UNIT 5 PATENT

PATENT
->A patent is an intellectual property of right relating to inventions and is the grant of exclusive
right for limited period, provided by the government to the patentee, in exchange of full
disclosure of his invention, for excluding
others, from making, using, selling, importing the patented product or process producing the
product for the purposes.
OBJECTIVESOF PATENTS

-> To provide protection of creativity of creaters.

-> To promotes the creativity of new creators.

-> To accelerate the technological and industrial development of the countries.

-> To provide the exclusive right to invention and affords protection against unauthorised use of
invention by third parties.

-> Understand the meaning of specifications.

BENEFITS OF PATENT

-> A patent gives you the right to stop others from copying, manufacturing, selling and importing
your invention without your permission. The existence of your patent may be enough on its own
to stop others from trying to exploit your invention. If it does not, it gives you the right to take
legal action to stop them exploiting your invention and to claim damage.

FEATURES OF PATENT

-> Exclusive right to stop others from making, using or selling the invented product or process

-> In the nature of a property right

-> may be sold or licensed

-> Only available for new inventions in a field of technology

-> But small improvements can be enough

-> Geographically limited under national patent laws

-> but there are regional and international treaties

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-> Must file a patent application to obtain rights

-> fully describing invention

-> description is published

-> Limited duration, 20 years from filling date

-> Annual renewal or maintanance fees(increasing with time )

INVENTIVE STEPS, SPECIFICATION, TYPES OF PATENT APPLICATION

INVENTIVE STEPS:
-> Inventive step is a feature of an invention that involves technical advance 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.

->While determining patentability of the invention, an examiner first conducts investigation as to

whether the novelty of the claimed invention is established and then proceeds to conduct
examination on whether the claimed invention involves the inventive step.

->The "obviousness" must be strictly and objectively judged. while determining inventive step, it
is important to look at the invention as a whole.->Accordingly, the following points need to be
objectively judged to ascertain whether, looking at the invention as a whole, the invention does
have inventive step or not:

i. Identify the "person skilled in the art", i.e. competent craftsman or engineer as distinguished
from a mere artisan;
ii. Identify the relevant common general knowledge of that person at the priority date

iii. Identify the inventive concept of the claim in question or if that cannot readily be done,
construe it

iv. Identify what, if any, differences exist between the matter cited as forming part of the "state
of the art" and the inventive concept of the claim or the claim as construed.

SPECIFICATION

-> The Specification is a techno-legal document containing scientific and technical disclosure
and claims for the invention which is the basis of rights of a patent. The Specification, thus,
forms a crucial part of the patent application.

->A specification may be filed either as a provisional or complete specification.

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-> Provisional or Complete Specification shall be submitted in Form-2 along with the
Application Form-1 and other documents accompanied with the prescribed fee as given in the
First Schedule. The first page of Form - 2 shall contain:

a) Title of the invention

b) Name, address and nationality of each of the applicants for patent and

c) Preamble to the description

i) If the provisional specification is filed, the Preamble shall be as under. "The following
Specification describes the invention".

ii) If the complete specification is filed, the Preamble shall be as under

Title of the invention shall disclose the specific features of the invention normally in not more
than fifteen words.

The applicant shall submit drawings, wherever required. Further, the Controller may also require
the applicant to submit drawings, if necessary at the examination stage. Such drawings shall form
a part of the Specification and suitable references thereto shall be made in the Specification. The
Controller may require the applicant to submit, any time before the grant.

TYPES OF PATENT APPLICATION:

1. Ordinary Patent Application

2. Convention Patent Application

3. Pct National Phase Application

4. International Application

5. Divisional Patent Application

6. Patent Of Application

1. ORDINARY PATENT APPLICATION

i.e. an application which has been filed directly in the Indian patent office without claiming
priority of any foreign application.

Provisional specification

Complete specification

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2. CONVENTION PATENT APPLICATION

Claiming the priority of a country which is a member to Paris Convention.

Filling in other convention country within 12 months.

3. PCT NATIONAL PHASE APPLICATION

After filing PCT Application in priority Filing in other country within 30 months(for India 31
months)

4. INTERNATIONAL PATENT

Means an application for patent made in accordance with the Patent Co-operation Treaty(PCT)

Governed by WIPO

Filing in other country within 30 months (for India 31 months)

5. DIVISIONAL PATENT APPLICATION

A further application divided out the first- mentioned patent application.

6. PATENT OF ADDITION

An application for patent in respect of any improvement in or modification of the invention for
which the patent application has already been filed or patent has been [Link] date is of
Parent Patent.

PROCESS OF E-FILLING, EXAMINATION OF PATENT.

