of an agent, indication of an
address for service of notifications, declaration of inventor, assignment
documents, and the like, are allowed, but the applicant must be given the
possibility of complying with those additional requirements after the
expiration of the time limits mentioned above.
7. The PCT leaves to each Contracting State freedom to prescribe the
substantive conditions of patentability applied in the national phase. This is
particularly true of what constitutes “prior art.” However, since the
requirements of prior art as defined in the PCT and its Regulations for the
purposes of the international phase are generally as strict as, or stricter than,
those defined in any national law, there is very little likelihood of unpleasant
surprises of this kind occurring in the national phase. On the other hand, the
PCT does not prevent any national law from requiring the applicant to
furnish, in the national phase, evidence in respect of any substantive
condition of patentability prescribed by that law.
Correction Of Translation
8. Where the translation of the International Application contains an error,
that error may be rectified by the applicant during the national phase before
all designated Offices with the exception of the national Office of the
Republic of Korea (which does not allow such correction).
9. The scope of the translation of the International Application may not,
however, exceed the scope of the International Application in its original
language. Where, for example, as a result of incorrect translation, the scope
of the International Application in the language of the translation is narrower
than in its original language, that scope may be broadened but must not
exceed the original scope. Where the scope of the translation is broader than
that of the International Application in its original language, the designated
Office or any other competent authority of the designated Office or any other
competent authority of the designated State may limit accordingly the scope
of the International Application or of a patent resulting from it (Article 46).
Amendments In The National Phase
10. The PCT guarantees the applicant the opportunity to amend the
description, the claims and the drawings before any designated or elected
Office. Thus, in addition to any amendments made in the international phase,
further amendments may be filed upon entering the national phase or within
a prescribed time limit thereafter.
Legal Remedies; Protection Against Loss Of Rights
11. Where, as a result of a mistake which was not timely corrected, an
International Application is considered withdrawn, the applicant may request
review of that decision by each of the designated Offices. In addition to
requesting review, the applicant has the opportunity to submit at the same
time, to each designated Office, a request for excuse of failure to comply with
a time limit. The legal basis of, and the conditions for, such a request are to
be found in the applicable national law or regional convention, which applies
equally to International Applications. Where that law or convention provides
for reinstatement, this can be requested. Where there is a possibility of
requesting further processing of the application, this can also be done.
Procedural safeguards are thus available in each designated State to PCT
applicants in the same way as they are to applicants for national or regional
applications not made via the PCT.
Preparation Of Patent Applications
1. Any patent application, drafted in accordance with the requirements of the
PCT, allows a maximum flexibility and benefit from the advantages of the
PCT:
(i) the same application documents can then be used for filing
national and/or international applicants;
(II) no adaptation of the original application is then required in a
much as the PCT format is valid for all designated Offices (including
the EPO, the Japanese Patent Office and the United States Patent and
Trademark Office).
9.13 Fee savings. National fees are reduced or completely dispensed with for
the procedure before some Offices which provides considerable savings, for
example:
European Patent Office (EPO):
– European search fee waved if international search report by AT, EP, ES,
SE;
– 20% reduction of European search fee if search report by AU, CN, JP,
RU, US;
– 50% reduction of European examination fee if international preliminary
examination report by EP.
German Patent Office:
– filing fee waived if the Office was the Receiving Office;
– examination fee reduced if an international search report has been
established.
Hungarian Patent Office:
– filing fee waived if the Office was the Receiving Office;
report by EP.
Japanese Patent Office:
– approximately 80% reduction of examination fee if international search
report established by JPO;
– approximately 20% reduction of examination fee if international search
report established by ISA other than JPO.
United Kingdom Patent Office: refund of part of preliminary examination and
search fee.
9.14 BASIC REQUIREMENTS
Under the said basic requirements to start the national phase in India, the
applicant is required to file the following with the DO/IN or RO/IN within the
prescribed time limit:
(i) An application on a plain paper (national form is not mandatory,
however the option remains with the applicant);
(ii)National fee in INR : INR 1,500 for individual(s)
In case of no or one priority, and multiple
of INR 1,500 in case of every multiple
priority,
INR 5,000 for legal entity other than
individual(s) In case of no or one priority, and
multiple of INR 5,000 in case of every
multiple priority:
(iii) Where the international application has not been filed or published in one
of the official languages of DO/IN or RO/IN as the case may be, a translation
of the application (this replaces the requirement in (i), above) in one of the
official languages, [under PCT Article 22: Description, claims (if amended,
both as originally filed and amended together with any statement under PCT
Article 19), any text matter of drawings, abstract. Under PCT Article 39(1),
Description, claims, any text matter of drawings, abstract (if any of those parts
has been amended, both as originally filed and amended by the annexes to
the international preliminary examination report)]
(iv)Additional Special Requirements
Under the said additional special requirements (PCT Rules 51 bis), no
designated Office is to require before the expiration of the applicable time limit
for entering the national phase, the performance of acts other than those
referred to in Article 22, namely the payment if the national fee, furnishing of a
translation and, in exceptional cases, the furnishing of a copy of the
international application, and indication of the name of address of the
inventor. All other requirements of the national law are referred as “special
requirements” and they may be complied with once national processing has
started. As per DO/IN or RO/IN the special requirements of the Office are as
follows:
a) Name and address of the inventor if they have not been furnished in the
“Request” part of the international application,
b) Instrument of assignment or transfer where the applicant in not the
inventor,
c) Document evidencing a change of name of the applicant if the change
occurred after the international filing date and has not been reflected in a
notification from the International Bureau (From PCT/IB/306),
d) Declaration of inventorship by the applicant,
e) Statement regarding corresponding applications in other countries,
f) Power of attorney if an agent is appointed,
g) Address for service in India (but no representation by an agent is
required),
h) Verification of translation, and
i) International application or translation to be furnished in three copies.
Chapter I
Preliminary
Contents
1.1.0 Short title, extent and commencement
1.2.0 Definitions and interpretation
1.3.0 Patentable inventions
1.1.0 Short title, extent and commencement:
1.1.1 Section 1 sub-section (1) of the Act relates to the title of the Act, which is
to be called as the patents Act, 1970. Sub section (2) provides that this act
is applicable to whole of India. It does not exclude any part of India. Sub
section (3) provides that the Central Govt. may appoint any date from
which the Act comes into force. It also provides that different provisions of
the Act may come into force on different dates. This sub section further
provides that any reference in any provisions to the commencement of the
Act shall be construed as a reference to the coming into force of that
provision. All the provision of this act except sections 12 (2), 13(2), 24(A)
to 24(F), 157A, 28, 68 and 125 to 132 have come into force on 20th April,
1972 vide Gazette notification No. S.O. 300 (E) dated 20.4.1972 in
Gazette of India Extra Part II Section 3(ii), pages 735. The provisions of
sections 12(2), 13(2), 28, 68 & 125 to 132 have come into force on
1.4.1978 vide notification no. S.O. 799 dated 10.3.78 in Gazette of India
1978 part II Section 3(ii) page 764.
