IPR (INTELLECTUAL PROPERTY RIGHTS)
Company Name search: https://www.mca.gov.in/mcafoportal/showCheckCompanyName.do
Trade Mark Search
NICE Classification: https://www.wipo.int/classifications/nice/en/
NICE search: https://www.wipo.int/classifications/nice/nclpub/en/fr/
Indian Trademark search: https://ipindiaservices.gov.in/tmrpublicsearch/frmmain.aspx
Trademark granted for 10 years and renewable
World’s oldest Trademark: https://www.wipo.int/wipo_magazine/en/2005/02/article_0002.html
What Can’t be patented:
https://ipindia.gov.in/writereaddata/Portal/ev/sections/ps3.html
Trade Secrets: Example of KFC’s Secret Recipe
https://www.globalbrandsmagazine.com/what-is-kfcs-secret-recipe/
Case study: John Richard Brady And Ors. vs Chemical Process Equipments P. ... on 6 July, 1987
https://indiankanoon.org/doc/1739601/
Mattu Gulla and Shankarpura Jasmine gets GI Tag
https://www.newindianexpress.com/magazine/2020/aug/30/history-as-an-entreacutee-the-story-of-udupi-brinjal-orgulla-2189183.html
https://www.thehindu.com/news/cities/Mangalore/conclave-and-expo-in-udupi-to-promote-farm-products-ofcoastal-region-tomorrow/article66001229.ece
Patent
A patent application is a formal request made to a government authority, typically a national or regional patent office, to grant exclusive rights to an
inventor for their invention. This exclusive right allows the inventor to prevent others from making, using, selling, or importing the patented invention
without their permission for a specified period, usually 20 years from the filing date of the application. This legal protection is intended to encourage
innovation by providing inventors with a temporary monopoly on their inventions, allowing them to recoup their investment and profit from their
creations.
Patent application process:
1. Invention Creation: The process begins with the creation of a new and useful invention. This can include new products, processes, machines,
compositions of matter, and improvements on existing inventions. The invention should be novel, non-obvious, and have industrial applicability.
2. Prior Art Search: Before submitting a patent application, inventors or their legal representatives often conduct a thorough search to identify
existing prior art. Prior art refers to any existing public information, such as patents, scientific literature, and other publications, that may be related
to the invention. This search helps determine the novelty and non-obviousness of the invention.
3. Choosing the Right Type of Patent: Depending on the nature of the invention, the applicant must decide which type of patent is appropriate. The
main types include utility patents (covering new and useful processes, machines, compositions of matter, and improvements) and design patents
(covering ornamental designs for articles of manufacture).
4. Preparing the Application: The patent application is a legal document that requires precise and detailed descriptions of the invention. It includes
the following components:
•
Title: A concise and descriptive title for the invention.
•
Background: A description of the technical field and the problems the invention addresses.
•
Summary: A brief summary of the invention and its key features.
•
Detailed Description: A comprehensive explanation of the invention's components, its operation, and how it solves the identified problem.
This section may include drawings, diagrams, and technical data.
•
Claims: The most critical part of the application. Claims define the scope of the patent protection sought. They specify the particular
features that make the invention novel and non-obvious compared to prior art.
•
Abstract: A concise summary of the invention's technical aspects.
5. Filing the Application: Once the application is complete, it is submitted to the appropriate patent office. The application can be filed electronically
or through traditional paper filing, depending on the patent office's procedures. A filing fee is usually required.
6. Examination and Review: After filing, the patent office examines the application to assess its compliance with formal requirements and substantive
criteria. This examination involves reviewing the prior art, assessing the claims' novelty and non-obviousness, and ensuring the application meets
legal and procedural standards.
7. Office Actions: If the patent office finds issues with the application, they issue an "office action," which outlines objections or rejections. The
applicant can respond by amending the claims or providing arguments and evidence to overcome the objections.
8. Prosecution: The process of responding to office actions and addressing any objections is known as prosecution. This can involve multiple rounds of
back-and-forth communication with the patent office. The goal is to achieve an allowed patent with claims that adequately protect the invention.
9. Allowance and Grant: If the patent office is satisfied with the application and the applicant's responses, they issue a notice of allowance. This
indicates that the patent will be granted upon payment of the necessary fees. Once the fees are paid, the patent is granted, and the applicant
becomes the patent holder.
10. Maintenance and Enforcement: After the patent is granted, the inventor must pay maintenance fees to keep the patent in force. The patent holder
is responsible for enforcing their patent rights and can take legal action against any unauthorized use or infringement of the patented invention.
A prior art search/patent search/ novelty search
A prior art search, also known as a patent search or novelty search, is a crucial step in the patenting process. It involves conducting a thorough investigation
to identify any existing public information related to the invention in question. This information, collectively referred to as "prior art," includes patents,
scientific publications, technical documents, academic research, product descriptions, and any other publicly available materials that might be relevant to
the invention. The main purpose of a prior art search is to determine the novelty and non-obviousness of the invention, which are essential criteria for
obtaining a patent.
Here's a detailed explanation of the prior art search process:
1. Definition of the Invention: Before starting the search, it's important to have a clear and detailed understanding of the invention. This includes
identifying its key features, components, functionalities, and potential applications.
2. Search Strategy: Determine the keywords, phrases, and technical terms associated with the invention. These will be used to search through
databases and resources for relevant prior art. The search can be conducted in various databases, such as patent databases, academic journals,
technical literature, and industry publications.
3. Patent Databases: Patent databases are a primary source of prior art for patent searches. Some well-known patent databases include:
•
United States Patent and Trademark Office (USPTO): Contains a comprehensive collection of U.S. patents and patent applications.
•
European Patent Office (EPO): Provides access to European patents and patent applications.
•
World Intellectual Property Organization (WIPO): Offers the Patent Cooperation Treaty (PCT) database, which includes international
patent applications.
•
Google Patents: A user-friendly platform that allows searching through a wide range of patents worldwide.
4. Non-Patent Literature: In addition to patents, non-patent literature, such as scientific papers, technical reports, conference proceedings, and
books, can provide valuable information for the search.
5. Search Tools: Various search tools and techniques can be used to maximize the search results:
•
Keyword Searches: Using relevant keywords and phrases to search for relevant documents.
•
Classification Codes: Utilizing patent classification codes to narrow down the search based on technology areas.
•
Citation Analysis: Examining the citations within relevant documents to find related materials.
•
Boolean Operators: Using logical operators (AND, OR, NOT) to refine search queries.
6. Review and Analysis: Once the search results are obtained, they need to be reviewed and analyzed to determine their relevance to the invention.
This involves assessing whether the prior art describes similar or related inventions, technologies, or concepts.
7. Comparative Analysis: Compare the identified prior art with the details of the invention to determine if there are any existing technologies or
solutions that are similar or identical to the invention. This analysis helps establish the novelty and non-obviousness of the invention.
8. Documentation and Reporting: Document the search process, including the databases searched, keywords used, search results, and a summary of
relevant prior art. This documentation is essential for demonstrating due diligence in the patent application process.
9. Decision Making: Based on the results of the prior art search, inventors and patent professionals can make informed decisions about proceeding
with a patent application. If the search identifies prior art that is too similar to the invention, it may affect the likelihood of obtaining a patent.
10. Adjusting the Invention: In some cases, the results of the prior art search may reveal similar technologies. Inventors can use this information to
modify or improve their invention to make it more novel and non-obvious.
A comprehensive and well-conducted prior art search can significantly contribute to the success of a patent application. It helps inventors understand the
existing landscape, assess the uniqueness of their invention, and make informed decisions about pursuing patent protection. While inventors can conduct
their own searches, hiring a professional patent searcher or using specialized search tools can provide more thorough and accurate results.
Patent claims
Drafting patent claims is a critical aspect of creating a patent application. Claims define the scope of protection sought for an invention and outline the
specific features and elements that distinguish the invention from prior art. Well-drafted claims are essential for obtaining a strong and enforceable patent.
Here's how patent claims are typically drafted:
1. Understand the Invention: Before drafting claims, it's crucial to have a thorough understanding of the invention, including its components,
functionalities, and unique aspects. This understanding forms the basis for creating accurate and effective claims.
2. Identify Novel and Inventive Features: Identify the features of the invention that differentiate it from existing technologies (prior art). These
features should be novel (not found in prior art) and non-obvious (not easily deducible from prior art by a person skilled in the relevant field).
