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Intellectual property (IP)
Intellectual property (IP) refers to creations of the mind, such as inventions; literary and artistic works; designs; and symbols, names and images used in commerce.
IP is protected in law by, for example, patents, copyright, trademarks, Industrial designs, Trade Secrets and Geographical Indications (GIs), which enable people to earn recognition or financial benefit from what they invent or create. By striking the right balance between the interests of innovators and the wider public interest, the IP system aims to foster an environment in which creativity and innovation can flourish.
Complete specification i.e. Design/Process/Title
Name, address and nationality of inventors
Name, address and nationality of applicants
Power of Attorney
Assignment Deed or Application Form endorsed by the inventor (if the inventors are not the applicants)
* (All documents in Pdf scanned. Image file in jpeg format)
* (All documents to be Self Attested and signed on each page)
Drafting and Filing of Application for registration of device patent with the Indian Patent Office.
Collect information and documents
Prepare & Draft required documents about the complete patent application, detailed information about examination of the invention & its uses, with well-defined claims.
Drafting of Permanent patent application
Filing of the Permanent patent application complete
Tracking of the Patent Application
An invention is patentable subject matter if it meets the following criteria –
It should be a novel idea. The idea should not have been made public before the date of application
The product or process must be an inventive solution. It cannot be a solution that would be obvious to a manufacturer.
It should be capable of Industrial application.e. the invention should be capable of being manufactured.
It should not attract the provisions of section 3 and 4 of the Patents Act 1970.
A Patent is a statutory right for an invention granted for a limited period of time to the patentee by the Government, in exchange of full disclosure of his invention for excluding others, from making, using, selling, importing the patented product or process for producing that product for those purposes without his consent
The term of every patent granted is 20 years from the date of filing of application. However, for application filed under national phase under Patent Cooperation Treaty (PCT), the term of patent will be 20 years from the international filing date accorded under PCT.
Contd….
Contd…
The patent system in India is governed by the Patents Act, 1970 and the Patents Rules, 2003. The Patent Rules are regularly amended in consonance with the changing environment, most recent being in 2016.
Patent protection is a territorial right and therefore it is effective only within the territory of India. There is no concept of global patent. However, filing an application in India enables the applicant to file a corresponding application for same invention in convention countries or under PCT, within or before expiry of twelve months from the filing date in India. Patents should be obtained in each country where the applicant requires protection of his invention.
What types of inventions are not patentable in India?
An invention may satisfy the condition of novelty, inventiveness and usefulness but it may not qualify for a patent under the following situations:
1) an invention which is frivolous or which claims anything obviously contrary to well established natural laws;
2) an invention the primary or intended use or commercial exploitation of which could be contrary to public order or morality or which causes serious prejudice to human, animal or plant life or health or to the environment;
3) the mere discovery of scientific principle or the formulation of an abstract theory or discovery of any living thing or non-living substance occurring in nature;
4) the mere discovery of a new form of a known substance which does not result in enhancement of the known efficacy of that substance or 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;
5) a substance obtained by mere admixture resulting only in the aggregation of the properties of the components thereof or a process for producing such substance;
6) the mere arrangement or re-arrangement or duplication of known devices each functioning independently of one another in a known way;
7) a method of agriculture or horticulture;
8) any process for medicinal, surgical, curative, prophylactic (diagnostic, therapeutic) or other treatment of human beings or any process for a similar treatment of animals to render them free of disease or to increase their economic value or that of their products;
9) plants and animals in whole or any part thereof other than microorganisms but including seeds, varieties and species and essentially biological processes for production or propagation of plants and animals;
10) a mathematical or business method or a computer program per se or algorithms;
11) a literary, dramatic, musical or artistic work or any other aesthetic creation whatsoever including cinematographic works and television productions;
12) a mere scheme or rule or method of performing mental act or method of playing game;
13) a presentation of information;
14) topography of integrated circuits;
15) an invention which, in effect, is traditional knowledge or which is an aggregation or duplication of known properties of traditionally known component or components;
16) inventions relating to atomic energy;
When should an application for a patent be filed?
An application for a patent can be filed at the earliest possible date and should not be delayed. An application filed with provisional specification, disclosing the essence of the nature of the invention helps to register the priority of the invention.
Delay in filing an application may entail some risks such as
Who can apply for a patent?
A patent application can be filed either by true and first inventor or his assignee, either alone or jointly with any other person. However, legal representative of any deceased person can also make an application for patent.
How to apply for a patent?
