What is Patent:

According to World Intellectual Property Organization (WIPO),

intellectual property refers to the „product of the
mind: inventions, literary and artistic
works, any symbols, names, images, and designs used in commerce.‟

A patent is alimited monopoly that is granted in return for the disclosure of

technical information.

A patent is a right to exclude others from making, using, selling or offering for sale
thesubject matter defined by the claims. In order to exclude someone from using
a patentedinvention in a court, the patent owner, or patentee, needs to
demonstrate that what theother person is using falls within the scope of a claim
of the patent. Therefore, it is morevaluable to obtain claims that include the
minimal set of limitations that differentiate aninvention over what came before,
i.e. the so-called prior art. On the other hand, the fewerthe limitations in a claim,
the more likely it is that the claim will cover or "read on" whatcame before and be
rejected during examination or found to be invalid at a later time forlack
of novelty.

Defination

The word patent originates from the Latin patere, which means "to lay open"
(i.e., to make available for public inspection). It is a shortened version of the
term letters patent, which was an open document or instrument issued by a
monarch or government granting exclusive rights to a person, predating the
modern patent system. Similar grants included land patents, which were land
grants by early state governments in the USA, and printing patents, a
precursor of modern copyright.

In modern usage, the term patent usually refers to the right granted to
anyone who invents something new, useful and non-obvious. Some other
types of intellectual property rights are also called patents in some
jurisdictions: industrial design rights are called design patents in the
US,[6] plant breeders' rights are sometimes called plant patents,[7] and utility
models and Gebrauchsmuster are sometimes called petty
patents or innovation patents.

The additional qualification utility patent is sometimes used (primarily in the

US) to distinguish the primary meaning from these other types of patents.
Particular species of patents for inventions include biological
patents, business method patents, chemical patents and software patents.

What are Product and Process Patents?

Product Patent Regime

Under this regime, the patent is granted to the original inventor of the product.
Here are a few characteristic features of a Product Patent:

 The grant of a product patent implies that no other person other than the
inventor can manufacture the same product using the same process or
any other process.
 Product patent provides a ‘True Monopoly’ right to the inventor
 Product patents are considered to be a higher level of protection
compared process patents.
Process Patent Regime
As the name says, a process patent is granted only to a particular process and
not to the end product that is a result of such a process.

 The protection is seen as a limited parent. This is because any other

manufacturer or inventor can create the same product using a different
process.
 A process patent gives a low rage of protection to the inventor. Hence,
the chances of competitors reverse engineering the product are high.
 Also, there can be multiple process patents for a single product.

Basics Product Patent Process Patent

Definition Patent protection is Process patent protection is

provided to the ‘End Result’ provided to only the process,
or ‘the product’. and not the resulting ‘End
Product’.

Implementation Product Patents were Process Patents has been

introduced as part of the recognised in Indian ever since
Patents (Amendment) Act, the Indian Patent Act, 1970
2005. was enforced.

Example The altered DNA will be The patent will be provided to

provided protection and not the process involved in altering
just the process involved. the DNA as recognised by the
Indian Patents Act.
Steps involved in the patent process in India

The procedure for obtaining a patent in India starts even before a patent application
is filed with the patent office in India.

Step 0 – Decision on doing it yourself or engaging a professional

Before you proceed with the patent application process, you need to decide if you
will be using the assistance of a patent professional or undertaking the patent process
yourself. Considering the number of deadlines and the impact of these deadlines, it
is highly recommended that you engage a patent professional / firm who has years
of experience in the patent field.

If you decide to use the services of a professional, then make sure that you sign a
Non-Disclosure Agreement (NDA) with the patent professional / firm before
disclosing the invention to them. It is a good idea that all your disclosures with any
third parties are done confidentially and you sign NDA’s with each party.