3. Write Independent Claims: Start with drafting independent claims. These are standalone claims that define the invention on its own without
referring to other claims. An independent claim usually begins with a preamble that introduces the general context or field of the invention and is
followed by the body of the claim that describes the specific elements or steps of the invention.
4. Use Clear and Precise Language: Clarity and precision are paramount in claim drafting. Use clear and concise language to describe the invention's
features and their relationships. Avoid ambiguity or vague terms.
5. Use Technical Terminology: Incorporate technical terminology and terms of art that are specific to the field of the invention. This helps to
accurately describe the invention's components and processes.
6. Hierarchy of Claims: Claims are often organized in a hierarchical manner, with broader claims followed by narrower claims that build upon the
broader ones. This hierarchy provides flexibility and allows for variations of the invention to be covered.
7. Dependent Claims: Dependent claims refer back to earlier claims (typically an independent claim) and add additional specific features. They narrow
down the scope of the invention further. The numbering of dependent claims indicates their relationship to the claim they depend on.
8. Use Consistent Terminology: Ensure that the terms used in the claims are consistent with those used throughout the patent application, including
the detailed description and drawings.
9. Consider Alternative Embodiments: While drafting claims, consider different embodiments or variations of the invention. This broadens the
protection sought and can cover various implementations.
10. Avoid Incorporating Limitations from Prior Art: Be cautious not to inadvertently incorporate features from prior art into the claims. Claims must be
distinct from prior art to be considered novel and non-obvious.
11. Anticipate Potential Challenges: Draft claims with potential challenges in mind. Consider how competitors might attempt to design around the
patent or argue against its validity during litigation.
12. Format and Structure: Claims are usually presented in a format that includes a one-sentence introductory phrase followed by the claim body. The
introductory phrase often uses words like "A method/system/apparatus for..." or "A composition comprising...".
13. Review and Refinement: Carefully review the drafted claims to ensure accuracy, clarity, and alignment with the invention's essence. Refine the
claims as needed to accurately capture the invention's scope.
14. Professional Assistance: Given the complexity of claim drafting and its legal implications, inventors often seek the assistance of patent attorneys or
agents. These professionals have expertise in patent law and claim drafting, which can enhance the quality and effectiveness of the claims.
Remember that patent claim drafting requires a balance between specificity and breadth. Claims should be specific enough to cover the unique aspects of
the invention while being broad enough to provide meaningful protection against potential infringers.
Patent Claim Examples:
Examples of patent claims that demonstrate different types of inventions and the way claims are structured:
1. Example of an Apparatus Claim (Electronics):
Claim 1: An electronic device for wireless communication, comprising:
•
a processor;
•
a memory coupled to the processor;
•
a wireless transceiver module coupled to the processor;
•
an antenna coupled to the wireless transceiver module; and
•
a display screen coupled to the processor.
This claim describes an electronic device with specific components for wireless communication, including a processor, memory, transceiver module,
antenna, and display screen.
2. Example of a Method Claim (Software):
Claim 1: A computer-implemented method for image recognition, comprising:
•
receiving an input image from a user;
•
analyzing the input image using a trained neural network model;
•
identifying objects within the input image based on the analysis; and
•
generating an output report including the identified objects.
This claim outlines the steps of a computer-implemented method for image recognition, involving receiving an image, analyzing it using a neural network
model, identifying objects, and generating a report.
3. Example of a Composition Claim (Chemistry):
Claim 1: A pharmaceutical composition for treating diabetes, comprising:
•
a therapeutically effective amount of compound X;
•
a pharmaceutically acceptable carrier; and
•
a stabilizing agent selected from the group consisting of Y and Z.
This claim defines a pharmaceutical composition for treating diabetes, including specific compounds, a carrier, and a stabilizing agent.
4. Example of a Design Patent Claim (Industrial Design):
Claim 1: The ornamental design for a smartphone case, as shown and described in the accompanying drawings.
Design patent claims focus on the ornamental design of a product, referencing accompanying drawings that depict the design.
5. Example of a System Claim (Mechanical Engineering):
Claim 1: A solar tracking system, comprising:
•
a base structure;
•
a set of solar panels mounted on the base structure;
•
a motorized mechanism for adjusting the angle of the solar panels; and
•
a control unit configured to track the sun's movement and control the motorized mechanism.
This claim describes a solar tracking system with various components, including a base structure, solar panels, a motorized mechanism, and a control unit.
These examples showcase the diversity of patent claims across different fields and types of inventions. Each claim is tailored to the specific invention and
follows a structured format that outlines the elements, components, and features that make the invention unique and novel.
More Examples:
1. Example of a Chemical Compound Claim:
Claim 1: A compound of formula (I): wherein R1 is hydrogen, methyl, or ethyl; R2 is a halogen atom; and R3 is a phenyl group substituted with one or more
substituents selected from the group consisting of nitro, amino, and methoxy groups.
This claim defines a chemical compound by its structural formula and specifies the possible variations in its substituents.
2. Example of a Biotechnology Claim:
Claim 1: An isolated nucleic acid molecule comprising a nucleotide sequence encoding a protein with SEQ ID NO: 1, wherein said protein exhibits enzyme
activity to convert substrate X into product Y.
This claim covers a specific isolated nucleic acid molecule that encodes a particular protein with defined enzymatic activity.
3. Example of a Mechanical Device Claim:
Claim 1: A self-adjusting bicycle suspension system, comprising:
•
a frame;
•
a shock absorber pivotally connected to the frame;
•
a sensor to detect terrain variations;
•
a control unit connected to the sensor and the shock absorber;
•
wherein the control unit adjusts the shock absorber's compression and rebound settings based on the detected terrain variations.
This claim outlines the components and functionalities of a bicycle suspension system that automatically adjusts based on the terrain.
4. Example of a Software-Related Claim:
Claim 1: A computer-readable medium containing a computer program product, which, when executed by a processor, causes the processor to:
•
receive input data from a user;
•
process the input data using an algorithm;
•
generate an output report based on the processed data; and
•
display the output report on a graphical user interface.
This claim covers a computer-readable medium containing a program that, when executed, performs specific steps, including data processing and
generating a report.
5. Example of a Medical Device Claim:
Claim 1: A prosthetic limb assembly, comprising:
•
a socket configured to attach to a user's residual limb;
•
a knee joint mechanism attached to the socket;
•
an ankle joint mechanism attached to the knee joint mechanism; and
•
a foot component connected to the ankle joint mechanism.
This claim defines the components and connections of a prosthetic limb assembly.
Remember that the wording and structure of patent claims can vary based on the specific invention, field, and the jurisdiction's patent laws. It's important
to tailor the claims to accurately describe the invention's unique features while providing a clear and concise scope of protection. Consulting with a patent
attorney or agent familiar with your specific field can be valuable in drafting effective patent claims.
Refer: https://ipwatchdog.com/2016/12/10/patent-drafting-anatomy-patent-claim/id=75575/
Some more examples:
Claim for an Automobile:
A self-propelled vehicle, comprising:
(a) a body carriage having rotatable wheels mounted thereunder for enabling said body carriage to roll along a surface
(b) an engine mounted in said carriage for producing rotational energy, and
(c) means for controllably coupling rotational energy from said engine to at least one of said wheels,
whereby said carriage can be self-propelled along said surface.
Claim for the Process of Sewing:
A method for joining two pieces of cloth together at their edges, comprising the steps of:
(a) providing said two pieces of cloth and positioning them together so that an edge portion of one piece overlaps an adjacent edge portion of the other
piece, and
(b) passing a thread repeatedly through and along the length of the overlapping portions in sequentially opposite directions and through sequentially spaced
holes in said overlapping adjacent portions,
whereby said two pieces of cloth will be attached along said edge portions.
Claim for Concrete:
A rigid building and paving material comprising a mixture of:
(a) sand and stones, and
(b) a hardened cement binder filling the interstices between and adhering to sand and stones,
whereby a hardened, rigid, and strong matrix for building and paving will be provided.
Claim for a Pencil:
A hand-held writing instrument comprising:
(a) elongated core-element means that will leave a marking line if moved across paper or other similar surface, and
(b) an elongated holder surrounding and encasing said elongated core element means, one portion of said holder being removable from an end thereof to
expose an end of said core-element means so as to enable said core-element means to be exposed for writing,
whereby said holder protects said core element means from breakage and provides an enlarged means for holding said core-element means conveniently.
