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Background
1. The Patent Act, 1970 came into force on 20.4.1972 replacing Indian
Patents and Designs Act, 1911. When India became independent, the
Govt. of India appointed the Patent Enquiry Committee under the
Chairmanship of Dr. Bakshi Tek Chand, a retired Judge of Lahore High
Court in 1949 with a view to ensure that the Patent system was more
conducive to national interest. The committee submitted its final report in
April 1950. A bill based on the recommendations of this Committee was
introduced in the Parliament in 1953, but it lapsed due to dissolution of the
Lok Sabha.
3. The present Act contains XXIII chapters, which are relating to Patenting
procedure, International arrangement and other misc. matters. This Act is
regulated by the Patents Rules, 1972 which inter alia include Five
Schedules concerning with fees, forms etc.
5. There are five Schedules to Patents Rules, 1972; the First Schedule
prescribes the fees to be paid in respect of any matter arising out under
the Act. Where any form specified in the Second Schedule to the Patents
Rules, 1972, it shall be accompanied by specified fees or where payment
is made within a prescribed period of time after the forms have been filed,
the specified fee shall be paid within that period. The texts of various
forms required in connection with activities under the Patents Act, 1970
are set out in this schedule. These forms must be used wherever required
and they are not to be modified without the consent of the Controller. The
Third Schedule prescribes form of Patent that to be granted. The Fourth
Schedule prescribes various types of costs to be awarded in various
proceedings under the Act. As stated above, the fifth schedule specifies
certain amendments to the Indian Patents & Designs Rule, 1933.
6. The Patents Act, 1970 in comparison with Indian Patents and Designs Act,
1911 has far more reaching effect in some areas such as food, Drug and
Medicines where all the patents granted under this category and deemed
to be endorsed with the words “Licence of Right”. Further the term of
Patents related to Food, Drug & Medicines is seven years from the date of
Patent or 5 years from its grant whichever is less. More elaborate
definition of invention has been provided. Product Patents for Drugs &
Medicines including certain class of chemicals, which are produced by
chemical reactions, have been abolished. However, inventions relating to
methods or processes of their manufacture are patentable. The area of
search for novelty has been extended to any documents published
anywhere in the world. The provisions for appeals to the High Court from
the decision of Controller have also been provided. The provision for
grant of compulsory license, license of right and revocation of Patent
on the ground of nonworking has also been incorporated. Many of these
provisions are kept in line with the development of Patent law in
developed countries, particularly Great Britain. The major departure is in
the reduction of the term of patent for the invention relating to the drug,
Medicine & food and abolition of Product patent per se for Drug,
Medicines, Food and Chemicals.
8. India has become a member of the Paris Convention and PCT w.e.f.
7.12.1998 and by virtue of this, the Head Office of Patent Office & its
Branch offices have become receiving offices for the purpose of
international applications filed under PCT. In view of these developments,
the Patents Rules, 1972 have been amended by incorporating a new
chapter IIA dealing with international application which can be filed at
Head office of the Patent office at Calcutta or Branch Offices at Delhi,
Chennai & Mumbai w.e.f. 17.11.99 as applicable.
9. The present Act under Chapter IVA provides specific provisions for the
grant of EMR (Exclusive Marketing Rights) with a view to fulfill its
international obligation under the provisions of article 70.8 & 70.9 of TRIPs
agreement which are in force w.e.f. 1.1.1995.
6. COMPLETE SPECIFICATION
7. ABSTRACT
8. DRWAING
a) Request form :
7.The required fees which must be paid to receiving office are the
Transmittal Fee, the International Fee and the Search Fee. They must all be
paid to the Receiving Office.
8.The Transmittal Fee is for the benefit the Receiving Office. It is intended to
compensate that Office for the work which is required to be performed in
connection with the International Application. The amount is left to be fixed by
the Receiving Office. It is due within one month from the date of receipt of the
International Application.
9.The International Fee is for the benefit of the International Bureau. It is
intended to cover the cost of the work the International Bureau must perform
under the PCT. The international fee consists of the basic fee and as many
designation fees as there are national or regional Offices designated in the
application by the applicant, with a maximum of 10 designation fees. The
amounts are fixed in the Schedule of Fees which forms part of the
Regulations. The basic fee is due within one month from the date of receipt of
the International Application. The designation fees are due within one year
from the priority date or one month from the said date of receipt, whichever is
later.
