Procedure of patents
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The document discusses the legislative framework for intellectual property administration in India. It covers the main Acts and rules governing patents, designs, trademarks, geographical indications, and copyright. It describes the agencies responsible for administering these areas. It also provides details on the patent law framework, including eligibility criteria, exclusions from patentability, and safeguards in the law.
![Section 3 exclusions
Section 3(e)Section 3(e)
Substance obtained by mere admixturemere admixture resulting only in
the aggregation of the properties of the components thereof or
a process for producing such substance
ExamplesExamples
Combiflam [Paracetamol (Antipyretic) + Brufen (analgesic)]
Solution of sugar and color additives in water to form a soft
drink
However,However,
A mixture resulting into synergistic properties of
mixture of ingredients however, may be patentable
- Soap, Detergents, lubricants etc](https://image.slidesharecdn.com/procedureofpatentsnift18-12-08dpsparmar-150408221957-conversion-gate01/85/Procedure-of-patents-24-320.jpg)
![Renewal Fee
• To be paid within 3+6 months from date of
recording in the register [sec 142 (4) ]
• No fee for 1st
and 2nd
year
• Renewal fee, on yearly basis, is required to be
paid for 3rd
to 20th
for keeping the patent in force
• Delay upto six months from due date
permissible on payment of fee for extension of
time
• Patent lapses if renewal fee is not paid within the
prescribed period](https://image.slidesharecdn.com/procedureofpatentsnift18-12-08dpsparmar-150408221957-conversion-gate01/85/Procedure-of-patents-52-320.jpg)
Procedure of patents
- 1. Legislative Framework ofLegislative Framework of IP AdministrationIP Administration
- 2. Legislative Framework of IP AdministrationLegislative Framework of IP Administration Department of IP &P covers The Patents Act, 1970 (as amended in 2005)The Patents Act, 1970 (as amended in 2005) The Patents Rules, 2003 (as amended in 2006)The Patents Rules, 2003 (as amended in 2006) The Designs Act, 2000 The Designs Rules, 2001 (as amended in 2008) The Trade Marks Act 1999 The Trade Marks Rules 2002 The Geographical Indications of Goods (Registration & Protection) Act, 1999 The Geographical Indications of Goods (Registration & Protection) Rules, 2002, Department of Education covers The Copyrights Act 1957 (amended in 1999)
- 3. CONTROLLER GENERAL OF PATENTS, DESIGNS AND TRADEMARKS (CGPDTM) T M REGISTRY DESIGN OFFICE G.I. REGISTRY Head Office KOLKATA Branch DELHI Branch CHENNAI Branch MUMBAI Head Office MUMBAI DELHI KOLKATA CHENNAI A’BAD IPTI ,NIIPM, P.I.S. Nagpur KOLKATA PATENT OFFICE CHENNAI
- 4. Law and Regulations • Patents Act, 1970 – Amended in • 1999 • 2002 • 2005 • Patents Rules, 2003 – Amended in • 2005 • 2006
- 5. Legislative Measures -PatentsLegislative Measures -Patents • From 1.1.1995 – Mail-Box for pharmaceutical and agrochemicals products – Exclusive Marketing Rights • From 1.1.2000 – Patent term increased to 20 years – Definition of invention – inclusion of inventive step – Reversal of burden of proof – on the infringer – Mandatory compulsory licence provision for food, drugs and chemicals removed – Right of patentee (importation also included) • From 1.1.2005 – Product patents for food, chemical and pharmaceutical We have met our international commitments
- 6. 6 Patent Law - Salient Features • Both product and process patent provided • Term of patent – 20 years • Examination on request • Both pre-grant and post-grant opposition • Fast track mechanism for disposal of appeals • Provision for protection of bio-diversity and traditional knowledge • Publication of applications after 18 months with facility for early publication • Substantially reduced time-lines
- 7. 7 Safeguards in the Patent Law • Compulsory license to ensure availability of drugs at reasonable prices • Provision to deal with public health emergency • Revocation of patent in public interest and also on security considerations
- 8. Scope of Patentability UnderScope of Patentability Under The Patents ActThe Patents Act
- 9. What is an Invention?What is an Invention? Sec.2(1)(J)Sec.2(1)(J) “Invention” means a new product or process involving an inventive step and capable of industrial application
- 10. Patentable subject matter Invention mustInvention must relates to a ProcessProcess or ProductProduct or both be new (Novel) involves an inventive stepinventive step be Capable of industrial applicationindustrial application not fall under Section 3 and 4Section 3 and 4
