PROJECT WORK

PATENT: AN INTRODUCTION

SUBMITTED TO: SUBMITTED BY:

Mr. Shailender Bhavya Singh (16RU11029)

Assiatant Professor Scholar

School of Law School of Law

Raffles University Raffles University

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TABLE OF CONTENTS

1. Introduction
2. What is Patent?
3. Patentability of Biotechnological Inventions.
4. What is not Patent?
5. History of Patent
6. Patent Office
7. Identification of Patent and Patent Applications.
8. Filing of Patent in India.

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INTRODUCTION

Patent, is a legal document granted by the government giving an inventor the exclusive right
to make, use, and sell an invention for a specified number of years. Patents are also available
for significant improvements on previously invented items.

The goal of the patent system is to encourage inventors to advance the state of technology by
awarding them special rights to benefit from their inventions. Books, movies, and works of art
cannot be patented, but protection is available for such items under the law of copyright. Patent
law is one branch of the larger legal field known as intellectual property, which also includes
trademark and copyright law.

Patent law centers round the concept of novelty and inventive step (or lack of obviousness).
The right which they accord is to prevent all others, not just imitators but even independent
devisors of the same idea from using the invention for the duration of the patent. The special
potential of a patent is accordingly that it may be used to prevent all others from including any
form of invention in their product and services. A patent thus poses serious difficulties for its
competitors. This is why patents are not freely available for all industrial improvements but
only what is judged to qualify as a patentable invention.

What is patentable?

To qualify for a patent, the invention must meet three basic tests. First, it must be novel,
meaning that the invention did not previously exist. Second, the invention must be non-
obvious, which means that the invention must be a significant improvement to existing
technology. Simple changes to previously known devices do not comprise a patentable
invention. Finally, the proposed invention must be useful. Legal experts commonly interpret
this to mean that no patent will be granted for inventions that can only be used for an illegal or
immoral purpose.

Some types of discoveries are not patentable. No one can obtain a patent on a law of nature or
a scientific principle even if he or she is the first one to discover it. For example, Isaac Newton

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could not have obtained a patent on the laws of gravity, and Albert Einstein could not have
patented his formula for relativity, E=mc2.

Under the law of the European Patent Convention (EPC), patents are only granted for
inventions which are capable of industrial application, which are new and which involve an
inventive step. An invention may be defined as a proposal for the practical implementation of
an idea for solving a technical problem. An invention is capable of industrial application if it
can be made or used in any kind of industry, including agriculture, as distinct from purely
intellectual or aesthetic activity.

An invention is said to be new if, prior to the date of filing or to the priority date accorded to
the application from an earlier application for the same invention, it was not already known to
the public in any form (written, oral or through use), ie it did not form part of the state of the
art. An invention is said to involve an inventive step if, in the light of what is already known
to the public, it is not obvious to a so-called skilled person, ie someone with good knowledge
and experience of the field.

Under the Indian patent law a patent can be obtained only for an invention which is new and
useful. The invention must relate to a machine, article or substance produced by manufacture,
or the process of manufacture of an article. A patent may also be obtained for an improvement
of an article or of a process of manufacture. In regard to medicine or drug and certain classes
of chemicals no patent is granted for the substance itself even if new, but a process of
manufacturing and substance is patentable. The application for a patent must be true and the
first inventor or the person who has derived title from him, the right to apply for a patent being
assignable.

Patentability of Biotechnological Inventions:

In view of the Office instructions of the Controller General of Patents, Designs & Trademarks
dated 15th July, 1991, view point regarding patentability of biotechnological inventions in
India is:

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(1) Inventions relating to organisms or biological material per se viz.-

(a) living entities of natural or artificial origin such as animals, plants and microorganisms,
biological material such as plasmids, viruses, gene, recombinant DNA, bacteria, fungi, algae
and other materials having self replicating properties and parts thereof,

(b) Naturally occurring substances from living entities, biological materials and also process
for their production, are not Patentable under the Act. Hence no claim is allowable for such
inventions.