Claim for the "Insert" Feature of Word Processing:
A method of inserting additional characters within an existing series of characters on a display, comprising:
(a) providing a memory that is able to store a series of characters at an adjacent series of addresses in said memory
(b) providing a character input means that a human operator can use to store a series of characters in said memory at said respective adjacent series of
addresses
(c) storing said series of characters in said memory at said adjacent series of addresses
(d) providing a display that is operatively connected to said memory for displaying said series of characters stored in said memory at said adjacent series of
addresses
(e) providing a pointer means that said operator can manipulate to point to any location between any adjacent characters within said series of characters
displayed on said display, and
(f) providing a memory controller that will
(1) direct any additional character that said operator enters via said character input means to a location in said memory, beginning at an address
corresponding to the location between said adjacent characters as displayed on said display, and
(2) cause all characters in said series of characters that are stored in said memory at addresses subsequent said location in said memory to be transferred to
subsequent addresses in said memory so that said additional character will be stored in said memory at said location and before all of said subsequent
characters,
whereby said display will display said additional character within said series of characters at said location between said adjacent characters, and
whereby a writer can add words within existing body of text and the added words are displayed in an orderly and clean fashion without having to reenter
said existing body of text.
General format of Patenting in India:
Claim Types
A patent claim may be independent or dependent. An independent claim comprises of vital elements of the invention. A dependent claim contains all the
essentials of the independent claim as well as other elements. You can extricate between dependent and independent claims because a dependent claim
will always state which independent claim it depends from.
A patent claim consists of three components:
1. Preamble
2. Transition Phrase
3. Body of the Claim
Preamble
All patent claims commence with a preamble. The preamble often states whether the origination is a gadget, a technique or an upgrading. It basically states
the most vital information about the invention. It limits to extent of patentee’s structural description. For example, the preamble of an independent claim
to a remote control may read “A gadget for controlling the working of a ceiling fan” or “A method for switching on a ceiling fan” or “An improved method
for switching on a ceiling fan at ease.” The preamble of a dependent claim will state what the claim depends from. For example, it might read “A gadget as
in claim 1.”
Transitional Phrase
The preamble is followed by a transitional phrase. Common transitional phrases are “containing the steps of,” “involving of the following elements,” and
“comprising the elements.” One significant aspect of the transitional phrase is that the verb is restrictive. The verbs “including” and “comprising” are
understood to be open-ended. While the invention comprises, whatever elements trail these verbs, it could also include other, different elements. The
word “consisting” means that the invention is limited to those elements that follow the transitional phrase.
For Example
A pharmaceutical composition prepared by a wet granulation process comprising, preparing the wet granulation wherein a compound of formula;
##STR10## wherein X is a number ranging from about zero to 5, and the individual optical isomers thereof, a diluent and a disintegrant is mixed with a
solution of a binding agent; the wet granulation is screened, the wet granulation is dried, and the dry granulation is screened.
Body of the Claim
The body of the claim follows the transitional phrase. It might be explanation of the invention or stages of invention. If this part of the claim speaks about a
pharmaceutical theory, the claim is often analysed based on the body of the claim and it is patented based on the invention types. This identifies the
precise parameters of the claim and it is neatly organized. This would normally be numbered, lettered or sub-paragraphed. If the body describes how to use
the device, the claim is often denoted to as a “method claim.” Each element is often separated by semicolons and give the impression on a novel, concave
line of text.
For Example;
1. A pharmaceutical composition in solid unit dosage form, comprising;
a) a therapeutically effective amount of a piperidinoalkanol compound of the formula; ##STR15## wherein X is a number ranging from about zero to 5, and
the individual optical isomers thereof; and
b) inert ingredients comprising microcrystalline cellulose, pregelatinized starch, magnesium stearate, calcium carbonate and sodium starch glycolate.
Summary of Patent Claims:
Claims are essence or backbone of a patent application. • The claims define the invention and specify the scope of the property. • The claims are extremely
important during patent prosecution in patent office as well as during the patent litigation cases. • During claim drafting the choice of words used in the
patent claims should be dealt in a great understanding and thought.
Independent Claim: The claim which covers all the significant characteristics of the invention is called Independent Claim. Generally, the first claim is
Independent Claim which reflects the whole picture of the invention. • 1. A method of preparing an electronic device comprising metal‐containing
substance
Dependent Claim: The claim which depends on a claim, or several claims is called dependent claim. Generally, the subsequent claims of an independent
claim are Dependent Claim. • 2. The method of claim 1 wherein the nanomaterial comprises a metal.
Omnibus Claim: Omnibus claim is used to broaden the scope of the invention beyond the claims section. • In other words, Omnibus claim claimed the other
parts of the invention which is disclosed in the specification or drawing but not claimed in the above-mentioned claims. • The words such as "substantially
as described" or "substantially as described with reference to the drawings" or "substantially as described herein" are commonly used to claim as Omnibus
Claim.
Product Claim: The claim which claims the actual product of the invention is called Product Claim. For example: a chemical compound, compound used as
pharmaceuticals, composition mixtures such as alloy, food, drink etc. • A pharmaceutical composition comprising: a) an amido‐amine polymer comprising
an amido‐amine dendrimer derived from: • (i) a multi‐amine; and • (ii) a multifunctional compound comprising two or more amine‐reactive groups; and b)
a pharmaceutically acceptable excipient.
Process Claim: The claim which claims a new process or method to achieve the desired result is called Process Claim. For example: Methods of preparation,
methods of analysis, method of treatment etc.
Jepson Claim: Jepson claim style is used in the process or product claim where the invention is a modification or the improvement of the existing
technology. The word “wherein…” often used to structure the Jepson Claim.
Markush Claim: Markush Claim is generally used to structure the chemical invention where the composition of the invention has to be described in a
structural diagram or formula based.
Swiss Claim: The structure of claim used to claim the second or new medicinal use of the known substances or compositions is known as Swiss type claim.
India does not allow this type of claim under the provision of section 3 (d) of the Patent Act, 1970
https://sagaciousresearch.com/blog/everything-to-know-about-patent-claims-functions-parts-and-types/
https://support.lens.org/knowledge-base/how-to-read-a-patent/
Swiss Claim not allowed in India:
https://blog.ipleaders.in/drug-repurposing-patentability-scope-for-swiss-typeclaims/#:~:text=In%20India%2C%20neither%20the%20patent,its%20repurposed%20use%20is%20possible.
Section 3(d) in The Patents Act, 1970:
https://indiankanoon.org/doc/1845556/
Patent Application Procedure in India:
The patent application procedure in India follows a structured process that involves several stages, from filing the application to obtaining the patent grant.
Here's an overview of the patent application procedure in India:
1. Preparation and Filing of Application:
•
Determine the type of application: Choose between a provisional application or a complete specification (non-provisional) application. A
provisional application establishes an early filing date and provides a 12-month window to file a complete specification.
•
Complete specification: Prepare a detailed description of the invention, including claims and drawings if applicable.
•
Filing: Submit the application to the Indian Patent Office (IPO) either physically or electronically.
2. Publication of Application:
•
Early publication: If requested at the time of filing, the application may be published earlier than the standard 18-month publication period.
•
Standard publication: Applications are automatically published after 18 months from the filing date or priority date.
3. Request for Examination:
•
Non-provisional application: If a complete specification was filed initially, a request for examination must be filed within 48 months from
the priority date or filing date.
•
Provisional application: If the application was initially filed as provisional, a request for examination must be filed along with a complete
specification within 12 months from the provisional filing date.
4. Examination:
•
The patent application is examined to determine whether the invention meets the criteria of novelty, non-obviousness, and industrial
applicability.
•
Examination reports: The IPO issues a First Examination Report (FER) outlining any objections or rejections. The applicant must respond
within 12 months, addressing the objections and amending the claims if necessary.
5. Amendment and Response:
•
Amend claims: If required, the applicant can amend the claims to overcome objections and make the invention patentable.
•
Response to FER: Submit a written response addressing the examination report's objections and explaining how the invention meets
patentability criteria.
6. Hearing (Optional):
•
If the examiner and applicant do not agree on the patentability of the invention, a hearing can be requested. During the hearing, both
parties present their arguments.
7. Acceptance and Grant:
•
If the examiner is satisfied with the responses and amendments, the application will be accepted, and the patent will be granted.
•
Patent grant: Once accepted, the patent is granted, and the applicant is required to pay the patent grant fee.
8. Publication of Granted Patent:
•
The granted patent is published in the official patent journal.
9. Post-Grant Opposition (Optional):
•
Third parties can file opposition against the granted patent within one year from the publication date. Grounds for opposition include prior
art, lack of novelty, non-obviousness, etc.
10. Maintenance and Renewal:
•
After grant, the patent holder must pay annual maintenance fees to keep the patent in force.
