Download - Patent Regulations in India
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Patent RegulationsIn India
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INTRODUCTION
A patent is a set of exclusive rights granted by a state (national
government) to an inventor or their assignee for a limited period of
time in exchange for a public disclosure of an invention.
The procedure for granting patents, the requirements placed on the
patentee, and the extent of the exclusive rights vary widelybetween countries according to national laws and international
agreements.
Typically, however, a patent application must include one or more
claims defining the invention which must be new, non-obvious, and
useful orindustrially applicable. In many countries, certain subjectareas are excluded from patents, such as business methods and
mental acts.
The exclusive right granted to a patentee in most countries is the
right to prevent others from making, using, selling, or distributing
the patented invention without permission.
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REGULATORY BOARD OF
INDIA
Patent law in India is being regulated by Indian Patent and Trade Mark Office.
Controller GeneralofPatents, Designs & Trade Marks
Bhoudhik Sampada Bhavan,Near Antop Hill Head Post Office,
S.M. Road, Antop Hill, Mumbai-400037,Phones : 022-24132735, Fax : 022-24123322
Territorial Jurisdiction of Appropriate Office of Indian Patent Office for the Applicants
Mumbai - The States of Maharashtra, Gujarat, MadhyaPradesh, Goa and Chhattisgarhand the Union Territories of Daman and Diu & Dadra and Nagar Haveli
Chennai - The States of Andhra Pradesh, Karnataka, Kerala, Tamil Nadu and theUnion Territories of Pondicherry and Lakshadweep
New Delhi - The States of Haryana, Himachal Pradesh,Jammu and Kashmir, Punjab,Rajasthan, Uttar Pradesh, Uttaranchal, Delhi and the Union Territory of
Chandigarh
Kolkatta - The rest of India
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PATENT REGULATIONS IN
INDIA
LEGISLATION - The Patent system in India is governed by the Patents Act, 1970 (No39 of 1970) & The Patents Rules 1972, effective from April 20,1972.
ADMINISTRATION - The Patent Office, under the Ministry of Commerce & Industry,Department of Industrial Policy & Promotion, has been established to administer thevarious provisions of the Patents Law relating to the grant of Patents & The Designs
Law, relating to the registration of Industrial Designs.
MEMBERSHIP OF INTERNATIONAL TREATIES WIPO, WTO, Paris Convention,Patent Co-operation Treaty.
WHO CAN APPLY - Application may be made, either alone or jointly with another, bythe inventor, assignee, legal representative of deceased inventor or assignee. Theinventor is entitled to be mentioned in the patent if he applies to do so.
PATENTABLE INVENTIONS - An invention means any new and useful art, process,method or manner of manufacture; machine, apparatus or other article; or substance
produced by manufacture, and includes any new and useful improvement of any ofthem, and an alleged invention.
WHAT IS NOT PATENTABLE
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Contd
EXAMINATION & PUBLICATION 15
months
OPPOSITION 4 months
GRANT OR SEALING OF PATENT -payment of sealing fee within 6 months from the date of
advertisement. However, it is extendable by three months.
REGISTER OF PATENTS - Patents can beinspected or extract from it can be obtained on payment of prescribed fee.
Register of Patents contains full details of the Patent which include Patent
number, the names and addresses of the patentee; notification ofassignment etc.; renewals, particulars in respect of proprietorship of
patent etc.
RIGHTS OF PATENTEE
APPROPRIATE OFFICE FOR FILING AN
APPLICATION
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TYPES OF LICENSING IN
PATENTS
COMPULSORY LICENSEIf a company is interested in manufacturing a product that is under patent, it has
to prove that the reasonable requirement of the public for the product has not
been satisfied, or the particular product is not available at a reasonable price. In
such a case, the company is allowed to apply for a 'compulsory licence' after
three years of the grant of the original patent.
On failure to work a patent within three years from the date of its sealing, aninterested party may file petition for grant of a compulsory license.
LICENSE OF RIGHTEvery patent for an invention relating to a method or process for manufacture of
substances intended for use, or capable of being used, as food, medicines, or
drugs, or relating to substances prepared or produced by chemical process
(including alloys, optical glass, semi-conductors and inter-metallic compounds)shall be deemed to be endorsed "Licenses of Right" from the date of expiry of
three years from the date of sealing the patent.
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PRACTICAL ASPECTS
WORKING
ASSIGNMENT
LICENSE
DURATION
RESTORATION
RENEWAL FEE
DURATION
RESTORATION
RENEWAL FEE
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PATENT DATA VERIFICATION
IN INDIA: A CASE STUDY SITUATION
Mere payment of the renewal fee at the patent office is not sufficient to
enable the maintenance of the patent. It is vital to ensure that the
payment is made with the correct details to avoid either of the two
scenarios:
a. Patents becoming lapse; or
b. Payments being made twice over during the same year.
The likelihood of an incorrect annuity payment arises if any of the following
information (apart from the patent number) is missing/incorrect:
Complete application number.
Date of filing (as the term of payment is calculated from this date).
Accurate date of recordal, as the first set of annuity fee payment after
grant is calculated from this date; and
The details of the preceding year's payment, since it is the previous
year's payment that allows the current year annuity to be paid.
SOLUTION
Having Indian Companies with prolific experience at maintaining IP
portfolios step in is a viable solution to meet data verification needs for
annuity and patent maintenance. It is advisable that a corporation
through such agencies get the complete data verification done atleast
once for all the patents in their portfolio.
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CHALLENGES
Accurate calculation of the various points in the timeline [i.e. annuity fee
payment deadline, total number of extensions (if applicable), extended due
dates, restoration deadline etc.].
Timely delivery of the verification reports.
ADDRESSING THE CHALLENGES
User-friendly reporting structure that is indicative of:
the patent number
patent application number
date of filing
date of grant
date of recordal
complete name and address of the patentee
title of the invention
details of the previous annuity payments
next due date
information about the extension of time, if applicable
lapsed/ceased date
restoration deadline (if applicable) and others.
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BENEFIT
The detriment that may come about owing to a flaw in the information
regarding the patent may have consequences as grave as the lapse
of a patent. Conducting a Data Verification exercise vide the
Inspection of Register of Patents prior to making the payment brings
down the risk of such a loss of patent or a wrongful payment being
made to the minimum.
CASE IN POINT
a. Annuity due dates for forthcoming payments.
b. Patents which were in the extension period and the deadline in
that respect.
c. Patents which had surpassed the extension period.
d. Patents for which a restoration application could be filed and the
deadline for the same.
e. Patents which had surpassed the restoration period and had
consequently lapsed.
f. Applicable deadlines after extension in each of the scenario.
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Thanking You..
DeepakB
anageShashank Tyagi
Sunny Jain