articles

August 18, 2012

Getting a Patent on your Innovation


Mr. Vikrant Rana

Abraham Lincoln once said: "the patent system adds the fuel of interest to the fire of genius", clearly highlighting the significance of patents and intellectual property rights. The innovation, competitiveness and intellectual property rights be it patents, copyright or trademarks are the codependent entities which are also the cornerstone and foundation of global economy.

The Intellectual Property Rights (IPRs) are the statutory rights resulting from intellectual activity in the industrial, scientific, literary and artistic field. The IP rights are exclusive and provide financial incentives to the owners and creators of the intellectual goods and services. These rights encourage creativity and promote fair dealing that ultimately contributes to the economic and social development of the nation.

The history of patents and patent laws is generally considered to have started in Italy with a Venetian Statute of 1474 that was issued by the Republic of Venice. As dissemination of ideas is a significant aspect of world trade, creators demand protection of the same. As the extent and enforcement of such rights varied across the world, there was a need for its harmonization for efficient and healthy international economic relations. The Paris Convention for the Protection of Industrial Property, signed in Paris, France, on March 20, 1883, was one of the first intellectual property treaties. It established a Union designed to help the people of one country to obtain protection in other countries for their intellectual assets.

World Intellectual Property Organization (WIPO) was created on the same lines in 1967 to encourage creative activity and to promote the protection of intellectual property throughout the world. WIPO administers about 21 international treaties in the field of intellectual property. The Patent Cooperation Treaty (PCT) is one such treaty administered by WIPO for international co-operation in the fields of patents. It presents a mechanism by which an applicant is required to make only a single patent application. PCT, however, does not provide for grant of patent and the responsibility of granting the patent lies exclusively in the hands of national patent offices. The World Trade Organization (WTO) Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) came into force in 1995 and gave new dimensions and meaning to the multilateral protection and enforcement of IP rights.

Patents

A patent is a monopoly granted by the state for an invention that is new, involves an inventive step and is capable of industrial application. The owners are given exclusive rights to prevent others from making, using, selling, offering for sale or importing a process or products in respect of which the patent has been granted. The exclusive rights subsist for a period of twenty years from the date of filing the application Conditions of Patentability

The essential features for the grant of patents in India, laid down by the Patents Act, 1970, are novelty, inventive step and industrial applicability.

The aforementioned features as defined in the Patents Act are briefly discussed below:

  1. Novelty: It is the feature of invention which has not been anticipated by prior publication in any document or used anywhere in the world before the date of filing of patent application, implying that the subject matter of the invention should not be in the public domain or form part of the state of the art.
  2. Inventive Step: It means the feature of invention that involves technical advance as compared to the existing knowledge or having economic significance or both, and to a person skilled in the art.
  3. Industrial application: In relation to an invention, industrial applicability means that the subject matter of the invention must be capable of being made or used in any kind of industry.

It is interesting to note that from the year 1970 till January 1, 1995 only process patents were granted in India. The Patent laws were later amended to meet the obligations of TRIPS agreement and to be in conformity with Article 27 of TRIPS that allowed for the grant of both the process and product patent. Non patentable inventions

An invention may satisfy the conditions of novelty, inventiveness and usefulness but it may still not qualify for a patent under the following situations:

  • An invention which is frivolous or which claims anything obviously contrary to well established laws;
  • An invention, the primary or intended use or commercial exploitation of which would be contrary to public order or morality or which causes serious prejudice to human,animal or plant life or health or to the environment;
  • The mere discovery of a scientific principle or the formulation of an abstract theory or discovery of any living thing or non-living substance occurring in nature;
  • 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 the 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;
  • A substance obtained by a mere admixture resulting only in the aggregation of the properties of the components thereof or a process for producing such substance;
  • The mere arrangement or re-arrangement or duplication of known devices each functioning independently of one another in a known way;
  • A method of agriculture or horticulture;
  • Any process for the medicinal, surgical, curative, prophylactic, diagnostic, therapeutic or other treatment of human beings or any process for a similar treatment of animals to render them free of disease or to increase their economic value or that of their products;
  • Plants and animals in whole or any part thereof other than micro-organisms but including seeds, varieties and species and essentially biological processes for production or propagation of plants and animal;
  • A mathematical or business method or a computer program per se or algorithms;
  • A literary, dramatic, musical or artistic work or any other aesthetic creation whatsoever including cinematographic works and television productions;
  • A mere scheme or rule or method of performing mental act or method of playing game,
  • A presentation of information;
  • Topography of integrated circuits;
  • An invention which in effect is traditional knowledge or which is an aggregation or dublication of known properties of traditionally known component or components; and
  • Invention relating to atomic energy falling within sub-section (1) of Section 20 of the Atomic Energy Act, 1962 is also not patentable.