It's important to note that the patent application procedure can vary based on the type of application, the nature of the invention, and changes in patent
laws and regulations. Consulting with a patent attorney or agent familiar with Indian patent law can help ensure a smooth and successful patent application
process in India.
Patent Application:
General idea of the information required in an Indian patent application form. However, please note that the specific details and format may have changed
since then. You should always refer to the official website of the Indian Patent Office (IPO) for the most up-to-date information and forms.
An Indian patent application typically involves the completion of Form 1 (Application for Grant of Patent) and other related forms, depending on the type of
application, whether it's a provisional or complete specification, and other factors. Here are some of the key details you would need to provide in Form 1.
1. Applicant Information:
•
Name, address, and nationality of the applicant(s).
•
Legal status (individual, company, partnership, etc.).
•
Contact details, including phone number and email.
2. Inventor Information:
•
Name, address, and nationality of the inventor(s).
•
Legal status (if different from the applicant).
•
Contact details of the inventor(s).
3. Title and Description of the Invention:
•
Title of the invention.
•
Description of the invention, including its technical field, background, and detailed explanation of the invention's components, features,
and functionality.
4. Drawings and Diagrams:
•
If applicable, provide drawings, diagrams, or flowcharts illustrating the invention.
5. Priority Information:
•
If claiming priority from a previously filed application in another country under the Paris Convention, provide the priority application details.
6. Abstract:
•
A concise summary of the invention's technical aspects.
7. Declaration of Inventorship and Applicantship:
•
Declare the inventorship and provide any assignments or agreements related to the invention.
8. Power of Authority (if filed by an agent):
•
If the application is filed by a patent agent, provide a power of attorney authorizing the agent to act on behalf of the applicant.
9. Statement of Inventorship and Right to Apply:
•
A statement confirming the inventorship and the applicant's right to apply for the patent.
10. Fees:
•
Pay the required filing fee. The fee structure may vary based on factors such as the type of applicant, the number of claims, etc.
Remember that this is a general overview of the information typically required in an Indian patent application form. The actual form and requirements may
have changed, and there may be additional forms and documents required for different types of applications.
Patent Journal listing all publications:
https://ipindia.gov.in/journal.htm
Objections by Patent Office:
https://iprsearch.ipindia.gov.in/DynamicUtility/CauseListForHearingCase/Index#
Priority Date in Patent Application
Priority Date: An Overview
The earliest filing date within a family of patent applications is referred to as the priority date. The priority date would be the filing date of
the sole application when just one patent application is involved. The priority date will be the date of the earliest patent filing that first disclosed the
invention if an applicant has submitted several related patent applications. The initial patent file sometimes referred to as the priority
application, maybe a foreign application, a nonprovisional patent application, or a provisional patent application.
Significance of Priority Date
An application may only assert precedence as of the priority date, which is established by a priority date patent. It also specifies which resources are
included in the patent’s prior art. Because it can significantly affect an invention’s ability to be patented, it is crucial to get the earliest priority date feasible.
In general, a priority claim establishes the priority date of a patent application for examination purposes at the U.S. Patent and Trademark Office (USPTO).
But why does that matter? Because throughout a patent application’s inspection, the priority date effectively dictates which references can and cannot be
used as prior art. In other words, the priority date establishes a boundary for previous art that cannot be crossed.
For instance, the following patent applications have been filed:
1. Provisional filed on June 10, 2016, disclosing features A and B of an invention;
2. Non-provisional filed on June 9, 2017, claiming priority to the 1/20/16 provisional and adding new feature C (i.e., disclosing A, B & C); and
3. CIP was filed on October 20, 2017, adding new feature D.
In the above scenarios, the priority dates are:
•
Features A & B: 6/10/2016 (filing date of provisional);
•
Feature C: 6/9/2017 (filing date of non-provisional); and
•
Feature D: 10/20/2017 (filing date of CIP).
In essence, the first filing date for each feature is its priority date. It’s essential to submit the associated applications as soon as you can because new
features are granted later priority dates depending on when they were initially disclosed in a patent filing. To limit the number of prior art references that
can be referenced against claims stating your novel features, you should seek for the earliest priority date feasible.
Types of Patent Priority Dates
Your priority date will be one of the following options, according to your specific circumstances:
•
The filing date of the provisional application, if it was your earliest-filed patent application for a certain invention;
•
If your initial filing was a non-provisional application, the filing date of the non-provisional application would be used;
•
If your first filing was an overseas or foreign application, the filing date of the non-US application would be used.
How to Claim a Priority Date?
The first step in establishing a priority date is to submit a patent application that details the invention’s creation and usage (i.e., enablement requirement).
The inventor has asserted a priority date at the time the patent application is submitted. It’s like putting a stake in the ground to show that the invention
belongs to the inventor, at least as of the filing date.
The inventor may then submit more patent applications after that (i.e., continuation patent application, PCT application, national applications). These
subsequent applications ought to trace their priority to the first patent application submitted. To do this, you must refer to the previously filed patent
application and submit the subsequent applications while it is still pending. Because every situation is unique, you need to enlist the aid of a patent attorney
to guide you through the procedure.
Multiple Priorities
One or more earlier applications may be cited as the priority source for subsequent applications. When claiming multiple priorities, the applicant may do so
from either one jurisdiction or several other jurisdictions. In multiple priorities, two or more applications are related in such a way that it constitutes a
single invention. Once these requirements have been met, the applicant may submit a multiple-priority application within 12 months of the earliest
application filing date.
Multiple priorities are subject to the fundamental priority rule, and an earlier invention must support the entire specification for which the application may
be filed. The earliest filing date, or the date the matter was first disclosed, would be the priority date.
The following situations would qualify as disclosures in a prior application
The basic application is the earliest application that was filed of the subject matter whether it was disclosed or claimed in the principal application. Whether
it was made known in any materials the applicant for patent protection submitted alongside the application.
A copy of the document must be submitted with the convention application for it to be accepted. Alternatively, it may be submitted within the time frame
that may be established following the submission of that application.
Patent Filing Date vs Priority Date
The words filing date and priority date are sometimes used synonymously, but they are not the same. The date a patent application is initially submitted to
a patent office is known as the filing date. The priority date, also known as the “effective filing date,” is the date used to determine whether an invention is
original or obvious in comparison to the prior art.
The application filing date may not match the priority date exactly. An application’s priority date may match the parent application’s if it claims priority to
an earlier parent application.
A patent application frequently asserts priority over a number of applications. A continuation application might, for instance, assert priority over a parent
utility application that itself asserts priority over a US provisional application. The new application may then assert priority over the provisional application,
which was the first application in the series to be filed.
The filing date of a patent application is often the same as the priority date if it is an original, non-provisional patent application, not a continuation
application, and was not previously filed in another nation.
When a Patent Application May Claim Priority to an Earlier Application?
A patent application may assert priority over a prior application in a number of circumstances. These consist of:
1. Continuation applications: A patent application may assert priority over a parent application that was filed first. When this happens, the priority
dates of the new application and the parent application are typically equal.
2. Domestic applications based on foreign or international filings: A patent application may use the filing date of the application in the foreign
country as its priority date if it is first submitted internationally or as an international (PCT) application, and then it is filed domestically (often within
a year of the foreign or international filing).
3. Patent filings based on US provisional patent applications: In the US, an applicant may submit a provisional patent application and then, within a
year, a complete application. The date of filing of the provisional application in this instance serves as the priority date for the full-length
application.
Priority Date: Maintained or Lost
Because the USPTO operates according to the first-to-file principle, keeping the earliest priority date is preferred. When a patent family is involved, a
priority date might be both kept and lost.
Most frequently, failure to convert a provisional to a non-provisional within 12 months of the provisional filing date results in the loss of a priority date. Refiling the provisional necessitates a later priority date, which increases the likelihood that further prior art will be used against the applicant.
With the exception of cases when a PCT application is submitted to extend the time for US applications to be filed in each distinct foreign jurisdiction,
international or foreign filings must be made within 12 months of the US priority date.
Important Deadlines with Regard to Priority
12 months: You must submit an application for the same invention in a different nation within a year of submitting your initial application if you want your
application to be given priority in that nation.
16 months: You have 16 months from the priority date, or the filing date of your first application, to request priority based on an earlier application.
If this is a later date, you may also request priority within four months of the date on which you submitted your new application.
