RM Ipr Unit 5 Unit 5 Full Notes - Compress

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RM-IPR Unit-5 - Unit 5 full notes

Course: Research methodology and ipr (Rm4151) 122 documents
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UNIT 5 – PATENTS
Patents - objectives and benefits of patent, Concept, Features of Patent, Inventive Step, Specification,
Types of Patent application, Process e-filling, Examination of Patent, Grant of Patent, Revocation,
Equitable Assignments, Licences, Licensing of related patents, Patent agents, Registration of patent
agents.
PATENTS – INTRODUCTION
The history of Patent law in India starts from 1911 when the Indian Patents and Designs Act, 1911 was
enacted. The present Patents Act, 1970 came into force in the year 1972, amending and consolidating the
existing law relating to Patents in India. The Patents Act, 1970 was again amended by the Patents
(Amendment) Act, 2005, along with Patents Rules which stand recently amended with Patents
(Amendment) Rules, 2017, wherein product patent was extended to all fields of technology including food,
drugs, chemicals and microorganisms. After the amendment, the provisions relating to Exclusive Marketing
Rights (EMRs) have been repealed, and a provision for enabling grant of compulsory license has been
introduced. The provisions relating to pre-grant and post-grant opposition have been also introduced.
An invention relating to a product or a process, involving inventive step and capable of industrial application
can be patented in India. However, it must not fall into the category of inventions that are non-patentable as
provided under Section 3 and 4 of the (Indian) Patents Act, 1970. In India, a patent application can be filed,
either alone or jointly, by true and first inventor or his assignee. In the United States, patent laws were
introduced in 1760. Most European countries developed their Patent Laws between 1880 to 1889. In India
Patent Act was introduced in the year 1856 which remained in force for over 50 yea rs, which was
subsequently modified and amended and was called "The Indian Patents and Designs Act, 1911". After
Independence a comprehensive bill on patent rights was enacted in the year 1970 and was called "The
Patents Act, 1970".
Later, India became signatory to many international arrangements with an objective of strengthening its
patent law and coming in league with the modern world. One of the significant steps towards achieving this
objective was becoming the member of the Trade Related Intellectual Property Rights (TRIPS) system.
Significantly, India also became signatory of the Paris Convention and the Patent Cooperation Treaty on 7th
December 1998 and thereafter signed the Budapest Treaty on 17th December 2001.
OBJECTIVES:
Patent law is the branch of intellectual property law that deals with new inventions. Traditional patents protect
tangible scientific inventions, such as circuit boards, car engines, heating coils, or zippers. However, over time
patents have been used to protect a broader variety of inventions such as coding algorithms, business practices, or
genetically modified organisms.
Considering the significance of Patents and its positive image for the successful enterprises, there is a plethora of
international treaties and national laws to regulate the process and operation of Patents worldwide. Major
objectives are
 To Encourage Inventions
 To Breed Inventions
 To update industrial development by working of patented inventions on commercial scale
 To Avoid Reinventing wheel

BENEFITS:
 A patent gives you the right to stop others from copying, manufacturing, selling or importing your
invention without your permission.
 You get protection for a pre-determined period, allowing you to keep competitors at bay.
 Maximum protection is obtained for a fixed time period (20 years in India) thus helping to restrain
other competitors.
 It acts as a tool for International Trade.
CONCEPT:
Patent is a monopoly right given by the government to an inventor for a period of twenty years. Once
granted, a patent gives the inventor the right to exclude others from making, using, selling, importing or
offering for a sale of the inventor’s invention for the duration specified in the terms of patent. After twenty
years the patent falls under public domain there after anyone can use the invention without permission from
patentee. Invention can be any new article, composition of matter, machine, process or any new value
addition to the above said.
Patents are territorial rights, which means that an invention is only protected in the countries or regions
where patent protection has been obtained. In other words, if you have not been granted a patent with effect
in a given country, your invention will not be protected in that country enabling anybody else to make , use,
import or sell your invention in that country.Patent right can be shared whenever there are more than one
patentees. Patent rights can be
a) Licensed or sold for a commercial consideration.
b) A right to initiate legal proceedings against infringement.
c) The patentee can commercially exploit its potential without fear of copying or imitation without the
patentee’s permission during the term of patent.
Invention refers to the technical solution to a technical problem. It may be an innovative idea or may be in
the form of working model or prototype.
Innovation refers to the translation of the invention into a marketable product or process.
PATENTABILITY CRITERIA:
A new product or process which involves an inventive step and capable of being made or used in an industry
and should meet following criteria.
 Total novelty: The invention should be new with no public disclosures in any part of the globe or
through any other platform.
 Non-obvious invention: No skilled person in the relevant area of technology should be able to
decode your invention easily. Your invention should have a distinctive value-adding feature
compared to existing inventions in the same field
 Business or industrial application: The newly invented product or process should have a wide
range of industrial utilities with positive economic implications.
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The following inventions will not be construed as patentable:
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 Inconsequential inventions defying conventional