Step 1 – Check the Patentability of the invention by performing a search for similar
technologies
Before filing a patent application in India or in any other country, the first step
(optional but recommended) in the patent registration process is to perform a
detailed patentability search to determine the chances of getting a patent. The search
should ideally be performed for both patent and non-patent references.

The advantage of a search is it provides a good idea of the merit of the invention and
helps in deciding if there are good chances of ultimately getting a patent granted.
Furthermore, based on the references discovered during the search, you have the
option of fine-tuning your patent application to ensure that you don’t end up filing a
patent for something which already existed.

Hence, a thorough patentability search is always advised but from a patenting

process point of view is totally optional.

If you are thinking of going international with your patent application, spending time
and money on the search will be well worth every Rupee.

Step 2 – Drafting a patent application (Provisional or Complete)

Once, you have made up your mind to go forward with the patent application
process, the next step is to prepare an Indian patent application (Form 1).

Each patent application has to be mandatorily accompanied by a patent specification

(Form 2). Based on the state of the invention, you can either file a provisional patent
application or a complete patent application (also known as Non-provisional in some
countries).

If the invention is still in the development mode and tests are underway, it is a good
idea to quickly file a provisional application to block the all-important filing date.
Filing of the provisional application gives you 12 months of time to test and finalize
your invention and file the complete application.

Whether filing a provisional or a complete application, extra special attention should

be paid to the patent draft included along with the application. The patent draft is
your representation in front of the patent office and the decision of the patent office
on the grant of the patent will be made based on the draft itself. Hence, not doing a
patent draft properly may lead to a patent application which doesn’t get a grant or if
granted doesn’t help you stop competitors effectively.

If you are serious about protecting your technology and getting an advantage in the
market, it is highly recommended to seek qualified assistance from patent
professionals, to ensure that your interests are appropriately protected.

It is best to work with a patent agent with the expertise and experience in working
and prosecuting patent applications in your area of technology. Since it may not be
very easy to find quality patent professionals for your area of technology, you can
seek free assistance from experts at Zatalyst.com in helping you finding quality
patent professionals and law firms for each and every patent requirement you may
have.

Step 3 – Filing the patent application in India

Patent filing in India can happen in the following scenarios:

o First filing in India – Once the patent application is drafted, the next step is
to file the patent application in India and secure the filing date. In case you
 are filing a provisional application first, you need to file the complete
application within 12 months from the provisional filing date.

o Foreign filing decision – Further, if you are interested in protecting your

invention in foreign jurisdictions, the maximum time allowed is 12 months
from your first filing date. Based on the countries you are interested in; you
can opt for filing a convention application in Paris convention
members individually in each of the countries you are interested in protecting
your invention. Alternatively, you can use the Patent Cooperation Treaty
(PCT) system to reserve your right in 140 odd member countries. Both the
systems have their pros and cons and the decision of choosing one over other
changes based on your requirement and will be the basis of another post.

 Foreign applications entering India – In another scenario where the patent

application was first filed in a foreign jurisdiction and the patent applicant is
interested in filing a patent application in India under the Paris Convention route
or the PCT route, the time limit to enter India is 12 months and 31 months
respectively.

Each application for a patent which is filed with the Indian patent office needs to be
accompanied by the forms provided below:

 Form 1 – Application for grant of a patent

 Form 2 – Provisional/Complete specification)
 Form 3 – Statement and undertaking regarding foreign application under section
8 (only required if a corresponding patent application is filed in another country)
 Form 5 – Declaration as to inventorship (only to be filed along with the complete
application)
 Form 26 – Form for authorization of a patent agent (only required if you are using
a patent agent to help you file the application)
 Form 28 – To be submitted by startup or small entity (only required if you are
claiming startup or small entity status)
 Priority documents – In case you are claiming priority from a foreign patent
application and entering India, you may be required to provide the priority
document as well.