1.1.2 Provisions of Section 24 A to 24 F which relate to Exclusive Marketing
Right and provisions of Section 157A which relates to protection of
Security of India have come into force from 1.1.1995 by Act 17 of 1999
notified in Gazette of India Extra part II, Section 3, dated the 26th March,
1999.However vide same notification the provision of section 39 which
related to prior permission for person resident in India to apply for Patent
outside India have been abolished.
1.2.0 Definitions and interpretations
1.2.1 Sec. 2(1)(a): “Assignee” includes an assignee of assignee & the legal
representative of a deceased assignee & references to assignee of any
person includes reference to assignee of legal representative or assignee
of that person. Therefore, “assignee” may be:
(i) An assignee of the assignee
(ii) Legal representative of deceased assignee
(iii) Reference to assignee of any person includes references to the
assignee of legal representative or assignee of that person
1.2.2 Sec. 2(1) b: “Controller” means the Controller General of Patents
Designs & Trade Marks referred to in Sec. (73) of the Act.
(i) Controller General of Patents, Designs & Trade Marks appointed
under Sec. 4(I) of Trade and Merchandise and Merchandise Marks
Act, 1958 should be the Controller of Patents for the purpose of this
Act.
(ii) Controller includes Assistant Controller, Deputy Controller, Joint
Controller, & Senior Joint Controller.
(iii) The functions and duties performed by Assistant Controller, Deputy
Controller, Joint Controller, & Senior Joint Controller shall be
deemed to have been performed by Controller.
(iv) In the absence of the respective Controller to whom the case
relates shall be transferred to the other Controller in writing by the
Senior most controller present on the particular day. The powers
enjoyed by the Controller of Patents under the Act or otherwise
under administrative system shall be enjoyed in the same manner
by Assistant Controller, Deputy Controller, Joint Controller, &
Senior Joint Controller.
(v) Any reference to the Controller shall be construed as including a
reference to any Officer discharging the function of the Controller in
pursuance of Sec. 73 of the Act.
1.2.3 Sec. 2(1)(c): “Convention Application” means an application for
patent by virtue of Sec. 135.
(i) Convention application should be filed in India within 12 months
from the date of filing of basic application in the convention country.
(ii) The convention application can be filed by any person whether
natural or legal entity or legal representative or assignee of that
person.
(iii) Application filed under PCT claiming priority date of member
country of the Paris Convention.
(iv) The application filed by a person who is the national of any of the
member countries notified by Central Govt. by notification in the
Official Gazette declaring such member country to be a convention
country within prescribed time shall also be considered as
convention application.
1.2.4 Sec. 2(1)(d): “Convention Country” means a country notified as such
under sub section (1) of Sec. 133. The Central Govt. has power to notify a
country or group of countries or union of countries as convention
country.”Convention countries” include those countries which have been
notified as convention countries by Central Govt. vide notification dated
Jan. 3,1995, September, 28, 1998 in Gazette of India Part II Sec. 3
1.2.5 Sec. 2(1)(e): “District court” has the meaning assigned to that expression
by the Code of Civil Procedure, 1908 (V of 1908).
(1)“District court” is defined Under Sec. 2(4) of Civil Procedure Code as
follows.
“District” means the local limit of the jurisdiction of a principal Civil
Court of original jurisdiction called as a “District Court”.
(2)The term “District Court” includes all the district courts of all states
falling within the jurisdiction of appropriate office.
1.2.6 Sec. 2(1)(f): “Exclusive Licence” means a licence from a patentee which
confers on the licencee and persons authorized by him, to the exclusion
all other persons (including the patentee), any right in respect of the
patented invention, and “exclusive licencee” shall be construed
accordingly.
(i) Licence may be explicit, implied and statutory.
(ii) Exclusive licencee excludes all other persons including patentee
from the right to use the invention.
(iii) Exclusive licencee is a person to whom the rights in respect of
patented invention have been assigned to the exclusion of all other
persons including the patentee.
1.2.7 Sec. 2(1)(g): “Food” means any article of nourishment and includes any
substance intended for the use of babies, invalids or convalescents as an
article of food or drink.
(i) Any article of nourishment having some calorific value is a food.
(ii) Any substance, which can be used for the use of babies, invalids or
convalescents as an article of food or drink, shall also be
considered as food.
(iii) Any substance used for nourishment of plants or animals shall not
be considered as food for the purpose of this Act. e.g. fertilizer,
plants growth promoters or plant growth hormones.
1.2.8 Sec. 2(1)(h): “Government undertaking” means any industrial undertaking
carried on-
(i) By a department of the Government, or
(ii) By a corporation established by a Central Provincial or State Act,
which is owned or controlled by the Government, or
(iii) By a Government company as defined in section 617 of the
Companies Act, 1956 (1 of 1956)
and includes the Council of Scientific and Industrial Research and any
other institution which is financed wholly or for the major part by the said
council.
“Government undertaking” means any Industrial undertaking carried on by
a department of Government or by a corporation established by a Central
provincial or state act, which is owned or controlled by the Government or
by a govt. company as defined in Section 617 of the company Act, 1956.
(i) It also includes the council of Scientific & Industrial Research or any
other institution, which is financed wholly or for the major part, by
the said council.
1.2.9 Sec 2(1)(i) “High Court” means-
(i) In relation to the Union territory of Delhi, the High Court of
Delhi;
(ii) In relation to the State of Arunachal Pradesh and the State
of Mizoram, the Gauhati High Court ( the High court of
Assam, Nagaland, Meghalaya, Manipur, Tripura, Mizoram
and Arunachal Pradesh);
(iii) In relation to the Union territory of the Andaman and Nicobar
Island, the High Court at Calcutta;
(iv) In relation to the Union territory of the Lakshadweep, the
High Court of Kerala;
(v) In relation to the Union territory of Goa, Daman and Diu and
the Union territory of Dadra and Nagar Haveli, the High
Court at Bombay;
(vi) In relation to the Union territory of Pondicherry, the High
Court at Madras;
(vii) In relation to the Union territory of Chandigarh, the High
Court of Punjab and Hayana; and
(viii) In relation to any other State, the High Court for that State;
1.2.10 Sec. 2(1)(j):“Invention” means any new and useful-
(i) Art, process, method or manner of manufacture
(ii) Machine, apparatus or other article;
(iii) Substance produced by manufacture,
and includes any new and useful improvement of any of them, and an
alleged invention.
The detailed interpretation of the word “invention” is given under the title
“patentable subject matter”.
1.2.11 Sec. 2(1)(k): “Legal representative” means a person who in law
represents the estate of a deceased person.
(i) A person to become legal representative should be capable of
representing the deceased person by any means under the law.
(ii) It recognizes that right to apply is a right, which on the death of the
owner right devolves to his legal representative.
1.2.12 Sec. 2(1)(l):medicine or drug means:-
(i) All medicines for internal or external use of human beings or
animals,
(ii) All substances intended to be used for or in the diagnosis,
treatment, mitigation or prevention of diseased in human being or
animals.
(iii) All substances intended to be used for or in the maintenance of
public health, or the prevention or control of any epidemic disease
among human beings or animals.
