WIPO Training program for trainers training on Effective Intellectual Property Asset Management By MSMES Indian Patent law, Office Procedure and Examination Practice in Indian Patent.
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WIPO Training program for trainers training on Effective Intellectual Property Asset Management By MSMES Indian Patent law, Office Procedure and Examination Practice in Indian Patent office 23rd OCTOBER 2010 Dr. K.S.Kardam Deputy. Controller of Patents & Designs The Patent Office Delhi November 6, 2015 Outline of the Presentation 1 2 3 • Background of Indian Patent Act • Examination Procedure • Filing • Publication • Time limit for publication • Examination request • Examination • Opposition Procedure • Pre- grant • Post grant • Statistics November 6, 2015 INDIAN PATENT LAW HISTORICAL DEVELOPMENT The Act of 1856 based on UK Act Of 1852 -But withdrawn The Act of 1859, The Patterns & Designs Protection Act, of 1872 The Protection of Invention Act, of 1883 The Invention & Designs Act of 1888- Further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 amendedK.S.Kardam in 1999,2002 and 2005 November 6, 2015 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 K.S.Kardam November 6, 2015 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 K.S.Kardam November 6, 2015 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 K.S.Kardam November 6, 2015 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 K.S.Kardam November 6, 2015 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 K.S.Kardam November 6, 2015 Examination Procedure Filing of the application Request For Examination ( RFE) Publication under section 11A Pre-grant Opposition Examination Post-grant Opposition Grant of Patent November 6, 2015 Filing of the Application Physical filing at the Patent Office Electronic filing (July 20,2007) November 6, 2015 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 Southern Western Patent Office Delhi Patent Office Chennai 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 November 6, 2015 PUBLICATION UNEXAMINED APPLICATIONS AFTER 18 MONTHS EARLY PUBLICATION ON REQUEST GRANTED PATENTS November 6, 2015 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 November 6, 2015 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 November 6, 2015 Where published- Official Journal This journal is published every week This has replaced gazette First issued out on 21st January 2005 Available online on Patent office website: www.ipindia.nic.in November 6, 2015 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 (71)Name of Applicant : 1)MEENA MISHRA Address of Applicant :B-1, SECTOR-41, NOIDA, (U.P) Uttar Pradesh India (72)Name of (51) International classification :G06Q20/00 Inventor : 1)MEERA MISHRA 2)SH.ANJANI KUMAR MISHRA (31) Priority Document No :NA 3)SH.VIKAS PANDEY (32) Priority Date ( :NA 33) Name of priority country :NA (86) International Application No Filing Date :NA : (87) International Publication No NA : (61) Patent of Addition to Application Number NA Filing Date :NA (62) Divisional to Application Number Filing :NA Date (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. Contents of Publication under section 43(2) November 6, 2015 Examination November 6, 2015 Examination Examination: Not automatic Request to be made by applicant or third parties Examination report to applicant only Fees: Rs 2500/ 10000 November 6, 2015 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 November 6, 2015 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 November 6, 2015 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 November 6, 2015 Technical groups 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 November 6, 2015 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 November 6, 2015 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 K.S.Kardam November 6, 2015 Inventive Step means ? 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 K.S.Kardam November 6, 2015 Industrial applicable means ? Invention should be capable of being made or used in an industry to result some tangible technical results K.S.Kardam November 6, 2015 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 K.S.Kardam November 6, 2015 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 K.S.Kardam November 6, 2015 Inventions Not Patentable-3 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 K.S.Kardam November 6, 2015 Inventions Not Patentable-4 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. K.S.Kardam November 6, 2015 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 K.S.Kardam November 6, 2015 Inventions Not Patentable-6 Inventions falling within the scope of Sec. (1) of Subsec. 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 K.S.Kardam November 6, 2015 Novelty Search Indian Patents Since 1912 DWPI(DELPHION) STN Questel QPAT And QWEB MMS and NPL E- Journals • EPOQUENET(Since April 2009) November 6, 2015 Time to comply with the Requirements 12 months from the date of issue of First Examination Report (FER) This time limit is not extendable November 6, 2015 OPPOSITION Pre-grant opposition by representation Post –grant opposition November 6, 2015 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 Request for examination is filed NO YES REPRESENTATION FORWARDED TO THE APPLICANT Copy of reply given to the opponent if requested 3 Months REPLY AND EVIDENCE OF APPLICANT Patent granted HEARING Application refused 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 Grant of patent Reply Evd. by opp. Notification Reply statement& Evd.by applicant Notice of opp. F.W.S.& Evd. By opp. Further Evd. If any Recommendations of OPPOSITION BOARD Patent Cont Appointment of hearing Decision Hearing Revoked Patent Applications filed 40000 35,218 35000 28940 30000 24505 25000 17466 20000 12613 15000 10000 11466 4824 5000 0 1999- 2002-032003-042004-052005-062006-072007-08 2000 November 6, 2015 Patents granted 16000 15.262 14000 12000 10000 7539 8000 6000 4320 4000 2000 1318 1379 2469 1911 0 2001-02 2002-03 2003-04 2004-05 2005-06 2006-07 2007-08 November 6, 2015 THE FEE SCHEDULE On what payable Form Individual Company Prov./Comp spec. 2 1000 4000 PAGES EXCEEDING 30 - 100 400 CLAIMS EXCEEDING 10 - 200 800 *Request for extension of time 4 1000/2000/3000 4000/8000/1200 REQUEST FOR EARLY PUBLICATION 9 2500 10000 Request for Examination 18 2500 10000 EXPRESS REQUEST FOR EXAMN. 18 3500 14000 6 1500 2000 7 1000 6000 1000 4000 -- 1500 4000 15 1500 6000 3rd to 6th Year(per year) 500 2000 6th to 10th Year—do-- 1500 6000 11th to 15th Year---do--- 3000 12000 16th to 20th year----do--- 5000 20000 *Change of Applicant *Notice of Opposition Copy\Certificate *On a petition *Restoration of lapsed patent *Certified RENEWAL FEES November 6, 2015 November 6, 2015 November 6, 2015