10.The Search Fee is for the benefit of the International Searching Authority.
It is intended to compensate that Authority for the work it must perform in
connection with the establishment of the international search report. It is due
within one month from the date of receipt of the International Application. The
amount is fixed by the International Searching Authority.
9.9 Withdrawal:
1.An International Application can be withdrawn at any time during the
international phase. Where the intent of the withdrawal is to prevent
publication, the notice of withdrawal must reach the International Bureau
before technical preparations for international publication have been
completed (that is, not later than 15 days before the date of publication).
2.A withdrawal of an International Application can be made with the condition
that the withdrawal be effective only if the international publication can still be
prevented.
9.10 Amendments:
1.The claims can be adjusted to the results of the international search report
by amending them once (under Article 19) with effect in all designated States.
Such amendments save costs for preparation of different sets of amendments
and for local agents filing such amendments before designated Offices, and
guarantee better provisional protection and patents in registration countries.
Individual amendments before each designated Office are also permitted in
the national phase (under Article 28 or 41) and all parts of the application can
be amended (under Article 34(2)) during the international preliminary
examination procedure under Chapter II.
1. The national phase follows the international phase. In the national Phase
before processing and examination may start in the national phase in the
designated or elected Offices, the applicant must perform certain acts
thereby effecting “entry into the national phase.” If the applicant does not
enter the national phase, namely, if he does not perform these acts within the
prescribed time limit, the International Application loses its effect in the
designated or elected States concerned with the same consequences as the
withdrawal of any national application in that State (Article 24).
2. For entry into the national phase before a designated or elected Office, it
is necessary that the national fee be paid to it and, where the International
Application has not been filed or published in the official language, or one of
the official languages, of that Office, that a translation into an official
language be filed. This must be done within a certain time limit, which is
different depending on the circumstances: if the designated State concerned
has been elected for the purpose of international preliminary examination
within 19 months from the priority date, the time limit is 30 months from the
priority date; in all other cases (that is, if the designated State concerned has
been elected after 19 months from the priority date or if the Chapter II
procedure has not been used in relation to that designated State), the time
limit is 21 months from the priority date. The time limits for entry into the
national phase are, in some Offices, even longer than 21 or 31 months. See
Volume II of the PCT Applicant’s guide for further information.
3. The national fees to be paid are usually about the same as the fees
required for the filing of a national or regional application. Some Offices, not
in India however, levy lower national or regional filing, search or examination
fees, or refund certain fees, on account of the existence of the international
search report or where an international preliminary examination report has
been established. This offsets, at least partly, the costs of filing an
International Application.
4. Where the original drawings are of a good quality, the applicant is not
required to file additional formal drawings with the Designated or Elected
Offices, permitting substantial economies in some cases. It is therefore
important to file drawings with the Receiving Office that fully comply with the
format requirements of the Regulations under the PCT.
5. Where the priority of an earlier application is claimed and a certified copy
of that application has been provided, it is not necessary to submit a certified
copy of the priority document to each designated or elected Office. The
International Bureau sends any required copies of the priority document to
the Offices concerned.
6. Apart from the payment of the national fee and, where necessary, the
filing of a translation, no designated or elected Office may require compliance
with further requirements within the 21- or 31-month time limit. Certain
additional requirements, such as appointment of an agent, indication of an
address for service of notifications, declaration of inventor, assignment
documents, and the like, are allowed, but the applicant must be given the
possibility of complying with those additional requirements after the
expiration of the time limits mentioned above.
7. The PCT leaves to each Contracting State freedom to prescribe the
substantive conditions of patentability applied in the national phase. This is
particularly true of what constitutes “prior art.” However, since the
requirements of prior art as defined in the PCT and its Regulations for the
purposes of the international phase are generally as strict as, or stricter than,
those defined in any national law, there is very little likelihood of unpleasant
surprises of this kind occurring in the national phase. On the other hand, the
PCT does not prevent any national law from requiring the applicant to
furnish, in the national phase, evidence in respect of any substantive
condition of patentability prescribed by that law.
Correction Of Translation
10. The PCT guarantees the applicant the opportunity to amend the
description, the claims and the drawings before any designated or elected
Office. Thus, in addition to any amendments made in the international phase,
further amendments may be filed upon entering the national phase or within
a prescribed time limit thereafter.