(iv) Insecticides, germicides, fungicides, weedicides and all other
substances intended to be used for the protection or preservation of
plants,
(v) All chemical substances, which are ordinarily used as intermediates
in the preparation or manufacture of any of the medicines, or
substances above referred to.
1. All substance capable of being used for internal or external
use of human beings or animals are medicine or drug. It
does not include all the above-referred substance for internal
or external use of plants.
2. If a Substances falls within the scope of section 3(b) of the
Drugs & Cosmetics Act of 1940 it is also to be considered as
Drug or medicine [Reference ICI Ltd’ Patent 1976, IPLR 185
at Page-188] The term “drug” under Drugs & Cosmeticd Act,
1940 defined as-
(I) All medicines for internal or external use of human
being or animals and all substances intended to be
used for or in the diagnosis, treatment, mitigation or
prevention of diseases in human beings or animals
and
(II) Such substances other than foods intended to effect
the structure or any function of the human body or
intended to be used for the destruction of the
vermin’s or insects which cause diseases in human
beings or animals, as may be specified from time to
time by the Central Govt. by notification in the
official Gazette.
“The Central Govt., have, by notification [Ministry of Health Notification No.
1-20/60-D, dated 3-6-1961] specified by following substances as drug
(1) Contraceptives
(2) Disinfectant,
(i) Disinfective fluids made from coaltar oils, coal tar acid or similar
acids derived from petroleum with or without hydrocarbons
(ii) Disinfectant fluids made from synthetic or naturally occurring
substances other than those mentioned in (I) above by virtue of
their Composition possessing disinfectant properties or with
claim to possess disinfectant properties.
3. All the substances falling in this section as drug or medicine if
used for the purposes other than the use for human beings or
animals shall not be considered as used for drug and medicine.
4.An undertaking to that effect those substances are not used for
human beings or for animals, shall be given in the specification.
5.The substances capable of being used as drug or medicine when
used in detergents and paint preparations, they are not considered
as drug for the reason that they are only preventive and not
curative. Moreover, they are not being used for the treatment of
human being and animals.
1.2.13 Sec. 2(1)(m): “Patent” means a patent granted under this Act and
includes for the purposes of section 44, 49, 50, 51, 52, 54, 55, 56, 57, 58,
63,65, 66, 68, 70. 78. 134. 140. 153, 154 and 156 and Chapters XVI, XVII
and XVIII, a patent granted under the Indian Patents and Designs Act,
1911 (2 of 1911)
(i) It includes patent of addition, patent granted on divisional
application and all other types of patents permissible under the Act.
1.2.14 Sec. 2(1)(n); “Patent agent” means a person for the time being
Registered under this act as a patent agent.
(i) A person acting or intending to act as patent agent should be
registered in the register of patent agent.
(ii) While signing the document he should give a registration number.
and year in which he is registered.
(iii) The applicant on the prescribed form with the prescribed
court/stamp fee should duly authorize him.
(iv) The person acting as a patent agent should give declaration that he
is acting in good faith, honestly deligently and with proper
authorization along with the statement that he is well conversant
with the matter he is dealing with.
1.2.15 Sec. 2(1)(o): “patented article” and “patented process” means respectively
an article or process in respect of which a patent is in force.
(i) In case where patent is granted in respect of an article or a
process, but not being in force by virtue of non payment of renewal
fee or otherwise shall not be construed as patented article or
patented process.
(ii) “Patented article” includes any article made by a patented process
but may not include an article made by a patented machine if the
machine alone could be said to be a patented article. [Cooperative
Union Ltd’s application 1934) 50 RPC 161].
1.2.16 Sec. 2(1)(p): “Patentee” means the person for the time being
entered on the register as the grantee or proprietor of the patent.
(i) Patentee includes exclusive licencee or assignee or legal
representative or assignee of assignee.
(ii) Such a person has the power to assign;/grant licence under or
otherwise deal with the patent and to give effectual receipts for any
consideration for any such assignment, licence or dealing subject to
the provision of this act.
1.2.17 Sec. 2(1)(q): “Patent of addition” means a patent granted in
accordance with section 54.
(i) Grant of patent of addition cannot be objected on the ground of
novelty.
(ii) The patent of addition is granted for a term equal to a patent
granted for a main invention.
(iii) The term of patent of main patent and Patent of Addition therefore
run concurrently.
(iv) No renewal fee is payable for patent of addition.
(v) Application for patent of addition shall be filed in the office where
the application for main application filed.
(vi) A separate application shall be filed for each patent of addition
distinct only to main application.
(vii) Application for patent of addition cannot be filed for series of
inventions for which separate patent are in existence (HSJ’s
Application, 31 RPC 47).
1.2.18 Sec. 2(1)( r): “Patent Office” means the patent office referred to in
section 74.
(i) Patent office under the Act means the Head Office of the Patent
office, existing branch offices and any more branch office which
may be opened in future as the Central Government has power to
do so under section 74 of the Act.
(ii) The patent office is the office established for the purpose of The Act
to administer various provisions relating to the grant of Patent and
maintenance of the register of patent. The officers appointed by
the Central Govt. will discharge the function of the Controller, which
the Controller may authorize them to discharge. While discharging
the function of the Controller under the power delegated to them,
the Officers have to work within the provision of the Act.
If any person uses on his place of business, or any document
issued by him or otherwise the words “PATENT OFFICE” or any
other words suggesting that his place of business is, or is officially
connected with, the patent office, he shall be punishable with
imprisonment for a term which may extend to six months, or with
fine, or with both.
Hours of Business : The office is open to the public from 9.30
A.M. to 6.P.M. on all working days from Monday to Friday. On
Saturdays, Sundays and Government Holidays the office remains
closed to the public.
1.2.19 Sec. 2(1) (s): “Person includes the Govt”.
(i) For the purpose of the Act, a person may be natural or legal entity
or registered society.
(ii) The Govt. is also a person under the Patents Act 1970 whether it is
Central Govt. or State Govt..
(iii) Corporations, Govt. undertakings and other autonomous institution
will also be a person under the Act.
(iv) Partnership firm or body, which is un-incorporated, is not a person
and is not considered as a person under the Act because the
partners operate the firm and it has no independent existence. The
actual karta of partnership firm are its partners. The application
may be filed in names of all personally responsible partners.
1.2.20 Sec. 2(1)(t): “Person interested” includes a person engaged in, or in
promoting, research in the same field as that to which the invention
relates.
(i) The person to be interested person under the Act should have in
his possession a patent or patents relating to the same field or he
should have manufacturing interest or trading interest.
(ii) A person who has assigned his interest in a patent application has
no locus standi subsequently to oppose the application or to apply
for revocation of patent granted on the basis of the application.
(iii) A financial interest of a holding company, whose subsidiary is a
person interested suffices to enable the holding company to oppose
the grant of the patent (KAISER Aluminum & Chemicals
Corporation Vs. Reynold Metals Co. (1972 RPC 648).
(iv) In addition to the above a person who can establish any bonafide
interest can also be a person interested under the Act.
