Indian Patent law, Office Procedure and Examination Practice - WIPO

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Dec 5, 2012 (4 years and 8 months ago)

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March 16, 2013

Indian Patent law, Office Procedure and
Examination Practice in

Indian Patent office

Dr. K.S.Kardam

Deputy. Controller of Patents & Designs

The Patent Office Delhi


23
rd

OCTOBER 2010


WIPO Training program for trainers
training on Effective Intellectual
Property Asset Management By MSMES

March 16, 2013

Outline of the Presentation

1


Background of Indian Patent Act


Examination Procedure


Filing


Publication


Time limit for publication


Examination request


Examination

2


Opposition Procedure


Pre
-

grant


Post grant

3


Statistics

March 16, 2013

K.S.Kardam

INDIAN PATENT LAW

HISTORICAL DEVELOPMENT


The Act of 1856 based on UK Act Of 1852
-
But
withdrawn


The Act of 1859,


The Patterns & Designs Protection Act, of 1872


The Protection of Invention Act, of 1883


The Invention & Designs Act of 1888
-

Further
Consolidation


The Patents & Designs Act 1911


The Patents Act 1970


This Act has been amended in 1999,2002 and 2005




March 16, 2013

K.S.Kardam

The Patents (Amendments) Act 1999


Providing the provisions for receiving the applications for
the product patent in the field of Pharmaceuticals and
agro
-
chemicals (mail box)


Provisions for the grant of EMRs for distribution and sale
of pharma products on fulfillment of certain conditions


Grant of EMR subject to certain conditions


Deletion of sec.39
-

relating to permission for filing of
patent application abroad

March 16, 2013

K.S.Kardam

The Patents (Amendments) Act 2002


Uniform 20 years term of patent for all inventions


Scope or non
-
patentable inventions including traditional
knowledge enlarged


Deferred examination system


Disclosure of source and geographical origin of biological
material made compulsory


Non
-
disclosure or wrongful disclosure of source and
geographical origin of biological material made ground for
opposition and revocation


Provisions concerning Convention countries simplified
-
GOC,
UOC,IGO recognized



March 16, 2013

K.S.Kardam

The Patents (Amendments) Act 2002…


Anticipation by traditional knowledge ,oral or otherwise
also made ground for opposition and revocation


Reversal of burden of proof


Bolar provisions


Parallel importation


Establishment of appellate board


Compulsory license provisions strengthened



Simplification of procedures


Harmonization with PCT provisions



March 16, 2013

K.S.Kardam

The Patents (Amendments) Act 2005


Product patent for inventions in all fields of technology


Definitions of certain terms redefined


New forms of known substances excluded in order to prevent
ever
-
greening of patent


Rationalization of opposition procedure


Introduction of pre
-
grant opposition by representation and



Post


grant opposition


Compulsory license for export purpose also if need be
-
to
remedy anti
-
competitive practices


Compulsory license for manufacture and export of
pharmaceutical products to any country having insufficient or no
manufacturing capacity

March 16, 2013

K.S.Kardam

The Patents (Amendments) Act 2005……


Extension of grace period to 12 months


Provisions concerning review of secrecy
directions
-
now to
be reviewed every six month
instead of 12months


Provisions relating to filing application abroad revised


Provisions concerning Penalties strengthened


Importation from any person duly authorised under law




March 16, 2013

Examination

Procedure

Filing of the application

Request For Examination

( RFE)

Publication under section
11A

Examination

Grant of Patent

Pre
-
grant Opposition

Post
-
grant Opposition

March 16, 2013

Electronic filing


(July 20,2007)

Physical filing at the Patent Office

Filing of the Application

Where to file application (Jurisdiction)


If the applicant/first mentioned applicant
(in case of joint)
-
resides/has domicile/has place of business/has origin of
invention/has service address
(in case of foreign applicant)

in
the following states:



States


Jurisdiction


Northern


Patent Office Delhi


Southern


Patent Office Chennai


Western


Patent Office Mumbai


Rest Of India
Patent Office

Kolkata


How to Apply ?


