Reputation. Respect. Result.
S. Singh & Associates offers complete gamut of services in respect of patent which includes filing of patent applications, providing consultancy and opinions with regard to patentability search, patent infringement, patent validity and preparing licensing agreements of patent and technologies. The followings are broadly the services we offer.
- Search & Analysis, freedom to operate and Infringement Analysis, Land Escaping validity search.
- Drafting Patent specifications in all technical fields for ordinary, PCT and convention applications.
- Filing and prosecution of all Patent applications with Indian Patent Office, PCT and Convention applications at other countries.
- Removing Office objections raised by both Indian Patent Office and other countries Patent Office.
- Patent Watch (Searching of Patent Journal) and Alert services.
- Filing and defending of opposition (both pre-grant & post-grant) proceedings.
- Filing and Defending of Patent Litigation/ Revocation proceedings before Patent Office and High Courts or Court of Appeal.
- Maintaining Patent Annuity /Renewal and Filing of Statement of Working of Patent.
- Maintaining the complete portfolio of Patent and Licensing.
Any process or product which is new and involves some inventive step is patentable in India under the provisions of the Patent Act. Patent is an exclusive right granted to the Patentee or inventor for 20 years and the right is enforceable within the territories of India. The right is territorial in nature and in order to have right out of India the Patentee or inventor has to apply for patent country wise application. Once the patent is granted, no one can use the patent product or process without permission of the patentee.
WHO CAN APPLY FOR PATENT?
The patent can be applied by a true and first inventor or assignee of inventor or the autho-rized representative of the inventor. The assignee can be a firm, company, trust, society or any legal entity allowed under law to apply for patent. The legal entity of the applicant has been categorized under the provisions of the Patent Act for the purposes of fee calculation. For small entity the fee is less and the small entity has been defined under section 7(1)(a) of Micro, Small and Medium Enterprises Development Act, 2006 which is squarely followed by the Patent Act for the purposes of calculation of fee.
WHY TO FILE PATENT APPLICATION?
An exclusive right is granted for 20 years to the patentee in respect of the invention to make use of it and exploit commercially. The commercial gain for 20 years encourages the inven-tor to under take further invention and at large the invention is good for human and animal being globally. The exclusive right is granted in lieu of complete disclosure of the invention. After expiry of 20 years the invention falls in the public domain and is open to be used by any general public and any one further make improvement and file a separate patent.
WHAT CAN BE PATENTED?
To be patentable the product or process must be new and useful. It should not be used and known before or obvious to the persons skilled in the art and it must be useful in industry or otherwise for human or animal. Following three conditions must be satisfied:
- It must be novel
- It must involve inventive steps
- It must be useful for industry or human or animal
WHAT CAN NOT BE PATENTED?
The Patent Act also prohibits certain matters or products not to be patentable. Followings are not patentable:
- An invention which is frivolous or which claims anything contrary to law;
- An invention the primary or intended use or commercial exploitation of which could be country to public order or morality or which causes serious prejudice to human, animal, plant life or health or to the environment;
- The mere discovery of scientific principle or the formulation of an abstract thereof or dis-covery of any living thing or non-living substance occurring in nature;
- The mere discovery of any new property or new use for a known substance or of the mere use of a known process, machine or apparatus unless such known process results in a new product or employs at least one new reactant;
- A substance obtained by mere admixture resulting only in the aggregation of the proper-ties of the components thereof or a process for producing such substance;
- The mere arrangement or re-arrangement or duplication of known devices each function-ing independently of one another in a known way;
- A method agriculture or horticulture;
- Any process for medical, surgical, curative, prophylactic, diagnostic, therapeutic or other treatment of human beings or any process for similar treatment of animals to render them free of disease or to increase their economic value or that of their products;
- Plants and animals in whole or any part thereof other than microorganism but including seeds, varieties and species and essentially biological processes for production or prop-agation of plants and animals;
- Mathematical or business method or a computer program per se algorithms;
- A literary, dramatic, musical or artistic work or any other aesthetic creation whatsoever including cinematography works and television productions;
- A mere scheme or rule or method of performing mental act or method of playing game;
- A presentation of information;
- Topography of integrated circuits;
- An invention which, in effect, is traditional knowledge or which is an aggregation or dupli-cation of known properties of traditionally known component;
- Invention relating to atomic energy.
FILING OF PATENT APPLICATION?
Application can be filed both manually or electronically however the electronic filing is en-couraged and a reduction of 10% is given in order to encourage the painless filing. Followings are to be accompanied along with application.
- Application Form 1
- Provisional or complete specification with Form 2
- Drawings if necessary
- Abstract of Invention
- Declaration of Inventorship
- Power of attorney
PATENT COOPERATION TREATY (PCT)
The PCT route allows the applicant to seek patent protection of an invention in each of the PCT member signatory countries by way of filing a single patent application. The PCT is a platform to facilitate the filing of single application in multi countries and it is not an authority to grant the patent. However, the PCT is a filing searching and examining authority of the Patent Application. If an Indian seeks to file the PCT application, they can file the same in Indian Patent Office as receiving office and the Indian Patent office can also be opted and as the searching au-thority (ISA) and examination authority (IPEA). An Indian applicant is not allowed to file a PCT application directly with a International Bureau without seeking a prior permission from the Indian Patent Office.
