PROCEDURE FOR FILING PATENT APPLICATION

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This article is written by Adhoksha Sarode of 7^th Semester of Adv. Balasaheb Apte college of law affiliated with Mumbai University, an intern under Legal Vidhiya

ABSTARCT

Intellectual property refers to any form of creations which includes artistry, image, literature, designs, etc. Intellectual property is divided into two types: –

1) Industrial property

i) inventions (patents), trademarks, industrial designs, geographic indications of source,

2) Copyright which includes, literary, artistic works such as novels, poems, plays, films, musical works, artistic works such as art and architecture.

Intellectual property rights safeguard the interest of the creators by giving them their individual property rights over the thing which they created. The first grant of the patent was as far as back as 500B.C. , in a city which was dominated by gaurmads.

Patents are an important aspect for an organization, its skills can be measured by its patenting activities. The quality matters as well same as the organization’s skills. Filing a patent application with the Indian patent office is the first step to obtain a patent for the invention in India. A set of forms are required to be sent in order to obtain a patent. An already class 3 digital certificate is present, the hard copies can be sent to the patent office, the patent office however charges 10% fee if the applications were filed offline.

Patents are exclusive rights granted to an individual/entity by the Government for the discovery, innovation, or invention of a product or process. To obtain a patent, the disclosure of the patent is also important, the green signal from the government regarding the patent gives the person a right to use and sell his inventions at his own costs but its limited up to only 20 years from the date of its filing.

Keywords– Intellectual property, literature, trademarks, architecture, patent, India, application form, government, inventor, development.

INTRODUCTION

Intellectual property is intangible as compared to other properties; it cannot be defined by its its physical characteristics. Intangible property includes four types mainly- patents, trademarks, copyrights and trade secrets, which in itself to as “intellectual property. “ In recent times, various aspects such as geographical indications, plant varieties, conductors and integrated circuits, etc has brought under the scope of intellectual property.

Patent is mainly a monopoly grant which enables the inventor to control the output and limits set by their demands, which is patented products. Patent acts as an economical and commercial justification to the investment of the industrial innovation. The origin of the India patent system could be traced back in time to 1856 which grants exclusive privilege to its inventors.

The central government is bound to make rules regulating patent administration under section 159 of the patents act, 1970. The patent rules 1972 were brought into force w.e.f. 20.4.1972. The rules were however amended from time to time till 20^thmay, 2003 when new patent rules were added replacing the 1972 rules. The rules were however amended by the Patents (Amendment0 Rules, 2005 and the patents (Amendment) Rules, 2006.

The last amendments were effective from 5^th may 2006. There are four schedules to the Patents (Amendment) Rules 2005, The first schedule states about the fees to be paid, the second about the list of forms and texts which deals with the patents act. The forms can be modified whenever and when needed they would be modified with the consent of the controller. The third schedule states for the form to be prescribed and to be granted for the patent, the fourth schedule prescribes costs which are to be awarded in proceedings before the controller under the said act.

PRODUCT/ PROCESS PATENT

Section5 of the patents act 1970 has provided for grants of processed patents in certain categories. It has been seen that under the patent act, 1970 and in other areas the process patents have been issued. The Paris convention left the said issue to be dealt with the state’s legislation.

APPLICATION OF THE PATENT

Section 6 of the act states that the patent for the invention made by any person either alone or jointly with another :

1) person who claims to be the true and sole inventor of the invention,

2) any person who is an assignee of the person who claims to be true and first inventor in respect of the right made to applications,

3) by the legal representative of deceased person who before his death was said to make such an application.

According to Section 2(1)(y), ‘true and first inventor’ which fails to include the first imposter of an invention into India or to whomever the invention is being communicated from outside India. The name of the applicant should be seen as along with his true nationality.

Assignee can be a person or other than a person just like the companies which are registered, research organization, educational institute or government. S. 2(1)(s). Assignee includes assignee of the assignee.S.2(1)(ab). The ‘proof of right’ should be submitted by the assignee. Legal representative means a person who in law represents the estates of the deceased. S.2(1)(k). A death certificate should also be filed as a proof of right. The legal representative or assignee of the applicant in the convention county can also filed for patent application in India.

FORM OF APPLICATION

Section 7 states that form of application requires every application for a patent for any invention, the application is made by the virtue of the assignment of right to apply for the patent invention, there shall be furnished with the application proof of the right of the application.

With one single invention there should only be one single patent. A patent will be in respect of the process, it being hard to bifurcate a patent and state its substances and which relates to other process. In order to have a patent the specifications and claims should be mentioned. [1]

Each international application under the patent cooperation treaty (PCT) for a patent, will be deemed to be an application under the act, if any corresponding application has been filed before controller in India. Th filing date of the application and its specifications processed by the patent officer as designated officer or elected officer shall be under the international filing date accorded under the PCT. Section 7(4) states that every such application, which is not a convention application or any application under PCT designating India, will be accompanied by a provisional or by a specification.