Application on form

1


Specification provisional/complete on form

2


Abstract of invention


Drawings,if any


Statement and undertaking of foreign filing particulars on
form
-
3
-

if any


Proof of right

if applicable


Declaration of inventor
-
ship

on form
-

5





Contd….


Certified copies of priority documents
-

if applicable


Power of attorney
-
if applicable


Application,Specification and other documents should
be either in Hindi or English language


If application discloses sequence listing of nucleotides
and/or amino acids, it should be filed in electronic form


Filing of the patent application


Application for patent can be filed only on the
payment of full Fee


Filing fee is now charged on the basis of number of
pages and number of claims made in the patent
document


No extra fee is charged upto 30 pages and 10
claims


Different fee for natural person and legal entity

Publication

March 16, 2013

March 16, 2013



PUBLICATION


UNEXAMINED APPLICATIONS
AFTER 18 MONTHS


EARLY PUBLICATION ON REQUEST



GRANTED PATENTS

March 16, 2013

Time limit for publication


Ordinary application:

After 18 months of filing of the
application


Conventional applications

: After 18 months from priority


Applications for which secrecy directions are issued:

After
cessation of the secrecy directions or after 18 months
whichever is later


Divisional application
: After18 months from priority of
parent application/immediately after filing divisional
application whichever is later


National phase PCT application
: within one month after
filing of the application


Patent of addition

: 18 months after filing Patent of addition
application whichever is later


Early
Publication
-

within one month after receiving the
request





March 16, 2013

Publication of Patent Application



Every application shall be published after expiry of 18 months
from the date of filing or date of priority of the application
except the following


Application in which secrecy direction is imposed or


Abandoned under section 9(1) or


Has been withdrawn before 3 months prior to expiry of 18 months


However the applicant can make specific request for early
publication prior to 18 months on form 9 with prescribed fee of
Rs.2500 or Rs.10000 by individual or legal entity
respectively


March 16, 2013

Where published
-

Official Journal

This journal is published
every week

This has replaced gazette

First issued out on 21
st

January 2005

Available online on
Patent office website:

www.ipindia.nic.in

Contents of the unexamined
published patent application

(12) PATENT APPLICATION
PUBLICATION


(19
) INDIA

(
22) Date of filing of Application :19/08/2008

(21)
Application No.1967/DEL/2008 A

(
43)
Publication Date : 17/04/2009

(54)
Title of the invention
: AN ELECTRONIC SYSTEM AND METHOD FOR PROCESSING FINANCIA DATA

(51)
International classification

(31)
Priority Document No

(
32) Priority Date
(

33
) Name of priority country

(86
) International Application No
Filing
Date

(
87) International Publication No

(
61) Patent of Addition to Application Number

Filing
Date

(62
) Divisional to Application Number Filing
Date


:G06Q20/00
:
NA


:NA

:
NA

:
NA
:

NA :

NA

:NA


:
NA



(71)Name of Applicant : 1)MEENA MISHRA Address of Applicant
:B
-
1, SECTOR
-
41, NOIDA, (U.P) Uttar Pradesh India (72)Name of
Inventor : 1)MEERA MISHRA 2)SH.ANJANI KUMAR MISHRA
3)SH.VIKAS PANDEY



(57)
Abstract :
A system for processing
financial
data comprising electronically controlled multiple stages comprising an input stage, a
processing stage wherein the system performs
specific
functions including means to calculate cert ain fixed
parameters
, means to generate
appropriate
data sheets, means to store the relevant data in the form of codes for
retrieval
at any later point of time, means to allow for
modification of
calculation
parameters for different types of financial data and
calculation
, and means to execute the function and an output stage
to generate data ready to be transmitted
exported
to the concerned authorities" module of software as well as on servers also either through
internet or any other mode with each stage being controlled by input device, processing device and output device.

March 16, 2013

Contents of Publication

under section 43(2)

Examination

March 16, 2013

March 16, 2013

Examination


Examination
: Not automatic


Request

to be made by applicant or third parties


Examination report to applicant only


Fees: Rs 2500/ 10000


March 16, 2013

Request For Examination


A request for examination can be filed in form 18 within
48 months from the priority date or filing date whichever is
earlier


A request for examination in respect of applications filed
before 1
-
1
-
2005 can be filed within the period of 48
months from the date of filing of the application instead of
date of priority ( as provided prior to the Patents
(amendment) Act. 2005

March 16, 2013

Request for
examination……..