Conclusion
A patent protects your invention as of the priority date. After then, you can disclose your invention. Given that the priority dates of the multiple
priorities play a crucial part in the grant of a patent, claiming multiple priorities benefits the applicant significantly. It makes sure that disclosure
in previous applications or innovations won’t interfere with the final invention’s ability to obtain a patent or with later registrations in other countries. This
priority option, in turn, reimburses the inventor for the costs incurred during research and development, encouraging the development of new ideas.
Patent Searching Methods/Techniques:
1. Keyword Searching: This method involves using relevant keywords and phrases related to your invention to search through patent databases. Start
with general terms and then narrow down to more specific terms. Use synonyms, alternative spellings, and variations to ensure comprehensive
coverage. Search engines often support advanced search operators like quotation marks ("") for exact phrases and Boolean operators (AND, OR,
NOT) to refine results.
2. Classification Searching: Patents are classified into specific categories and subcategories based on their subject matter. Classification systems like
the Cooperative Patent Classification (CPC) or International Patent Classification (IPC) help organize patents. You can search within specific classes
to focus your search on a particular technology area.
3. Citation Searching: Examine the references cited in a patent (backward citations) and the patents that cite it (forward citations). This method helps
you find related patents and technologies, as well as identify influential patents in a particular field.
4. Boolean Operators: Use Boolean operators to combine keywords and create complex search queries. "AND" narrows down results by requiring all
specified terms to be present, "OR" broadens results by including any of the specified terms, and "NOT" excludes specific terms from results.
5. Semantic Searching: Some databases offer semantic search capabilities that go beyond exact keywords. They use natural language processing to
understand concepts and relationships between terms. This can help you find patents that might not include your exact search terms but are
related in meaning.
6. Image Searching: For design patents or inventions with visual elements, image-based searching allows you to upload images or sketches to find
similar designs or technologies. Visual recognition algorithms help identify relevant patents.
7. Inventor/Assignee Searching: You can search for patents filed by a specific inventor or assigned to a particular company. This method can provide
insights into the work of specific individuals or organizations.
8. Date Range Searching: Limit your search to patents filed within a specific time frame to focus on recent developments. This is particularly useful if
you're interested in the most current technologies.
9. Field-Specific Databases: Some industries have specialized patent databases tailored to their field, providing more focused and relevant results.
Examples include medical, chemical, or engineering databases.
10. Patent Alert Services: Set up alerts in patent databases to receive notifications when new patents matching your search criteria are published. This
helps you stay updated on the latest developments in your field.
11. Patent Search Tools: Various online tools and software offer advanced search functionalities, visualization of patent data, and even AI-powered
search capabilities that can analyse and refine your search results.
Patent Infringement reasons:
1. Product Replication: Creating and selling a product that incorporates a patented invention without obtaining proper licensing.
2. Process Infringement: Implementing a patented method or process without the patent holder's authorization.
3. Importation of Infringing Products: Importing products that infringe on a patented invention into India for sale or distribution.
4. Reverse Engineering: Studying and replicating a patented product's design or process without permission.
5. Substantial Similarity: Developing a product that is substantially similar to a patented invention, even if minor modifications are made.
6. Parallel Imports: Importing genuine products from another country where they are cheaper due to lower pricing or different patent laws, and then
selling them in India without the patent holder's consent.
Patent Infringement Cases:
Paice LLC vs. Ford Motor Company (2005-2018):
•
Background: Paice LLC is a company that holds patents related to hybrid vehicle technology. Paice sued Ford for patent infringement, alleging that
Ford's hybrid vehicles, including the Ford Escape Hybrid, infringed on its patents.
•
Key Points: The case went through multiple legal battles, including proceedings at the U.S. International Trade Commission (ITC). Paice sought
injunctions to stop Ford from importing and selling its hybrid vehicles.
•
Outcome: The case was settled in 2018 when Ford and Paice reached a licensing agreement. The terms of the settlement were not disclosed, but it
marked the end of a prolonged legal dispute over hybrid vehicle technology.
•
Implications: This case highlighted the importance of intellectual property rights in the rapidly evolving automobile industry, especially in the area
of hybrid and electric vehicle technologies. It also showcased how patent infringement cases can have a significant impact on product development
and market competition.
Roche vs. Cipla (2015):
•
Background: Roche alleged that Cipla's generic version of the cancer drug Erlotinib infringed on Roche's patent.
•
Key Points: The court ruled in favor of Roche, stating that Cipla's product infringed on Roche's patent. The court ordered Cipla to pay damages to
Roche for the infringement.
•
Implications: This case highlighted the importance of enforcing patent rights in India's pharmaceutical sector and the need for companies to be
cautious when launching generic versions of patented drugs.
Bristol-Myers Squibb vs. BDR Pharmaceuticals (2019):
•
Background: Bristol-Myers Squibb sued BDR Pharmaceuticals for patent infringement related to its cancer drug Dasatinib.
•
Key Points: The court granted an injunction against BDR Pharmaceuticals, restraining them from selling the generic version of the drug. The
case also raised discussions about the balance between protecting intellectual property and ensuring access to affordable medicines.
•
Implications: This case demonstrated the Indian judiciary's willingness to uphold patent rights and protect innovation in the pharmaceutical
sector. It also highlighted the importance of navigating the complex landscape of patent law and litigation.
Novartis vs. Union of India (2013):
•
Background: Novartis sought a patent for its cancer drug Imatinib, but the patent was denied on the grounds that the drug didn't
demonstrate enhanced efficacy.
•
Key Points: The case triggered global discussions about patentability criteria, access to medicines, and India's role in balancing intellectual
property rights and public health.
•
Implications: This landmark case shaped the interpretation of Section 3(d) of the Indian Patents Act, which deals with the patentability of
incremental innovations. It highlighted the importance of considering public health concerns while granting pharmaceutical patents.
Popular Patent Infringement Cases:
1. Apple vs. Samsung (Various Jurisdictions): One of the most well-known patent battles, these companies have engaged in multiple cases over the
years involving design and utility patents related to smartphones and tablets.
2. Oracle vs. Google (2010-2021): This case revolved around whether Google's use of Java APIs in Android infringed on Oracle's copyrights and
patents. It underwent multiple trials and appeals over the years.
3. Qualcomm vs. Apple (Various Jurisdictions): Qualcomm and Apple engaged in a series of patent disputes concerning cellular technology and
royalties, resulting in settlements and agreements in various countries.
4. Microsoft vs. Motorola (2010-2015): This case involved Microsoft alleging that Motorola's Android-based devices infringed its patents related to
various technologies. The disputes led to court battles and eventual settlements.
5. BlackBerry vs. Typo Products (2014): BlackBerry sued Typo Products over a smartphone keyboard accessory that BlackBerry claimed infringed its
keyboard design patents. The case resulted in a settlement.
6. Merck vs. Gilead Sciences (2016): Merck sued Gilead Sciences over patents related to Hepatitis C drugs. The case ended in a settlement with Gilead
agreeing to pay Merck royalties for the use of its patents.
7. Teva vs. Pfizer (2010): Teva Pharmaceuticals challenged Pfizer's patent for the erectile dysfunction drug Viagra, leading to a legal battle. The patent
was eventually invalidated, allowing Teva to produce a generic version
Court cases on Patents in India:
1. Samsung vs. Apple (2018): Samsung and Apple have been engaged in multiple patent infringement cases globally. In India, Samsung sued Apple for
allegedly infringing its mobile technology patents. The Delhi High Court ruled in favor of Samsung, but the case also had its share of appeals and
counterclaims.
2. Ferid Allani vs. Union of India (2019): This case revolved around patent applications filed by Ferid Allani for a pharmaceutical composition. The
dispute centered on the interpretation of the patent law and the requirement for inventive step and non-obviousness. The case highlighted the
need for clear guidelines in patent examination.
3. Sun Pharma vs. Cipla (2003): Sun Pharma sued Cipla over a patent for its anti-cancer drug Gemcitabine. The court issued an injunction against Cipla,
prohibiting the sale of its generic version of the drug. However, this case was also subject to appeal, which led to changes in the verdict.
4. Vifor AG vs. La Renon Healthcare (2021): Swiss pharmaceutical company Vifor AG filed a patent infringement suit against La Renon Healthcare over
its iron deficiency drug. The court issued an interim injunction restraining La Renon from manufacturing and selling the infringing product.
5. Novartis vs. Natco (2016): Novartis filed a case against Natco Pharma for infringing its patent on an anti-inflammatory drug. The Delhi High Court
ruled in favor of Novartis and granted an injunction against Natco, restraining it from selling the generic version of the drug.