(2) Inventions relating to process or methods of production of tangible and nonliving

substances like enzymes, antibiotics, insulin, hormones, interferon, alcohols, vaccines etc. by
bioconversion or using such microorganisms or by utilizing the above referred biologically
active substances as well as chemical substances produced by using genetically engineered
organisms or such existing substances made more economically by use of biotechnology and/or
microbiology are patentable under the Patent Act, 1970.

(3) While claiming the inventions in respect of above subject where strain/bacteria have been
used and deposited in depositing authorities and allotted their accession number, such
depositions or accession number should be followed by the characteristics of such strain or
bacteria.

Under U.S. law, the person who first invented the item receives the patent. If it is unclear who
invented the item first, the PTO decides who gets the patent in a proceeding known as an
interference. The losing party may then appeal the PTOs decision at the Court of Appeals for
the Federal Circuit, a specialized court in Washington, D.C., established to deal with patent
matters.

Under the United States law 4 types of patents can be issued viz., utility, design, plant and
provisional:

Utility patents may be granted to anyone who invents or discovers any new and useful process,
machine, article of manufacture, or compositions of matters, or any new useful improvement

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thereof. Design patents may be granted to anyone who invents a new, original, and ornamental
design for an article of manufacture. The term of a design patent is 14 years.

Plant patents may be granted to anyone who invents or discovers and asexually reproduces any
distinct and new variety of plant. Plant utility patent protection is available for biotechnology
processes, genes, seeds, plant parts, cultivates, and hybrids. Utility patents may also be obtained
on plants if the invention is new, useful, and not obvious.

Provisional patents allow applicants to inexpensively establish an early filing date, or

constructive reduction to practice, for an invention described in the provisional application
without starting the 20 year patent term clock. It can provide up to twelve months to further
develop the invention, determine marketability, acquire funding or capital, seek licensing or
manufacturing.

What is not patentable?

Some inventions cannot be patented. Under the law of the European Patent Convention (EPC)
the list of non-patentable subject-matter includes methods of medical treatment or diagnosis,
and new plant or animal varieties. Further information on such fields can be obtained from a
patent attorney. Nor may patents be granted for inventions whose exploitation would be
contrary to public order or morality (obvious examples being land-mines or letter-bombs).The
following are not regarded as inventions: discoveries; scientific theories and mathematical
methods; aesthetic creations, such as works of art or literature; schemes, rules and methods for
performing mental acts, playing games or doing business; presentations of information;
computer software.

Under the Indian law the following are non patentable (as mentioned under section 3 and 5 of
Indian Patents Act,

An invention which is frivolous or which claims anything obvious contrary to well established
natural laws. An invention the primary or intended use of which would be contrary to law or

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morality or injurious to public heath. The mere discovery of a scientific principle or the
formulation of an abstract theory.

The mere discovery of any new property or new use for a known substance or of the mere use
of a known process, machine or apparatus unless such known process results in a new product
or employs at least one new reactant.

A substance obtained by a mere admixture resulting only in the aggregation of the properties
of the components thereof or a process for producing such substance The mere arrangement or
re-arrangement or duplication of known devices each functioning independently of one another
in a known way. A method or a process of testing applicable during the process of manufacture
for rendering the machine, apparatus or other equipment more efficient or for the improvement
or restoration of the existing machine, apparatus or other equipment or for the improvement or
control of manufacture.

A method of agriculture or horticulture. Any process for the medicinal, surgical, curative,
prophylactic or other treatment of human being or any process for a similar treatment of
animals or plants to render them free of disease or to increase their economic value or that of
their products.

No Patent shall be granted in respect of an invention relating to Atomic energy. Claiming

substances intended for use, or capable of being used, as food or as medicine or drug Relating
to substance prepared or produced by chemical processes (including Alloys, optical glass,
semiconductor and inter-metallic compounds), no patent shall be granted in respect of claims
for the substances themselves, but claims for the methods or processes of manufacture shall be
patentable. The criteria under the US laws are also quite similar as above. Books, movies, and
works of art cannot be patented, but protection is available for such items under the law of
copyright.

