Patent Filing lecture notes, Lecture notes of Intellectual Property (IP)

Download Patent Filing lecture notes and more Lecture notes Intellectual Property (IP) in PDF only on Docsity! PATENT PROF. SNEHA ANIL KUMAR Under a process patent, the patent is granted for a particular manufacturing process, and not for the product itself. Any other person can produce the same product through some other PROCESS, modifying the various parameters. Weakness of the process patent regime is that it gives less protection for the inventor. There is high tendency for competitors to reengineer the original invention by discovering a new process with less strain and investment. Benefit of process patent regime is that it reduces the element of monopoly. PROCESS PATENT CONCURRENT PATENT: The question whether two persons who made independent efforts get independent pates for same invention? * NO The patent is to be granted to the first inventor. CONTROLLER OF PATENT & OTHER OFFICERS: The controller general of Patent, Design, and Trade Marks appointed under S.3. of the Trade mark Act 1999 is the controller of patent. The central government may appoint as many examiners and other officers as it thinks fit. Process of Patenting Be curious but do not disclose your invention Keep a bound notebook to prove when you got the idea Develop the idea and produce a model Write why your invention is needed, what the existing products are in the market, your new product, and what is unique about your product @/ How to file a patent application? * Documents can be filed in the patent office » through online( e-filing) or > www.ipindiaonline.gov.in/online » through post or » can be submitted by hand WHO CAN APPLY FOR A PATENT An application for a patent for an invention may be made by any of the following person either alone or jointly with any other person: 1) Any person claiming to be true and first inventor of the invention 2) Any person being the assignee of the person claiming to be the true and first inventor in respect of the right to make such application 3) The legal representative of any deceased person who immediately before his death was entitled to make such application. 1. Meaning of 1st & True inventor: A person who is the first one to convert the ideas & scientific principles into a working invention, is the first and true inventor Mere communication of an idea to another is not 1st inventor. 2. Assignee – the right to apply for a patent may be assigned by the true & first inventor to another person – in such case the assignee is entitled to apply for a patent 3. Invention made by an employee: An employee who makes an invention during his employment he would be able to patent the same unless provided otherwise by contract – then employer is entitled to patent the same. (R&D – Companies) SUBMISSION OF APPLICATION S.6 to S. 11 – lists the conditions which are to be satisfied by the applicant while submitting application S6 – deals with who is entitled to apply for a patent S7 – deals with the Form of Patent application S8 – lays down information and undertaking regarding foreign application S 9 to 10 – lists the contents of the provisional and complete specification to be filled with the application S 11 deals with priority dates of claim of a complete specification. FORM OF APPLICATION 1 application can be made for 1 invention and it has to be made in the prescribed form – available online / patent office. The application must be accompanied with the prescribed fee. If application is made by an assignee – then along with the main form the proof of the right to make the application must be attached. Applications made by citizens of India may be accompanied by a complete or provisional specification While by foreign nationals - complete specification. PROVISIONAL & COMPLETE SPECIFICATION In order to obtain a patent, an applicant must fully and particularly describe the invention therein claimed in a complete specification. The disclosure of the invention in a complete specification must be such that a person skilled in the art may be able to perform the invention. This is possible only when an applicant discloses the invention fully and particularly including the best method of performing the invention. The Specification is a techno-legal document containing full scientific details of the invention and claims to the patent rights. The Specification, thus, forms a crucial part of the Patent Application. It is mandatory on the part of an applicant to disclose fully and particularly various features constituting the invention. Advantages of filing a provisional specification Applicant gets 12 months’ time to fully develop the invention and ascertain its market potential. Helps to establish “priority” right over the invention Enables the applicant to use the term "patent pending” on their product Less expensive to prepare and file the application Enables the applicant to file International applications and claim priority within 12 months. However, in order for the patent to be granted, a provisional application must be followed by a complete specification within 12 months. Moreover, the provisional application should be sufficiently detailed and must be drafted very carefully to ensure that the priority rights are secured for your invention. The Specification (provisional or complete) is to be submitted in Form-2 along with the Application in Form-1 and other documents, in duplicate, along with the prescribed fee as given in the First Schedule. The first page of the Form 2 shall contain: a) Title of the invention; b) Name, address and nationality of each of the applicants for the Patent; and c) Preamble to the description. d) Description of the invention. A complete specification must be prepared in a format as provided below: Title of the invention, Preamble to the invention, Field of invention, Background of invention, Objects of invention, Brief description of figures, Statement of invention, Detailed description of invention, Claims, and Abstract Examination & Grant Request for Examination 1. An Application for a Patent will not be examined unless the applicant or any other person interested makes a request for examination. The request is to be filed in Form 18 with the fee as prescribed in First Schedule. 