The inventors created the patent cooperative treaty (PCT) for protecting patents, the inventors can just submit one international application which is valid in any or all of more than 120 countries that are members of the treaty, inventors can apply for a patent in members of countries PCT or in selected group of countries. Only those inventors who are a liable citizen or residents of the PCT can use to file international patent applications.

The process for protecting the patent around the world can be created by the patent cooperation treaty(PCT). Under the said cooperation the inventors can submit only one application which is valid in over 120 countries which are members of the said treaty. Inventors can apply for a patent either in all member countries of the PCT or in groups. Only those who are citizens or residents of the member countries of the PCT can use this easier system to file for those of international patent applications.

PROCEDURE

FILING OF A PATENT APPLICATION

A patent application shall be filed on form -1 along with provisional/complete specification, with the fee as per levied in First schedule at an appropriate office.

No provisional specification can be filed in case of a convention application(either directly or through PCT routes). Normal fee will be applicable for applications containing 30 pages in specifications and up to 10 claims. Additional fee as per first schedule is payable when it exceeds thirty pages or claims are more than 10 in number. Section 7, First schedule.

CONTENTS OF PATENT APPLICATION

A patent application should consist of :-

a) Convention application (under Paris convention)

b) PCT national phase application where the requirements of rule 17.1 (a,b) regulations under the PCT have not been fulfilled. The priority document is to be filled along with the application or before ethe expiry of 18 months from the date of priority, to enable the publication of the application. In case of request for early application, the priority document shall be filed before. Along with such request.

Also, section 6 of the biological diversity act, 2002 and rule 17.1 of regulations made under PCT.

E-FILING

1. The patent office provides the facility to file a patent application online form to the native place of the agent of the applicant through e-filing.

2. For the process of e-filing, applicant must have a digital signature, when it’s their first time then the applicant has to register as a new user and has to create a new login ID and password on the patent office portal. (Rule6 talks about procedure for e-filing. http://www.ipindia.nic.in.

PROCESSING OF APPLICATION

INITIAL PROCESSING

1. The office accords a date and serial number to the receipt of the application. Patent cooperation treaty national phase applications and non-patent cooperation treaty applications are identified by separate serial numbers.

2. All other applications are digitized, screened, classified and uploaded to the internal server of the office.

3. Patent applications and other documents are arranged in file wrapper and the bibliographic sheet is then prepared and other documents are arranged in file wrapper and the sheet is then prepared and pasted on a file cover.

4. The application is screened for:

SCRUTINY OF APPLICATION

1. The office checks if the application is filed in appropriate jurisdiction and if it’s not then the application won’t be taken on record and the applicant will be informed accordingly.

2. The proof of right of application is checked by the office and if it is not filed along with the application then the same will be filed within a period of 6 months from the date of filing of application. Or else, the applicant can file the same along with a petition under rule 137/138.

3.The office makes sure if the application and other documents are filed in the prescribed manner- forms, requests, petitions, assignment deeds, translation, etc. The office also checks-

i) whether the documents are signed on a proper sized paper, typed in appropriate font with appropriate spacing,

ii) whether the documents are duly signed,

iii) if the drawings are filed in proper format,

iv) the meaningful claims should be present in the specification,

v) power of attorney or attested copy of a general power of attorney,

vi) Form-5 has been filed along with complete after provisional or for filing PCT-NP/Convention application.

vii) the invention is assigned to another person and form6 has been filed, when the right is assigned from an individual to a legal entity, the entity is invited to pay the balance fees.

SECRECY DIRECTIONS AND CONSEQUENCES THEREOF

1) After the initial processing and scrutiny of the applications by the patent office, if the opinion of the controller an invention pertains to a subject matter relevant for the purpose of defence as intimidated by the central government, then the controller issues a secrecy direction prohibiting the publication as per notified by the central government, the controller issues a secrecy direction prohibiting the publication of the application to the applicant and refers the matter to the central government for their consideration as to whether the application is prejudicial to the defence of India.

2) The central government may then give a notice after taking into consideration the merits of the secrecy direction to the controller as to whether it should be controlled or not.

3) The central government then reviews the matter at intervals of six months and then the applicant may request for any reconsideration of the secrecy direction and if the same is found reasonable by the controller, then he may request to central government for a review.

4) If the central government is of the opinion that an invention in respect of which the controller has not imposed a secrecy direction and is relevant for a defence purpose, it may at any time before grant the patent to notify it to the controller to that effect. Section 35(1) will get invoked herewith.