History of Patents

The first patent law was passed by the city of Venice in 1474. It protected the interests of
inventors by assuring them the right to their inventions and prohibiting unauthorised copying.

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In 1624, the Statute of Monopolies was enacted in England. This allowed patents to be granted
for a limited period to the true and first inventor. The increasing number of national patent laws
led in 1883 to the conclusion of the Paris Convention, providing a guarantee of equal treatment
for patent applicants in all its member states. It was originally adopted by 20 countries from
around the world and has since been adopted by most others.

In addition, most of the worlds nations have signed several other treaties dealing with patent
issues during the 20th century. For example, more than 120 countries have signed the 1994
Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS). This treaty
strengthened legal protection for patents worldwide.

In the United States, patent law dates to 1641, when the first patents for inventions were issued
by the Massachusetts Bay Colony for the manufacture of salt. The Constitution of the United
States, which became effective in 1789, gave Congress the power to enact federal patent laws.
Congress adopted the first patent law in 1790 as one of its first actions. It has frequently
amended U.S. patent law since then. The current patent law was adopted in 1952 and is
administered by the U.S.

Patent and Trademark Office (PTO), an agency within the Department of Commerce. Despite
the early development of patent law in the United States, there was no central administrative
office to determine the validity of U.S. patents until the PTO was established in 1836. Since
then, the PTO has examined all applications for patents to decide whether they meet the
requirements of the patent laws.

The Patent Act, 1970 came into force on 20.4.1972 replacing Indian Patents and Designs Act,
1911. The Patents Act, 1970 in comparison with Indian Patents and Designs Act, 1911 has far
more reaching effect in some areas such as food, Drug and Medicines where all the patents
granted under this category and deemed to be endorsed with the words License of Right. India
has become a member of the Paris Convention and PCT w.e.f. 7.12.1998 and by virtue of this,
the Head Office of Patent Office & its Branch offices have become receiving offices for the
purpose of international applications filed under PCT.

In view of these developments, the Patents Rules, 1972 have been amended by incorporating a
new chapter IIA dealing with international application which can be filed at Head office of the
Patent office at Calcutta or Branch Offices at Delhi, Chennai & Mumbai w.e.f. 17.11.99 as
applicable. The present Act under Chapter IVA provides specific provisions for the grant of

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EMR (Exclusive Marketing Rights) with a view to fulfill its international obligation under the
provisions of article 70.8 & 70.9 of TRIPs agreement which are in force w.e.f. 1.1.1995.

Patent Offices

A U.S. patent for an invention is the grant of a property right to the inventor(s), issued by the
U.S. Patent and Trademark Office. Despite the early development of patent law in the United
States, there was no central administrative office to determine the validity of U.S. patents until
the PTO was established in 1836. Since then, the PTO has examined all applications for patents
to decide whether they meet the requirements of the patent laws.

The right conferred by the patent grant is, in the language of the statute and of the grant itself,
"the right to exclude others from making, using, offering for sale, or selling" the invention in
the United States or "importing" the invention into the United States.

To get a U.S. patent, an application must be filed in the U.S. Patent and Trademark Office.
Since June 8, 1995, the United States Patent and Trademark Office (USPTO) has offered
inventors the option of filing a provisional application for patent which was designed to provide
a lower-cost first patent filing in the United States and to give U.S. applicants parity with
foreign applicants under the GATT Uruguay Round Agreements.

A provisional application for patent is a U. S. national application for patent filed in the USPTO
under 35 U.S.C. §111(b). It allows filing without a formal patent claim, oath or declaration, or
any information disclosure (prior art) statement. It provides the means to establish an early
effective filing date in a non-provisional patent application filed under 35 U.S.C. §111(a). It
also allows the term "Patent Pending" to be applied. A non provisional utility patent application
must be in the English language or be accompanied by a verified translation in the English
language and a fee set forth in 37 CFR §1.17(i).