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 Inventions that intend to cause disruptions to public order, challenge moral grounds and cause harm
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 Further, the discovery ofShare
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theories, and variants of products or processes with no value-adding economic benefits
 All artistic creations including music, theatre, cinema, web series, and television works
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 The mere arrangement, rearrangement, mixing, or duplication of substances
 Nuclear energy inventions Become Premium to unlock
 Additionally, the creation of hybrid varieties of plants and animals

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 Generic or new rules for playing a game or pulling off a mental act
 Different ways of presenting information or data
 Configuration of integrated circuits.
FLOWCHART OF PATENT GRANTING SYSTEM

FLOW CHART OF TRADEMARK APPLICATION FILING UPTO ACCEPTANCE
INVENTIVE STEP
For an Invention to be Granted or Registered as a Patent, an Inventive Step/Non-Obviousness is one of the

criteria that has to be fulfilled by the Invention for qualifying as a Patentable subject matter. Almost every
Patent Office examines the applied Patent Application based on the Inventive step or Non-Obviousness.
Some Patent offices use the term Inventive Step while others use Non-Obviousness. However, the yardstick
for determining inventive step/non-obviousness slightly differs country wise.
The philosophy behind the Inventive step is that an Invention should not be a mere collection and
repackaging of existing information. In an Invention, the Inventive step involves technical advancement as
compared to the existing knowledge, it should not be based on an abstract idea. For example: if an Invention
for which a patent is sought is solving a problem by providing a solution which may be similar to a solution
conceived by a person skilled in the art who is working in the same field by applying his/her acquired
technical knowledge or by going through the existing literature, in that case the Invention will not be
considered as an Inventive in nature, since the solution to the problem is obvious to the person skilled in the
art. However, if the invented solution is better than the existing solutions in terms of efficacy or accuracy
etc. then such a solution may be deemed to have an inventive step. Please find below the yardstick for
determining non-obviousness:
1) According to Indian Patent Law, "inventive step" means 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.
2) According to European Patent Law, an invention shall be considered as involving an inventive step
if, having regard to the state of the art, it is not obvious to a person skilled in the art. If the state of
the art also includes documents within the meaning of Article 54, paragraph 3, these documents shall
not be considered in deciding whether there has been an inventive step.
3) According to US Patent Law, a patent for a claimed invention may not be obtained, notwithstanding
that the claimed invention is not identically disclosed as set forth in section 102, if the differences
between the claimed invention and the prior art are such that the claimed invention as a whole would
have been obvious before the effective filing date of the claimed invention to a person having
ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by
the manner in which the invention was made.
ROLE OF PATENT OFFICE FOR FINDING INVENTIVE STEP:

All the major Patent Offices examine the applied Patent application on the basis of Inventive step as one of
the criteria for granting of a Patent. Examination of filed Patent application is a tedious task and the Patent
office applies different methods for the examination of Inventive step. For example, Indian Patent Office
may identify the presence of technical advance as compared to the existing knowledge or having economic
significance or both, European Patent office may apply Could-Would approach, USPTO may apply the
principles developed through landmark judgments such as Teaching Suggestion Motivation (TSM) test,
depending upon the matter disclosed in the Patent Application. Patent rights create substantial benefits for
the inventor; these should not be handed to everyone who uses his/her knowledge and training to draw only
basic conclusions from existing knowledge. Patent Rights are a reward for the execution of exceptional ideas
and are meant to encourage out-of-the-box thinking.From the above discussion, it can be concluded that the
Inventive step is an indispensable criterion for judging an Invention for granting of a Patent. It is imperative
that an Invention should have technical advancement as compared to the existing knowledge and it should
not be a mere workshop improvement. Therefore, Inventive step should be ascertained in order to avoid the
rejection of the patent application during office action.
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PATENT SPECIFICATIONS
The Content of complete specification includes abstract, field of the invention, background of the invention,
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prior art of the invention, summary of the invention, detailed description of the drawing, and claims etc. Fee
₹1000 in case of individuals and ₹4000 in case of legal entities.There are three types of patents:
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Utility patents: may be grantedShare
to anyone who invents
your documents to unlock or discovers any new and useful process, machine,
article of manufacture, or composition of matter, or any new and useful improvement.
Design patents: may be granted to anyone who invents a new, original, and ornamental design for an article
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Plant patents: may be granted to anyone who invents or discovers and asexually reproduces any distinct
and new variety of plant. Already Premium? Log in
TYPES OF PATENT APPLICATION
1. Ordinary or Non-Provisional Application

