Patents Quiz: Indian Patents Act, 1970

Procedure to Obtain a Patent

• The word "patent" originates from the Latin word "patere," meaning "to lay open" or to make available for public use.
• A patent grants the inventor exclusive rights to prevent others from using their invention without authorization.
• Patent protection lasts for 20 years from the application's submission with a complete patent specification.
• Patents are territorial; protection is only in countries where the application was filed.
• The Indian Patents Act of 1970 governs patents in India. A patented person is called a "Patentee" or "Patent Holder."

Patentability Criteria

• Before applying for a patent, check if the invention meets patentability criteria.
• The invention's subject matter must not be non-patentable (e.g., according to Section 3 and 4 of the Indian Patent Act, 1970).
• Novelty: The invention must be new and not previously known. An improved version of an existing invention is valid.
• Utility: The invention must have practical applicability.
• Non-obviousness: The invention should not be readily apparent to someone with ordinary experience in the field.

Procedure to Obtain a Patent

• The patent process starts with an application, followed by publication, examination, opposition, and finally, grant. The process is usually lengthy and costly.
• Patent application steps include: application, provisional and complete specifications, publication, examination, opposition, and grant.

Application for Patent

• The first step is filing a patent application.
• The application can be filed by the true inventor, their assignee, or the legal representative of a deceased inventor.
• Multiple inventors can apply jointly.
• The application can be made singly by one inventor or jointly by 2 or more inventors. The relevant section of the Indian Patent Act, 1970 (Sec 6) guides on applications, who is the inventor.

Canadian General Electric v. Fada Radio [1927] S.C.R. 520

• If two inventors make the same invention independently without revealing it, the inventor who filed the patent application first is considered the true inventor regardless of when they made the invention.

Form of Application

• An application must pertain to one invention, not multiple inventions, unlike trademark applications.
• Applications are made at the Patent Office or online. Patent offices are established in Kolkata, Mumbai, Chennai, and New Delhi in India.

Application Location/Jurisdiction

• The patent application is filed in the office with jurisdiction over the inventor's location or the location of the invention. For example, a Bangalore resident would file their application at the Chennai office.

International Applications (PCT)

• For international patent applications designating India, a corresponding application must be submitted to the Controller General of Patents, Designs, and Trade Marks.
• The filing date for such applications is the international filing date provided by the PCT.

Provisional and Complete Specification

• A patent application must include provisional or complete specifications.
• Specifications are detailed technical documents describing the invention, including inventor's name, full disclosure, operation, claims and undertaking that they are the true inventor. Related developments can be included

Provisional Specifications

• Provisional specifications give preliminary/incomplete information about an invention.
• Provisional specifications are important for establishing priority over other inventors working on similar inventions.

Essential Requirements of Complete Specification

• Complete specifications must clearly describe the invention, its operation, and the method of its use.
• The best known method of use should be disclosed
• Claims must outline the invention's scope.
• An abstract must be included, providing technical details about the invention.

Priority Date

• The earliest filing date within a family of patent applications is called the priority date.
• Priority date is relevant for evaluating the patent application and setting boundaries for what can be considered prior art.
• An inventor who has submitted multiple related patent applications can use the date of the earliest filing. This may be a foreign application, a non-provisional patent application, or a provisional patent application.

Significance of Priority Date

• The application's precedence is limited to the priority date, which is ascertained from a priority date patent.
• Key resources in relation to the invention are specified in the patent prior art, which can impact patentability.

Examination of the Application

• A patent application is examined if the applicant, or another interested party, requests an examination.
• If no request is made within three years, the application may be considered withdrawn.

First Examination Report (FER)

• A Patent Examiner assesses the application's conformity with the requirements of the Indian Patents Act.
• The First Examination Report considers whether there are any lawful objections.
• The report includes the outcome of the examiner's investigation and study of the application and claims.

Search for Anticipation

• The examiner checks if the invention has already been patented or claimed in a prior patent application.
• If relevant elements of the invention are found in previous patents, the invention is likely to be deemed not new and not patentable.
• Previous communications to the government, public displays/exhibitions, and essential public works, are not deemed to anticipate the invention.

Power of the Controller

• The Controller can approve, reject, ask for modifications to the application, and make suggestions before a patent is granted.

Opposition

• Opposition proceedings in various jurisdictions allow third parties to legally contest a granted or pending patent.
• Opposition is vital for evaluating the validity and validity of the patent and to remove incomplete or untrue claims
• Two types of opposition exist: pre-grant and post-grant.

Pre-Grant Opposition

• Pre-grant oppositions can be initiated by anyone, before a patent is granted.
• Opposition is filed within 6 months of publication.
• To file a pre-grant opposition, the complete specification needs to be available in support of the application.

Post-Grant Opposition

• Post-grant oppositions are filed after a patent is granted.
• Opposition occurs within a year of the grant.
• Only interested parties can file post-grant opposition.

Grounds for Opposition

• Patent applications can be challenged or opposed due to several reasons, including wrongful acquisition (part of the invention was obtained fraudulently), prior publication (invention was disclosed previously), prior claims (similar invention already claimed), prior knowledge / use (invention/process publicly known earlier), and the like.

Rebuttals of Opposition

• Interested parties can challenge opposition notices within three months of publication in the Official Gazette
• Challengers must provide cause for opposing and file a reply within one month of the notice being received. Oppositions are heard and decided.

Grant of Patent

• If the application is deemed correct, the Controller grants the patent under the proper office seal.
• The date of the patent is when the complete specification was officially published following the grant.
• Publication, and associated documents, are made public for inspection.

Insufficient Description & Non-Disclosure

• Failure of a patent document to clearly explain the invention or method of implementation is considered insufficient description.
• Failure of the patent applicant to disclose all required details during the application, constitutes non-disclosure and can lead to application rejection.

False Disclosure and Time Limits

• Providing false information during the patent application process is considered false disclosure.
• If the complete specification is not timely submitted following a provisional specification, then the application might be abandoned.
• Certain timelines apply to convention applications relative to the international filing date.

Biological Material

• The specification must clearly detail the biological material used in the invention (source, origin, etc.). Providing an incorrect or unclear answer to this can result in application rejection.

Traditional Knowledge

• If an invention is linked to traditional/ancient knowledge of indigenous communities, the patent might be challenged.

Neem Case and Other Examples

• Case examples involving traditional knowledge, where a patent was ultimately not granted over a claimed traditional practice is provided.

Novartis AG v. UOI

• The example of a case demonstrating that the novelty and nature of the claimed invention were lacking is given.