What Is A Patent And What Are The Procedure For Granting Of Patent?

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Table of Contents hide
1) Introduction
2) What Is A Patent?
3) Requirements For Grant Of Patent
3.1) 1. The Subject Matter Of The Invention
3.2) 2. Novel
3.3) 3. Non-Obvious/Inventive Step
3.4) 4. Useful/Industrial Application
4) Who Can Apply For A Patent
5) Procedure For Grant Of Patent
5.1) 1. Filing
5.2) 2. Publication Of Application[8]
5.3) 3. Request For Examination
5.4) 4. Examination
5.5) 5. Prior Art Search
5.6) 6. Amendment And Rejection Of Application
5.7) 7. Patent Opposition
5.8) 8. Grant/Refusal Of Patent
5.9) 9. Renewal
5.10) 10. Appeal

Introduction

In the present technology-filled word, new inventions and ideas are being introduced each and every day. These ideas, processes and inventions have to be protected so that the owner of such invention doesn’t get deprived of his right. Giving protection to their work gives the inventor/author an encouragement to work further on other new works.

For example, a person who has written a book has to be given protection/guarantee over his work against the reproduction of the book by others. If anyone reproduces his book without his permission and benefits from his work, then the author’s right to reproduce and benefit from his work is being deprived.

Similarly, a person’s inventions are an output of his hard work and dedication. Certain protection has to be given to such inventors over his invention from those who can unjustly benefit from it. It is here where intellectual property rights play a vital role.

A patent is an intellectual property right granted to an inventor over his invention, processor design. A patent can be claimed for a new invention as well as for an improvement in a previous invention. In India, the laws relating to patents were previously governed by the Indian Patent Act and Designs Act 1911. The said Act was replaced by the Patent Act, 1970, which came into force on 20 April 1972.

What Is A Patent?

A patent is an intellectual property right granted to an inventor over his invention. With a grant of a patent, the patentee is given the complete right over his invention to do whatever he likes with his invention (for a specified period). This special right provides protection to the inventor over his creation, processor design.

Not all the works can be patentable. Only those work which comes under the definition of ‘invention’ under the Act can be patentable. For a work to be named as an invention, it has to be a product or process which involves an inventive step.[1] It should also be capable of industrial application, which means that the invention should be useful (in case of a utility application).

Requirements For Grant Of Patent

A patent can be granted to an invention only if it fulfills the following requirements:

1. The Subject Matter Of The Invention

The first test to check whether an invention is patentable or not is the subject matter test. Under the Patent Act[2], Section 3 lists out a few things which are not falling under the topic ‘inventions’ and section 4 lists out inventions which cannot be patentable.

For a work to be called an invention, it should not fall under any of the categories mentioned under section 3.[3] According to section 4, any inventions relating to atomic energy cannot be patentable. Thus, any invention that doesn’t fall under the category of these two sections falls under the patentable subject matter and thus can be patentable.[4]

2. Novel

The second requirement for an invention to be patentable is the novelty or new invention. No one can get a patent for an invention which is old and is already in use. Section 2(l) defines what a new invention means. According to the section, an invention or technology applied for patent shouldn’t have been used or published in any document in the country or any part of the world before the date of filing of such patent.

If the invention is found to be in existence on the day of filing the application, then the application shall be rejected on the ground that it has no novelty/newness.

3. Non-Obvious/Inventive Step

Inventions which are simple and easy or don’t have any inventive step, cannot be patentable. “Inventive step” is defined under section 2(ja) as an invention which involves technical advance when compared to the existing knowledge or which has economic significance or both.

Any invention which has an inventive step and is not obvious to a person who has specialised in such a field of art can be patentable. If the invention is so obvious that an ordinarily skilled person can invent it, such an invention though it falls under the subject matter and has novelty, cannot be patentable.

4. Useful/Industrial Application

Any invention, though falling under the subject matter, has novelty and is not obvious, cannot be patentable if it is not useful (in case it is filed under the utility patent category). No one can claim a patent for an invention which is not useful to anyone. An invention should be capable of industrial exploitation for it to be considered useful for the grant of a patent.

Who Can Apply For A Patent

Section 6 of the Patent Act lists people who can apply for patents. An application for a patent can be made by the following persons individually or jointly:

  1. Anyone who is the true and first inventor of an invention;
  2. Anyone who is assigned by the true and first inventor and is given the right to make an application;
  3. Anyone who is a legal representative of a deceased person who is entitled to apply for such an application.

Procedure For Grant Of Patent

Any application made to the patent office should undergo various processes. The following are the procedure involved in granting of Patent:

1. Filing

Any person who is the true and first inventor of an invention, or his assignee or his legal representative (if deceased) can file an application to the patent office. Such applications made to the patent office should be in the prescribed form.[5]

When an application to the patent office is accompanied by a provisional specification, then an application with complete specification should be submitted within 12 months from the date of filing the initial application. If the complete specification isn’t provided within the specified period, the application will be abandoned.[6]

Suppose more than one application is filed by the same applicant and one is a modification of another. In that case, the controller may consider that the whole invention is a single invention and allow the applicant to file a complete specification of all the provisional specifications.