2. Convention Application
3. PCT International Application
4. PCT National Phase Application
5. Patent of Addition
6. Divisional Application
1. Ordinary or Non-Provisional Application: Ordinary or Non-Provisional application is filed if the

applicant doesn't have any priority to claim or in a case where the application is not filed in pursuance of any
preceding convention application. Non0 provisional application, when filed, must be supported by a
complete specification depicting the invention in detail.
2. Convention Application: A convention application is filed for claiming a priority date based on the same
or substantially similar application filed in any of the convention countries. The applicant is required to file
an application in the Indian Patent Office within a year from the date of the initial filing of a similar
application in the convention country.
3. PCT International Application: A PCT Application is an international application to streamline patent

application process in many countries at one go. It is governed by the Patent Corporation Treaty and can be
validated in up to 142 countries.
4. PCT National Phase Application: A national phase application is filed in each of the country wherein
the protection is sought. The national phase application must be filed within 30 or 31 months from the
priority date or the international filing date, whichever is earlier.
5. Patent of Addition: The applicant can file a patent of addition if there is a modification of the invention
which has already been applied for or patented. A patent of addition can only be granted after the grant of
the parent patent; hence, no separate renewal fee is to be remitted during the term of the main patent.
6. Divisional Application: Divisional application is filed if the applicant wishes to divide an application to
furnish two or more applications if a particular application claims for more than one invention. The priority
date for divisional application is similar to that of the parent application.
PROCESS OF E-FILLING
Patent Filing Procedure in India

Drafting a Patent Application
Now that you have confirmed the patentability of your invention, the next step is to start your patent
application process.So what is the first form you need to fill? The first form to be filled in is Form 1 – the
most basic application for a grant of patent. Additionally, ensure to attach all the necessary information and
affix your signature.
Now, the next step is to complete Form 2. Depending on the status of your ‘invention’ (partially or fully
completed) you may either apply for provisional or complete patent specification through this form.
However, please note that in case you apply for provisional specification, you have just 12 months in your
hand to finish your invention and provide the complete specification. In fact, the inability to adhere to this
timeline leads to the cancellation of your patent application.
A patent draft also needs to be submitted along with the application form. It should contain information on
the following:
 A title for your invention with a summary of the same
 References to similar patent applications
 Declaration of any government grants received for R&D purposes
 Further, names of all entities who contributed to the invention with their contact details
 A complete description of your invention
 Patent drawings
 Patent scope
 An abstract of public disclosure of the invention
 Sequence lists, if applicable
 An oath/declaration duly signed by you.
Next, you have to fill in Form 3 if you have applied for a patent in some other country as well. Thereafter, in
case, you are applying for patent protection for your startup or are claiming small entity status, you need to
fill in Form 28. In addition to all the above forms, you also need to complete the inventorship, declaration
through Form 5.
Payment of Application fees: The patent application charges payable are listed in detail in the First
Schedule. Be cognizant of additional charges applicable, if any.
 Publication of Application: The Indian Patent Office publishes all patent applications in an official
patent journal. If you want to expedite the publishing process, you need to submit Form 9.
 Scrutiny of Patent Application: To initiate the patent application examination by a patent officer,
you need to submit Form 18. Post Form 18 submission, the officer will scrutinize your invention and
issue a FER (first examination report).
 Grant of Patent: A patent will be granted when you successfully resolve all queries and objections
by the examiner.
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FLOWCHART FOR ACCEPTANCE OF PATENT
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EXAMINATION OF PATENT
Patent Examination Procedure In India
Missing the deadline for filing request for examination can prove fatal for the patent application. Since it is
absolutely clear that missing the deadline, would eventually kill the patent application. If the request of
examination is made within the prescribed time limit, the Indian Patent office takes up the application for
examination.
The normal Requests for Patent Examination can be filed within a period of 48 months from the priority date
(date of first filing of the invention, can be provisional patent or complete patent / non-provisional patent) or
date of filing of the patent application whichever is earlier. If the patent examination request is not filed within
the specified time limit the patent application shall be treated as withdrawn by the Indian Patent Office. It is
mandatory under Indian Patent Act 1970, to file a request for patent examination as per the prescribed timeline.
As per the Patent Act 1970, only after submission of such request a formal patent examination process shall
commence.
An express request for examination before expiry of 31 months can be made with respect of the applications
filed under Patent Cooperation Treaty (PCT) known as National Phase applications by payment of the official
fee. There is another provision of expedited examination, in which the patent applications which requested for
expedited examination will be put in a queue separate from the patent applications for ordinary examination.
Ordinarily, within one month from the date of a request for examination, the Controller is required to refer the
application to an examiner. Further, the examiner is then required to prepare the Examination Report within one
month, but not exceeding three months from the date of reference for such examination by the Controller. On
the other hand, upon a request for an expedited examination, the examiner will be required to give the
Examination Report within one month, but not exceeding two months from the date of reference for
examination by the Controller.
The provision of expedited examination is available for startups and applicants who have included India, in
their PCT application as an International Searching Authority (ISA) or International Preliminary Examining
Authority (IPEA). Therefore, selecting India as ISA can be beneficial to expedite the grant process.
An early publication request can be made along with prescribed fees if one does want to wait, till the expiry
of 18 months from the date of filing for publishing the patent application.
Generally the patent application is published within a month after request for early publication.
Why do I have to file Request for Examination in India?
The Process of examination starts with filing a request for examination. Unlike publication, this is not an
automatic process. Only after receiving the Request for Examination (RFE) the controller transfers the patent
application to the patent examiner. The request for examination has to be made within 48 months from the date
of priority or filing whichever is earlier.
The patent examiner examines the patent application, and prepares the examination report on the basis of
various patentability criterias like:
 Patentable subject matter;