1.2.21 Sec. 2(1)(u): “prescribed” means in relation to proceedings before
High Court, presented by the rules made by the High Court and in
other cases prescribed by the rules under this Act.
1.2.22 Sec. 2(1)(v): “Prescribed” manner includes the payments of the
prescribed fee.
(i) For the purpose of this Act, the form as prescribed under 2nd
schedule of the patent rules should be used.
(ii) This should be filed within prescribed time.
(iii) The forms or any letter should be filed if necessary along with
prescribed fee.
(iv) Prescribed fee shall mean the fee prescribed under first
schedule of the rules of the Patents Rules, 1972 as amended by
the Patents (Amendment) Rules,1999.
1.2.23 Sec. 2(1)(w); “Priority date” has the meaning assigned to it by
Secton 11.
1.2.24 Sec. 2(1)(x): Register means the register of patents referred to in
sec. 67.
(i) Register of patents maintained at the branch offices are also
Register of patents under this Act.
1.2.25 Sec. 2(1) (y): “True & first inventor” does not include either the first
importer of invention to India or a person to whom an invention is first
communicated from outside India.
(i) The first importer of invention into India is not a true & first
inventor.
(ii) First communicatee is also not a true & first inventor.
1.3.0 Patentable Inventions
1.3.1 Patentable inventions: The fundamental principle of Patent law is that,
any subject matter to be patentable must be an invention.
Sec. 2(1)(j) of this Patent Act, 1970 defines the term “invention” as
follows.
“Invention” means any new & useful-
(i) Art, process method, or manner of manufacture,
(ii) Machine, apparatus or another article,
(iii) Substances produced by manufacture, and include any new
& useful improvement of any of them, and an alleged
invention.
1.3.2 According to this definition of invention there are three ingredients
(i) the subject matter should be a manner of manufacture
(ii) it should be new, and
(iii) it should be useful (utility)
1.3.3 Manner of Manufacture – Any subject matter to be Patentable should
relate to a manner of manufacture, which includes not only a process of
manufacture but also a manufactured product. The word manufacture has
not been defined under the Patents Act, 1970. Therefore in the absence
of any definition of the term in this Act, it is established law that natural
meaning of the word manufacture, in the standard dictionaries, should be
accepted.
i.) The dictionary meaning of the word manufacture in most of the
standard dictionaries is, making of any article, substance or product, by
hand or construction.
ii) The reason why any art, process method or a manner of manufacture
should result into a substance or an article is that, the provision of sec.
48(2) of patents Act, 1970 Confers on the patentee, the exclusive right
only for an article or substance or a method or process of manufacture of
an article or substance. An article includes any machine or apparatus.
iii) A manner of adopting natural material by the hands of man or by man
made devices or machinery is a manner of manufacture (48 RPC 185).
iv) The term “art” refers to applied art or technology of manufacture and
not to fine art for which protection should be sought under copyright law.
v) An alleged invention means something, which is alleged as a manner of
new manufacture, even though, in fact, it may not be a new manufacture.
But an alleged invention must satisfy the requirement of the other
definition.
vi) In GEC Application Justice Morten held that a method or process is a
manner of manufacture if it (a) results in the production of some vendible
product, or (b) improves or restores to its former condition, of a vendible
product or (c) has the effect of preserving from deterioration some
vendible products to which it is applied. However this is not a hard and
fast rule to cover each and every case.
1.3.4 Invention relating to improvement or combination
1. An improvement on something known before or combination in different
manner already known, in order to be patentable should be more than
mere workshop improvement and should independently satisfy the test of
invention.
2. The improvement or combination should produce a new result or a
new article or a better article.
3. The combination of old known integers should be such that it should
result in a improved process or article by their inter-related working.
4. Mere colocation of more than one integers or things, not involving the
exercise of any inventive faculty does not qualify as invention.
5. The subject matter for patent may satisfy the requirement of manner of
manufacture but may lack in novelty. In such case the subject matter
cannot be considered as invention.
1.3.5 Novelty
1. In order to be novel the subject matter should satisfy the criteria of
novelty as laid down under section 13 of Patents Act with exceptions
provided under the heading ‘ANTICIPATION’ in chapter VI of the Act.
1.3.6 Utility:-
1. An invention to be Patentable must be useful or has some utility.If the
subject matter is devoid of utility it does not satisfy the requirement of
invention.
2. For the purpose of utility ,the element of commercial or pecuniary
success has no relation to the question of utility in patent law.
However, where the improvement by reason of cheaper production,
such a consideration is of the very essence of the patent itself and
the question is of thing claimed can not be considered an invention
unless that condition is fulfilled [4RPC 449 p. 462 (HL) per Lord
Chancellor]
3. If the invention gives the result as promised in the specification,
objection on the ground of usefulness should fail.
4. The usefulness of an alleged invention depends not on whether by
following the directions in the complete specification all the results
not necessary for commercial success can be obtained, but on
whether by such directions the effects that the application/patentee
professed to produce could be obtained.
5. The meaning of usefulness is therefore useful for the purpose
indicated by the applicant or patentee whether a non-commercial
utility is involved.
6. The usefulness of the invention is to be judged, by the reference to
the state of things at the date of filing of the patent application, if the
invention was then useful, the fact that subsequent improvement
have replaced the patented invention render it obsolete and
commercially of no value, does not invalidate the patent.
1.3.7 Patentability of Biotechnological Inventions.
In view of the Office instructions of the Controller General of Patents,
Designs & Trademarks dated 15th July, 1991, view point regarding
patentability of biotechnological inventions in India is:
(1) Inventions relating to organisms or biological material per se viz
(a) living entities of natural or artificial origin such as animals,
plants and microorganisms, biological material such as plasmids,
viruses, gene, recombinant DNA, bacteria, fungi, algae and other
materials having self replicating properties and parts thereof, (b)
naturally occurring substances from living entities, biological
materials and also process for their production, are not Patentable
under the Act. Hence no claim is allowable for such inventions.
(2) Inventions relating to process or methods of production of tangible
and nonliving substances like enzymes, antibiotics, insulin,
hormones, interferon, alcohols, vaccines etc. by bioconversion or
using such microorganisms or by utilizing the above referred
biologically active substances as well as chemical substances
produced by using genetically engineered organisms or such
existing substances made more economically by use of
biotechnology and/or microbiology are patentable under the
Patent Act, 1970.
(3) While claiming the inventions in respect of above subject where
strain/bacteria have been used and deposited in depositing
authorities and allotted their accession number, such depositions
or accession number should be followed by the characteristics of
such strain or bacteria.
1.3.8 Computer Programs
1. Computer program is not patentable invention as computer program is
a set of instructions for controlling a sequence of operations of a dataprocessing
system. It closely resembles a mathematical method .It
may be expressed in various forms eg. A series of verbal statements, a
flow chart, an algorithm, or other coded form and may be presented in
a format suitable for direct entry into a particular computer, or may
require transcription into a different format (or computer “language”). It
may merely be written on paper or recorded on some machinereadable
medium such as magnetic tape or disc or optically scanned
record, or it may be permanently recorded in a control store forming
part of a computer. Thus it is evident that a program may be presented
in terms of either software or firmware.