A patent application can be filed with Indian Patent Office either with provisional specification or with complete specification along with fee as prescribed in schedule I. In case the application is filed with provisional specification, then one has to file complete specification within 12 months from the date of filing of the provisional application. There is no further extension of time to file complete specification after expiry of said period.
Types of Patent applications
A) PROVISIONAL APPLICATION Indian Patent Law follows first to file system. A provisional application is an application which can be filed if the invention is still under experimentation stage. Filing a provisional specification provides the advantage to the inventor since it helps in establishing a ―priority date of the invention. Further, the inventor gets 12 months’ time to fully develop the invention and ascertain its market potential and to file the complete specification.
B) ORDINARY APPLICATION An application for patent filed in the Patent Office without claiming any priority either in a convention country or without any reference to any other earlier application under process in the office. Such type of application is known an ordinary application.
C) CONVENTION APPLICATION An application for patent filed in the Patent Office, claiming a priority date based on the same or substantially similar application filed in one or more of the convention countries is known as a convention application. In order to get convention status, an applicant should file the application in the Indian Patent Office within 12 months from the date of first filing of a similar application in the convention country.
D) PCT INTERNATIONAL APPLICATION An Application filed in India as Receiving Office (RO) under Patent Cooperation Treaty is an international application which can be filed in more than 150 countries by a single application.
E) PCT NATIONAL PHASE APPLICATION When an international application is made according to PCT designating India, an applicant can file the national phase application in India within 31 months from the international filing date or the priority date, whichever is earlier.
F) PATENT OF ADDITION When an invention is a slight modification of the earlier invention for which he has already applied for or has obtained patent, the applicant can go for patent of addition if the modification in the invention is new. One of the benefits of filing patent of addition is that there no need to pay separate renewal fee for the patent of addition during the term of the main patent and it expires along with the main patent.
G) DIVISIONAL APPLICATION When an application claims more than one invention, the applicant on his own or to meet the official objection on the ground of plurality or distinct invention may divide the application and file two or more applications, as the case may be for each of the inventions. This type of application, divided out of the parent one, is known a Divisional Application. The priority date for all the divisional applications will be same as that of the main (the Parent) Application (Ante-dating).
Timelines for prosecution of a Patent Application
Filing of complete specification following provisional specification- Within 12 months of filing the provisional specification
Statement and undertaking regarding foreign applications (Form 3)- Within 6 months from the date of filing of application
Request for examination- Forty eight months from the date of filing or priority, whichever is earlier
Declaration of Inventorship (Form 5)- With the complete specification or within one month from the date of filing of the complete specification
Time for replying to the First Examination report (FER)- 6 months from the date of issuance of FER, extendable upto 3 months. Total 9 months
Pre- grant opposition (Form 7 A)-After publication of the application and any time before the grant of patent
Post-grant opposition (Form 7)-One year from the date of publication of grant of patent
Reference to deposit of biological material- Within 3 months from the date of filing of application
Furnishing information relating to working of patent (Form 27)- Working statements regarding the working of patented inventions in a calendar year is required to be submitted within 3 months from the end of every calendar year
Copyright, Patent and Trademark are all different types of Intellectual Property (IP). Although these three types of IP are very different, we often confuse them.
A copyright is a collection of rights automatically vested to you once you have created an original work. The power of copyright allows you to choose the way your work is made available to the public.
Patents incentivizes inventors to publicly disclose their inventions in exchange for certain exclusive rights. A patent protects inventions. In this respect the patent system compliments copyright protection by providing protection for functional aspects of the software, which are not protected by copyright.
“A trademark is a word, phrase, symbol, and/or design that identifies and distinguishes the source of the goods of one party from those of others. A service mark is a word, phrase, symbol, and/or design that identifies and distinguishes the source of a service rather than goods. Examples include brand names, slogans, and logos. (The term “trademark” is often used in a general sense to refer to both trademarks and service marks.)”
Similar to copyright, a person does not need not register a trademark or service mark to receive protection rights, but there are certain legal benefits to registering the mark. There is rarely an overlap between trademark and copyright law but it can happen — for instance, when a graphic illustration is used as a logo the design may be protected both under copyright and trademark.
Life Cycle of a Patent Application
There is no worldwide patent, the applicant has to file his patent application in respective countries separately to obtain protection on his invention. The following are the routes available to the applicant to file his International application in foreign country:
Paris Convention: The Paris Convention for the Protection of Industrial Property, established in 1883, provides for 12 months time to file the patent application in the member countries from the date of filing of the earliest application.