 Novelty;
 Inventive step;
 Industrial application; and
 Specification Enablement
Other responsibilities of the patent examiner for examination of a patent application include:
 To conduct comprehensive investigation of an application and prepare a report under section 12;
 To conduct an inter-office search covering all four patent offices;
 To raise objections rather than comment on missing forms.
 The Examiner's report will: Be a permanent part of a file's note sheet and non-editable at the Controller's
end; Include a draft summary/gist of objections-this gist editable at Controller's end; Include any
amendments to the complete specification;
Who can file the Request for Examination in India and How?
In India a request for patent examination (RFE) may be filed by:
 the patent applicant of the patent application or

 by any other interested person
Request of Examination is filed by filling Form 18. The interested person (third party) has to submit appropriate
evidence of his interest in the particular patent application.
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Form-18 has to be filed, specifying the details of the patent applicant or other interested person, application
number, title, date of filing and publication date along with the prescribed fees.
It is very significant to follow the patent office timelines. Otherwise it is advisable to file the request for
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For a national phase application /PCT international Logentering
application in India it is advised to file an express
request for patent examination before the expiry of 31 months.
What is First Examination Report under the Patent Act?
Once the patent application is examined, the Patent office issues an examination report to the patent applicant
which is generally known as First Examination Report (FER). The examiner submits this to the controller. It
usually contains prior arts similar to claimed invention. Prior art here means existing documents before the date
of filing, similar to claimed invention. It need not be commercially available. It is just evidence which proves
that the claimed invention is already known
The Applicant should reply the objections (if any) and place the application in order for grant within 12
months from the date of issue of the FER (First Examination Report). In this case too, if the reply to the
examination report is not made within prescribed time limit, which is 12 months, the application is deemed to
be abandoned.
In case, the patent application is found to be in order for grant, the patent is granted, if there is no pre-grant
opposition filed or pending by a third party.
The prescribed fee for e-filing is given below:
Particulars Individual Small Other than Small

Entity Entity
Normal application for patent 4000 10000 20000
Request of examination of National Phase applications for patent 5600 14000 28000
Request of expedited examination of International Application for 8000 25000 60000

patent
Request for conversion from ordinary examination to expedited 4000 15000 40000
examination.
GRANT OF PATENT
Where to apply?
Application for the patent has to be filed in the respective patent office as mentioned below.
The territorial jurisdiction is decided based on whether any of the following occurrences falls
within the territory:
a) Place of residence, domicile or business of the applicant (first mentioned

applicant in the case of joint applicants)
b) Place from where the invention actually originated.
c) Address for service in India given by the applicant when he has no place
of business or domicile in India
A foreign applicant should give an address for service in India and the jurisdiction will be
decided upon that. An applicant (Indian or foreigner) also can give his Patent Agent’s address
as address for serving documents, if he/she so wishes.
How to apply ?
Steps Involved in Obtaining a Patent
 To file an application for patent accompanied with either a provisional

specification or a complete specification
 To file complete specifications , if provisional application was submitted
earlier
 Examination of the application by patent office
 Acceptance of applications and publication in the gazette of accepted
applications
 Responding and satisfactorily overcoming the opposition/objections , if
any, to the grant of patent
 Sealing of patent
Application for patent (Form 1) in duplicate should be accompanied by the documents as

indicated below. The fee (Rs.1000/- for natural citizen of India or Rs.4000 /- for other than a
citizen) can be paid within one month. Other details of the fee payable for different purposes
are given in the Appendix -3. The details about various applicable forms for filing patents are
given in the Appendix – 4.
a) Application for Grant of Patent (Form 1)