2. Since the claims may be couched in terms which tend to obscure the
fact that the invention relates to a computer program, it is always
essential to analyse them, in the light of what is described and of the
prior art, in order to identify the contribution to the art and hence
determine whether this advance resides in, or necessarily includes,
technological features, or is solely intellectual in its content. For
example, if the new feature comprises a set of instructions (program),
which may be formulated and presented in any one of a variety of
ways, designed to control a known computer to cause it to perform
desired operations, the computer being suitable for the purpose
without special adoption or modification of its hardware or organization
then, no matter whether claimed as “a computer arranged to operate
etc” or as “a method of operating a computer etc” .Such a subject
matter is not Patentable and hence excluded from patentability . The
invention here relates solely to the novel program. The claim might eg
stipulate that the instructions were encoded in a particular way on a
particular known medium but this would not affect the issue. If however
the format of the program, or the nature of the record medium (tape,
disc etc.) necessitated some non-standard adaptation to the computer
itself (this factor being integral to the invention and not an arbitrary
unrelated addition) then the exclusion would not apply. Likewise an
invention which related to a particular manner of organizing the overall
operation of the Central Processing Unit and the peripheral units,
regardless of whether the invention were implemented by means of a
program or special hardware facilities, would not be excluded.
3. If the implementation of a new program requires internal modification
to a computer of such a nature that it may reasonably be regarded as a
new computer then clearly a claim to this computer is not excluded,
even though at first sight the invention may seem to relate merely to a
program and the purpose of modifying the computer is subsidiary to
this. The modification must however be inventive itself; if a computer is
modified in a manner which is the obvious way of implementing the
program, then the inventive contribution will still reside solely in the
program itself.
4. As a general rule a novel solution to a problem relating to the internal
operations of a computer, although it may comprise a program or subroutine,
will also necessarily involve technological features of the
computer hardware or the manner in which it operates and thus, if
appropriately claimed, may be patentable.
5. A hardware implementation performing a novel function is excluded
only if that particular hardware system is known or is obvious
irrespective of the function performed.
6. An invention consists of hardware along with software or computer
program in order to perform the function of the hardware ,such
invention may be considered Patentable
CHAPTER II
Inventions Not Patentable
Contents
· Non Patentable inventions
· Non Patentable inventions relating to atomic energy
· Inventions where only methods or processes of
manufacture Patentable
2.1.0 Section 3: Non Patentable Inventions
There are certain inventions fulfilling all the criteria of patentable invention
such as novelty, usefulness and manner of manufacture but they have
been excluded from patentability under Sec. 3 of the Patents Act, 1970
which are as follows.
2.1.1 Section 3(a)
An invention which is frivolous or which claims anything obvious
contrary to well established natural laws.
(i) Merely making in one piece, articles, previously made in more or
two pieces is frivolous. Mere usefulness is not sufficient (Indian
vaccum brake co. ltd vs. Laurd (AUR 1962 CAK 152).
(ii) Perpetual motion machine alleged to be giving output without any
input is not patentable as it is contrary to natural law.
2.1.2 Section 3(b)
An invention the primary or intended use of which would be contrary
to law or morality or injurious to public heath.
(i) The invention, the use of which is contrary to the law for the time
being inforce or use of which is prohibited, is not patentable e.g.
any devices, apparatus or machine for theft, gambling apparatus or
method for gambling,method of adulteration of food etc.
(ii) If the inventions, the use of which is found to be injurious to public
health are also not Patentable eg. method of adulteration of food.
2.1.3 Section 3(c)
The mere discovery of a scientific principle or the formulation of an
abstract theory.
(i) Claim for discovery of scientific principle is not patentable, but such
a principle when used with process of manufacture resulting into a
substance, or an article, is patentable.
(ii) Scientific theory is a statement about the natural world. These
theories themselves are not patentable no matter how radical or
revolunationary in-sight they provide, but if they lead to practical
application in the process of manufacture of article or substance ,
they may well be patentable.
(iii) The claim for formulation of abstract theory is not patentable on the
ground that they do not result in a manufacture of any product or
process.
(iv) There is a difference between discovery & invention. The discovery
adds to the amount of human knowledge by disclosing something,
which has not been seen before, whereas an invention also adds to
the human knowledge by suggesting an act, to be done which
results in a new product or a new process. The formulation of an
abstract theory does not suggest any act to be done which may
result in a product or a process e.g. finding that a particular known
material is able to withstand much shock, is a discovery & therefore
is not patentable, but a claim to a railway fastener made of the
material would not fall of this exclusion and would be allowed if it
passes the test of patentable invention.
(v) Although a new method of calculation is not invention but new
application for performing that method resulting into a process or
product, or new apparatus for carrying out that method can be
considered patentable. But it must be distinguished from non
calculating application by technical features for e.g. A guide rule
differing from known rules only in the scales is not patentable.
(vi) The fact that a known material or article is found to have a hitherto
unknown property is a discovery and not an invention. But if the
discovery leads to the conclusion that the material can be used for
making a particular article or in a particular process, then the article
or process could be patentable. For example finding out the fact
that a particular known material is able to withstand mechanical
shock is a discovery and therefore unpatentable, but a claim to a
railway sleeper made of that material would not fall under
exclusion, and would be allowable if it passed the tests for novelty
and inventive step.
2.1.4 Section 3(d)
The mere discovery of any new property or new use for a known
substance or of the mere use of a known process, machine or
apparatus unless such known process results in a new product or
employs at least one new reactant:
I. Mere discovery of new property is not patentable invention e.g. a
mere discovery of a new property of the substance such as aspirin
for use of treatment of some other disease cannot be considered
patentable.
II. New use for a known substance is also not patentable; it means 2nd
or 3rd use for a known substance cannot be allowed.
III. Mere use of a known process is not patentable unless such known
process results in a new product or employs at least one new
reactant.
IV. Mere use of Aspirin for cardio-vascular disease, which was earlier
used for analgesic purpose, is not patentable. However, a new and
alternative method for preparing Aspirin is patentable.
V. “Metric time showing Device” (101/Bom/72) was held not
patentable. The device comprises a normal clock or watch having
usual hands for indicating hours, minutes and seconds, wherein
dial or like visual numerical indicators are divided into 10 large
divisions for hours, hours divisions are divided into 100 divisions
indicating minutes and each minute divided into 100 parts
representing seconds. It was held to be a mere use of known
device hence not patentable.
2.1.5 Section 3(e)
A substance obtained by a mere admixture resulting only in the
aggregation of the properties of the components thereof or a
process for producing such substance:
(i) A claim for a substance obtained by mere admixture of ingredients
resulting only in the aggregation of the properties of such
components or ingredients is not patentable invention e.g. a
mixture of sugar and some colorants in water to produce a soft
drink is a mere admixture resulting into aggregation of the
properties. Similarly a mixture of different types of medicament or
medicine to cure multiple diseases is also a mere admixture of
substances, and is not patentable invention.
(ii) However an admixture resulting into synergistic properties of a
mixture instead of aggregation of properties of ingredients thereof is
not considered as mere admixture e.g. soap, detergent, lubricants
and polymer composition etc. Hence they are patentable.