6. Carlsberg vs. Som Distilleries (2020): Carlsberg filed a lawsuit against Som Distilleries for patent infringement related to its brewing technology. The
court issued an interim injunction against Som Distilleries, restraining it from using the patented technology.
More examples of cases:
1. Bristol-Myers Squibb vs. BDR Pharmaceuticals (2019): Bristol-Myers Squibb sued BDR Pharmaceuticals for patent infringement related to its cancer
drug Dasatinib. The court granted an injunction against BDR Pharmaceuticals, restraining them from selling the generic version of the drug.
2. Bajaj Auto vs. TVS Motors (2007): Bajaj Auto accused TVS Motors of infringing its patent for a twin-spark plug technology. The case led to
discussions about prior art and the validity of the patent. Ultimately, the court ruled in favor of TVS Motors, stating that Bajaj's patent was invalid.
3. Microfibers vs. Girnar Fibres (2012): Microfibers sued Girnar Fibres for patent infringement of its microfiber technology. The court granted an
injunction against Girnar Fibres, preventing them from manufacturing and selling infringing products.
4. F. Hoffmann-La Roche vs. Ranbaxy (2008): Roche alleged that Ranbaxy's generic version of the drug Valganciclovir infringed on its patent. The court
granted an injunction against Ranbaxy, prohibiting them from selling the generic version.
5. Sony Corporation vs. Rajesh Bansal (2014): Sony sued Rajesh Bansal for importing and selling counterfeit Sony headphones. The court found Bansal
guilty of trademark and copyright infringement and ordered him to pay damages.
6. Foseco India Ltd. vs. Mahesh Udyog (2009): Foseco India filed a case against Mahesh Udyog for patent infringement of its technology related to the
manufacture of castings. The court ruled in favor of Foseco India and granted an injunction against Mahesh Udyog.
7. Roche vs. Cipla (2015): Roche alleged that Cipla's generic version of the cancer drug Erlotinib infringed on Roche's patent. The court ruled in favor
of Roche and ordered Cipla to pay damages for patent infringement.
8. Merck vs. Glenmark (2015): Merck sued Glenmark for patent infringement related to its diabetes drug Sitagliptin. The court granted an injunction
against Glenmark, prohibiting the sale of the generic version of the drug.
9. Novartis vs. Union of India (2013): Novartis sought a patent for its cancer drug Imatinib. The case raised significant discussions about India's patent
laws, and the Supreme Court eventually denied the patent on the grounds that the drug didn't demonstrate enhanced efficacy.
10. Bayer vs. Natco (2012): Bayer sued Natco for producing a generic version of the cancer drug Sorafenib. The court allowed Natco to produce and sell
the generic version under a compulsory license, which enabled broader access to the medication.
11. Hoffmann-La Roche vs. Cipla (2008): Roche alleged that Cipla's generic versions of its HIV/AIDS drugs infringed on Roche's patents. The court ruled
in favor of Roche and granted an injunction against Cipla, which was later lifted by the High Court.
12. Microsoft vs. Yogesh Popat (2005): Microsoft sued an individual named Yogesh Popat for distributing counterfeit copies of Microsoft software. The
court found Popat guilty of copyright and trademark infringement and imposed a fine.
Pre – grant opposition and post- grant opposition
An opposition filed before the grant of a patent is called a pre-grant opposition and an opposition filed after the grant of a patent is called a post grant
opposition.
Section 25(1) of the Patents Act, 1970, states that where an application for a patent has been published but a patent has not been granted, any person may,
in writing, represent by way of opposition to the Controller against the grant of patent based on certain defined conditions.
Section 25(2) of the Patents Act, 1970 and Rules 55-62 of the Patents Rules, 2003, deal with Post Grant opposition. Post-grant opposition can be filed at the
appropriate office by any interested person2 within 12 months from the date of publication of the grant of patent in the Indian Patent Journal.
The grounds for both pre-grant and post-grant oppositions in India are the same. Nevertheless, there are several procedural differences between filing the
two types of opposition. In pre-grant opposition, any person may challenge the application for grant of patent, whereas only an interested person can file a
post-grant opposition.
Compulsory licensing
For patents: when the authorities license companies or individuals other than the patent owner to use the rights of the patent — to make, use, sell or
import a product under patent (i.e. a patented product or a product made by a patented process) — without the permission of the patent owner.
Case of compulsory Licensing: Bayer versus NATCO Pharma
https://blog.ipleaders.in/bayer-corporation-vs-natco-pharma-ltd-a-case-analysis/#:~:text=Judgement%20of%20the%20case,Ratio%20Decidendi%20%E2%80%93%20%E2%80%9CThe&text=The%20final%20judgement%20of%20the,the%20requirements%20of%20the%20section.
https://economictimes.indiatimes.com/industry/healthcare/biotech/pharmaceuticals/nexavar-licence-case-sc-dismisses-bayers-appeal-against-hcdecision/articleshow/45500051.cms?from=mdr
Compulsory licensing Upon Notification by Central Government:
In circumstances of “National emergency” or in circumstances of “Extreme urgency” or in case of “Public non-commercial use” if the Central Government is
satisfied that it is necessary that compulsory licenses should be granted at any time after the sealing thereof to work the invention, it may make a
declaration to that effect, by notification in the Official Gazette.
Thereafter, the Controller shall on application made at any time after the notification by any person interested grant to the applicant a license on such
terms and conditions as he thinks fit.
Compulsory License for exporting Patented pharmaceutical products:
Section 92A of Indian Patent Act states that Compulsory license shall be available for manufacture and export of patented pharmaceutical products to any
country having insufficient or no manufacturing capacity in the pharmaceutical sector for the concerned product to address public health problems,
provided compulsory license has been granted by such country or such country has allowed importation of the patented pharmaceutical products from
India.
Upon receipt of an application in the prescribed manner the Controller shall grant a compulsory license solely for manufacture and export of the concerned
pharmaceutical product to such country under such terms and conditions as may be specified and published by him.
Termination of compulsory license:
On an application made by the patentee or any other person deriving title or interest in the patent, a compulsory license granted under section 84 may be
terminated by the controller, if and when the circumstances that gave rise to the grant thereof no longer exist and such circumstances are unlikely to recur.
Further, the holder of the compulsory license shall have the right to object to such termination.
Is there a need of Compulsory license for Covid-19 Vaccine in India?
Two coronavirus vaccines, COVAXIN and COVISHIELD have been approved by Central Drug Standards Control Organizations for “emergency use” in India.
COVAXIN is an indigenous vaccine, developed by Bharat Biotech in collaboration with the Indian Council of Medical Research (ICRM) – National Institute of
Virology (NIV) while COVISHIELD is Serum Institute of India’s version of AZD1222 developed by British Swedish drug maker AstraZeneca.
Compulsory license is a powerful public health tool for overcoming public health emergencies and situation of either expensive pricing and shortage of
supply. Presently pricing of both these vaccines have been kept on the lower side and therefore the only concern left is of the production capacity. India has
a much bigger role to play helping the world overcome the current pandemic as it has one of the world’s biggest vaccine manufacturing capacities. India has
been supplying lakhs of vaccines to many countries around the world. Further it has a population of more than 1.3 billion of its own. Therefore there lies an
enormous task ahead of us since vaccines will be required in large numbers.
Although Serum institute has world’s largest vaccine manufacture unit but it is also a part of WHO’s COVAX alliance and therefore it has to balance its
supplies to both local and international market. Further India is seeing what is being called as a second wave of Corona virus as positive cases are increasing
at daunting rates. What is required here is to quickly vaccinate as many people as possible to keep the number of positive cases and more importantly the
death rate as low as possible. Therefore in this time of dire need where time is of the essence government may think of granting Compulsory license for
Covid vaccines by making a declaration under section 92 of Indian Patent Act, 1972 of the present situation as “National emergency” or situation of
“Extreme urgency” or to facilitate “Public non-commercial use”
At present, India has a sufficient and steady supply of both COVAXIN and COVISHIELD but the current coronavirus pandemic does qualify as a “National
emergency” under section 92 of the Indian Patent Act, 1972 and if the need arises, government should be prepared to tackle a situation of shortage of
vaccines by preparing a swift mechanism of granting Compulsory licenses to other pharmaceutical companies to ensure availability of sufficient number of
vaccines to comply by both its national and international obligations.
Patent Certificate:
Applying for Patent -PCT Procedure
https://www.wipo.int/pct/en/faqs/faqs.html
Paris Convention for the Protection of Industrial Property
The Paris Convention, adopted in 1883, applies to industrial property in the widest sense, including patents, trademarks, industrial designs, utility models,
service marks, trade names, geographical indications and the repression of unfair competition. This international agreement was the first major step taken
to help creators ensure that their intellectual works were protected in other countries.
