m 2 Intellectual Property Legislation

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JAIN UNIVERSITY -CMS 2011- v semester

INTELLECTUAL PROPERTY LEGISLATION-

PATENTS ACT 1970

INTRODUCTION

The concept of patent in Great Britain originated from the exercise of the

royal prerogative to grant monopolies. In India patent is granted for

inventions under the legislation. The first patent was enacted in 1856

granting exclusive patents for a period of 14 years to inventors of new

manufacture. The act was amended in 1859. After further enactments in

1872, 1883, 1888. Patents and designs act 1911 was passed and this act

was amended several times between the period from 1911to 1970.

Economic growth of any country does not depend merely on availability of

natural resources. India is a signatory to the agreement for the

establishment of the World Trade Organisation (WTO), including the

agreement on trade related aspects of intellectual property rights

(TRIPS).for the purpose of reduction of distortions and impediments to

international trade and promotion of effective adequate protection of

intellectual property rights, amendments to the patents act 1970.

Government had signed GATTA (now WTO) agreement in April, 1994. This

agreements contained clauses relating to trade related intellectual propertyrights. Under which India was required to introduce product patent for

drugs, food products and chemicals. As per obligation under trips

agreement, India was required to introduce product patent where presently

only process patent is permitted. To give effect to amendments by

01.01.2005.patent ordinance was issued on 26.12.2004 to become effective

from 1st Jan 2005.

MEANING OF INVENTION

Inventions means a new product involving a inventive step and capableof industrial application. (sec2 (j))

Inventive step means a feature of an invention that involves technical

advance as compared to the existing knowledge or having economic

significance or both and that makes the invention not obvious to a person

skilled in art. (sec2 (ja))

Invention may be of any machine, apparatus, or other article or substance

produced by manufacture. An article includes any substance or material,

and any plant, machinery or apparatus.1 | P a g e S T R I C T L Y F O R P R I V A T E

C I R C U L A T I O N


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Manufacture means making of any article or a thing which is useful and vendible

.new or useful method or manner of manufacture need not necessarily be any

product ie. Need not necessarily be a new article

Meaning of patent

Patent means any legal grant for any invention granted under the act (sec 2( m))

it is the interest of the inventor to get his invention or any improvement patented

.by grant of patent , protection by way of a monopoly is extended to the inventor

for a limited period for.

1. Inventing a new product

2. Inventing a new process or product capable of industrial application

A process to be patentable must be a process which leads to same result and the

result arrived at must be useful, though it need not be an article at all. When a

patent is granted and is in force in respect of either of the article or the process it

is called patented article or patented process respectively.

The following are the salient features of patent

The patent must be of invention and not of discovery.

In respect of one single invention there must be one single patent.

Patent may be in respect of a substance or in respect of process.

It is not possible to bifurcate the patent and state that one relates to thesubstance and the other to the process.

In order to have a complete patent, the specifications and the claims must

be clearly and distinctly mentioned.

It is the claims and only claims which can constitute the patent.

GENERAL PRINCIPLES APPLICABLE TO WORKING OF PATENTED

INVENTIONS. SEC (83)

In exercising the powers of granting the patents, regard shall be had to thefollowing general considerations namely.

That patent is granted to encourage inventions and to secure that the

inventions are worked in India on a commercial scale and to the fullest

extent that is reasonably practicable without undue delay.

That they are not granted merely to enable patentee to enjoy a monopoly

for the importation of the patented article.

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That the protection and enforcement of the patents contribute to the

promotion of technological innovation and to the transfer and dissemination

of technology, to the mutual advantage of producers and users of

technological knowledge and in the manner conducive to social and

economic welfare, and to a balance of rights and obligations;

The patents granted do not impede protection of public health and nutrition

and should act as instrument to promote public interest especially in sectors

of vital importance for socio and economic and technological development

of India.

That patents granted do not in any way prohibit central government in

taking measures to protect public health;

That the patent right is not abused by the patentee or person deriving title

or interest on patent from the patentee ,and the patentee or a person

deriving title or interest on patentee from the patentee does not resort to

practices which unreasonably restrain trade or adversely affect the

international transfer of the technology, and;

TRUE AND FIRST INVENTOR

A patentee is a true and a first inventor. True and a first invention is a person who

first made the invention and applied for the patent. If two persons have

independently made the same invention and another has used or disclosed it to

the world, the one who applies first for the patent will be considered in law the

true and first inventor although the other might have made it earlier in point of

time.

ASSIGNEE AND EXCLUSIVE LICENSEE OF A PATENT:

A patent when granted is assignable. Assignee includes an assignee of the

assignee and the legal representative of a deceased assignee or assignee of legal

representatives. The patentee may assign the patent by licence. The patent can

sell a part or whole of his patent rights or grant licences to others to use it.

A licence from the patentee which confers on the licensee, or on the licensee and

persons authorised by him ,to the exclusion of all the other persons (including the

patentee) any right in respect of the patented invention shall be an exclusive

licensee and such an licensee is an exclusive licensee . a patent being a form of

industrial property is called an intellectual property.

APPLICATIONS FOR PATENTS

Sec 6 who can apply for patent?




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a) By any person claiming to be true and first inventor of the invention .true

and first inventor does not include either the first importer of an invention

into India or a person to whom an invention is first communication from

outside India.(sec 2(y))

b) By the person being the assignee of the person claiming to be the true andfirst inventor;

c) By the legal representative of any deceased person who immediately before

his death was entitled to make such an application.