5) The controller can’t take any decisions on grant/refusal of the applications Section 35,36,37,38., as long as the directions under section 35 are in force.

PUBLICATION OF APPLICATION

Section 11A(1) states that no application for patents would be open to public for any such period as it has been prescribed. Sub-section(2) states that an applicant to request the controller, in the prescribed manner, to publish the application at any time before it expires of the period as per specified in sub-section (1) and which is subject to provisions of sub-section(3).

The controller then can request shall published application in the official journal at the soonest. Every application for the patent will be published on the expiry of the period which is specified in sub-section(1) except those applications in which secrecy direction is imposed under section 35, or application has been abandoned under section 9(1), or the application has been withdrawn three months prior to the period which is specified under sub-section (1).

The rule 24 deals with procedure for publication of application which is provides that the period of application for patent such not ordinarily be open to the public under section 11A(1) shall be eighteen months from the date of filing of application or the date of priority of the application, whichever is earlier. A request for the publication is made under section 11A(2) which is required to be made in form 9.

The publications of the application shall include the particulars of the date of application, number of the application, name and address of the applicant identifying the application and an abstract. Upon the publication of an application for a patent, the depository institution shall make the biological material specified available to the public. The patent office may, on the payment of the prescribed fee make the specification and drawings, if any of such application to the public.

Section 11A(7) states that on and from the date of publication of application for patent and until the grant of the date of patent which respect to such said application. the applicant shall have the like privileges and rights as if a patent for invention has been granted on the date of publication of application.

However, the applicant has no legal right to initiate any proceedings for any kind of infringement until the grant of the patent. Additionally, the rights of a patentee in respect of application made under section 5(2) before January 1 , 2005 shall accrue from the date of patent.

After the patent is granted in respect of application made under section 5(2), the patent holder shall only be entitled to receive reasonable royalty from such enterprises which have made significant investment and were producing and marketing concerned product prior to January 1, 2005 and which continues to manufacture the product covered by the patent on the date of grant of the patent and no infringement proceeding shall be instituted against such enterprises.

REQUEST FOR EXAMINATION

1)As in the section 11B an application for a patent won’t be examined unless there is any person who request for such examination. The request is to be filed in form-18 with the fee as prescribed in first schedule.

2) A request for examination has to be made within forty-eight months from the date of priority of the application or from the date of filing of the application, whichever is soon. If no such request for examination is filed within the prescribed time limit, the application shall be treated as withdrawn by the applicant.

3) A case wherein secrecy direction is issued under section 35, the request for examination may be made within six months from the date pf revocation of the secrecy direction, or within forty-eight months from the date of filing or priority, whichever is the soonest.

4) The office will not examine an application unless it has published a request for examination is filed.

5) When a person other than that of the applicant files for a request for examination then the report is sent to the applicant and the intimidation is given to the person interested. Section 11B & 35. Rule 24B

OPPOSITION

There are 2 steps to be followed while filing the grant of patent :-

1) The pre-grant opposition is made when the patent is published and is not granted. Any person related to that matter can file for its opposition after its publication in official journal by patent office.

2) The post-grant opposition can be filed by any one person who is skilled in art of invention with evidential document. The opposition shall be filed within one year from grant of patent.

When the opposition controller is dismissed opposition then the patent is granted, when it’s upheld it’s not granted or if partially upheld then the patent is granted only after amendment.

A controller grants the patent and in official journal of patent office grant of patent is published, a certificate of patent is given to the applicant. Term of the patent is 20years from date of filling application, renewal fees is required to be paid every year after expiration of 20 years and if not done so patent comes under public domain.

In one case it was held that two patent applications were filed by one party, the pre-grant opposition was filed by span diagnostic ltd which was rejected later. The patents act 1970 was by the time amended by the patents (Amendments) act 2005, which was extended the deadline for pre-grant opposition. The petitioner argued completely opposite of what was being stated, the court later held that the court is liable to consider the patent to be granted after controller passes an order to an effect, when the final order is passed which is noted by the controller then the date of when its published is taken into consideration.[2]

In another case, the plaintiff was a manufacturer of a toy and has the patent for the same, but the respondent infringed his rights. The court held that the grant of patent is quid pro quo where quid is the knowledge to public and quo is monopoly granted for the term of the patent. [3]

CONCLUSION

Patent solely is an important tool in the filed of intellectual property rights. The main object of the patent is to protect the owner from his rights getting violated, the process for the same is seen by us above but biding by it surely gives it a factor to be protected. The online application process has made our lives easier and less tedious, now one can file for a patent just by using our fingertips.

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