Summary of the Paris Convention for the Protection of Industrial Property (1883)
The Paris Convention applies to industrial property in the widest sense, including patents, trademarks, industrial designs, utility models (a kind of "smallscale patent" provided for by the laws of some countries), service marks, trade names (designations under which an industrial or commercial activity is
carried out), geographical indications (indications of source and appellations of origin) and the repression of unfair competition.
The substantive provisions of the Convention fall into three main categories: national treatment, right of priority, common rules.
(1) Under the provisions on national treatment, the Convention provides that, as regards the protection of industrial property, each Contracting State must
grant the same protection to nationals of other Contracting States that it grants to its own nationals. Nationals of non-Contracting States are also entitled to
national treatment under the Convention if they are domiciled or have a real and effective industrial or commercial establishment in a Contracting State.
(2) The Convention provides for the right of priority in the case of patents (and utility models where they exist), marks and industrial designs. This right
means that, on the basis of a regular first application filed in one of the Contracting States, the applicant may, within a certain period of time (12 months for
patents and utility models; 6 months for industrial designs and marks), apply for protection in any of the other Contracting States. These subsequent
applications will be regarded as if they had been filed on the same day as the first application. In other words, they will have priority (hence the expression
"right of priority") over applications filed by others during the said period of time for the same invention, utility model, mark or industrial design. Moreover,
these subsequent applications, being based on the first application, will not be affected by any event that takes place in the interval, such as the publication
of an invention or the sale of articles bearing a mark or incorporating an industrial design. One of the great practical advantages of this provision is that
applicants seeking protection in several countries are not required to present all of their applications at the same time but have 6 or 12 months to decide in
which countries they wish to seek protection, and to organize with due care the steps necessary for securing protection.
(3) The Convention lays down a few common rules that all Contracting States must follow. The most important are:
(a) Patents. Patents granted in different Contracting States for the same invention are independent of each other: the granting of a patent in one
Contracting State does not oblige other Contracting States to grant a patent; a patent cannot be refused, annulled or terminated in any Contracting State on
the ground that it has been refused or annulled or has terminated in any other Contracting State.
The inventor has the right to be named as such in the patent.
The grant of a patent may not be refused, and a patent may not be invalidated, on the ground that the sale of the patented product, or of a product
obtained by means of the patented process, is subject to restrictions or limitations resulting from the domestic law.
Each Contracting State that takes legislative measures providing for the grant of compulsory licenses to prevent the abuses which might result from the
exclusive rights conferred by a patent may do so only under certain conditions. A compulsory license (a license not granted by the owner of the patent but
by a public authority of the State concerned), based on failure to work or insufficient working of the patented invention, may only be granted pursuant to a
request filed after three years from the grant of the patent or four years from the filing date of the patent application, and it must be refused if the
patentee gives legitimate reasons to justify this inaction. Furthermore, forfeiture of a patent may not be provided for, except in cases where the grant of a
compulsory license would not have been sufficient to prevent the abuse. In the latter case, proceedings for forfeiture of a patent may be instituted, but
only after the expiration of two years from the grant of the first compulsory license.
(b) Marks. The Paris Convention does not regulate the conditions for the filing and registration of marks which are determined in each Contracting State by
domestic law. Consequently, no application for the registration of a mark filed by a national of a Contracting State may be refused, nor may a registration
be invalidated, on the ground that filing, registration or renewal has not been effected in the country of origin. The registration of a mark obtained in one
Contracting State is independent of its possible registration in any other country, including the country of origin; consequently, the lapse or annulment of
the registration of a mark in one Contracting State will not affect the validity of the registration in other Contracting States.
Where a mark has been duly registered in the country of origin, it must, on request, be accepted for filing and protected in its original form in the other
Contracting States. Nevertheless, registration may be refused in well-defined cases, such as where the mark would infringe the acquired rights of third
parties; where it is devoid of distinctive character; where it is contrary to morality or public order; or where it is of such a nature as to be liable to deceive
the public.
If, in any Contracting State, the use of a registered mark is compulsory, the registration cannot be canceled for non-use until after a reasonable period, and
then only if the owner cannot justify this inaction.
Each Contracting State must refuse registration and prohibit the use of marks that constitute a reproduction, imitation or translation, liable to create
confusion, of a mark used for identical and similar goods and considered by the competent authority of that State to be well known in that State and to
already belong to a person entitled to the benefits of the Convention.
Each Contracting State must likewise refuse registration and prohibit the use of marks that consist of or contain, without authorization, armorial bearings,
State emblems and official signs and hallmarks of Contracting States, provided they have been communicated through the International Bureau of WIPO.
The same provisions apply to armorial bearings, flags, other emblems, abbreviations and names of certain intergovernmental organizations.
Collective marks must be granted protection.
(c) Industrial Designs. Industrial designs must be protected in each Contracting State, and protection may not be forfeited on the ground that articles
incorporating the design are not manufactured in that State.
(d) Trade Names. Protection must be granted to trade names in each Contracting State without there being an obligation to file or register the names.
(e) Indications of Source. Measures must be taken by each Contracting State against direct or indirect use of a false indication of the source of goods or the
identity of their producer, manufacturer or trader.
(f) Unfair competition. Each Contracting State must provide for effective protection against unfair competition.
The Paris Union, established by the Convention, has an Assembly and an Executive Committee. Every State that is a member of the Union and has adhered
to at least the administrative and final provisions of the Stockholm Act (1967) is a member of the Assembly. The members of the Executive Committee are
elected from among the members of the Union, except for Switzerland, which is a member ex officio. The establishment of the biennial program and
budget of the WIPO Secretariat – as far as the Paris Union is concerned – is the task of its Assembly.
The Paris Convention, concluded in 1883, was revised at Brussels in 1900, at Washington in 1911, at The Hague in 1925, at London in 1934, at Lisbon in
1958 and at Stockholm in 1967, and was amended in 1979.
The Convention is open to all States. Instruments of ratification or accession must be deposited with the Director General of WIPO.
International IP treaties
WIPO administered treaties
Budapest Treaty
The Budapest Treaty eliminates the need to deposit microorganisms in each country where patent protection is sought. Under the treaty, the deposit of a
microorganism with an "international depositary authority" satisfies the deposit requirements of treaty members' national patent laws. An "international
depositary authority" is capable of storing biological material and has established procedures that assure compliance with the Budapest Treaty. Such
procedures include requirements that the deposit will remain available for the life of the patent and that samples will be furnished only to those persons or
entities entitled to receive them.
Hague Agreement
The Hague Agreement is an international registration system which offers the possibility of obtaining protection for up to 100 industrial designs in
designated member countries and intergovernmental organizations (referred to as "Contracting Parties") by filing a single international application in a
single language, either directly with the International Bureau of the World Intellectual Property Organization (WIPO) or indirectly through the office of the
applicant's Contracting Party.
Patent Cooperation Treaty
Under this WIPO-administered treaty, nationals or residents of a contracting state file a single patent application, called an "international" application, with
their national patent office or with WIPO as a receiving office. This automatically lodges the application for patent protection in all contracting parties of
the Patent Cooperation Treaty (PCT). By simplifying patent application filing, the PCT assists innovators in obtaining patent protection throughout the
world. It also encourages small businesses and individuals to seek patent protection abroad.
Patent Law Treaty
The Patent Law Treaty (PLT) harmonizes and streamlines formal procedures in respect of national and regional patents and patent applications, making the
procedures and the global patent system more user friendly. To do so, the provisions of the PLT set forth a maximum set of requirements a party to the
treaty may apply. It does not, however, harmonize substantive patent law. Rather, it makes it easier for patent applicants and patent owners to obtain and
maintain patents throughout the world by simplifying and, to a significant degree, aligning formal requirements associated with patent applications and
patents among global patent offices and jurisdictions.
Non-WIPO treaties
UPOV
The International Convention for the Protection of New Varieties of Plants, or UPOV Convention, was adopted on December 2, 1961, following a
diplomatic conference held in Paris, France. The UPOV Convention is administered by the International Union for the Protection of New Varieties of
Plants (UPOV), an intergovernmental organization with headquarters in Geneva, Switzerland. The mission of UPOV is to provide and promote an effective
system of plant variety protection, with the aim of encouraging the development of new varieties of plants, for the benefit of society.
