PATENTS

A brief note on Patent Filing, Prosecution, Opposition, Grant and Litigation in light of the Patent Act and Rules is as follows:

Filing:

·         A national phase application under Patent Cooperation Treaty (PCT) can be filed within 31 months of the priority date or filing date whichever is earlier. No extension of time is possible.

·         An additional official fee is levied in all cases where the pages of specification exceed 30 and the number of claims exceeds 10. Official fee may be payable through ‘electronic means’.

·         An application shall ordinarily be published within one month from the date of expiry of 18 months from the date of filing of the application or the date of the priority of the application, whichever is earlier or one month from the date of request for early publication.

·         The timeframe for filing a Request for Examination (RFE) of an application filed on or after January 1, 2005, is 48 months from the date of the priority of the application or date of filing of the application, whichever is earlier. The application is deemed to be withdrawn if such request is not filed within the due date.

·         Timeframe for furnishing proof of right is 6 months after filing of the application.

·         Timeframe for filing details of corresponding foreign applications is 6 months from the date of filing of the application.

·         Timeframe for filing prosecution details such as information relating to objections, if any, in respect of novelty and patentability of the invention or any other particulars on corresponding foreign applications is 6 months from the date of communication from the Controller.

·         No Indian resident can make an application outside Indian for the grant of a Patent for an invention unless an application for a patent for the same invention has been made first in India. The Controller of Patents shall dispose of such application ordinarily within 21 days.

Prosecution:

·         The First Examination Report (FER) is issued within 6 months from the date of request for examination or 6 months from the date of publication, whichever is later.

·         Timeframe for placing an application in order for grant is 12 months (non-extendable) from the issuance of the FER.

·         An “invention” means a new product or process involving an inventive step and capable of industrial application. A new invention means the subject matter which has not fallen in public domain or does not form a part of the state of the art.

·         An “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 the art.

·         Product patents in all the fields of technology are allowable. However, the mere discovery of a new form of a known substance which does not result in the enhancement of the known efficacy of that substance or 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 are not patentable.

·         Method of treatment of diseases, plants, animals in whole or parts thereof, business method or computer programme per se or algorithms and traditional knowledge are not considered as invention.

Opposition

Opposition can be filed at pre-grant stage and post-grant. At pre-grant stage, there is a provision for making a representation against the grant of a patent application by any person any time after the publication of the application and prior to the grant of the application. However, a post grant opposition can be filed within 1 year from the date of publication of grant of the patent by any person interested. 

Grant

·         Term of a patent is twenty years from the date of filing of the application. In case of International Applications filed under PCT designating India, the term of a patent is twenty years from the International filing date accorded under PCT.

·         Compulsory licence-Any time after the expiration of three years from the date of the grant of patent, any person interested may make an application to the Controller for grant of compulsory licence on patent on any of the following grounds:

-          that the reasonable requirements of the public with respect to the patented invention have not been satisfied, or

-          that the patented invention is not available to the public at a reasonable affordable price, or

-          that the patented invention is not worked in the territory of India.

·         It is necessary to file statement of working every year after grant of a patent. 

Litigation

·         Common law rights are not available for patents. A patent is a territorial right and has to be formally granted in India before any action for infringement can be initiated.

·         The damages in an infringement action can be claimed respectively from the date of publication and in case of Black Box applications, damages can be claimed only from the date of grant.

·         Reliefs granted by Courts in infringement proceedings include injunction, damages and delivery-up/ destruction of goods.

·         With effect from April 02, 2007, an appeal shall lie to the Appellate Board instead of the High Court from the decision, order or direction of the Controller of Patents.