Step 4 – Publication of patent application



o When is it published? – Every patent application which is filed with the

Indian patent office is kept as a secret until the time it is published in the
official patent journal. Indian patent office will publish patent applications
ordinarily after 18 months. This is an automatic event and you need not make
any request. However, if you wish to get your application published earlier,
you can make a request for early publication (Form 9) and your application
will ordinarily be published within 1 month of the request.

o The advantage of publication – The date of publication is important as your

privileges and rights start from the date of publication, although you can’t
enforce your rights by way of any infringement proceedings until your patent
is granted.

 When not published – It is also important to know that there are a few scenarios
under which a patent application may not be published and kept as a secret:
 o Secrecy directions have been imposed under the patent act. Secrecy
directions are imposed if the invention falls in a category publication of which
could be against the interest of the nation.
o A complete application was not filed within 12 months from the date of filing
of the provisional application
o A request for withdrawal was made. Such a request has to be made at least 3
months prior to publication. So, for practical purposes, it is 15 months from
the date of priority in a standard patent application process.

Step 5 – Examination of the patent application

Every patent application which is filed for protection has to be substantively
examined before a patent is finally granted. The examination process is where your
patent application will finally be examined on merits of the invention as described
and claimed in the patent specification.

Request for Examination

The examination process, unlike publication, doesn’t happen automatically by way

of filing of the Indian patent application. The applicant has to specifically make a
request for examining their patent application (Form 18). Only when a Request for
Examination (RFE) is received, will the application be queued for examination. So,
the earlier you make the RFE request, the earlier your application may be examined
by the examiner.

If you wish to fast track your patent application even further and jump the
examination queue, you can file a request for expedited examination (Form 18A).
However, an expedited examination is only available to the applicant if the applicant
is either a startup; or the applicant chose the Indian Patent Office as the International
Search Authority (ISA) or International Preliminary Examining Authority (IPEA)
during their international application (PCT application).

On the contrary, you may sometimes not want to get your application examined early
for strategic reasons. Reasons for deferring the request could include extending the
patent-pending life, waiting for funding, etc.

Examination process (Objections by examiner & responding to objections)

Once, the Request for Examination has been filed, it will eventually land up on the
desk of the examiner from the relevant technology background for examination.
During the examination process, the examiner will scrutinize the application to
ensure that the application is in accordance with the patent act and rules. The
examiner also performs a search to understand similar technologies to ascertain if
the invention would satisfy the patentability criteria.

Based on the review of the application, the examiner will issue an Examination
Report to the applicant, stating the grounds for objections. The first such
examination report is called the First Examination Report (FER).

Once, the FER is issued, the patent applicant needs to successfully overcome the
objections to receive a patent grant. The whole process may involve responding to
examination reports, appearing for hearing, etc. The total time needed to put an
application in order for the grant is 6 months (earlier 12 months) from the date on
which the FER is issued to the applicant. However, this 6 month period can be
extended for a period of 3 months by the applicant by filing a request for an extension
of time (Form 4).
Step 6 – Final decision on grant of patent
Once, the patent application overcomes all the objections, the patent will be granted
and published in the patent gazette.

Step 7 – Renewal
After the patent has been granted, it has to be renewed every year by paying the
renewal fee. A patent in India can be renewed for a maximum period of 20 years
from the patent filing date.

RIGHTS OF A PATENTEE UNDER PRODUCT AND PROCESS PATENT

A patent is a statutory grant conferring certain exclusive rights on the grantee for
adefined period, subject to certain conditions. In some respect it may be
considered as aspecies of property. A patent grant gives the patentee the
exclusive right to make or usethe patented article or use the patented process. As
a consequence flowing from this hecan prevent all others from making or using
the patented article or using patenting process.
A patent monopoly not only entitles
the holder to exploit the invention withoutcompetition during the period of
patent protection; it also enables him to enter themarket, on the expiry of the
monopoly in strong position.

A patentee has also the powerto assign the patent, grant licenses under, or
otherwise deal with it for any consideration.These rights created by statute are
circumscribed by various conditions and limitations.These rights created by
statute are circumscribed by various conditions andlimitations.

