Scribd
Upload
128 views24 pages

Basics of Patents: Nishith Desai Associates

A patent is a set of exclusive rights granted by a state to an inventor for a limited period of time in exchange for publicly disclosing an invention. To be patentable, an invention must be new, involve an inventive step, and be capable of industrial application. The protection granted by a patent is territorial and lasts for 20 years from the date of filing. A patent application goes through filing, publication, examination, and grant stages. A patentee's rights prevent others from commercially exploiting the patented invention without permission. A patent can be challenged before or after grant and may be subject to compulsory licensing after 3 years if certain conditions are not met.

Uploaded by

Gyan Prakash
Copyright
© © All Rights Reserved
We take content rights seriously. If you suspect this is your content, claim it here.
Available Formats
Download as PPTX, PDF, TXT or read online on Scribd
128 views24 pages

Basics of Patents: Nishith Desai Associates

A patent is a set of exclusive rights granted by a state to an inventor for a limited period of time in exchange for publicly disclosing an invention. To be patentable, an invention must be new, involve an inventive step, and be capable of industrial application. The protection granted by a patent is territorial and lasts for 20 years from the date of filing. A patent application goes through filing, publication, examination, and grant stages. A patentee's rights prevent others from commercially exploiting the patented invention without permission. A patent can be challenged before or after grant and may be subject to compulsory licensing after 3 years if certain conditions are not met.

Uploaded by

Gyan Prakash
Copyright
© © All Rights Reserved
We take content rights seriously. If you suspect this is your content, claim it here.
Available Formats
Download as PPTX, PDF, TXT or read online on Scribd
You are on page 1/ 24

Basics of Patents

Mumbai | Silicon Valley | Bangalore | Singapore | Mumbai-BKC | New Delhi | Munich

Nishith Desai Associates

What is a Patent
A patent is a set of exclusive rights granted
by a state to an inventor or their assignee
for a limited period of time in exchange for
a public disclosure of an invention
Patents Act, 1970 (Act)
A patent is a right granted in favor of the
patentee to use the invention to the
exclusion of all others
The protection granted is territorial

What is a Patent
Mandatory registration, otherwise there will
be no protection under the Act
The protection is granted for a period of
twenty years from the date of filing of the
patent application
Not renewable (inventions become public
domain after, term of patent (20 years in
most countries)
First to file system

What is an Invention
"invention" means a new product or
process involving an inventive step and
capable of industrial application
Invention
1. Should be a product or a process
2. Must be a new invention
3. Should have an inventive step
4. Capable of industrial application

What is a new invention


Under Section 2 (1) (l)"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 that it does
not form part of the state of the art;
5

What is a new invention


If the prior art contains a clear description
of instructions to do or make the invention
in question, that would infringe the
patentees invention than the invention is
said to have lack novelty
Has to be disclosed in a single enabling
reference

Inventive Step and Industrial Application


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
A person skilled in the art is someone who has
common general knowledge of the arts and
who has knowledge of the relevant literature
The invention has to be capable of being made
or used in a industry
7

Other requirements of patentability


The disclosure of the invention in a
complete specification must be such that a
person skilled in the art may be able to
perform the invention (Enablement without
undue experimentation)
Disclosure of best mode
Unity of invention A single inventive
concept has to be claimed

What are not Inventions


Section 3 provides a list of invention that are not
patentable such as
Frivolous inventions or inventions contrary to well
established natural laws. Example :- Perpetual machine
Discovery of a scientific principle or any living thing or
non living substance occurring in nature. Example:discovery of a new species of a animal or discovery of
new metal
The
mere discovery of a new form of a known
substance which does not result in the enhancement
of the known efficacy of that substance
Method of Agriculture or Horticulture. Example:Method of cultivation of a plant
9

What are not Inventions


A process for medicinal, surgical, diagnostic
treatment of human beings or animals. Example:Method to remove a cancer tumor
Plants & animals except micro organisms
Mathematical method. Example:- A method of
calculation, formulation of equations, finding
square roots
Business method. Example:- A method of
expediting online purchase. Excludes even if
technology is used
Algorithms
Computer programme per se
10

Who can apply for a patent


True and first inventor
Any person who is assignee of the true and
first inventor
Legal representative of the deceased
person who was entitled to make such
patent application
A person resident in India cannot apply for
a patent outside India without first applying
in India or without obtaining a written
consent from the patent office in India
11

