Trademark, Patents, Copyrights and Designs

PATENTS


Patents are statutorily designed real life legal instruments aimed at protecting inventions. Inventions, in modern times, are the outcome of well-planned research and development. Patents act as economic incentives to inventors who put in intellectual labor to develop new and useful inventions.

A brief note on Patent Filing, Prosecution, Opposition, Grant and Litigation is as follows:

FILING

  1. Product patents in all fields of technology are allowed except for inventions relating to atomic energy and inventions for defense purposes. Accordingly, inventions in areas such as chemicals, food and pharmaceuticals hitherto entitled to process patents have now become eligible for product patent protection. However, salts, esters, ethers, polymorphs, metabolites, pure form, particle size, isomers, mixtures of isomers, complexes, combinations, and other derivatives of a known substance have been excluded from patentability unless they differ significantly in properties with regard to efficacy.
  2. A national phase application under Patent Cooperation Treaty (PCT) can be filed within 31 months of the priority date or filing date whichever is earlier. No extension of time is possible.
  3. An additional official fee is levied in all cases where the pages of specification exceed 30 and the number of claims exceeds 10.
  4. Official fee may be payable through 'electronic means'.
  5. An application shall ordinarily be published within one month from the date of expiry of 18 months from the date of filing of the application or the date of the priority of the application, whichever is earlier or one month from the date of request for early publication.
  6. The timeframe for filing a request for examination of an application filed on or after January 1, 2005 has been changed from 36 to 48 months from the date of the priority of the application or date of filing of the application, whichever is earlier. While the request for examination may be filed any time before such timeframe, the application shall be examined only after publication.
  7. Timeframe for furnishing proof of right has been increased from three months to six months after filing of the application.
  8. Timeframe for filing details of corresponding foreign applications is six months as opposed to three months from the date of filing of the application.
  9. Timeframe for filing prosecution details such as information relating to objections, if any, in respect of novelty and patentability of the invention or any other particulars on corresponding foreign applications increased to six months as opposed to three months from the date of communication from the Controller.
  10. No Indian resident can make an application outside India for the grant of a Patent for an invention unless an application for a patent for the same invention has been made first in India. Alternatively, a written permission may be sought from the Patent Office by filing a formal request. The Controller of Patents shall dispose of such application ordinarily within 21 days. If the invention is relevant for defense purpose or atomic energy, the Controller shall not grant permission without the prior consent of the Central Government.

 

PROSECUTION

  1. The first examination report is issued within six months from the date of the request for examination or six months from the date of publication, whichever is later.
  2. Timeframe for placing an application in order for grant has been increased to 12 months (non-extendable) as opposed to 6 months (extendable by 3 months) from the issuance of the First Examination Report.
  3. A 'new invention' means "any invention or technology which has not been anticipated by publication in any document or used in the country or elsewhere in the world before the date of filing of patent application with complete specification, i.e., the subject matter has not fallen in public domain or does not form part of the state of the art".
  4. An 'inventive step' is defined as a feature of an invention that involves technical advance as compared to the existing knowledge or having economic significance or both and that makes the invention not obvious to a person skilled in the art.
  5. A 'pharmaceutical substance' is defined as "any new entity involving one or more inventive steps".

 

OPPOSITION

A post-grant opposition can be filed within 1 year from the date of publication of grant of the patent. However, at the pre-grant stage, there is a provision for making a representation against the grant of a patent on a patent application anytime after the publication of the application and prior to the grant of the application. The Controller upon consideration of representation of the opponents shall give notice to the applicant along with copy of such representation. The period for filing the statement and evidence, if any, by the applicant has been increased from one month to three months from the date of such notice.

GRANT

  1. Requirement of payment of sealing fee has been dispensed with.
  2. The patent certificate is ordinarily issued within 7 days from the date of grant of patent.
  3. Term of a patent is twenty years from the date of filing of the application. In case of International Applications filed under PCT designating India, the term of a patent is twenty years from the International filing date accorded under PCT.
  4. Compulsory licenses can be granted (in line with the Doha Declaration) for export of medicines to countries which have insufficient or lack of manufacturing capacity for meeting public health emergencies.
  5. It is necessary to file statement of working every year after grant of a patent. While failure to file it does not result in lapse thereof, failure to furnish it - or to furnish information on a periodical statement regarding commercial working of a patent required by the patent office - is punishable with fine which may extend to Rupees one million. A patent needs to be worked if interim injunction is desired in infringement proceedings.

 

LITIGATION

  1. Common law rights are not available for patents. A patent is a territorial right and has to be formally granted in India before any action for infringement can be initiated.
  2. The damages in an infringement action can be claimed retrospectively from the date of publication and in the case of Black Box applications, damages can be claimed only from the date of grant.
  3. A patent holder in respect of a Black Box application is prohibited from instituting an infringement suit against enterprises which have made a significant investment and were producing and marketing the concerned product prior to January 1, 2005 and which continue to manufacture the product covered by the patent on the date of grant of the patent. The patent holder shall only be entitled to receive reasonable royalty from such enterprises.
  4. The following are useful to establish infringement:

 

  1. Product inserts
  1. Expert analysis (tests) along with affidavit/s of technical person(s) (plaintiff's or third party)

 

  1. Conduct of defendant (such as opposing grant of the patent, filing writ against Controller's decision etc.)
  1. Reliefs granted by courts in infringement proceedings include injunction, damages and delivery-up/destruction of goods.
  2. With effect from April 02, 2007, an appeal shall lie to the Appellate Board instead of High Court from the decision, order or direction of the Controller of Patents.

 

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