Under the Indian Patents Act, 1970 sections 73-76 talk about Patent Office. It is the office
along with its branches established to administer various provisions relating the grant of patent
and maintenance of Register of patents under the Act. The Head Office of Patent Office is
located at Calcutta and branch offices are located at Mumbai, Delhi & Chennai.

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The Patent Office is under the charge of Controller General of Patents, Designs & Trade Marks
who is the Controller of Patents for the purpose of the Act. The Central Government has power
to specify for the purpose of facilitating the registration of Patents, the establishment of Head
Office and branch offices at the places it may think fit. The Patent Offices and branch offices
shall have seal of Patent Office. The Patent office and its Branches are having territorial
jurisdiction on a zonal basis as given in the introduction chapter.

Officers and employees of the Patent Offices, who are in service, are prohibited from requiring,
taking any right or interest in a patent issued by the office directly or indirectly except by
inheritance or bequest. The Officers and employees are also prohibited from furnishing
information on a matter which is being dealt with under the Act and from assisting in the
preparation of a document to be filed in the Patent Office under the Act or for conducting a
search in the Patent office records except when required or authorized by this Act or under the
directions in writing of Central Government or Controller or by order of a Court.

The European Patent Office (EPO) grants European patents for the contracting states to the
European Patent Convention (EPC), which was signed in Munich on 5 October 1973 and
entered into force on 7 October 1977. It is the executive arm of the European Patent
Organisation, an intergovernmental body set up under the EPC, whose members are the EPC.

contracting states. The activities of the EPO are supervised by the Organisations Administrative
Council, composed of delegates from the contracting states. The European Patent Convention
(EPC) makes it possible to obtain patent protection in up to 20 European countries on the basis
of a single application. The applicant decides which countries the European patent should
cover. European patents are granted by the European Patent Office (EPO) using a unitary and
centralised procedure conducted in one of its three official languages English, French or
German. They have the same legal effects as national patents in each country for which they
are granted. European patents are cost-effective and time-saving so as to obtain sound
protection in a range of European countries.

Identification of patents and patent applications.

An assignment relating to a patent must identify the patent by the patent number. An
assignment relating to a national patent application must identify the national patent application

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by the application number (consisting of the series code and the serial number, e.g.,
07/123,456). An assignment relating to an international patent application which designates the
United States of America must identify the international application by the international
application number (e.g., PCT/US90/01234).

If an assignment of a patent application filed under 1.53(b) is executed concurrently with, or

subsequent to, the execution of the patent application, but before the patent application is filed,
it must identify the patent application by its date of execution, name of each inventor, and title
of the invention so that there can be no mistake as to the patent application intended. If an
assignment of a provisional application under 1.53(c) is executed before the provisional
application is filed, it must identify the provisional application by name of each inventor and
title of the invention so that there can be no mistake as to the provisional application intended.

The patent or patent application to which an assignment relates must be identified by patent
number or application number unless the assignment is executed concurrently with or
subsequent to the execution of the application but before the application is filed. Then, the
application must be identified by the date of execution, the name(s) of the inventors, and the
title of the invention. If an assignment of a provisional application is executed before the
provisional application is filed, it must identify the provisional application by name(s) of the
inventors and the title of the invention.

The Office makes every effort to provide applicants with the application numbers for newly
filed patent applications as soon as possible. It is suggested, however, that an assignment be
written to allow entry of the identifying number after the execution of the assignment. An
example of acceptable wording is:

"I hereby authorize and request my attorney, (Insert name), of (Insert address), to insert here in
parentheses (Application number, filed) the filing date and application number of said
application when known."

Filling of patent in India

In India as per the Patent Act of 1970, an application for a patent may be made by the actual
inventor of the invention, or an assignee of the right to make an application or a legal
representative of either. It is the person who first applies for a patent who is entitled to the

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grant. A prior inventor of the invention who applies subsequently will not get the patent as
against the first applicant. A person who has merely communicated the idea to another, who
actually gave practical shape to the idea and developed the invention, cannot claim to be the
first and true inventor. A foreign national resident abroad is not prohibited from making an
application and obtaining a Patent in India.