INTRODUCTION

-> Electronic filling is the process of submitting tax returns over the internet using tax
preparation software that has been approved by the relavant tax authority.

What is E-Filling?

-> The process of electronically filling income tax through the internet is known as process of E-
Filling.

-> It is mandatory for company and firms requiring statutory audit u/s 44AB.

-> E-Filling is possible without digital signature.

TYPES OF E-FILLING

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-> E-Filling for income tax

-> E-Filling for service tax

-> E-Filling for company law

-> E-Filling for GST.

WAYS OF E-FILLING

-> There are three ways to file returns electronically

1. Use digital signature in which can no paper return is required to be submitted

2. File without digital signature in which ITR-5 form is to filed with the department. This is a
single receipt of verification form.

3. File through an e-return intermediary who would do e-filing and also assist the assets file the
ITR-5 form.

Filling of request for examination

-> A request for examination can be filed in form 19 only within 48 months from the priority
date or filing date whichever is earlier.

GRANT OF PATENT

-> A patent will be granted to the application if

-> The application has compiled with the objections within the prescribed time.

-> No pre-granted opposite by representation is filed.

-> If filed, disposed of in favour of the applicant within the prescribed time.

-> Patent will be granted and sealed with seal of office and notified in the official journal.

GRAND OF PATENT, REVOCATION OF PATENTS AND EQUITABLE

ASSIGNMENTS

GRAND OF PATENT

A patent grant is an exclusive right that protects the invention of the applicant. A patent grant is
the award of a property right to an inventor over an invention, process, machine, or design for a
limited period of time. The procedure for a grant of patent comprises of few steps.

1. Patent filing application:

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The first step in the procedure for a patent grant is filing the patent application. Also, a patent
application must contain specifications of the invention and other relevant details of the
invention. One can file both a provisional and a complete application for their invention to get a
grant of patent.

2. Publication of the application:

After filing, every application goes to the Indian patent office. Also, the Indian patent office
publishes the patent application in the official patent journal. Moreover, the patent application
comes in the public domain after the patent office publishes it.

3. Examination of the application:

The next step in the procedure is the examination of the patent application. The applicant has to
specifically make a request for examining their patent application. The patent application will not
move ahead to the examination cell if a request pertaining to it is not made.

->AFTER GRANT OF PATENT

Once the application meets all the requirements of patentability the patent is granted to the
inventor with the seal form patent office and is notified in the journal from time to time.

After the grant of the patent, the patentee must pay a renewal fee every year to keep the patent in
force. This renewal fee starts from the expiration of the second year from the date of filing.

Once all these stages are completed, a patent is granted to an applicant for a period of 20 years
from the date of filing the application. The grant of a patent gives the owner of the invention the
right to prevent others from making, using, importing or selling the invention without their
permission.

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REVOCATION OF PATENT

Revocation, in layman terms, means the act of taking back something that has already been
granted. The same happens to the patent, which even though once granted can’t be treated as
permanent. People, other than the patent holder, are provided with a right of filling a revocation
petition if they have issues due to someone’s patent right. Here the people include any interested
person who has legally acceptable grounds for revocation of the patent and the Central
Government. However, such a person may only raise their voice by filing a petition. The final
decision related to the revocation relies on the Intellectual property appellate board (IPAB).

The following are the sections that provide ground for revocation of the patent;

1. Section 64 (Revocation of patents): The following grounds come under the ambit of Section
64 of the Patent Act, 1970.

The Claims are invalid;

The Patentee is not entitled for the patent;

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Wrongful obtainment of patent;

The subject of any claim is not an invention;

The subject of the invention is not new;

2. Section 65: Revocation of patent or amendment of complete specification on directions from

Government in cases relating to atomic energy.

3. Section 85: Revocation of patents by the Controller for non-working

That the patented invention has not been worked in the territory of India.

That the reasonable requirements of the public concerning the patented invention have not been
satisfied.

That the patented invention is not available to the public at a reasonably affordable price.

4. Section 66: Revocation of patent in the public interest.

Law does not allow any individual to be selfish, i.e if, something you discoveries very beneficial
for you, but is harming the public at large or the process through which it gets prepared is
injurious for the public at large, the law won’t permit you to continue with your discovery.

Equitable Assignments

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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 proprietor of patent. But the
assignee may have notice of his interest in the patent entered in the register.

An equitable assignment may not appear to be self-evident by the law's standard, but it presents
the assignee with a title that is protected and recognized in equity. It's based on the essence of a
declaration of trust; specifically, essential fairness and natural justice. As long as there is
valuable consideration involved, it does not matter if a formal agreement is signed. There needs
to be some sort of intent displayed from one party to assign and the other party to receive.