(iii) A process for producing a substance by admixing, which is
resulting into the aggregation of the properties components thereof,
is also not patentable invention.
(iv) All the substances which are produced by mere admixing, or a
process of producing such substances should satisfy the
requirements of synergistic effect in order to be patentable.
(v) Anti-perspirants compositions for application to human skin
(63/Bom/75) was held not patentable. The said composition
comprises of : (a) non- cellulosic moisture absorbing polymer
capable of absorbing moisture at least equivalent to its weight, and
(b) a carrier. The composition was held admixture thereby not
patentable for the reason that the composition has got the total sum
of the properties of two components namely, the properties of
absorbent polymer to absorb moisture or to absorb perspiration on
being applied to human skin, which has not been in any way
influenced by the presence of said carrier to act as carrier or
diluents.
(vi) A composition of two drugs, i.e. Paracetamol and Ibuprofen for
curing fever and pain or process of preparation thereof is not
patentable for the reasons that the composition is mere admixture
of two drug components resulting into aggregation of properties
thereof since Paracetamol is well known for treatment of fever and
other one for treatment of pain. However, if the mixture of drugs
can give some unexpected results in the treatment, then the
process of preparation of such composition can be considered
patentable.
2.1.6 Section 3(f)
The mere arrangement or re-arrangement or duplication of known
devices each functioning independently of one another in a known
way.
(i) Any duplication of known device or apparatus manufactured by
mere arrangement and re-arrangement in which all the devices are
functioning independently in known way is not patentable.
(ii) A mere juxtaposition of known devices in which each device
functions independently are not patentable.
(iii) It is accepted as sound law that mere placing side by side old
integers so that each performs its own function independently of the
others is not a patentable combination (British Celanese Ltd., Vs
Courtaulds Ltd (52) RPC 171).
(iv) However where the old integers where placed together have some
working inter relation producing a new or improved results, then
there is a patentable subject matter in the idea of the working
interrelation brought about the collocation of the integers.
(v) A mere juxtaposition of features already known before the priority
date which have arbitrarily been chosen from among a number of a
different combinations which could be chosen is not a patentable
invention. Further when two or more features of an apparatus or
device are known and they are justaposed without any inter
dependence on their functioning of the apparatus or device should
be held to have been already known (Rampratap vs Bhabha
Atomic Research Center, 1976 IPLR 28 P. 35)] ,Umbrella with
fan (388/Bom/73),Bucket fitted with torch,Clock and transistor
in a single cabinet.They are not patentable since they are nothing
but mere arrangement and rearrangement without having any
working interrelationship between them and functioning
independently of each other.Another example is of play-cumeducational
device (1532/Cal/76). The device comprises of a chart,
a set of tokens for players and one or more dice. It was held not
patentable under the provisions of this section since the chart,
token and dice, all are working independently of each other and
there is no inter-relation between them.
2.1.7 Section 3(g)
A method or a process of testing applicable during the process of
manufacture for rendering the machine, apparatus or other
equipment more efficient or for the improvement or restoration of the
existing machine, apparatus or other equipment or for the
improvement or control of manufacture.
(i) A method or process of testing applicable during the process of
manufacture is not patentable.
(ii) Any process applicable during the process of manufacture for
rendering the methods, apparatus or other equipments more
efficient is also not patentable.
(iii) Any process for control of manufacture is not patentable.
(iv) Any method or process for restoration of existing machine
is also not patentable.
(v) Process for testing of chlorine level in the water is a method of
testing not patentable. Further a method of laboratory testing in
water based culture media for zones of inhibition (310/Del/80) was
held not patentable.
2.1.8 Section 3(h)
A method of agriculture or horticulture.
(i) Any process or method of Agriculture is not patentable.
(ii) A method of producing a new form of a known plant even if it
involved a modification of the conditions under which natural
phenomena would pursue their inevitable course is not patentable.
(N.V. Philips Gloeiammpenfabrieken’s Application 71 RPC
192).
(iii) A method of producing improved soil from soil with nematodes by
treating the soil with a preparation containing specified
phosphorathioates was held not patentable (Virginia Carolina
Chemical Corporation application 1958 RPC 38).
(iv) A method of producing mushroom plant was held not patentable
[445/Del/93].
(v) The plant and animal varieties are also not patentable The
exclusion of plant and animal varieties from patentability applies
only when purely biological features characterize them.
(vi) A method for cultivation of an algae (264/Cal/79) and a method for
production of mushrooms (445/Del/93) are held not patentable.Both
these methods were held not patentable for the reasons that the
production of mushrooms and cultivation of an algae analogous to
agriculture, since they belong to plant kingdom and therefore fall
within the provisions of this section.
2.1.9 Section 3 (i)
Any process for the medicinal, surgical, curative, prophylactic or
other treatment of human being or any process for a similar
treatment of animals or plants to render them free of disease or to
increase their economic value or that of their products.
(i) A method of treatment of malignant tumor cells and method of
removal of dental plaque and carries are not patentable, since they
are held to be treatment of human beings
(ii) A method of cultivation of an algae and method of production of
mushrooms as quoted above are held not patentable under the
provisions of this section also for the reasons that the purpose of
applicants inventions is to achieve varying degree of growth
promotion, increased output, improved quality which definitely
increases their economic value.
(iii) A method of medicinal treatment of human beings is not patentable.
(iv) Any process or methods for treatment of animals or plants to render
them free of disease is also not patentable.
(v) Any process or method of treatment or animals or plants to
increase their economic value or that of their product is not
patentable.
(vi) The art of curing illness cannot be said to be an art of manufacture
(English patent practice).
(vii) Surgical process and processes for the prevention and cure of
disease in human beings are not patentable. In Uniliver Ltd.
Application (1983) RPC 219, the patent courts in UK held that the
term therapy included the prevention as well as the treatment or
cure of disease, therefore any process relating to therapy is also
not patentable.
(viii) Prophylactic treatment such as vaccination, inoculation is to be
regarded as therapy, which include treatment. The same
consideration applies for animal as well as for human beings. For
example prophylactic immuno therapy in animals are regarded as
therapy.
(ix) Any application of substance to human body purely for cosmetic
purpose is not a treatment or therapy. On the other hand the
application to the skin of an ointment designed to be effective to
remove keratoges from the skin would be instance of medical
treatment. To be treatment in relevant senses it seems that the
purpose of the application to the body whether a substance or a
process must be the arrest or cure of a disease or diseased
condition or correcting of some malfunction or amelioration of some
incapacity or disability (Joos Vs. Commissioner of Patent (1973)
RPC 59).
(x) It was held in Lee pharmaceuticals application (1978) RPC 51
that since one of the results of sealing pits and fissures in teeth was
to prevent the onset of dental decay, the purpose of the treatment
was therapeutic rather than cosmetics.
(xi) Patent may however be obtained for surgical therapeutic or
diagnostic instrument or apparatus.