In case of application in which secrecy direction is
imposed


48 months from priority date or date of filing or


6 months from the date of revocation of secrecy
direction,whichever expires later


In case of divisional application
-


After publication of main application


48 months from priority date or date of filing of main
application or


6 months from the date of filing of divisional application ,
whichever is later


March 16, 2013

Formal Examination


Jurisdiction


Fee


Form of the documents


Specification including claims and abstract


Drawings


Power of attorney


Assignment/Endorsement


Priority date and supporting document


Language of the documents or their translation if
language is not Hindi or English


Information about corresponding foreign applications





Technical groups

March 16, 2013


All the controllers and examiners have been divided
into 4 groups


Groups have been constituted according to field of
technology namely
Chemical,

Biotechnology,
Electrical and electronics
and
Mechanical and allied
engineering


The applications are referred to examiners as per
their field of Specialization


Applications are examined as per serial order
of the request for examination


March 16, 2013

Substantive Examination


Patentable invention( sec
-
2(1)(j)


Novelty


Inventive step


Industrial application


Is the Invention excluded under any of the provisions
of section 3 and 4


Description


Sufficiency, ambiguity, succinctness


Reference of deposition of biological resources


Disclosure of source of origin


Claims


Unity of invention


dependency

March 16, 2013

K.S.Kardam

New (Novel) means ?


Invention should not have been


Published in India or elsewhere.


In prior public knowledge or prior public use with in
India.


Claimed before in any specification in India and
published after the filing of the application


March 16, 2013

K.S.Kardam


A feature of invention that involves
technical advance as compared to existing
knowledge or having economic
significance or both and that makes
invention not obvious to a person skilled in
the art


Inventive Step means ?

March 16, 2013

K.S.Kardam


Invention should be capable of being made
or used in an industry to result some
tangible technical results


Industrial applicable means ?

March 16, 2013

K.S.Kardam

Inventions Not Patentable
-
1



Frivolous & obviously contrary to natural law


Contrary to law,morality


Injurious to public health


Use or commercial exploitation is contrary to
public order or morality


Causing serious prejudice to human,animal or
plant life or health or to the environment

March 16, 2013

K.S.Kardam

Inventions Not Patentable
-
2


Mere discovery of scientific principle or formulation of
abstract theory


Discovery of living or non living substances occurring in
nature


Mere discovery of new form of known substance which does
not result in the enhancement of the known efficacy of that
substance


However, salt
,
esters, polymorphs, metabolites, pure forms,
isomers ,complexes etc, shall be considered to be the same
unless they differ significantly in properties with regard to
efficacy



March 16, 2013

K.S.Kardam


Mere discovery of new property


New use of known substance , process, machine,
apparatus.


Mere admixtures resulting in the aggregation
of properties


Mere arrangement and rearrangement of
known devices.


Method of agriculture or horticulture

Inventions Not Patentable
-
3

March 16, 2013

K.S.Kardam


Process for any medicinal, surgical, curative, prophylactic,
diagnostic or therapeutic treatment of human being or animal.


Plant & animals or their parts


Seeds, varieties and species and essentially biological process for
the production or propagation of plants and animals


A mathematical or business method or a computer programme per
se or algorithms


Literary,dramatic,musical or artistic/cinematography works and
television productions or any other aesthetic creation.