REQUIREMENTS FOR INVENTIONS TO BE PATENTABLE:

TEST OF NOVELITY-

TEST OF UTILITY-

TEST OF VENDIBILITY-

KINDS OF PATENT

ORDINARY PATENT -it usually obtained by filing application under sec 6

of the patents act. 1970

e.g. .any genuine invention without hassle.

PATENT OF ADDITION-it is usually done for improvement in or

modification of an invention for which a parent application has already been

made or guaranteed.

Further this holds good if the patents for original inventions remains in

force.

PATENT IN RESPECT OF CONVENTION-such patent are granted to

persons outside India who are based in a country which has convention.

Application for such patent has to be made in the convention country

firstly; application can be made to patent office in India subsequently

PROCEDURE FOR GRANT OF PATENT

o filing an application for patent

examination of application




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Acceptance of application and advertisement of such acceptance in the

official gazette.

opposition to the grant of patent

grant and ceiling of patents

WHO IS ENTITLED TO APPLY

Defense employees not eligible ( railway and research

establishment employees ) prohibited

Application for patent for addition- if the original patent being

pending or already granted.

WHO IS ENTITLED TO APPLY

Any person who claims to be the true and the first inventor

by the person who is called the assignee

by legal representative of deceased

alone or jointly sec 6 sub sec-1

company or firm as an applicant- a joint stock company, firm or

corporation ( only as assignee)

govt servants are at the liberty to apply directly at the patents

office.

FILING OF APPLICATION SEC- 7

FOLLOWING DOCUMENTS ARE SUPPOSED TO BE SUBMITTED

provisional or complete specification- to furnish the description of

the of the invention( in triplicate )

Form 1 and form IA.




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specification can be of two types-

provisional specification

complete specification

PROVISIONAL SPECIFICATION -

Under this the applicant has to furnish description of the invention

It describes the nature of inventions generally with or without drawings

In this the statement of claims will not be given..

COMPLETE SPECIFICATION

It has to be filed within a period of 12 months.

Can be extended for a month.

In case of failure the within the stipulated time allotted it may lead to

abandonment of the application.

EXAMINATION AND ACCEPTANCE OF APPLICATIONS SEC-12-24

Whether the application and specification are in acc to the act.

Looks into any lawful objection to the grant of the patent.

The result of investigations furnished under sec 12

The report likely to be made within 18 months.

POWER OF THE CONTROLLER

IF SATISFIED . THIS POWER DOES NOT COMPLY

In case of refusal .

The controller sees the application proceedings will be refused.




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can amend the specification before he proceeds with the application

TIME FOR PUTTING APPLICATION AFTER OBJECTION.

After meeting necessary amendments the applicant can reach the

patent office 15 months from the date can be extended up to 3

months.

SEC -25 OPPOSITION TO GRANT PATENT

If the invention has been published before the priority of the date

claim.

ANTICIPATION

Anything If published before the date of filing complete specification

WHAT ALL COMES UNDER ANTICIPATION?

Inventions published after filing provisional certification.

Matter was used or published in India or elsewhere after application

was filed in a convention country.

However, applications will not be refused due to prior anticipation in

following circumstances.

The matter relating to invention claimed was published without the

consent of the inventor in application.

The applicant made application as soon as possible on becoming

aware of such publication.

Communication to government or to any person authorised bygovernment to investigate the matter on merits.

Invention exhibited or used in industrial or other exhibition such

exhibition should be specifically notified by the central government.

However, the application must be submitted within 6 months of

opening of exhibition.

If trails for inventions in public were necessary, application should be

made within 12 months from the date of trails.




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Invention used or published after filing of provisional specification.

Matter was used or published in India or elsewhere after

RIGHTS OF PATENTEES

Right to exploit the patent- sec 48 confers the right to exploit the

patent on the patentee or his licensee or his assignee or his agent

when such right is exercised within the conditions imposed by the sec

47 of the act.

Right to license- sec 70 of the act confers interalia the right on a

grantee or proprietor of the patent to grant licence(s). for instance,

patentee of invention of new camera has a right to license his right to

another party to make and sell the piece in a particular territory.

Right to assign sec 70 also confers on the patentee the right to fully

or partially assign his patent to another or others. Such assignment

and licensing should always be in writing in express agreements and

should be registered.

The right to surrender the patent- sec 63 provides that a patentee

may at any time by giving notice to the controller,offer to surrender

his patents. The controller before accepting the offer of surrender

,publishers the offer in india to give opportunity to the parties having

any interest,for instance licensees to oppose the offer of surrender.

Right to sue for patent infringement- patentee,his assignee,licensee

has right ti institute a civil suit in court not lower than the district

court in case of any infringement.

PATENT AGENTS SEC- 125- 132

A person shall be qualified to have his name entered in the register of

patent agents if he fulfills the following conditions.

Should be citizen of India

Completed the age of 21 years

Has passed the prescribed examination8 | P a g e S T R I C T L Y F O R P R I V A T E



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Should pay the fee as may be prescribed.

Should practice before the controller

To prepare all documents, transact all business and discharge such

other function as may be prescribed.

SUBSCRIPTION OF CERTAIN DOCUMENTS AND VERIFICATION BY

PATENT AGENTS.

Looks into application of the patent.

Application of the lapsed patents.

Applications for sealing of patent

Restoration of patent.

Application for leave to amend.

Applications for compulsory licenses or for revocation

Notice for surrender.

GENERAL POWER IN GRANTING COMPULSORY LICENCES

The patents are worked on commercial scale in India without undue

delay.

Not unfairly prejudiced.




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