2. A request for examination has to be made within 48 months from the date of priority of the application or from the date of filing of the application, whichever is earlier. If no such request for examination is filed within the prescribed time limit, the application shall be treated as withdrawn by the applicant. 3. In a case where secrecy direction has been issued under Section 35, the request for examination may be made within six months from the date of revocation of the secrecy direction, or within forty-eight months from the date of filing or priority, which ever is later. 4. The Office will not examine an application unless it is published and a request for examination is filed. I. Once a request for examination is received, the patent application is referred to an Examiner by the Controller for conducting the formal as well as substantive examination as per the subject matter of the invention based the area of specialization of the Examiner. II. At present, the Patent Office has four examination groups based on the broad area of specialization a. Chemistry and allied subjects. b. Biotechnology, Microbiology and allied subjects. c. Electrical, Electronics & related subject d. Mechanical and other subjects. The reference to the Examiner is made ordinarily within one month from the date of publication or one month from the date of request for examination, whichever is later, and is made in order in which the request is filed. When an application is referred by the Controller, the Examiner makes a report on the patentabilility as well as other matters ordinarily within one month but not exceeding three months from the date of such reference Report of Examiner The examiner makes a report after carrying out detailed examination with respect to the following matters: a. whether the application and the specification and other documents relating thereto are in accordance with the requirements of the Act and rules made thereunder; b. whether there is any lawful ground of objection to the grant of patent under the Act; c. the result of investigations The examiner prepares the report after conducting a prior art search to ascertain the novelty, and examining as to whether the invention disclosed in the specification is inventive and industrially applicable. The Examiner also examines whether the invention belongs to one of the categories of non-patentable inventions coming under Section 3 and 4, and whether the application is in conformity with all the provisions of the Act. Pre-grant opposition can be made on the grounds listed under section 25(1)(a) to (k) of the Patent Amendment Act, 2005: Wrongfully obtaining the invention anticipation by prior publication Prior claiming in India Prior public knowledge or public use in India Obviousness and lack of inventive step non patentable subject matter insufficiency of description of the invention non-disclosure of information as per the requirement or providing materially false information by an applicant Patent application not filed within 12 months of filing the first application in a convention country nondisclosure/ wrong mention of source of biological material Invention anticipated with regard to traditional knowledge of any community, anywhere in the world. Post Grant Opposition: Post grant opposition may be filed at any time after the grant of patent but before the expiry of a period of one year from the date of publication of grant of the patent. Under this provision any person interested may give notice of opposition to the Controller in the prescribed manner on any of the grounds mentioned in section 25 of the Patent (Amendment) Act 2005. Section 2(1)(t) of Indian patent act defines "person interested" as including a person engaged in, or in promoting, research in the same filed as that to which the invention relates. In addition, interested person may also include any organization that has a manufacturing or trading/ financial interest in the goods related to the patented product. Similar to the pre-grant opposition, a post-grant opposition may be filed on a number of grounds as specified under section 25(2) of the Act. It is notable that many of the grounds are similar to the grounds required for filing pre-grant opposition. Procedural Differences Between Pre Grant And Post Grant Patent Opposition In India: Pre and post –grant opposition both contain the almost identical grounds for proceeding the opposition and there is nothing which excludes a pre-grant opponent from subsequently filing a post grant opposition. • The most important difference between pre grant and post-grant opposition is that pre grant proceedings may be initiated by "any person", while only a "person interested" can introduce a post grant opposition. • Infringement proceedings can not be started during pre grant opposition prosecution as the patent is still in the application stage, where as infringement proceedings may be introduced in post grant opposition. • The main drawback of the post-grant opposition process is that this remedy is available only through the courts, making redressal a lengthy process and, in the case of bad patents, allowing the patent holder to enjoy a wrongful monopoly.