Inventions Not Patentable
-
4


March 16, 2013

K.S.Kardam

Inventions Not Patentable
-
5


Scheme or rule


method of performing mental act or method of
playing game


Presentation of information


Topography of integrated circuit


Traditional knowledge or aggregation or
duplication of known properties of traditionally
known components

March 16, 2013

K.S.Kardam

Inventions Not Patentable
-
6


Inventions falling within the scope of Sec. (1) of Sub
-
sec. 20 of Atomic Energy Act, 1962
-
For Example :
Inventions relating to Compounds of
-



Uranium, Beryllium, Thorium, Plutonium, Radium,
Graphite, Lithium and more as notified by Central
Govt. from time to time


Novelty Search

March 16, 2013


Indian Patents Since 1912


DWPI(DELPHION)


STN


Questel


QPAT And QWEB


MMS and NPL


E
-

Journals



EPOQUENET(Since April 2009)



March 16, 2013

Time to comply with the
Requirements


12 months from the date of issue of First
Examination Report (FER)


This time limit is not extendable

OPPOSITION

March 16, 2013

Post

grant opposition


Pre
-
grant opposition by representation

Pre
-
grant Opposition by
representation


It can be filed by
any person


Within SIX months from the date of publication of the
application under sec.11A Or


before the grant of patent


Note:
date of patent is the date when the controller
grant patent by generating the patent number with
date!!!!


Date of patent however in no case is the date of
publication of grant of patent


Grounds for Opposition


Wrongful obtaining


Prior publication


Prior claiming


Prior public knowledge or use in India


Obviousness or lack of inventive step


Not an invention or not patentable under the Act


Grounds for Opposition….


Insufficiency of description


Failure to disclose the information regarding
corresponding foreign application or furnishing
false information


Failure to file convention application within twelve
months from the date of first application made in
the convention country



Grounds for Opposition….


Non
-
disclosure or wrongful mentioning of the source
and geographical origin of biological material
used in the invention


Anticipation of invention by knowledge, oral or
otherwise available within any local or indigenous
community in India or elsewhere


No account will be taken for personal document or
secret trial or secret use

Pre
-
grant opposition

REPRESENTATION

FORWARDED TO

THE APPLICANT

REPLY AND EVIDENCE OF
APPLICANT

HEARING

Copy of reply given to
the opponent if
requested

Patent granted

Application refused

Request for
examination is filed

YES

NO

3 Months

Post
-
grant Opposition


Any time but before expiry of one year from the
date of publication of the grant of patent


By interested person only


By giving a notice of opposition to the Controller


On the prescribed grounds only


The grounds are same as under pre
-
grant opposition


No provision for extension of time to file notice of
opposition

Procedure for

Post grant Opposition

Notification

Grant of patent

Notice of opp
.

Reply
Evd
. by opp.

Reply statement&

Evd.by

applicant

F.W.S.&
Evd
. By opp.


Further
Evd
.
If any

Appointment


of hearing

Hearing

Decision

Revoked

Patent Cont


Recommendations of

OPPOSITION BOARD

Patent Applications filed

0
5000
10000
15000
20000
25000
30000
35000
40000
1999
-
2000
2002
-
03
2003
-
04
2004
-
05
2005
-
06
2006
-
07
2007
-
08
March 16, 2013

4824

11466

12613

17466

24505

28940

35,218

Patents granted

0
2000
4000
6000
8000
10000
12000
14000
16000
2001-02
2002-03
2003-04
2004-05
2005-06
2006-07
2007-08
March 16, 2013

1318

1379

2469

1911

4320

7539

15.262

March 16, 2013

THE FEE SCHEDULE

On what payable


Prov./Comp spec.


PAGES EXCEEDING 30


CLAIMS EXCEEDING 10

*Request for extension of time

REQUEST FOR EARLY PUBLICATION


Request for Examination


EXPRESS REQUEST FOR EXAMN.

*Change of Applicant

*Notice of Opposition *Certified
Copy
\
Certificate

*On a petition

*Restoration of lapsed patent

Form

2

-

-

4

9

18

18

6

7


--

15

Individual

1000

100

200

1000/2000/3000

2500

2500

3500

1500

1000

1000

1500

1500

Company

4000

400

800

4000/8000/1200

10000

10000

14000

2000

6000

4000

4000

6000

RENEWAL FEES

3
rd

to 6
th

Year(per year)

6
th

to 10
th

Year

do
--

11
th

to 15
th

Year
---
do
---

16
th

to 20
th

year
----
do
---


500

1500

3000

5000


2000

6000

12000

20000


March 16, 2013

March 16, 2013