Each application accompanied by provisional or complete specification should be accompanied with the following contents:[7]

  1. The application should begin with a title which indicates the subject matter of the invention.
  2. A drawing can be submitted along with the application. If the controller requests a drawing, then it shall be mandatory to submit it as the controller may require. This drawing can be treated as a specification of the invention.
  3. If the controller asks for a sample or model of anything that illustrates the invention, then such a model or sample should be furnished to grant an application.
  4. For a complete specification, the application should provide:
    1. Full information and complete description of the invention’s operation or use. It should also provide in detail, the method in which it operates;
    2. The best way to perform the invention;
    3. A claim defining the scope of such invention; and
    4. A technical explanation of the invention.

2. Publication Of Application[8]

Any application made to the office of a patent shall not be made open to the public for the period specified in the application. The applicant can ask the controller to publish his application prior to the date specified in the application through an application in the prescribed manner.

If an application contains a secrecy direction, then the said application shall not be published until the applicants ask to publish it or until the specified period expires.

The publication of the application will include the applicant’s name and address, the number of applications, and the date of application.

From the date of publishing till the date of grant of the application, an applicant shall have all the privileges as if the patent has been granted. However, he can’t institute any proceeding for any infringement.

3. Request For Examination

After an application is filed, it cannot be examined until a request for examination is filed in the prescribed manner by the applicant or by any other person having an interest in the application. If a request for examination is not made within the prescribed time, then the application shall be treated as if it has been withdrawn by the applicant.[9]

4. Examination

Once an application for examination is made by the applicant or by any person having an interest in it, the formal examination takes place. After the request for examination is made, the controller shall ask the examiner to examine all the documents and produce a report of whether the application has been made in accordance with all the requirements specified in the Act and whether the invention is patentable or not.[10]

The examiner who has been assigned with the examination process should produce a report within the specified period to the controller.

5. Prior Art Search

The examiner who the controller has referred to examine the application and invention should investigate whether the said invention is new or is already in existence. He has to check for any prior publication of the invention made in the country or in any other country. Every finding that he has made should be reported to the controller.[11]

6. Amendment And Rejection Of Application

The controller may, if after receiving a report from the examiner finds out that the application is not in accordance with the requirements of the Act, can reject the application (by giving an opportunity to the applicant to be heard), or ask the applicant to amend the application[12].

7. Patent Opposition

Opposition to the patent office in respect of an invention can be filed either before a patent is granted or after it has been granted.

Once an application has been published, the patent shall be granted within 12 months from the date of filing the initial application. Any person can make an application of objection to the patent office within these 12 months for any one of the reasons specified in sub-section (1) of section 25 of the Patent Act. Such an opposition filed before the grant of a patent under section 25(1) is known as pre-grant opposition.

A pre-grant opposition can be filed by any person on some of the following grounds:

  1. The application belongs to someone else;
  2. The said invention has already been published before the priority date elsewhere in the country;
  3. The invention is already in public use or is known to the public prior to the priority date of that claim;
  4. The invention has no inventive step involved it and is so obvious for any person specialised in that field; or
  5. The said invention doesn’t come under the meaning of invention or method which has been specified in the Act.

An opposition filed after a patent has been granted under sub-section (2) of section 25[13], is known as a post-grant opposition. The opposition to the patent should be filed within 12 months from the date of grant of patent.

8. Grant/Refusal Of Patent

After the publication of the application, if the application has complied with all the requirements of the Act and no opposition/objection to the application has been claimed, a Patent may be granted under Section 43 of the Act. If any opposition has been raised or the application doesn’t comply with the Act’s requirements, the patent shall be refused or cancelled (in case of post-grant opposition).[14]

9. Renewal

Every patent should be renewed every year with a small amount of renewal fee. The patent can be renewed for an extension of 20 years from the date of filing the application. After the completion of 20 years, the license for invention expires and the invention becomes open for public use.

10. Appeal

Any person who is affected by the decision of the controller or central board can approach the appellate board established under section 83 of the Trade Mark Act, 1999 only for decisions/order granted under section 15, 16, 17, 18, 19, 20, 25(4), 28, 51, 54, 57, 60, 61, 63, 66, 66, 69(3), 78, 84(1) to 84(5), 85, 88, 91, 92 and 94 of the Act.[15] Every appeal should be made within three months from the date of such a decision.

[1] Section 2(1)(j) of Patent Act, 1970

[2] Patent Act, 1970

[3] Patent Act, 1970

[4] Patent Act, 1970

[5] Section 6, Patent Act 1970

[6] Section 9, Patent Act 1970

[7] Section 10, Patent Act 1970

[8] Section 11A, Patent Act 1970

[9] Section 11B, Patent Act 1970

[10] Section 12, Patent Act 1970

[11] Section 13, Patent Act 1970

[12] Section 14 and 15, Patent Act 1970

[13] Patent Act, 1970

[14] Section 43, Patent Act 1970

[15] Patent Act, 1970

This Article is Authored by Velvizhi V, LLB(Hons) Graduate from School Of Excellence in Law (SOEL).

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