Legal Remedies; Protection Against Loss Of Rights
9.13 Fee savings. National fees are reduced or completely dispensed with for
the procedure before some Offices which provides considerable savings, for
example:
European Patent Office (EPO):
– European search fee waved if international search report by AT, EP, ES,
SE;
– 20% reduction of European search fee if search report by AU, CN, JP,
RU, US;
– 50% reduction of European examination fee if international preliminary
examination report by EP.
German Patent Office:
– filing fee waived if the Office was the Receiving Office;
– examination fee reduced if an international search report has been
established.
Hungarian Patent Office:
– filing fee waived if the Office was the Receiving Office;
report by EP.
Japanese Patent Office:
– approximately 80% reduction of examination fee if international search
report established by JPO;
– approximately 20% reduction of examination fee if international search
report established by ISA other than JPO.
United Kingdom Patent Office: refund of part of preliminary examination and
search fee.
9.14 BASIC REQUIREMENTS
Under the said basic requirements to start the national phase in India, the
applicant is required to file the following with the DO/IN or RO/IN within the
prescribed time limit:
(iii) Where the international application has not been filed or published in one
of the official languages of DO/IN or RO/IN as the case may be, a translation
of the application (this replaces the requirement in (i), above) in one of the
official languages, [under PCT Article 22: Description, claims (if amended,
both as originally filed and amended together with any statement under PCT
Article 19), any text matter of drawings, abstract. Under PCT Article 39(1),
Description, claims, any text matter of drawings, abstract (if any of those parts
has been amended, both as originally filed and amended by the annexes to
the international preliminary examination report)]
Chapter I
Preliminary
Contents
1.1.1 Section 1 sub-section (1) of the Act relates to the title of the Act, which is
to be called as the patents Act, 1970. Sub section (2) provides that this act
is applicable to whole of India. It does not exclude any part of India. Sub
section (3) provides that the Central Govt. may appoint any date from
which the Act comes into force. It also provides that different provisions of
the Act may come into force on different dates. This sub section further
provides that any reference in any provisions to the commencement of the
Act shall be construed as a reference to the coming into force of that
provision. All the provision of this act except sections 12 (2), 13(2), 24(A)
to 24(F), 157A, 28, 68 and 125 to 132 have come into force on 20th April,
1972 vide Gazette notification No. S.O. 300 (E) dated 20.4.1972 in
Gazette of India Extra Part II Section 3(ii), pages 735. The provisions of
sections 12(2), 13(2), 28, 68 & 125 to 132 have come into force on
1.4.1978 vide notification no. S.O. 799 dated 10.3.78 in Gazette of India
1978 part II Section 3(ii) page 764.
1.2.1 Sec. 2(1)(a): “Assignee” includes an assignee of assignee & the legal
representative of a deceased assignee & references to assignee of any
person includes reference to assignee of legal representative or assignee
of that person. Therefore, “assignee” may be:
(i) An assignee of the assignee
(ii) Legal representative of deceased assignee
(iii) Reference to assignee of any person includes references to the
assignee of legal representative or assignee of that person
1.2.5 Sec. 2(1)(e): “District court” has the meaning assigned to that expression
by the Code of Civil Procedure, 1908 (V of 1908).
1.2.6 Sec. 2(1)(f): “Exclusive Licence” means a licence from a patentee which
confers on the licencee and persons authorized by him, to the exclusion
all other persons (including the patentee), any right in respect of the
patented invention, and “exclusive licencee” shall be construed
accordingly.
1.2.7 Sec. 2(1)(g): “Food” means any article of nourishment and includes any
substance intended for the use of babies, invalids or convalescents as an
article of food or drink.
and includes the Council of Scientific and Industrial Research and any
other institution which is financed wholly or for the major part by the said
council.
and includes any new and useful improvement of any of them, and an
alleged invention.
The detailed interpretation of the word “invention” is given under the title
“patentable subject matter”.
4.An undertaking to that effect those substances are not used for
human beings or for animals, shall be given in the specification.
1.2.13 Sec. 2(1)(m): “Patent” means a patent granted under this Act and
includes for the purposes of section 44, 49, 50, 51, 52, 54, 55, 56, 57, 58,
63,65, 66, 68, 70. 78. 134. 140. 153, 154 and 156 and Chapters XVI, XVII
and XVIII, a patent granted under the Indian Patents and Designs Act,
1911 (2 of 1911)
1.2.14 Sec. 2(1)(n); “Patent agent” means a person for the time being
Registered under this act as a patent agent.