(xii) In Oral Health Products Inc (Halstead’s) Application, [1977]
RPC 612, claims to a method of removing dental plaque and/or
caries were refused, as was a claim to a method of cleaning teeth
which embraced both curative and cosmetic effects. This decision
has been followed under the 1977 Act in ICI Ltd’s Application No
7827383 (not reported), where a claim was refused to a method of
cleaning teeth which removed both plaque and stains; it was
argued that when applied to perfectly healthy teeth the method was
purely cosmetic, but the hearing officer observed that practically all
medical treatments which are preventative in nature (such as
vaccination) must at times be applied to people who would have
remained healthy anyway, but they remained medical treatments.
(xiii) Dictionary definitions of “diagnosis” clearly point to it being
essentially concerned with identifying problems. The questions to
be asked therefore, in order to determine whether a method
constitutes diagnosis for the purposes of the Act, are
(a) does the method, unaided by other tests, indicate whether or
not a person (or animal) is suffering from a medical disorder, and
(b) does the method identify the disorder where it is found to be
present.
If both of these questions can be answered in the affirmative, the
method is diagnosis and is not patentable
(xiv) Surgery is defined as the treatment of disease or injury by
operation or manipulation (SOED, Stedman, MacNalty). It is not
limited to cutting the body but includes manipulation such as the
setting of broken bones or relocating dislocated joints (sometimes
called “closed surgery”), and also dental surgery. In general, any
operation on the body which required the skill and knowledge of a
surgeon would be regarded as surgery.
(xv) In Unilever Limited (Davis’) Application, [1983] RPC 219 (see
also 4.08, 4.09), Falconer J observed that any method of surgical
treatment, whether curative, prophylactic or cosmetic, is not
patentable. This view, which was obiter, was cited by the hearing
officer in Occidental Petroleum Corporation’s Application (not
reported) in refusing to allow claims to a method of implanting an
embryo transplant from a donor mammal into the uterus of a
recipient mammal, since the method would necessarily have to be
carried out by a surgeon or veterinary surgeon.
(xvi) Methods of treatment of the human or animal body by surgery or
therapy are excluded, as are methods of diagnosis practiced on the
human or animal body. Methods of diagnosis performed on tissues
or fluids, which have been permanently removed from the body, are
therefore not excluded. “Body” should be taken to mean living body,
and a method practiced on a dead body, for example in order to
determine the cause of death, would not be excluded. Methods of
therapy carried out on materials temporarily removed from the body
for example when blood is circulated through an apparatus while
remaining in living communication with the body, are not patentable
(cf Calmic Engineering Co Ltd’s Application, [1973] RPC 684). In
Ciba-Geigy AG’s Application (not reported), objection was raised to
certain claims for a method of controlling parasitic helminthes
(worms which may develop in the animal body, for example, in the
intestinal tract of animals such as sheep) by the use of a particular
(novel and inventive) antihelmintic composition. The applicants
contended that the composition when administered to an animal
would prevent the reproduction of the helminthes and kill them
should they infest the animal, but without affecting the animal’s
body, and that its use was therefore not “therapy”. However, the
applicants’ specification made it clear that an infestation of helminth
worms can result in restricted growth, damage to the animals and
even death if not properly treated. Moreover, the application made
no mention of controlling helminthes by the use of the composition
in any environment other than the animal body. The hearing officer
considered that such an infestation was therefore a disease
requiring medical treatment of the animal and that such treatment,
whether curative or preventative, constituted therapy practiced on
the animal body and consequently held that the claims in question
were not allowable.
2.2.0 Section 4: Non patentable inventions relating to Atomic energy
No Patent shall be granted in respect of an invention relating to
Atomic energy falling within sub section (1) of section 20 of the
Atomic Energy Act, 1962.
(i) According to Sec. 20(1) of Atomic Energy Act, as from the
commencement of this Act, no patent shall be granted for the
invention when in the opinion of Central Govt. are useful for or
related to the production, control, use or disposal of atomic energy
or prospecting mining extraction, production, physical and chemical
treatment fabrication, enrichment, canning or use of any prescribed
substance or radioactive substance or the insuring of safety in
atomic energy operation.
(ii) According to Sec. 2(1) of Atomic Energy Act, atomic energy means
energy released from atomic nuclei as a result of any process
including the fission and fusion processes.
(iii) Under this Act “prescribed substances” means any substances
including any mineral which the Central Govt. may, by notification,
prescribe, being a substance which in its opinion is or may be used
for the production or use of atomic energy or research into matters
connected therewith and includes uranium, plutonium, thorium,
beryllium, deuterium or any of these respective derivative or
compounds or any other materials containing any of the aforesaid
substances.
(iv) Under the atomic energy Act, the term “radioactive substances” or
“radioactive material” is defined as any substance or material,
which spontaneously emits, radiation in excess of the levels
prescribed by notification by the central govt.
(v) The Secretary, Deptt. Of Scientific Research, vide his letter no.
AEC/21(28)/50/68437 Dated 12/12/1950 has directed that the
Central Govt. is pleased to prescribe uranium minerals of, thorium,
beryllium, vanadium, lithium and other minerals containing the said
metals as necessary ingredients such as urani-ferous allamiti,
Triplita, Colourmbite and Tantalite as substance which in its opinion
are or may be used for the production or use of atomic energy or
research under Atomic Energy Act.
(vi) The central govt. vide its letter dated AEC/27(2)/50/358 dated
28.1.1951 has declared “Ilmenite” as substance for the production
or use of atomic energy.
(vii) The Central Govt. vide its letter No. AEC/DIH/1/(7)/52/2696 dated
19.5.53 by superseding the earlier notification has prescribed the
substances specified in the following schedule & any of the
respective compound as substances for the production or use of
atomic energy under the Atomic Energy Act.
THE SCHEDULE
1. Uranium
2. Thorium
3. Radium
4. Zirconium
5. Graphite
6. Beryllium
7. Lithium
8. Deuterium
9. Plutonium
10. Neptunium
The Central Govt. has power to amend the schedule and may issue a
notification at any time.
2.3.0 Section 5: Inventions where only Methods & Processes of
Manufacture Patentable
2.3.1 Sec. 5(1) In the case of inventions-
(a) Claiming substances intended for use, or capable of being
used, as food or as medicine or drug or
(b) Relating to substance prepared or produced by chemical
processes (including Alloys, optical glass, semiconductor and
inter-metallic compounds), no patent shall be granted in
respect of claims for the substances themselves, but claims
for the methods or processes of manufacture shall be
patentable.
(I) Only process claims are allowable in respect of substances
intended for use or capable of being used as food or as
medicine or drug and no product per se claims for such
substances are allowable.
(II) No product per se claims are allowable in respect of
substances prepared or produced by chemicals process.
Only method claims are allowable.
(III) In case of alloys, optical glass, semi conductor and intermetallic
compound also, product per se claim are not
allowable.
(IV) The meaning of phrase substance prepared or produced by
chemical process, it must be construed that the process of
filtration, extraction, distillation or sublimation are within the
meaning of chemical process. Calcutta High Court in
Aluminum Co. of America Vs. Joint Controller of Patents
& Designs affirmed this.