- 11. “NEW” MEANS Invention must not beInvention must not be Published in India or elsewhere In prior public knowledge or prior public use with in India Claimed before in any specification in India
- 12. Inventive step A feature of an inventionfeature of an invention that involves technical advance as compared to the existing knowledge or have economic significance or both and makes the invention not obvious to a person skilled in the art
- 13. Industrial application means Invention is capable of being made or used in any kind of industry
- 14. Section 3 exclusions Section 3(a)Section 3(a) • Frivolous inventions • Inventions contrary to well established natural laws ExamplesExamples Machine that gives more than 100% performance Perpetual machine
- 15. Section 3 exclusions Section 3(b)Section 3(b) Commercial exploitation or primary useCommercial exploitation or primary use of inventions, which isof inventions, which is Contrary to public order or Morality ExamplesExamples – Gambling machine, – Device for house-breaking ,
- 16. Section 3 exclusions Section 3(b)Section 3(b) Commercial exploitation or primary useCommercial exploitation or primary use of inventions , whichof inventions , which Causes serious Prejudice to health or human, animal, plant life or to the environment ExamplesExamples Biological warfare material or device, weapons of mass destruction Terminator gene technology, Embryonic stem cell
- 17. Checks and Balances Section 3(b)Section 3(b) Excludes patents on • GMOs – exploitation of which could be contrary public order or morality or prejudicial to human, animal or plant life or health or to the environment Effect : Only genetically modified micro- organisms (GMOs) which do not fall under section 3 (b) are patentable.
- 18. Section 3 exclusions Section 3 ( c )Section 3 ( c ) • Mere Discovery of a Scientific Principle or • formulation of an Abstract Theory or • discovery of any living thing or • discovery of non–living substance occurring in nature ExamplesExamples Newton’s Laws Superconducting Phenomenon as such Property of certain material to withstand mechanical shock Discovery of micro-organism Discovery of natural gas or a mineral
- 19. Checks and Balances Section 3(c)Section 3(c) Excludes patents on •Naturally occurring Micro-organisms Effect Genetically modified microorganisms (GMOs) are however, patentable.
- 20. Section 3 exclusions Section3 (d)Section3 (d) The mere discovery of a new form of aThe mere discovery of a new form of a known substance which does not resultknown substance which does not result in the enhancement of the knownin the enhancement of the known efficacy of that substanceefficacy of that substance
- 21. Section 3 exclusions Section3 (d)Section3 (d) Explanation For the purposes of this clause, • salts, esters, ethers, polymorphs, • metabolites, pure form, particle size, • isomers, mixture of isomers, • complexes, combinations and other derivatives of known substances shall be considered to be the same substance, unless they differ significantly in properties with regard to efficacyefficacy. ExamplesExamples – Crystalline forms of known substance
- 22. Checks and Balances Section 3 (d) ExplanationSection 3 (d) Explanation Effect Salts, esters, ethers, polymorphs, metabolite, pure forms, particle size, isomers, complexes, combinations and derivatives of a known substance with enhanced efficacy are patentable
- 23. Section 3 exclusions Section3 (d)Section3 (d) Mere discovery of any new propertyof any new property or new use for a known substance oror new use for a known substance or of the mere use of a known process,of the mere use of a known process, machine or apparatus,machine or apparatus, unless suchunless such known process results in a newknown process results in a new product or employs at least one newproduct or employs at least one new reactantreactant.. ExamplesExamples – New use of Aspirin for heart ailments, – Mere new uses of Neem
- 24. Section 3 exclusions Section 3(e)Section 3(e) Substance obtained by mere admixturemere admixture resulting only in the aggregation of the properties of the components thereof or a process for producing such substance ExamplesExamples Combiflam [Paracetamol (Antipyretic) + Brufen (analgesic)] Solution of sugar and color additives in water to form a soft drink However,However, A mixture resulting into synergistic properties of mixture of ingredients however, may be patentable - Soap, Detergents, lubricants etc