The evaluation of a righteous equitable assignment is completed by determining if a debtor

would rationally pay the debt to another party alleging to be the assignee. Equitable assignments
can be created by:

1. The assignor informing the assignee that they transferred a right to them

2. The assignor instructing the other party to release their obligation from the assignee and place
it instead on the assignor

The only part of an agreement that can be assigned is the benefit. Generally speaking, there is no
prerequisite for the written notice to be received or given. The significant characteristic that
separates an equitable assignment from a legal assignment is that most of the time, an equitable
assignee may not take action against a third party. Instead, it must rely on the guidelines
governing equitable assignments. In other words, the equitable assignee must team up with the
assignor to take action.

LICENCE, LICENSING OF RELATED PATENTS

WHAT IS PATENT?

-> Patent, is a legal document granted by the government giving an inventor the executive right
to make, use, and sell an invention for a specified number of years. Patents are also available for
significant improvements on previously invented items.

COMPULSORY LICENSE:

-> LICENSE: A license is a official permission or permit to do, use or own something.

-> A compulsory licence provides that the owner of a patent or copyright licenses the use of their
rights against payment either set by law or determined through some form of adjudication or
arbitration.

COMPULSORY LICENSING PATENT OF INDIA

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-> Section 84 and 92 of the Indian Patent Act, 1970 pertains to the grant of compulsory licenses.

COMPULSORYLICENSESAREGRANTED IN ORDER TO:

-> Prevent the abuse of patent as a monopoly.

-> Make a way for commercial exploitation of the patented invention by an interested person.

-> Address the public health concern in India.

WHILE GRANTING A COMPULSORY LICENSE THE CONTROLLER HAS TO

TAKE INTO ACCOUNT:

-> Nature of the invention

-> Time elapsed

-> Ability of the applicant to work the invention

-> Applicant's effort for obtaining a license on reasonable terms.

TERMS AND CONDITIONS OF COMPULSORY LICENSE

-> Royalty and other remuneration, if any reserved to the patentee or other person beneficially
entitled to the patent.

-> Patented article should be worked to fullest extend by a person to whom the license is granted.

-> Patented article should be made available to the public at reasonably affordable prices.

-> License granted is non-exclusive license.

-> The right of licensee is non- assignable.

-> License is for the balance term of patent unless a shorter term is consistent with the interest.

LICENSING OF RELATED PATENTS

-> Section 94 of the Act deals with termination of compulsory license, it provides that on an
application made by the patentee or any other person deriving title or interest in the patent, a
compulsory license granted under section 84 may be terminated by the Controller, if and when
the circumtances that gave rise to the grant thereof no longer exist and such circumstances are
unlikely to recur.

PATENT AGENT
• What is a patent agent?

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• In order to understand the meaning of the term ‘Patent agent’ in simple terms, it can be defined
as “a person who files the patent application”

The process involved in the preparation of a patent application is taken care of by the patent
agent. That is, he helps in the preparation of the documents, including drafting, filing and
prosecution of an application before the controller on behalf of any person who wishes toobtain a
patent.

• Qualification required for being a patent agent

• As per which, the qualifications required to be a
patent agent are as follows:
He should be a citizen of India;
Should have completed 21 years of age;
He should have completed a degree in either Science,
Engineering or Technology from any university
established under law for the time being in force in
the territory of India or should possess such other
equivalent qualifications as specified by the Central

Government.

Registration of Patent Agent

What is the Procedure for Registration of

Patent Agent?

Application for Examination

Particulars of Examination
Registration

Application for Examination

-> A person shall make a request to the Controller and pay the requisite fee as provided in the
First Schedule, as per which the intention of the person to apply online or offline. After making
the payment, the details of the payment should be provided to the Controller, in order to appear
for the qualifying examination of Patent Agent

Particulars of Examination
• The person meeting the qualification provided under Section 126 of the Patent Act, 1970,
should apply for the examination of Patent Agent. The applicant is required to select the center
of his/her suitability to write the examination of Patent Agent. The Patent Agent examination is

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generally conducted in 5 cities which are, Delhi, Mumbai, Nagpur, Kolkata, and Chennai. The
Indian Patent Agent examination is held once in each year.

Registration
• The person is required to submit a Form 22 application as provided under the Patent Rules,
2003. The person should furnish with the application of Registration any other relevant
information as required by the Controller. After a person has cleared the examination of patent
Agent and furnishing any other relevant and necessary details required by the Controller, the
person should pay the necessary fees to the Controller. After the payment of prescribed fees, the
Controller, upon verifying all the submissions made by the person, should enter the name of the
candidate in the Register of Patent Agents. After entering the name, the Controller should issue
a Certificate of Registration as a Patent Agent to the candidate. The Certificate of Registration of
Patent Agent issued is valid only within the territory of India.

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