b) Provisional or Complete Specification (Form 2) and drawings (if any) in
duplicate
c) Statement and undertaking regarding foreign filing details in respect of the
same invention (Form 3)
d) Declaration as to Inventorship (Form 5) (In the case of a Convention
Application and PCT National Phase Application and filing Complete after
Provisional)
e) Priority document (if it is a Convention Application)
f) Power of Attorney (Form 26) (if the application is made through a patent
agent)
g) Proof of Right if the application is made by the assignee (Proof of right to
apply can be produced either in the body of the application (Endorsement
in Form1) or by way of a separate assignment deed.
Why ‘Provisional’ Specification ?
When the applicant finds that his invention has reached a presentable form, then he may
prepare a disclosure of the invention in the form of a written description and submit it to the
patent office. This disclosure is called a Provisional Specification. Application for
Provisional Specification has to include the natureof the invention. This gives a priority to
the applicant over any other person who is likely to file an application for patent in respect
of the same invention being developed concurrently in some other part of the world.
Immediately on receiving the provisional specification the patent office accords a filing date
for the application and gives a period up to twelve months for filing the Complete
Specification during which the applicant can fully develop his invention.
 Complete Specification
Complete Specification is a techno-legal document that fully and particularly describes the
invention and the best method of performing it. It should start with a preamble “The
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following specification particularly describes the nature of this invention and the manner in
which it is to perform.” It should contain the following in not more than 30 pages beyond
which each page is chargeable as given in the first schedule.
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 A Title Become Premium to unlock
The title should give a fair indication of the art or industry to which the invention relates. It
should be brief and as precise and definite as possible. The following are not allowable in the
title: — a) The inventor’s name b) The word ‘Patent’ c) Words in other languages d) The
abbreviation “etc.” e) Fancy words, e.g., “Wash Well Soap”, “Universal Rest Easy Patent
Chair”.
 Field of the invention.
The description should preferably begin with a short general statement of the invention so as
to show its scope, and to indicate briefly the subject matter to which the invention relates,
e.g. “This invention relates to..................................................................................................................... ”
 State of the Art in the Field
This part should indicate the status of the technology in the field of invention with reference
to experiments going on in the field, patents and pending patent applications in the specific art
with emphasis on the ‘prior art’ relevant to the invention. When the invention relates to an
improvement on an existing apparatus or process a short statement of closest prior art may
also be given.
 Object of the invention (Problem & Solution)
The purpose is to clearly bring out the necessity of the invention. It shall clearly specify the
technical problems associated with the existing technology and the proposed solution,
highlighting the obvious difference between the claimed invention and the prior art. The
solution sought by the invention should be clearly brought out with statements like “It has
already been proposed . . . . . . . . . . . . . . .. . . . . . . . . . ..” followed by the objects which the
invention has in view e.g. “The principal object of this invention is . . . . . . . . . . . . . . . . . .
. . . . . . . .”, “Another object of this invention is ”, “A further object of this invention is ”
etc.
 Statement of invention
The description should include a statement of invention before giving the details of the
invention and the method of performing it. The statement should clearly set forth the
distinguishing novel features of the invention for which protection is desired. This part is
intended to declare the different aspects of the invention verbatim with the claims and
complements to the omnibus claim in situations of infringement proceedings.- It usually
starts like “Accordingly the invention provides an apparatus consisting of ---------------------
------ which is characterized in that ---------------------- “. Other aspects and processes if any
also can be stated e.g. “There is also provided a method for performing “ etc.
 Detailed description of the invention with reference to the drawings.
The details of the invention described should be sufficient for an average personskilled in
the art to perform the invention by developing the necessary technicalknow how by
himself. It can include examples/drawings or both for clearlydescribing and ascertaining
the nature of the invention. Sufficient number ofexamples can be appended to the
description especially in the case of chemicalinventions. The following terms are
somewhat vague, and their use should beavoided from the description as far as possible:
— “Special”, “design”, “suitable”,“etc”. “Whereby”, “if desired”, “and/or”, “customary
methods”, “known methods”.Terms in other languages, if any, used in the description
should be accompaniedby their English equivalents. The use of vague slang words and
colloquialisms is Objectionable and should be avoided.
 Scope and/or Ambit of the Invention
This part of the specification should bring out the areas of application of the invention and
the preferable use of the invention. The applicant can substantiate the industrial applicability
of the invention in this part and call for the protection against duplication of the invention in
the related fields by specifying the scope and ambit. The advantages of the invention also can
be described in this part of the specification.
 Claims
The description in the Complete Specification need to clearly and succinctly state the
“Claims” proceeded by the prescribed preamble, “I claim” or “We claim”, as the case may
be. It shall preferably start from the next page after the full description of the invention with
the claims serially numbered. The purpose of the statement of Claims is to highlight with
conciseness, precision and accuracy asto how much of what is described in the specification
has been sought to be protected, implying thereby that what is not claimed is open to public
use. The claim or claims of a complete specification shall relate to a single invention, or to a
group of inventions linked so as to form a single inventive concept.
Statement of the form given immediately below is not to be regarded as
claims,in as much as they do not define the invention: —
a) I claim to be the inventor of this appliance.

b) I claim a patent and that no one else shall use my invention without leave.
c) I claim that the machine described above is quite new and has
never beenseen or used before.
Hierarchy of Officers in Patents Office
Controller General of Patents, Designs, Trademarks & GI
Assistant Controller of Patents & Designs