- 25. Checks and Balances Section 3 ( e )Section 3 ( e ) EffectEffect Substance obtained by mere admixture resulting only in the aggregation of the properties of the components thereof or a process for producing such substance are not patentable HoweverHowever Synergistic formulations are patentable
- 26. Section 3 exclusions Section 3 ( f )Section 3 ( f ) Mere arrangement or re-arrangement or duplication of known devices, each functioning independently of one another in a known way ExamplesExamples A Bucket fitted with torch, An Umbrella with fan A Clock and radio in a single cabinet A flour-mill provided with sieving
- 27. Section 3(h)Section 3(h) Method of Agriculture or Horticulture ExamplesExamples Cultivation of algae , Producing new form of a known plant, Preparation of an improved soil However,However, Agricultural Equipments are patentable Section 3 exclusionsSection 3 exclusions
- 28. Section 3(i)Section 3(i) Any process for medicinal, surgical, curative, prophylactic, diagnostic, therapeutic or other treatment of human beings or a similar treatment of animals to render them free of disease or to increase their economic value or that of their products ExamplesExamples Removal of cancer tumor Removal of dental plaque and carries Surgical processes Processes relating to therapy Method of vaccination, Blood transfusion Section 3 exclusionsSection 3 exclusions However , Treatment performed on tissues or fluids permanently removed from the body Surgical,therapeutic or diagnostic Apparatus or instruments are patentable
- 29. Section3 exclusions Section 3(j)Section 3(j) Plants & animals in whole or any part thereof other than micro- organisms,but including seeds, varieties and species and essentially biological process for production or propagation of plants & animals
- 30. Section 3 exclusions Section 3(j)Section 3(j) • Plants & animals in whole • Parts of plants & animals • Seeds • Varieties & species • Essentially biological processes for propagation or production of the animals & plants
- 31. Checks and Balances Section 3(j)Section 3(j) Excludes patents on • Plants and animals in whole or any parts thereof, …… including seeds, varieties and species and essentially biological processes for production or propagation of plants and animals ExamplesExamples – Clones and new varieties of plants – A process for production of plants or animals if it consists entirely of natural phenomena such as crossing or selection – Essentially biological Process
- 32. Section 3(k)Section 3(k) * mathematical method or * business method or * algorithms or * computer programme per se ExamplesExamples – Computer program by itself or as a record on a carrier HoweverHowever – New calculating machine – combination of hardware and software is patentable Section 3 exclusions
- 33. Section 3(l)Section 3(l) A literary,dramatic, musical or artistic work or any other aesthetic creation including cinematographic work and television productions These subject-matters fall under the copyright protection Section 3 exclusions
- 34. Section 3(m)Section 3(m) A mere scheme or rule or method of performing mental act or method of playing game ExamplesExamples •Scheme for learning a language •Method for solving a crossword puzzle, •Method of learning a language •Method of teaching /learning However, •Novel apparatus for playing game or carrying out a scheme is patentable Section 3 exclusions
- 35. Section 3 (n)Section 3 (n) Presentation of information ExamplesExamples Any manner or method of expressing information whether by spoken words Visual display symbols diagrams Information recorded on a carrier SectionSection 3 exclusions3 exclusions
- 36. Section 3 (o)Section 3 (o) Topography of integrated circuits. ExamplesExamples Mask works - circuits layout SectionSection 3 exclusions3 exclusions
- 37. Section 3 (p)Section 3 (p) Inventions which are Traditional Knowledge or an aggregation or duplication of known properties of traditionally known component or components ExamplesExamples Traditional Knowledge already in public domain - Wound healing property of Haldi However, Any value-addition using Traditional Knowledge leading to a new process or product ,which is novel with inventive step and industrial applicability, Extraction of Azadirachtin from Neem can be patented SectionSection 3 exclusions3 exclusions