(V) The meaning of the terms food, Medicine or drug have the
same meaning under this section as defined in section 2(1)
(g) & 2(1) (l) including that defined under drug & cosmetics
Act & also as defined by the Central Govt. by its notification
from time to time.
2.3.2 Section 5(2)
Notwithstanding anything contained in sub. Sec (I), a claim for patent
of an invention for a substance itself intended for use, or capable of
being used, as medicine or drug, except the medicine or drug,
specified under sub-clause (v) of clause (1) of sub section (1) of
section 2, may be made and shall be dealt, without prejudice to the
other provision of this Act, in the manner provided in Chapter IVA.
(i) From 1.1.95 a claim for patent for invention relating to substance
(product per se) intended for use or capable of being used as medicine
or drug can be filed for the grant of exclusive marketing right.
(ii) Claim for patent in respect of invention for all chemical substances
which are ordinarily used as intermediates as defined under section
2(1) l(v) in the preparation or manufacture of any of the medicine or
substances as defined in sec. 2(1)(l), is not allowable for the grant of
Exclusive Marketing Right.
(iii) Application for claim for patent of an invention for the above-referred
substances for the grant of exclusive marketing rights should be dealt
with in the manner provided in Chapter IVA.
(iv) No patent can be granted on the application filed under this section
unless and otherwise the provisions are made in the Act.
(v) The application filed under this section shall be continued to be
received and kept in the mailbox provided therefore.
Sec:9 Provisional and complete specifications
(1) Where an application for a patent (not being a convention application) is accompanied by a provisional specification, a complete specification shall 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 be abandoned:
PROVIDED that the complete specification may be filed at any time after twelve months but within fifteen months from the date aforesaid, if a request to that effect is made to the Controller and the prescribed fee is paid on or before the date on which the complete specification is filed.
(2) Where two or more applications in the name of the same applicant are accompanied by provisional specifications in respect of inventions which are cognate or of which one is a modification of another and the Controller is of opinion that the whole of such inventions are such as to constitute a single invention and may properly be included in one patent, he may allow one complete specification to be filed in respect of all such provisional specifications.
(3) Where an application for a patent (not being a convention application) is accompanied by a specification purporting to be a complete specification, the Controller may, if the applicant so requests at any time before the acceptance of the specification, direct that such specification shall be treated for the purposes of this Act as a provisional specification and proceed with the application accordingly.
(4) 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 the acceptance of the complete specification, cancel the provisional specification and post-date the application to the date of filing of the complete specification.
24C compulsory licensing
The provisions in relation to compulsory licences in Chapter XVI shall, subject to the necessary modifications, apply in relation to an exclusive right to sell or distribute under section 24B as they apply to, and in relation to, a right under a patent to sell or distribute and for that purpose the following modifications shall be deemed to have been made to the provisions of that Chapter and all their grammatical variations and cognate expressions shall be construed accordingly, namely,–
(a) throughout Chapter XVI,–
(i) working of the invention shall be deemed to be selling or distributing of the article or substance;
(ii) references to “patents” shall be deemed to be references to “right to sell or distribute”;
(iii) references to “patented article” shall be deemed to be references to “an article for which exclusive right to sell or distribute has been granted”;
(b) three years from the date of sealing of a patent in section 84 shall be deemed to be two years from the date of approval by the Controller for exclusive right to sell or distribute under section 24B;
(c) the time which has elapsed since the sealing of a patent under section 84 shall be deemed to be the time which has elapsed since the approval by the controller for exclusive right to sell or distribute under section 24B;
(d) clause (e) of sub-section (7) of section 84 shall be omitted.
Compulsory licences
(1) At any time after the expiration of three years from the date of the sealing of a patent, any person interested may make an application to the Controller for grant of compulsory licence on patent on any of the following grounds, namely:–
(a) that the reasonable requirements of the public with respect to the patented invention have not been satisfied, or
(b) that the patented invention is not available to the public at a reasonably affordable price, or
(c) that the patented invention is not worked in the territory of India.
(2) An application under this section may be made by any person notwithstanding that he is already the holder of a licence under the patent and no person shall be estopped from alleging that the reasonable requirements of the public with respect to the patended invention are not satisfied or that the patented invention is not worked in the territory of India or that the patented invention is not available to the public at a reasonably affordable price by reason of any admission made by him, whether in such a licence or otherwise or by reason of his having accepted such a licence.
(3) Every application under sub-section (1) shall contain a statement setting out the nature of the applicant's interest together with such particulars as may be prescribed and the facts upon which the application is based.
(4) The Controller, if satisfied that the reasonable requirements of the public with respect to the patented invention have not been satisfied or that the patented invention is not worked in the territory of India or that the patented invention is not available to the public at a reasonably price, may grant a licence upon such terms as he may deem fit.
(5) Where the Controller directs the patentee to grant a licence he may, as incidental thereto, exercise the powers set out in section 88.
(6) In considering the application filed under this section, the Controller shall take into account,–
(i) the nature of the invention, the time which has elapsed since the sealing of the patent and the measures already taken by the patentee or any licensee to make full use of the invention;
(ii) the ability of the applicant to work the invention to the public advantage;
(iii) the capacity of the applicant to undertake the risk in providing capital and working the invention, if the application were granted;
(iv) as to whether the applicant has made efforts to obtain a licence from the patentee on reasonable terms and conditions and such efforts have not been successful within a reasonable period as the Controller may deem fit:
PROVIDED that this clause shall not be applicable in case of national emergency or other circumstances of extreme urgency or in case of public non-commercial use or on establishment of a ground of anti-competitive practices adopted by the patentee,
but shall not be required to take into account matters subsequent to the making of the application.
(7) For the purposes of this Chapter, the reasonable requirements of the public shall be deemed not to have been satisfied–
(a) if, by reason of the refusal of the patentee to grant a licence or licences on reasonable terms,–
(i) an existing trade or industry or the development thereof or the establishment of any new trade or industry in India or the trade or industry in India or the trade or industry of any person or class of persons trading or manufacturing in India is prejudiced; or
(ii) the demand for the patented article has not been met to an adequate extent or on reasonable terms; or
(iii) a market for export of the patented article manufactured in India is not being supplied or developed; or
(iv) the establishment or development of commercial activities in India is prejudiced; or
(b) if, by reason of conditions imposed by the patentee upon the grant of licences under the patent or upon the purchase, hire or use of the patented article or process, the manufacture, use or sale of materials not protected by the patent, or the establishment or development of any trade or industry in India, is prejudiced; or
(c) if the patentee imposes a condition upon the grant of licences under the patent to provide exclusive grant back, prevention to challenges to the validity of patent or coercive package licensing; or
(d) if the patented invention is not being worked in the territory of India on a commercial scale to an adequate extent or is not being so worked to the fullest extent that is reasonably practicable; or
(e) if the working of the patented invention in the territory of India on a commercial scale is being prevented or hindered by the importation from abroad of the patented article by–
(i) the patentee or persons claiming under him; or
(ii) persons directly or indirectly purchasing from him; or
(iii) other persons against whom the patentee is not taking or has not taken proceedings for infringement
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