Trade-related treaties and agreements
TRIPS
The Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) came into force in 1995, as part of the Agreement Establishing the World
Trade Organization (WTO). TRIPS applies basic international trade principles to member states regarding intellectual property, including national treatment
and most-favored-nation treatment. TRIPS establishes minimum standards for the availability, scope, and use of seven forms of intellectual property:
copyrights, trademarks, geographical indications, industrial designs, patents, layout designs for integrated circuits, and undisclosed information (trade
secrets). It spells out permissible limitations and exceptions in order to balance the interests of intellectual property with interests in other areas, such as
public health and economic development. For the complete text of the TRIPS Agreement, as well as an explanation of its provisions, see the WTO website.
Revocation of Patents in India
With the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) in 2005, Section 25 of the Indian Patents Act, 1970, was amended to
include the ability to oppose patents before and after they are granted. It ensures proper appropriation of intellectual property and internationally
harmonizes the patent regime.
A person can submit a patent revocation in cases of infringement or claims by licensors. Or if it is deemed against public policy by the Central Government.
The exclusive financial rights that come with it aren’t absolute. Therefore, the revocation of a patent can be done at any point during the patent’s lifetime.
Who can file revocation?
Generally, one who makes a counter-claim in a suit for infringement. Or any person (“Person Interested”) with direct, tangible, and commercial interest in
the patent. Such an interested person has the right to initiate revocation proceedings. Particularly when such interested persons have been injured or
affected by the use of the patent.
Jurisdiction and Multiplicity of Suits
Section 104 states that the person interested can approach only the Intellectual Property Appellate Board or the High Court for revocation. So, the patent
owner can not bring the infringement suit before a court inferior to the District Court’s jurisdiction.
Moreover, the Supreme Court laid down what can not be instituted to prevent the wastage of judicial machinery. That includes the post-grant opposition
and petitions or counter-claims of revocation against the same patent, which cannot be simultaneously instituted. Frivolous litigation shouldn’t be
encouraged as it is viewed as a tool for cash-rich litigants with dishonest interests.
Section 64: Grounds for Revocation
Principally, Section 64 contains inexhaustive grounds that dictate the conditions that warrant the revocation of patents:
1. Invention is obvious and lacks an inventive step or utility.
2. Invention isn’t new and has been publicly used or published in India before the priority date. Or it is foreseen in the light of the knowledge available
within any local or native community in India or elsewhere.
3. Either the party wasn’t entitled to the patent, or the subject is not patentable or doesn’t amount to an invention.
4. The scope of patent specifications is incomplete, or the specifications have already been claimed in a patent granted.
5. The Applicant obtained a patent wrongfully in violation of another party’s rights. Such as through incorrect or false representation or leave to modify
specifications obtained through fraudulent means.
6. The information disclosed under Section 8 is known to be false by the Applicant, or he has been unable to furnish the required details.
7. Complete specification omits or erroneously attributes geographical origin or biological matter used in the invention.
8. The invention was either secretly used before the date of claim or the Applicant contravened secrecy instructions under Section 35.
9. The complete specification neither describes the invention and method sufficiently nor discloses the best method of performing it known and entitled
protection.
Beyond Section 64
Section 65 allows revocation of the patent if it concerns the safety, production, control, use, treatment, or disposal of atomic energy or a radioactive
substance governed by the Atomic Energy Act 1962.
Whereas Section 66 deals with a patent that is inherently or has been exercised in a mischievous or prejudicial manner, causing harm to the State and the
public.
To prevent a patent from re-validating workable traditional knowledge, the Central Government revoked the patent in the case of Avesthagen Ltd., which
had patented “A synergistic ayurvedic/functional food bioactive composition (Cincata) and a process of preparation thereof” that involved Jamun,
Lavangpatti, and Chandan to treat diabetes.
Section 85 deals with compulsory licenses of patents that haven’t been worked in India, have not been made affordable for the general public, or lack
reasonable requirements within a two-year time frame. If one given such a right isn’t in a position or is unwilling to take advantage of it, it is only fair that
someone else is allowed to exploit it.
Conclusion
After allowing the patentee to be heard, the relevant authority may declare that the patent stands revoked in the Official Gazette.
The patent owner must never be under the impression that he can utilize said piece of intellectual property according to his whims and fancies once it has
been awarded.
The patents are awarded to forward the greater good in the first place. When new information comes to light, a provision to revoke patents is crucial in
protecting intellectual property rights.
Patent Renewal Fees India
Indian Patent Renewal Fee Schedule
If electronically filed:
For Patent Year
Individual / Small Entity Renewal
Fee
Standard Renewal Fee
3
800 / 2000
4000
4
800 / 2000
4000
For Patent Year
Individual / Small Entity Renewal
Fee
Standard Renewal Fee
5
800 / 2000
4000
6
800 / 2000
4000
7
2400 / 6000
12000
8
2400 / 6000
12000
9
2400 / 6000
12000
10
2400 / 6000
12000
11
4800 / 12000
24000
12
4800 / 12000
24000
13
4800 / 12000
24000
14
4800 / 12000
24000
15
4800 / 12000
24000
16
8000 / 20000
40000
17
8000 / 20000
40000
18
8000 / 20000
40000
19
8000 / 20000
40000
20
8000 / 20000
40000
If physically filed:
For Patent Year
Individual / Small Entity Renewal
Fee
Standard Renewal Fee
3
880 / 2200
4400
4
880 / 2200
4400
5
880 / 2200
4400
6
880 / 2200
4400
7
2640 / 6600
13200
8
2640 / 6600
13200
9
2640 / 6600
13200
10
2640 / 6600
13200
11
5280 / 13200
26400
12
5280 / 13200
26400
13
5280 / 13200
26400
14
5280 / 13200
26400
15
5280 / 13200
26400
16
8800 / 22000
44000
17
8800 / 22000
44000
18
8800 / 22000
44000
19
8800 / 22000
44000
20
8800 / 22000
44000
Fees are in Indian Rupees (INR).
Indian Patent Renewal Rules
Renewal Years
Renewal fees are only payable on an Indian patent once it has been granted. The first-time renewal fees become due is the second anniversary of
the patent’s filing date, at which point the fee for the third year is due. Generally, patents in India grant a number of years after this first fee date,
and fees for this and subsequent renewals up to grant accrue and are payable at the time of grant. Your local agent who is handling the prosection
of the application will generally handle these payments, and RenewalsDesk will take over from the following year.
Subsequent fees must be paid annually in advance of the year to which they relate.
Renewal Dates & Payment Windows
The renewal fee becomes due on the anniversary of the patent’s filing date and must be paid by that anniversary day. There is no provision for
payment up to the end of the month.
Payments for future renewals can be made in advance.
Entity Types
There are three types of ‘entity’ that are considered distinct under Indian patent law. The addition of a ‘Small Entity’ was new in the 2014 Patent
Rules. Previously existing categories are ‘Natural Persons’ and ‘All Others’.
A Natural Person is an individual. This category receives that largest discount on fees.
A Small Entity is a company that falls below the upper limit of certain criteria defining businesses in the Micro and SME Development Act
2006. In summary, to qualify, a service industry business must have invested less than INR 50,000,000 (approximately USD 82,000) in
equipment, and a manufacturing business must have invested less than INR 100,000,000 Crore (approximately USD 1,636,000). Further details
can be found in the public notice announcing the new rules (in English), and otherwise in the Gazette. If this status is accorded to a patent
applicant or proprietor, a significant fee discount also applies, as detailed below.
The final category for fee purposes is a catch-all. All other companies pay standard fees.
Proof of entity status (along with official Form 28) must be submitted in order to claim any discounts.
Electronic Filing
Electronically filed payments and documentation are now expected to be the standard. As such, and to encourage further use of electronic
systems, the Indian patent office have allowed an additional 10% to be added to their fees for any non-electronic transactions.
Late Payments
There is a six month window after the due date in which it’s still possible to make a renewal payment and prevent the lapse of the patent.
Additional fees are charged by the Patent Office. These increase with each month the payment is late and depend on both the type of entity that
holds the patent and how the payment is made.
Additional late fee (e-filing)
Natural Person
Small Entity
Large Entity
480
1200
2400
Natural Person
Small Entity
Large Entity
528
1320
2640
Additional late fee (physical filing)
Fees are in Indian Rupees (INR).
Restoration of Lapsed Patents
Restoration is available in India, provided that the failure to attend to the fee was unintentional. If you know that a fee is due, you should never
fail to pay it on the basis that you can reinstate the case later, as this would not fall within the definition of unintentional, meaning your patent
rights would be invalidated.