- 38. Section 4Section 4 Inventions falling within Section 20(1) of the Atomic Energy Act, 1962 are not patentable Effect Inventions relating to compounds of Uranium, Beryllium, Thorium, Plutonium, Radium, Graphite, Lithium and more as notified by Central Govt. from time to time. Non Patentable inventionsNon Patentable inventions
- 39. Stages from filing to grantStages from filing to grant of a patentof a patent
- 40. Obtaining a patent • File an application for patent – With one of the patent offices based on territorial jurisdiction of the place of office or residence of the applicant /agent – Pay the required fee • Information concerning application form and details of fee available at www.ipindia.nic.in • Guidelines for applicants also available on this website
- 41. Formality Check • An Examiner checks the formal requirements before accepting the application and the fee – this is done immediately • Issue of application number and the cash receipt – this is done the same day • In case of receipt of application by post, cash receipt, application number is sent by post within 2-3 days
- 42. Publication • Application is kept secret for a period of 18 months from the date of filing • In 19th month, the application is published in the official journal – this journal is made available on the website weekly • Applicant has an option to get his application published before 18 months also • In that case, application is published within one month of the request
- 43. Request for Examination • Application is examined on request • Request for examination can be made either by the applicant or by a third party • A period of 48 months, from the date of filing, is available for making request for examination
- 44. Examination • Application is sent to an Examiner within 1 month from the date of request for examination • Examiner undertakes examination w.r.t. – whether the claimed invention is not prohibited for grant of patent – whether the invention meets the criteria of patentability
- 45. Issue of FER • A period of 1 to 3 months is available to Examiner to submit the report to the Controller • 1 month’s time available to Controller to vet the Examiner’s report • First Examination Report (FER) containing gist of the objections is issued within 6 months from the date of filing of request
- 46. Response from the Applicant • 12 months’ time, from the date of issue of FER, is available to the applicant to meet the objections • If objections are met, grant of patent is approved by the Controller – within a period of 1 month
- 47. Pre-grant Opposition • After publication, an opposition can be filed within a period of 6 months • Opportunity of hearing the opponent is also available
- 48. Examination of Pre-grant Opposition • Opposition (documents) is sent to the applicant • A period of 3 months is allowed for receipt of response
- 49. Consideration of Pre-grant Opposition • After examining the opposition and the submissions made during the hearing, Controller may – Either reject the opposition and grant the patent – Or accept the opposition and modify/reject the patent application • This is to be done within a period of 1 month from the date of completion of opposition proceedings
- 50. Grant of a Patent • A certificate of patent is issued within 7 days • Grant of patent is published in the official journal
- 51. STAGES - FILING TO GRANT OFSTAGES - FILING TO GRANT OF PATENTPATENT PUBLICATION OF APPLICATION REQUEST FOR EXAMINATION GRANT OF PATENT 3rd Party Representation Revocation/Amendment OPPOSITION • PROMPTLY AFTER 18 MONTHS FROM P.D. • WITHIN 48 MONTHS FROM F.D. • ALL OBJECTIONS TO BE COMPLIED WITHIN 12 MONTHS • IF P.S.IS FILED C.S. TO BE FILED WITHIN 12MONTHS • WITHIN 12 MONTHS FILING OF APPLICATION PROVNL. / COMPLETE Decision of Controller EXAMINATION-ISSUE OF FER Appeal AppellateAppellate BoardBoard
- 52. Renewal Fee • To be paid within 3+6 months from date of recording in the register [sec 142 (4) ] • No fee for 1st and 2nd year • Renewal fee, on yearly basis, is required to be paid for 3rd to 20th for keeping the patent in force • Delay upto six months from due date permissible on payment of fee for extension of time • Patent lapses if renewal fee is not paid within the prescribed period
- 53. D.P.S. PARMARD.P.S. PARMAR Deputy Controller of Patents and DesignsDeputy Controller of Patents and Designs Tele-Fax 091-11-23062307 Tele 091-11-28084310 Website: www.ipindia.nic.in E-mail- dps.parmar@nic.in