Procedure

In accordance with the provisions of Patent Act, the inventor, his assignee or legal representative of deceased person, who before his death was either the inventor or assignee, can apply for patents at the head office of the Indian Patent Office or its branches depending upon in whose jurisdiction he resides or has a domicile or has a principle office of business. In case of a foreign applicant, the application can be filed at the appropriate office, in whose jurisdiction the address for service or patent attorney's office is situated.

It is pertinent to note the difference between the inventor and applicant. While the person who conceived the invention is the inventor, the person (or company) who files the application is the applicant. Though in some cases, the applicant and inventor may be the same, they are often different entities. More often than not,the applicant is the company or research institution that employs the inventor.

Before an applicant files and applies for patents, it is generally advisable to perform a prior art search. The huge amount of data available in the patent and non-patent literature, scientific journals, textbooks, conference proceedings, websites and trade publications may render the invention obvious and non-novel. A prior art patentability search can thus prevent wastage of resource and time on patent application if the search uncovers prior art reference that may preclude patenting of invention.

Types of Applications:

Following types of applications are recognized by the Patent Act:
  1. Ordinary Applications: These applications are filed with the Indian Patent Office without claiming priority from other applications.
  2. Convention Applications: These applications claim priority from the corresponding application(s) filed for the same/substantially similar invention filed in convention country. The convention application must be filed within 12 months from the date of filing the similar application in the convention country.
  3. International Patent Application: A patent application filed under the PCT is called an international application. It represents a mechanism by which an applicant is required only to make a single patent application. After filing an international application through PCT, the applicant has up to 30/31 months to enter the national phase in the member country. It should, however, be mentioned here that the PCT does not provide for grant of Patent, the responsibility of granting or rejecting the patents lies exclusively with the regional patent offices on the basis of their local Patent law and rules. PCT thus is only a "filing system" and not a "grant system".
  4. PCT National Phase Application: The international application designating and filed in India, within 31 months from the date of the earliest priority is known as the PCT national phase application.

Documents for Submission

Every application for a patent shall be made on Form 1, and shall be for one invention only or a group of inventions which are linked to each other by a single inventive concept.

Along with the application for application for grant of patent and specification, the applicant is required to submit the following:

  1. Declaration as to Inventorship: It is filed for Applications accompanying a Provisional Specification or a Convention Application or a PCT Application designating India.
  2. Statement and undertaking: If an applicant has filed and is prosecuting an application for the same or substantially the same invention in other countries, then he has to submit statement setting out detailed particular such as "date of filing, publication number, status of application etc. He is also required to submit an undertaking that up to the grant of patent in India, he would keep the Controller informed about the detailed particular of applications relating to same or substantially the same application filed in any other country outside India
  3. Proof of right to make an application: If the invention has been assigned by the inventor to other person or to the company, by virtue of assignment of right, then the applicant is required to file the proof of right either at the time of filing the application or within six months from the date of filing the application.
  4. The authorization of an agent: If the applicant has authorized an agent to act on his behalf in respect of prosecution of an application for patent, then the authorization of an agent should be made on Form 26 or in the form of Power of Attorney.

Filing for Patent Abroad

The person resident in India who wishes to file an application for grant of patent outside India has to first file the application in India not less than six weeks before filing the application abroad. However, he is required to take permission from the Controller (by filing request on Form 25) if he wishes to first file the application in any country outside India.

  1. Publication: Once the application for patent is filed, it is published 18 months after the date of filing or the date of priority, (whichever is earlier). Except for the right to initiate infringement proceedings, the Indian Patent Act provides similar rights to the applicant on and from the date of publication of application, as that provided to the Patentee.
  2. Examination: India follows deferred examination system, according to which, the application is not examined automatically. To initiate the examination proceedings, the applicant is required to file a request with the Patent Office. If the examination report is adverse to the grant of patent, the same is communicated to the applicant. As per the provisions of the Patent Act, the applicant has to comply with the requirements imposed on him within a period of one year from the date on which objections are forwarded to him, or else the application is deemed to be abandoned by the Patent Office.
  3. Grant of Patent: When the application for patent is found in order of grant, the patent is granted as expeditiously as possible with the seal of the Patent Office. The term of patent is twenty years from the date of application or priority date, whichever is earlier. Annuity fee is payable every year to keep the patent in force.
  4. Opposition: The Indian Patent Office also provides a period during which third parties may oppose the grant of patent. Opposition proceedings may be pre-grant/post-grant and may be initiated within specified time limits.

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