According to section 48 of the Indian Patent Act, 1970, a patent grantedunder this
Act shall confer upon the patentee:(a)
Where the subject-matter of the patent is product, the exclusive right to
preventthird parties, who do not have his consent, from the act of making, using,
offeringfor sale, selling or importing for those purposes that product in India.(b)

Where the subject-matter of the patent is a process, the exclusive right to

preventthird parties, who do not have his consent, from the act of using that
process andfrom the act of using, offering for sale, selling, or importing for those
purposesthe product obtained directly by that process in India.
Elements of the right:
1.

The right conferred under this section is an exclusive right, whether product
or process.2.

No third party can exercise the patentee‟s right without the patentees consent.
3.

The rights conferred, in respect of a product patent, are the act of making,
using,offering for sale, selling or importing for those purposes the patented
product inIndia.4.

In respect of a process patent, the act of using the that process, using, offering
forsale, selling or importing for those purposes the product obtained directly by
the process in India.5.

The product obtained by using the patented process is not one in respect of
whichno patent shall be granted under this Act.
PRODUCT PATENTS AND COMPULSORY LICENSING

The grant of a patent confers limited monopoly on the patentee to the exclusion ofothers. Though the
law permits this, it also takes into account the fact that the monopolygranted through a patent may be
abused and hence, provides for certain restrictions to itsenjoyment. The grant of compulsory license is
one such restriction imposed on theabsolute exploitation of a patent.

17

Compulsory License is regarded as a statutory

mechanism to effectively protect „public interest‟ from possible abuse of monopoly

bythe patentee. Section 84 of the Patents Act provides that after three years have passedfrom the date
of sealing of the patent, and application can be made to the Controller ofPatents by and interested
person for grant of a compulsory license to work the patentedinvention on the grounds that the
reasonable requirements of the public with respect tothe patented invention have not been satisfied or
that the patented invention is notavailable to the public at a reasonable price. Article 31 of the TRIPs
Agreement providesfor such use without the authorization of the right holder. Though the TRIPs
Agreementemphasizes on obtaining authorization from the right holder on reasonable
commercialterms, it, nevertheless, does allow this circumstances of extreme emergency or in cases
or public non-commercial use. Section 92 of the Indian Patents Act, 1970 empowers theCentral
Government to grant compulsory licenses in special circumstances. Section 92Aempowers the Controller
to grant compulsory license for the manufacture and export
of patented pharmaceutical products to any needy country if compulsory license has beengranted in
that country.

If the Controller is satisfied that „reasonable requirements‟ of the publi

c with respectto the patented invention have not been satisfied or that the patented invention is
notavailable to public at a reasonable price, he may order the patentee to grant a license onsuch terms
as he deems fit. The Patents Act has the following grounds for invocation ofCompulsory Licenses:

The reasonable requirements of the public with respect to the patented inventionshave not been
satisfied.

Default of the patentee to manufacture in India the patented article, or not to givea license for the
manufacture of patented article the interests of the existing tradeor industry is adversely affected.
Patented invention is not available to the public at reasonable prices.

„National emergency‟ or „extreme urgency‟ or „public non

commercial use‟.

The amended provisions have broadened up the grounds for seeking CompulsoryLicenses. Difficulties
may arise in the interpretation of the meaning and extent of the

grounds on which Compulsory Licenses can be sought. The expressions „nationalemergency‟ and
„extreme urgency‟ are nowhere defined though it can be safely inferred

that these terms refer to situations of grave magnitude.

Summing Up
Developing countries focused only on Process Patents to increase innovation in
the economy, and to promote healthy completion and effective product pricing
models. In fact, Brazil is yet to recognise Product patents. The sole dependence
on process patents creates a dilution in the protection of an inventor’s right. It
leads to the invention of the same product, but through different processes.