Examiners
of Patents
Deputy Controller of Patents & Designs and
Designs
Joint Controller of Patents & Designs
Senior Joint Controller of Patents & Designs
Working of Patents and compulsory Licensing
 Working of Invention
Patents are granted for the purpose of exploitation, which will enhance industrial
development and therefore should be worked in its fullest extent within theterritory of India.
S.83 of Patents Act provides that “Patents are granted toencourage inventions and to secure
that the inventions are worked in India on acommercial scale and to the fullest extent
reasonably practicable without unduedelay and they are not granted merely to enable
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patentees to enjoy a monopolyfor the importation of the patented article.”The patentee and
every licensee should furnish the details of working of the invention at every six months and
whenever required by the Controller (S. 146)
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 Revocation of patent for non-working (S. 85):
An application to the Controller for an order revoking the patent under section 85(1) may be
made after the expiry of 2 years from the date of order granting the first compulsory license.
The application shall be in Form 19 with the prescribed fee. Except in the case of an
application made by the Central Govt., the application shall set out the nature of the
applicant's interest and the terms and conditions of the license the applicant is willing to
accept.
REVOCATION
I. A Patent may be revoked by High Court on any of the grounds stated
hereafter, at any time during the life of the patent.
i) On the petition by any person interested or

ii) On the petition by the Central Government by the Appellate Board
iii) On a counter claim by the defendant in a suit of infringement.
In a suit for infringement under Sec. 104 the defendant’s counter-claim for
revocation of a patent, the High Court may revoke a patent without any
separate petition for revocation.
II. Grounds for Revocation
The following are the grounds of opposition
a) Invention claimed is the subject of prior grant

b) Patentee not entitled to the patent
c) Patent was wrongfully obtained by a person other than the person entitled:
d) Subject of a claim is not an invention
e) Invention is "lacking in novelty with regard to prior knowledge or prior use
f) Invention is obvious or does not involve inventive step having
regard toprior knowledge or prior use
g) Invention is not useful.
h) Invention is not sufficiently described.
i) Claim not clearly defined and not fairly based.
j) Patent was obtained by false suggestion or representation.
k) Subject of claims not a patentable invention.
l) Claimed invention was secretly used before the priority date.
m) Failure to disclose information regarding Foreign Application.
n) Non-compliance of secrecy direction.
o) Leave to Amendment of specification obtained by fraud.
p) Specification Wrongly Mentioning or Not Disclosing Geographical Origin.
q) Inventions is Anticipated by traditional knowledge
EQUITABLE ASSIGNMENTS
Any agreement including a letter in which the patentee agrees to give a certain defined share of the patent
to another person is an equitable assignment of the patent. However an assignee in such a case cannot have his
name entered in the register as the propertier of a patent. An assignment which does not fulfil the statutory
criteria for a legal assignment. An equitable assignment may be made in one of two ways:
 The assignor can inform the assignee that he transfers a right or rights to him.
 The assignor can instruct the other party or parties to the agreement to discharge their obligation to the
assignee instead of the assignor.
Only the benefit of an agreement may be assigned. There is no requirement for written notice to be given or
received. The only significant difference between a legal assignment and an equitable assignment is that an
equitable assignee often cannot bring an action in its own name against the third party contractor, but must fall
back on the rules governing equitable assignments and join the assignor as party to the action.
LICENSES
Compulsory Licenses (S. 84):

The provisions for compulsory licenses are made to prevent the abuse of patent as a
monopoly and to make way for commercial exploitation of the invention by an interested
person. Any interested person can make an application for grant of compulsory license for a
patent after three years from the date of grant of that patent on any of the following grounds –
a) The reasonable requirements of the public with respect to the patented invention
have not been satisfied.
b) The patented invention is not available to the public at a reasonably affordable
price.
c) The patented invention is not worked in the territory of India. The request for
grant of a compulsory license can also be made by a licensee of the patent.
Application for compulsory license should be made in Form 17 with the
prescribed fee of Rs.1500 for natural person and Rs.6000/- for other than natural
person with a statement setting out the nature of the applicant’s interest and the
facts upon which the application is based.
 Government Use of the Inventions
 Anytime after filing or grant of a patent, Government or any person authorized by

it can use the patented invention for the purpose of Government.
 If an invention is used before the priority date of the relevant claim of complete
specification by the Government or any person authorized by it for the purpose of
Government, then no royalty or remuneration need to be paid to the patentee.
 If an invention is to be used at any time after the grant of Complete Specification

by Government or any person authorized by it for thepurpose of Government, then
that use should be made only on terms agreed upon between the Government or
any person duly authorized and the patentee or in default of agreement be decided by
High Court under section 103.
 Government can authorize any person in respect of an invention either before or

after the grant whether or not the patentee authorizes that person.
 Where Government authorizes any person for using an invention for Govt.
purposes then unless it is contrary to the Public interest the Central Government
shall inform the patentee, from time to time, the extent of use of the invention for
the purpose of Government. In case of use by the undertaking, Government may
call for such information from the undertaking.
 The right to use the invention for the purpose of Government includesthe right
to sell the goods and the purchaser has the power to deal with the goods as if the
Government or the person authorized were thepatentee of the invention.
 In case of an exclusive licensee as per section 101 (3) or an assignor, Central

Government should also inform the exclusive licensee or assignor, as the case
may be, regarding the extent of use of inventionfor the purpose of Government.
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 In respect of an invention used by the Government for the purpose of Government,
any agreement, license of assignment etc. between the patentee or applicant and
any person other than the Government shall have no effect if the agreement
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restricts the use for the purpose
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respect of any use for thepurpose of Government.