FILING REQUIREMENT FOR NATIONAL PHASE ENTRY APPLICATION IN INDIA
- Copy of PCT publication with specification and drawings.
- Copy of International Search Report.
- Copy of the International Preliminary Report on Patentability.
- Any amended pages filed on the basis of which examination in India is to be carried out.
- Power of attorney
- Copy of Form PCT / IB/304
- Any all entry
- Foreign Filing Particulars
The Indian Patent Law requires an applicant to keep the patent office informed of the status of the corresponding foreign applications filed out side of India that relates to the same or substantially the same invention as filed in India within six months from date of such filing. The applicant is also required to submit the search and/or examination reports, office action or any communication with the examining division alongwith claims allowed with all corres-ponding foreign application filed outside of India when required by Patent office.
Proof of Right to apply for patent in India.
Proof of Right is a declaration of true and first inventor on the application Form -1 or by way of separate assignment. If the application is made by Legal Representative “death certificate or certificate of inheritance” of the deceased should be filed as proof of right. Proof of Right shall be submitted within six months from the date of application.
Publication of Patent application.
At the expiry of 18 months from the date of the filing of application or date of priority of appli-cation, whichever is earlier, the application is published and this publication of application in the official journal is referred as 18 months publication. Such publication also marks the be-ginning the pre-grant opposition period.
Alternatively, a request of early publication, before expiry said time line may be made by ap-plicant along with prescribed fee.
Examination of patent application
A patent application is only examined when a request for examination along with prescribed fee is made. It is not the process that the patent application is examined suo motto automat-ically by the patent office. A request for examination of Patent office can be made within 48 months of the date of priority or the date of filing the application, whichever is earlier. In case of PCT application filed for national phase entry into India, an express request for examina-tion can be made before the expiry of 31 months along with the prescribed fee.
MAINTENANCE OF PATENT
To keep a patent in force and in effect validly, the patent is required to be renewed every year. The renewal fee is required to be paid at the expiration of the second year from the date of the patent or of any succeeding year and the same shall be remitted to the patent of-fice before the expiration of second or succeeding year.
If the patent is not renewed within the prescribed time period, the renewal can be done beyond the due date in the extended period of six months from the due date by way of filing Form- 4 along with the prescribed fee. The period of six months is not further extendable and if the renewal is not done within the extended period the patent shall lapse its validity.
RESTORATION OF PATENT
If a patent lost its validity, it can be restored within eighteen months from the date of cessa-tion subject to the Controller’s discretion. A ceased patent can be restored upon filing an application for restoration of left patent with requisite /prescribed fee. The application should also be accompanied with explanation and evidence to support the failure of renewal /maintenance fee explaining the details that the failure was unintentional.
OPPOSITION OF PATENT
1. Pre grant opposition
After the patent is published in the Patent Journal, any person having grievances can file an opposition by way of representation before the Controller of Patents against the grant of pa-tent at appropriate office. The opposition can be filed at any time after the publication of pa-tent application but before the grant of patent on the grounds as mentioned in the Paten Act
2. Post grant opposition
The patent is published twice once before the grant and then subsequently after the grant. Any person having grievances can file a post grant opposition against the granted patent within 12 months from the date of publication of the grant of patent at the appropriate office. In case, the order of the controller is appealable and appeal can be filed against the order of controller before the High Court having jurisdiction.
WORKING OF PATENT
Once the patent is granted, the Patent Act says, the patent must be utilized. If the patent is not utilized, it can be subjected to compulsory license. Accordingly, the patentee and every licensee should furnish the details of working of the invention in respect of every calendar year within 3 years of the end of each year and within 2 months whenever required by the controller. On requisition if such information is not supplied, the failure is punishable with fine to the extent of Rs. 10 Lakhs.
REVOCATION OF PATENT.
Any interested person or the Central Government may file a petition for revocation of patent on the grounds as prescribed under the provisions of the Patent Act. The revocation petition can be filed before the High Court having jurisdiction. If a suit for infringement of the patent is pending before the High Court, the revocation petition can be filed in the infringement suit itself by way of counter claim.
Any person interested can make an application to the controller for grant of compulsory li-cense for a patent after 3 years from the date of grant of the patent, if the
- Reasonable requirement of public have not been satisfied or
- It is not available to the public at affordable price or
- If the patented invention is not worked in India.
ENFORCEMENT OF PATENT RIGHTS
A Patentee i.e. the right holder of a patent can file a suit for infringement of patent in the court of District Judge or before the High Court having ordinary original civil jurisdiction. There is no provision for any criminal action and no criminal liability can be fastened against the infringer of the patent. However, after the amendment in the Custom Law and notification of Intellectual Property Rights (Imported goods) Enforcement Rules 2007, the imports of products /goods infringing the patent rights can be stopped and confiscated at the custom border by the custom officials.
The defendant in the infringement suit if finds the suit is based on frivolous patent rights and no paten could have been granted, the defendant may file a counter claim for the revocation of patent on the grounds as provided under the law either before the High Court having ju-risdiction (in case the suit for infringement is pending before the High Court).