(i) A person acting or intending to act as patent agent should be
registered in the register of patent agent.
(ii) While signing the document he should give a registration number.
and year in which he is registered.
(iii) The applicant on the prescribed form with the prescribed
court/stamp fee should duly authorize him.
(iv) The person acting as a patent agent should give declaration that he
is acting in good faith, honestly deligently and with proper
authorization along with the statement that he is well conversant
with the matter he is dealing with.
1.2.15 Sec. 2(1)(o): “patented article” and “patented process” means respectively
an article or process in respect of which a patent is in force.
1.2.16 Sec. 2(1)(p): “Patentee” means the person for the time being
entered on the register as the grantee or proprietor of the patent.
1.2.18 Sec. 2(1)( r): “Patent Office” means the patent office referred to in
section 74.
(i) Patent office under the Act means the Head Office of the Patent
office, existing branch offices and any more branch office which
may be opened in future as the Central Government has power to
do so under section 74 of the Act.
(ii) The patent office is the office established for the purpose of The Act
to administer various provisions relating to the grant of Patent and
maintenance of the register of patent. The officers appointed by
the Central Govt. will discharge the function of the Controller, which
the Controller may authorize them to discharge. While discharging
the function of the Controller under the power delegated to them,
the Officers have to work within the provision of the Act.
(i) For the purpose of the Act, a person may be natural or legal entity
or registered society.
(ii) The Govt. is also a person under the Patents Act 1970 whether it is
Central Govt. or State Govt..
(iii) Corporations, Govt. undertakings and other autonomous institution
will also be a person under the Act.
(iv) Partnership firm or body, which is un-incorporated, is not a person
and is not considered as a person under the Act because the
partners operate the firm and it has no independent existence. The
actual karta of partnership firm are its partners. The application
may be filed in names of all personally responsible partners.
(i) The person to be interested person under the Act should have in
his possession a patent or patents relating to the same field or he
should have manufacturing interest or trading interest.
(ii) A person who has assigned his interest in a patent application has
no locus standi subsequently to oppose the application or to apply
for revocation of patent granted on the basis of the application.
(iii) A financial interest of a holding company, whose subsidiary is a
person interested suffices to enable the holding company to oppose
the grant of the patent (KAISER Aluminum & Chemicals
Corporation Vs. Reynold Metals Co. (1972 RPC 648).
(iv) In addition to the above a person who can establish any bonafide
interest can also be a person interested under the Act.
1.2.21 Sec. 2(1)(u): “prescribed” means in relation to proceedings before
High Court, presented by the rules made by the High Court and in
other cases prescribed by the rules under this Act.
(i) For the purpose of this Act, the form as prescribed under 2nd
schedule of the patent rules should be used.
(ii) This should be filed within prescribed time.
(iii) The forms or any letter should be filed if necessary along with
prescribed fee.
(iv) Prescribed fee shall mean the fee prescribed under first
schedule of the rules of the Patents Rules, 1972 as amended by
the Patents (Amendment) Rules,1999.
1.2.25 Sec. 2(1) (y): “True & first inventor” does not include either the first
importer of invention to India or a person to whom an invention is first
communicated from outside India.
(i) The first importer of invention into India is not a true & first
inventor.
(ii) First communicatee is also not a true & first inventor.
Sec. 2(1)(j) of this Patent Act, 1970 defines the term “invention” as
follows.
“Invention” means any new & useful-
(i) Art, process method, or manner of manufacture,
(ii) Machine, apparatus or another article,
(iii) Substances produced by manufacture, and include any new
& useful improvement of any of them, and an alleged
invention.
4. Mere colocation of more than one integers or things, not involving the
exercise of any inventive faculty does not qualify as invention.
5. The subject matter for patent may satisfy the requirement of manner of
manufacture but may lack in novelty. In such case the subject matter
cannot be considered as invention.
1.3.5 Novelty
1.3.6 Utility:-
1. An invention to be Patentable must be useful or has some utility.If the
subject matter is devoid of utility it does not satisfy the requirement of
invention.
Contents
• Non Patentable inventions
• Non Patentable inventions relating to atomic energy
• Inventions where only methods or processes of
manufacture Patentable
2.1.0 Section 3: Non Patentable Inventions
There are certain inventions fulfilling all the criteria of patentable invention
such as novelty, usefulness and manner of manufacture but they have
been excluded from patentability under Sec. 3 of the Patents Act, 1970
which are as follows.