 In relation to any use of the invention made for the purpose of Government by the
patentee to the order of Central Government any sum payable by virtue of section
100 (3) shall be divided between the patentee and the assignor in such proportion as
may be agreed upon or in default be decided by high Court under section 103.
 In case there is an exclusive licensee authorized under his license to use the
Invention for the purpose of Government the patentee shall share any payment
and such licensee in such proportion as agreed upon or, in default, is decided by
High Court under section 103.
 If necessary Central Government can acquire an invention from the applicant or

patentee for a public purpose, by publishing a notification to that effect in the
Official Gazette
 Notice of acquisition shall be given to the applicant or patentee, as the case may
be, and other persons appearing in the register as having interest in that patent.
 Compensation should be given by the Central Government to the concerned person

as agreed upon between them or in default be determined by High Court under
Section 103. Any dispute arising out of use of an invention by the Central
Government for the purpose of Government may be referred to the High Court by
either party to the dispute in such manner as may be prescribed by rules of High
Court under Section 103. Government may ask for revocation of patent or
raise an issue regarding the validity of the patent. In case the Government thinks
disclosure of any document regarding the invention will be prejudicial to the
public interest, then the Government can disclose confidentially to the advocate
of other party in any proceedingat any time at the High Court.
LICENSING OF RELATED PATENTS
(1) Notwithstanding anything contained in the other provisions of this chapter, at any time after the sealing of a
patent, any person who has the right to work any other patented invention either as patentee or as licensee
thereof, exclusive or otherwise, may apply to the Controller for the grant of a license of the first-mentioned
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patent on the ground that he is prevented or hindered without such license from working the other invention
efficiently or to the best advantage possible.
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(2) No order under sub-section (1) shall be made unless the Controller is satisfied-
(i) that the applicant is able and willing to grant, or procure the grant to the patentee and his licensees if
they so desire, of a license in respect of the other invention on reasonable terms; and
(ii) that the other invention has made a substantial contribution to the establishment or development of
commercial or industrial activities in India.
(3) When the Controller is satisfied that the conditions mentioned in sub-section (1) have been established by
the applicant, he may make an order on such terms as he thinks fit granting a license under the first-mentioned
patent and a similar order under the other patent if so requested by the proprietor of the first-mentioned patent
or his licensee.
(4) The provisions of sections 92 and 110 shall apply to licenses granted under this section as they apply to
licenses granted under section 84.
PATENT AGENTS
A patent agent, also known as a patent practitioner, is a professional licensed by the United States Patent and
Trademark Office (USPTO) to advise on and assist inventors with patent applications. Patent agents may
also provide patentability opinions and help with the preparation and filing of documentation related to patent
applications.
Patent agents assist inventors with completing and submitting all patent-application paperwork, searching for
prior art, writing the inventor's legally enforceable claims of ownership to the invention, revising rejected
patent applications, and deciding when it's best to abandon an application. In the U.S., there were over 48,000
people on the list of registered patent attorneys and agents in 2021, with over 36,000 of them also licensed to
practice law. Patent attorneys are patent agents who also practice law. The Patent Agent is required to be
registered for practicing as per Patent Rules, 2003. The Patent Agent is required to submit an application for
Registration as a Patent Agent in Form 22 before the Indian Patent Office . After the acceptance of the
application by the Indian Patent Office, the details of the registered Patent Agent should be added into the
Register of Patent Agent, which is maintained by the Controller. The Register of Patent Agent should include
all the details of the registered Patent Agent, which consists of the name, address, and other important
particulars related to the Patent Agent.
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REGISTERING OF PATENT AGENTS
What are the requirements of Register of Patent Agents?

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The Controller is required to maintain a Register of Patent Agents in accordance with Section 125 of the Patent
Act, 1970, read with Rule 108 of the Patent Rules, 2003. The particulars which are to be contained in the
Register of Patent Agents are as follows: Already Premium? Log in
 The name of the person registered as Patent Agent;