Patent Cooperation Treaty System: PCT is a system which allows an applicant to file in PCT contracting states within 30/31 months from priority date instead of 12 months. Not only does the PCT enable extended time period, it also simplifies filing procedure through a single application. The PCT system also provides for publication of application, International Search and International Preliminary Examination before entering the national phase.
Budapest Treaty
This is an international treaty governing the deposition of microorganisms, cell lines etc in international approved authority approved by WIPO for the purpose of patent applications in any country that is a party to it. Because of the difficulties and, on occasion, of virtual impossibility of reproducing a microorganism from a description of it in a patent specification, it is essential to deposit a strain in a culture collection centre for testing and examination by others. There are many international depositories in many countries, which are recognized under the Budapest Treaty. IMTECH, Chandigarh is a recognized depository in India.
Patent Cooperation Treaty (PCT)
The PCT is an international treaty with more than 150 Contracting States which are bound with certain formal requirements set out in the Treaty and Regulations. The PCT makes it possible to seek patent protection for an invention simultaneously in a large number of countries by filing a single ―international patent application instead of filing several separate national or regional patent applications however, granting of patents remains under the control of the national or regional patent offices after the corresponding ―national phase application has been filed and the national phase application is assessed as per patent law of that jurisdiction. As per Indian Patent Act 1970 as amended and the Patents Rules 2003 as amended by (amendment) rules 2016, any PCT international application may be filed designating India and it shall deemed to be an application if the corresponding national phase application has also been filed.
Procedure of PCT
The PCT procedure includes:
a. Filing: File an international application with a RO/IN national patent Office or directly with International Bureau (IB) of WIPO, complying with the PCT formality requirements and fees. In India PCT application are filed at appropriate patent offices decided on the basis of territorial limits (Rule 4, Indian Patent Act 1970 as amended and patent Rules 2003 as amended).
b. International Search: An ―International Searching Authority (ISA) identifies the published patent documents and technical literature (―prior art) which may have an influence on whether your invention is patentable, and establishes a written opinion on your invention‘s potential patentability. Indian Patent office, Delhi Branch performs the function of ISA on receipt of prescribed fee specified in Fifth Schedule of patent act 1970 as amended and patent rules 2003 as amended.
c. International Publication: After expiration of 18 months from the earliest filing date (Priority Date), the content of your international application is disclosed to the world.
d. International Preliminary Examination (optional): one of the ISAs on request carries out an additional patentability analysis, usually on an amended version of your application. Indian Patent office, Delhi Branch performs the function of International Preliminary Examination (IPEA) on receipt of prescribed fee specified in Fifth Schedule of patent act 1970 as amended and patent rules 2003 as amended.
e. National Phase: After the end of the international PCT procedure, usually at 30/31 months from the earliest filing date of your initial application, from which you claim priority, you start to pursue the grant of your patents directly before the national (or regional) patent Offices of the countries in which you want to obtain them.
f. In India, 31 months is maximum time limit to enter national phase. To enter national phase an application corresponding to an international application is made in Form 1.
Who has the right to file an international patent application under the PCT?
PCT international patent application may be filed by a national or resident of a PCT Contracting State. If there are several applicants named in the international application, only one of them needs to comply with this requirement.
Costs associated with the filing and processing of an international application under the PCT
What are the costs for entering the national phase?
PCT applicants generally pay three types of fees when they file their international applications:
(a) An international filing fee
(b) A search fee which can vary from ISA chosen, and
(c) A small transmittal fee which varies depending on the receiving Office.
Refer, Fifth Schedule of patent act 1970 as amended and patent rules 2003 as amended for fee structure for an international application designating India.
Time taken for PCT process
i. In most cases, up to an additional 18 months from the time you file your international patent application (or usually 30/31 months from the filing date of the initial patent application of which you claim priority) before starting of national phase procedures with individual patent Offices and to fulfil the national requirements.
ii. This additional time can be useful for evaluating the chances of obtaining patents and exploiting invention commercially in the countries in which you plan to pursue patent protection, and for assessing both the technical value of your invention and the continued need for protection in those countries.
iii. It is important to note, however, that you do not have to wait for the expiration of 30/31 months from the earliest filing date of your patent application (―priority date) before you enter the national phase – you can always request an early entry into the national phase.
iv. Since, in the national phase, each patent Office is responsible for examining your application in accordance with national or regional patent laws, regulations and practices, the time required for the examination and grant of a patent varies across patent Offices.
Benefits of Patent Registration
Documents Required