Regular Patent document

Drawings
Front Page
Bibliographique data
References
Abstract

Specifications
Background of invention
Detailed Description
Claims

12

12

Patent Document - Content


Background section
Explaining what is already known
Objective of creating the invention

Need of the invention

Detailed Description
Explaining how the invention can be practiced by a
person skilled in the art

Claims
Define the scope of protection of the patent
Set out the essential features of the invention

Drawings
Include drawings, wherever
understanding of the invention

necessary,
13

for

better

Patent Document - Terms

Assignee
Inventor
Filing date
Grant date
Priority date
Patent Number
Publication Number
Regular Patent Application (RPA)
Provisional Patent Application (PPA)

14

Stages for grant of a patent in India


FILING OF APPLICATION
PUBLICATION OF APPLICATION

AFTER 18 MONTHS FROM APPLICATION

REQUEST FOR EXAMINATION

WITHIN 48 MONTHS FROM FILING OF APPLICATION.

EXAMINATION-ISSUE OF FER

GRANT OF PATENT

ALL OBJECTIONS TO BE COMPLIED WITHIN 12


MONTHS

15

Patent Filing Process


Filing in national patent offices
The PPA/RPA is filed in national patent office
In case of PPA filing, RPA needs to be filed within 12
months
Patent application needs to be filed in all national
offices within 12 months of the first filing
The prosecution of the patent application begins in the
national patent offices

PCT Filing
File application with the receiving office
Designate convention countries for filing patent
application
Application is published with search report
Application needs to be entered in the national phase
independently within 30-31 from the first filing date
16

Rights granted to a Patentee


A patentee has the exclusive right to prevent
third parties from

Making
Using
Offering for Sale
Selling
Importing into India the product or the
process

17

Renewal Fee
No fee for 1st and 2nd year
Renewal fee, on yearly basis, is required to
be paid for 3rd to 20th for keeping the
patent in force
Delay upto six months from due date
permissible on payment of fee for
extension of time
Patent lapses if renewal fee
A lapsed patent can be restored by filing a
restoration application within 18 months
from the date the patent ceased to have
effect
18

Patent Validity Challenge by Third Parties


Pre-Grant Opposition
Any Person
From the date of publication of the patent
to grant of the patent
At the Patent Office
Post-Grant Opposition
Any Person
Within 12 months from the date of grant of
patent
At the Patent Office
19

Patent Validity Challenge by Third Parties


Revocation of a Patent
Any interested person
Any time after the date of grant of the
patent
At the Intellectual Property Appellate Board
Counter Claim
Can be filed by a defendant in the patent
infringement suit
After the filing of an infringement suit
At the High Court
20

Compulsory Licensing
Any person interested may make an application
to the Controller for grant of Compulsory License
for a patent after the expiry of three years from
the date of grant of the patent on the
following grounds:
I. that the reasonable requirements of public with
respect to the patented invention have not been
satisfied, or
II. that the patented invention is not available to
the public at reasonably affordable price, or
III. that the patented invention is not worked in the
territory of India
21

Compulsory Licensing
An application for compulsory license can also be made by
the licensee
While considering an application for compulsory license the
controller takes into account
The nature of the invention
The time which has elapsed since the sealing of the patent
The ability of the compulsory license applicant to work the
invention to the public advantage
The capacity of the compulsory license applicant to undertake
the risk in providing capital and working the invention
As to whether the applicant has made efforts to obtain a
license from the patentee on reasonable terms and conditions

22

Compulsory License For Export of Patented


Pharmaceutical
Products

Compulsory license can be applied for


manufacture and export of patented
pharmaceutical product to any country
having insufficient or no manufacturing
capacity in the pharmaceutical sector for
the concerned product to address public
health problems
Provided compulsory license has been
granted by such country or such country
has, by notification or otherwise, allowed
importation of the patented pharmaceutical
23

Thank You!

nda@nishithdesai.c
om

Mumbai | Silicon Valley | Bangalore | Singapore | Mumbai-BKC | New Delhi | Munich

Nishith Desai Associates

You might also like

pFad - Phonifier reborn

Pfad - The Proxy pFad of © 2024 Garber Painting. All rights reserved.

Note: This service is not intended for secure transactions such as banking, social media, email, or purchasing. Use at your own risk. We assume no liability whatsoever for broken pages.


Alternative Proxies:

Alternative Proxy

pFad Proxy

pFad v3 Proxy

pFad v4 Proxy