(i) The invention, the use of which is contrary to the law for the time
being inforce or use of which is prohibited, is not patentable e.g.
any devices, apparatus or machine for theft, gambling apparatus or
method for gambling,method of adulteration of food etc.
(i) Claim for discovery of scientific principle is not patentable, but such
a principle when used with process of manufacture resulting into a
substance, or an article, is patentable.
(vi) The fact that a known material or article is found to have a hitherto
unknown property is a discovery and not an invention. But if the
discovery leads to the conclusion that the material can be used for
making a particular article or in a particular process, then the article
or process could be patentable. For example finding out the fact
that a particular known material is able to withstand mechanical
shock is a discovery and therefore unpatentable, but a claim to a
railway sleeper made of that material would not fall under
exclusion, and would be allowable if it passed the tests for novelty
and inventive step.
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:
III. Mere use of a known process is not patentable unless such known
process results in a new product or employs at least one new
reactant.
IV. Mere use of Aspirin for cardio-vascular disease, which was earlier
used for analgesic purpose, is not patentable. However, a new and
alternative method for preparing Aspirin is patentable.
(iii) It is accepted as sound law that mere placing side by side old
integers so that each performs its own function independently of the
others is not a patentable combination (British Celanese Ltd., Vs
Courtaulds Ltd (52) RPC 171).
(iv) However where the old integers where placed together have some
working inter relation producing a new or improved results, then
there is a patentable subject matter in the idea of the working
interrelation brought about the collocation of the integers.
(v) The plant and animal varieties are also not patentable The
exclusion of plant and animal varieties from patentability applies
only when purely biological features characterize them.
(vii) Surgical process and processes for the prevention and cure of
disease in human beings are not patentable. In Uniliver Ltd.
Application (1983) RPC 219, the patent courts in UK held that the
term therapy included the prevention as well as the treatment or
cure of disease, therefore any process relating to therapy is also
not patentable.
(ii) According to Sec. 2(1) of Atomic Energy Act, atomic energy means
energy released from atomic nuclei as a result of any process
including the fission and fusion processes.
(iv) Under the atomic energy Act, the term “radioactive substances” or
“radioactive material” is defined as any substance or material,
which spontaneously emits, radiation in excess of the levels
prescribed by notification by the central govt.
(v) The Secretary, Deptt. Of Scientific Research, vide his letter no.
AEC/21(28)/50/68437 Dated 12/12/1950 has directed that the
Central Govt. is pleased to prescribe uranium minerals of, thorium,
beryllium, vanadium, lithium and other minerals containing the said
metals as necessary ingredients such as urani-ferous allamiti,
Triplita, Colourmbite and Tantalite as substance which in its opinion
are or may be used for the production or use of atomic energy or
research under Atomic Energy Act.
(vi) The central govt. vide its letter dated AEC/27(2)/50/358 dated
28.1.1951 has declared “Ilmenite” as substance for the production
or use of atomic energy.
(vii) The Central Govt. vide its letter No. AEC/DIH/1/(7)/52/2696 dated
19.5.53 by superseding the earlier notification has prescribed the
substances specified in the following schedule & any of the
respective compound as substances for the production or use of
atomic energy under the Atomic Energy Act.
THE SCHEDULE
1. Uranium
2. Thorium
3. Radium
4. Zirconium
5. Graphite
6. Beryllium
7. Lithium
8. Deuterium
9. Plutonium
10. Neptunium
The Central Govt. has power to amend the schedule and may issue a
notification at any time.
(i) From 1.1.95 a claim for patent for invention relating to substance
(product per se) intended for use or capable of being used as medicine
or drug can be filed for the grant of exclusive marketing right.
(ii) Claim for patent in respect of invention for all chemical substances
which are ordinarily used as intermediates as defined under section
2(1) l(v) in the preparation or manufacture of any of the medicine or
substances as defined in sec. 2(1)(l), is not allowable for the grant of
Exclusive Marketing Right.
(iii) Application for claim for patent of an invention for the above-referred
substances for the grant of exclusive marketing rights should be dealt
with in the manner provided in Chapter IVA.
(iv) No patent can be granted on the application filed under this section
unless and otherwise the provisions are made in the Act.
(v) The application filed under this section shall be continued to be
received and kept in the mailbox provided therefor.