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Intellectual Property Rights: Submitted by

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23 views4 pages

Intellectual Property Rights: Submitted by

Uploaded by

Bhavadharani Sakthi
Copyright
© © All Rights Reserved
We take content rights seriously. If you suspect this is your content, claim it here.
Available Formats
Download as PDF, TXT or read online on Scribd
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Intellectual Property Rights

Submitted by:
S.Bhavadharani
A70621619005
BCom. LLB (H)
Sem IX

What is Patent Registration?

Patent Registration is a legal process which grants exclusive rights of ownership and usership to the
inventor of a product, service, or technology. As a result, the inventor gains monopoly over his
invention for the entire duration until the patent registration is valid. The Patent Registration
process is extremely crucial for inventors and businesses to protect their innovative ideas and
prevent others from using, selling, or manufacturing their inventions without permission or
authorization. In India, Patent registration is governed by the Patents Act of 1970, and administered
by the Indian Patent Office.

Procedure for Patent Registration in India

Patent Registration process can be completed in multiple stages, beginning from Patent Search to
the issuance of Patent Registration Certificate. These stages involve legal intricacies which can be
better handled by an experienced IPR Professional.
Here is a detailed explanation of the Patent Registration process in India:

Step 1: Patent Search


Patent Search is the first step of Patent Filing procedure in India and is conducted worldwide to
determine the novelty of an invention. Generally, it is considered safe to do patent searches before
patent application filing. If an invention is found in prior arts or closely resembling prior arts, then
the novelty of that invention can be challenged by the Indian Patent Office and the application can
be objected to. Therefore, it is important to perform prior patent searches to assess the chances of
your patent getting approved by the Patent Office.

Step 2: Drafting Patent Specification


After conducting thorough searches worldwide, the specification of the invention is written in a
techno-legal language with or without the inventor’s claims. Without claims is the provisional
specification and with claims is the complete specification. The specification outlines the field of
invention, detailed description of the invention with working examples, and the best method to use
the invention so that when it comes to the knowledge of a person skilled in the art, it can be easily
used. Legal protection to the patent is granted when the specification is drafted with the inventor’s
claim and is complete.

Step 3: Patent Application Filing


After drafting the Patent Specification, you can begin the procedure for Filing Patent Application in
India. As we discussed earlier, patent applications can be provisional or complete, based on the
specifications drafted. The drafted provisional or complete specification is filed in Form-2 while
Patent Application form is filed in Form 1 as prescribed by the Indian Patent Act. If a provisional
patent specification is filed, then within 12 months of its filing, a complete specification has to be
filed with the inventor’s claims. There are 6 different types of Patent Application forms which can
be filed on the basis of their purpose. These are:
• Ordinary patent application: Used to file a patent application directly in India, seeking
protection only within the Indian territory.
• PCT National phase patent application: Used to enter the national phase of PCT or Patent
Cooperation Treaty in India, after which the applicant will be allowed to seek patent protection
in multiple countries.
• PCT International patent application: Used to file a single patent application for patent
registration in multiple countries which are members of the PCT, providing a centralized
process for seeking patent protection internationally.
• Convention patent application: Used to claim priority based on an earlier application filed in
a convention country, allowing applicants to secure the priority date for their invention.
• Divisional patent application: Used to divide an existing patent application into multiple
separate applications, typically when the existing application contains multiple inventions.
• Patent of addition application: Used to file an application for an improvement or
modification of an already existing invention for which a patent has already been granted.
•
Step 4: Patent Publication for Public Opposition
Once the patent application process is complete, then after the expiry of 18 months from the date of
patent filing or date of priority whichever is earlier, the patent is published in an official journal and
is open for public viewing and inspection. This provides an opportunity to the general public to
raise an objection to the patent on valid grounds.

Step 5: Requesting Patent Examination


The patent application is examined only when a request for examination has been filed. The request
for examination has to be filed within 48 months of the patent filing date or date of the priority. The
patent examiner examines a patent application and issues an examination report. The examination
report contains a series of objections raised by an examiner. The response to an examination report
has to be filed within 12 months of the issuance of the examination report. If needed, the examiner
can call the applicant or his agent for a show cause hearing to resolve the objections. That’s why
this phase is also called patent prosecution.
Step 6: Grant of a Patent
After all objections to the examination report have been replied to and the examiner is satisfied with
the reply of the applicant, the application is put in order for grant of Patent Registration. This marks
the end of the procedure for registration of Patent. On the other hand, if the examiner is not satisfied
with the reply and arguments of the applicant, then he/she can reject the patent application. In this
case, the applicant will again have to repeat the entire patent procedure in India again to get patent
protection.

TERM OF PATENT:

In India, the term of the patent is addressed by section 53 of the Indian Patent Act. Section 53
provides for a term of 20 years from the date of filing for every patent granted and which has not
expired and has not ceased to have effect, after the commencement of the Patents (Amendment)
Act, 2002. The 2002 amendment was brought into effect from May 20, 2003. Prior to that date, the
term of a process patent was five years from the date of sealing or seven years from the date of
filing, whichever was earlier. The term of a product patent was 14 years from the date of the patent,
provided the product was not a pharmaceutical or an agrochemical product.

Since India did not allow for the grant of a product patent for pharmaceuticals until 2005, a
transitional facility (mailbox) was made available since 1995 for receiving and holding patent
applications relating to pharmaceutical products as required by Article 70.8 of the TRIPS
Agreement. These applications were to be examined only from January 1, 2005. It was observed
that generally the Indian applicant would file two applications with the Indian patent office, one of
which one would be a mailbox application. Both applications would usually claim the product as
well as the process. During the examination, the applicant would be required to delete the product
claims. The process claims, if found eligible for a grant, would be granted by the Patent Office. In
specific cases, where the process patent application was filed before May 20, 1996, and granted
before May 20, 2003, which is the effective date of the 2002 amendment, the process patent would
be valid for seven years from the filing date.

Though the omitted section 5(2) of the Indian Patent Act expressly prohibited the grant of product
claims for pharmaceuticals and agrochemicals before January 1, 2005, and directed such
applications to be filed as mailbox applications, there was no specific direction that a mailbox
application could not include process claims in addition to product claims. In cases where mailbox
applications included the product claims as well as the process claims, process claims retained as a
part of the mailbox application would be eligible for a term of 20 years from the filing date. Thus,
such process claims would enjoy a longer patent term of 20 years rather than the prescribed seven
years from the filing date for those process applications filed before May 20, 1996.
It is also to be considered that the term of patents filed in India is 20 years from the date of filing
irrespective of whether the application for the patent is accompanied by a provisional specification
or a complete specification. However, in the United States, the term of the patent is calculated from
the date of the filing of the complete specification, since 35 USC 154 (2) states that priority under
section 119, 365(a), or 365(b) shall not be taken into account in determining the term of a patent.
Thus the provisional application is not considered for calculating the term of the patent in the
United States. The term of a patent in the United States effectively is 21 years from the date of
filing of the provisional specification, whereas the term of the patent in India is 20 years from the
date of filing of the provisional specification.

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