An application for a patent in the prescribed form along with the prescribed fee should be filed
in appropriate office of the patent office. An application is required to be filed according to the
territorial limits where the applicant or the first mentioned applicant in case of joint applicants
for a patent normally resides or has domicile or has a place of business or the place from where
the invention actually originated. If the applicant for the patent or party in a proceeding having
no business places or domicile in India, the appropriate office will be according to the address
of service in India given by the applicant or party in a proceeding.

Patent Office Branch, Mumbai-

The States of Gujarat, Goa, Maharashtra, Madhya Pradesh and the Union Territories of Daman
and Diu and Dadra and Nagar Haveli

Patent Office Branch, New Delhi-

The State of Haryana, Himachal Pradesh,Jammu& Kashmir, Punjab, Rajasthan, Uttar Pradesh
and Delhi and the Union Territory of Chandigarh.

Patent Office Branch, Chennai-

The States of AndhraPradesh Karnataka, Kerala, Tamilnadu and Pondicheri and the Union
Territories of Laccadive, Minicoy and Aminidivi

Patent Office (Head Office), Kolkata - Rest of India

The application should be accompanied by a provisional or complete specification. A

provisional specification should describe the invention only briefly and need not contain the
claims. Where the application is accompanied by a provisional specification, a complete
specification should be filed within 12 months from the date of filing the application. If this is
not done, the application will deemed to be abandoned.

The complete specification should fully and particularly describe the invention and the method
by which it is to be carried out. It should disclose the best method of performing the invention
known to the applicant and end with a claim or claims defining the scope of the invention for

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which protection is claimed. The claim should relate to single invention. They should be clear
and be fairly based on the matter disclosed in the specification. The specification should be
accompanied by drawings where appropriate and necessary. The specification should relate to
single invention.

The application is examined by examiners of patents to see whether it complies with the
requirements of the Act and the Rules, whether there is any lawful ground of objection to the
grant of patent, and whether the invention has already been published or claimed by any other
person. The examiner makes a search in publications available in the Patent Office and
specification of prior applications and Patents to see whether the same invention has already
been published or claimed or is the subject matter of existing or expired patents.

After examination of the application, the Patent Office will communicate to the applicant, the
objections if any to grant of a patent. The objections generally relate to the drafting of the
specifications and claims, anticipation of any of the claims in prior publication of any
specification or claims, or documents. In many cases these objections can be overcome by
suitably amending the description of the invention and the claims and in some cases by
insertion of the reference to the prior specification number. If the objections are not
satisfactorily met, the Controller of Patents, after giving an opportunity of hearing to the
applicant will refuse the application.

Where the application has satisfactorily removed the official objections the controller will
accept the complete specification and advertise it in the Official Gazette. From the date of
acceptance to the date of sealing of the patent the applicant will get the benefits of the grant
except that he will not be entitled to institute infringement proceedings until the patents is
sealed. Any person interested may give notice of opposition within three months from the date
of advertisement in the Official Gazette. The Controller will forward the copy a copy of the
notice of opposition to the applicant who may file their evidence in support of their respective
cases and the matter will be heard and decided.

Where an application is accepted either without opposition, a patent will be granted if a request
for sealing is made by the applicant. An inventor, if he so desires, may make a request for
mentioning his name in the patent. The Controller, if satisfied, will cause his name to be
mentioned as inventor in the patent granted, in the complete satisfaction and in the register of
patents. The mention of the inventors name in the patent will not confer or derogate from any
rights under the patent.

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Under Indian law the term of patent is not the same for all kinds of invention as in most of
other developed countries. In respect of process patents relating to drugs and fruits, the term is
five years from the date of sealing the patents or seven years from the date of patent i.e. the
date of filing the complete specifications whichever is shorter. In respect of all other patents
the term is 14 years from the date of patent.

A patent can be kept alive only by paying the renewal fee from time to time. Also in case of
any improvement in or modification of a previous invention already patented, a patent called
patent of addition may be obtained. The term of the patent of addition will run concurrently
and terminate with the main patent. No renewal fee is payable so long as the main patent
remains in force.

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