 The Nationality of the person registered as Patent Agent;
 The Address of the principal place of business and the addresses of branch offices of the person
registered as Patent Agent;
 The qualification and the date of Registration of every registered Patent Agent;
 The Details of the Renewal of Registration of Patent Agent and any other particulars which the
Controller considers fit and required to be included in the Register of Patent Agents. The fee should be
paid by the Patent Agent at the end of every financial year to continue with the Registration of Patent
Agent. The date to pay fee for continuation of the Registration of Patent Agent is generally considered
from the date of Registration as a Patent Agent. The Registration of Patent Agent should be renewed
every year after the first Registration. The fees for continuation of Registration for the next 1 year can
also be paid at the time of the first Registration of Patent Agent. On the official website, a notification
should be issued every year to provide the details of the mode for the payment of the fees and any other
details as required. The helpline number in case of any query with regard to payment of fees for the
continuation of Registration should also be provided on the official website.
 The Specimen of signatures and photographs of the persons registered as Patent Agents;
Furthermore, a copy of the Register of Patent Agents should be maintained in every Branch Office . The details
of the Patent Agents can also be maintained by the Controller in computer diskettes, floppies, or any other
electronic form. The details maintained in computer diskettes, floppies, or in electronic form are subject to
safeguards as may be prescribed in this regard. The details maintained should be accessed only by the person
duly authorized by the Controller, and no entry or modification of any entry or rectification of any entry in the
Register of Patent Agent should be made by any person who is not authorized by the Controller.
What is the Role of Patent Agent after Registration as a Patent Agent?
As per Section 127 and read with Section 129 of the Patent Act, 1970, every Patent Agent whose name is
entered in the Register of Patent Agents is eligible for the following rights:
 The person can practice before the Controller for:
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1. Obtaining or applying forUpload
Patents in India or elsewhere;
2. Preparation of specifications or any other documents required by the Patent Act, 1970, or required by
Patent Law of any other country;
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3. Giving guidance other than of technical
Become or scientific nature regarding the validity of Patents or Patent
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Infringement;
 The person is required to prepare all the documents related to Patent, manage all business and discharge
any other function as prescribed under the provisions of the Patent Act, 1970, in regard to, any
proceeding before the Controller.
There are primarily two restrictions imposed on a Patent Agent under Section 129 of the Patent Act, 1970 on a
patent agent. The restrictions on the Patent Agent are as follows:
 The person should not without registering himself/herself as a Patent Agent, that is unless the person
himself/herself and all of his/her partners are so registered as Patent Agent, should not either alone or in
any partnership with any other Patent Agent or practicing person, hold or describe himself/herself to be
a Patent Agent or permit himself/herself to be held out or described so as a Patent Agent.
 No Company or any other body corporate should practice, describe itself or hold itself out as a registered
Patent Agent or permit itself to be described or held out as a Patent Agent.
Furthermore, as per Rule 123 of the Patent Rules, 2003, if any person or a company contravenes the provisions
prescribed under Section 129 of the Patent Act, 1970, the person or the company should be punishable with fine
which can be extended to 1 lakh Rupees in case of the first offense and 5 lakh Rupees in case of the second
offense.
What are the grounds for Disqualifications for Registration of Patent Agent?
The Patent Rules under Rule 114 provides for the grounds of disqualification for Registration of Patent Agent in
India. The disqualifications are as follows:
 The person is declared of unsound mind by a competent court;

 The person is an undischarged insolvent;
 The person is convicted by any court within India or outside India should undergo an imprisonment for a
term, unless the person is pardoned for the committed offense or unless on an application made by the
person to the Central Government has removed the disability by passing an order in the behalf;
 Being a discharged insolvent, the person has not obtained a certificate to the effect that the insolvency
was caused by misfortune and there was no misconduct from his part;

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RM-IPR Unit-5 - Unit 5 full notes

Course: Research methodology and ipr (Rm4151) 122 documents

University: Anna University

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 To update industrial development by working of patented inventions on commercial scale

 To Avoid Reinventing wheel

 It acts as a tool for International Trade.

b) A right to initiate legal proceedings against infringement.

 Inconsequential inventions defying conventional

 Additionally, the creation of hybrid varieties of plants and animals

FLOWCHART OF PATENT GRANTING SYSTEM

For an Invention to be Granted or Registered as a Patent, an Inventive Step/Non-Obviousness is one of the

ROLE OF PATENT OFFICE FOR FINDING INVENTIVE STEP:

TYPES OF PATENT APPLICATION

1. Ordinary or Non-Provisional Application

1. Ordinary or Non-Provisional Application: Ordinary or Non-Provisional application is filed if the

3. PCT International Application: A PCT Application is an international application to streamline patent

Patent Filing Procedure in India

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Patent Examination Procedure In India

Why do I have to file Request for Examination in India?

 Patentable subject matter;

In India a request for patent examination (RFE) may be filed by:

 the patent applicant of the patent application or

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What is First Examination Report under the Patent Act?

The prescribed fee for e-filing is given below:

Particulars Individual Small Other than Small

Normal application for patent 4000 10000 20000

Request of expedited examination of International Application for 8000 25000 60000

a) Place of residence, domicile or business of the applicant (first mentioned

Steps Involved in Obtaining a Patent

 To file an application for patent accompanied with either a provisional

Application for patent (Form 1) in duplicate should be accompanied by the documents as

a) Application for Grant of Patent (Form 1)

Why ‘Provisional’ Specification ?

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 Field of the invention.

 State of the Art in the Field

 Object of the invention (Problem & Solution)

 Detailed description of the invention with reference to the drawings.

 Scope and/or Ambit of the Invention

a) I claim to be the inventor of this appliance.

Hierarchy of Officers in Patents Office

Controller General of Patents, Designs, Trademarks & GI

Assistant Controller of Patents & Designs

Senior Joint Controller of Patents & Designs

Working of Patents and compulsory Licensing

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i) On the petition by any person interested or

II. Grounds for Revocation

The following are the grounds of opposition

a) Invention claimed is the subject of prior grant