PROJECT OF INTELLECTUAL PROPERTY RIGHTS

ON

PATENTS

SUBMITTED TO:

MS. SUPREET GILL SUBMITTED BY:

HARSHMIR KAUR SWAITCH

` B.COM.LL.B (HONS.)

SECTION- C

SEMESTER- 10TH

R.NO.- 135/15
ACKNOWLEDGMENT

I Harshmir Kaur Swaitch, student of B.Com.LL.B (Hons.), Section-C, Semester- 10th is thankful
to my subject teacher Ms. Supreet Gill, Professor, Law, Panjab University, for her continued
guidance and for being a helping hand throughout the compilation of my project.

It is learnt that God is the greatest force and so I also take the opportunity to extend heartfelt
gratitude towards almighty for blessing me with best and for instilling in me the sense of work
and sense to practice devotion.

My Project is based on “Patents” and focuses upon the introduction to the patents Act, 1970 and
further to inventions which are patentable and which are not patentable and lastly the procedure
from filing of application till the amendment and grant of patents have been discussed.

I could not have completed this project and research without help of outside resources.
Therefore, heartfelt gratitude is extended towards my mentor, friends, library and internet which
provided me abundance of material and resources and helped men to enrich my knowledge.

Thanking You/-

Harshmir Kaur Swaitch

TABLE OF CONTENTS
ACKNOWLEDGMENT................................................................................................................. 2

INTRODUCTION .......................................................................................................................... 7

Meaning of Patent ....................................................................................................................... 7

Evolution of Patent Law in India ................................................................................................ 7

Preamble ...................................................................................................................................... 8

Objectives .................................................................................................................................... 9

I. Protection of Individual Interest ....................................................................................... 9

II. Protection of Interest of Society and Encourage Scientific Research .......................... 9

Is It Mandatory To Get Patent ................................................................................................... 10

Patent of “Product” and “Process” ............................................................................................ 10

Can Patent be Granted for Discovery or an Idea ...................................................................... 10

Patenting A Bio-Technological Invention................................................................................. 11

Concurrent Patents .................................................................................................................... 11

Controller of Patent and Patent Offices..................................................................................... 12

Terms of Patent ......................................................................................................................... 12

PATENTS OF ADDITION .......................................................................................................... 13

PATENTABILITY ....................................................................................................................... 14

Meaning of Invention ................................................................................................................ 14

III. New Invention: ........................................................................................................... 14

IV. Inventive Step: ............................................................................................................ 15

V. Non-Obviousness........................................................................................................ 15

VI. Capable of Industrial application:............................................................................... 16

Section:3 .................................................................................................................................... 17

What are not Inventions ............................................................................................................ 17

VII. Invention which is Frivolous or which claims anything contrary to well established
laws: 17

VIII. Invention Contrary to Public Order or Morality: .................................................... 17

IX. Discovery of a Scientific Principle or Living Thing or Non-Living Thing Substance:

17

X. Mere Discovery of New Form of Known Substance: ................................................ 18

XI. Substance Obtained by Mere Admixture: .................................................................. 19

XII. Duplication of Known Devices Functioning Independently: ..................................... 20

XIII. Method of Agriculture or Horticulture ................................................................... 20

XIV. Process for Medicinal or Surgical Treatment of Human Beings or Animals: ........ 20

XV. Plants and Animals other than Micro-Organisms: ..................................................... 21

XVI. Mathematical and Business Method: ...................................................................... 21

XVII. Literary, Drama, Music or Artistic Work or Cinematographic Work: ................... 22

XVIII. Method of Performing Mental Act or Playing Game: ............................................ 22

XIX. Presentation of Information: ................................................................................... 22

XX. Traditional Knowledge: .............................................................................................. 22

XXI. Topography of Integrated Circuits: ......................................................................... 22

APPLICATION FOR PATENTS ................................................................................................. 23

Section-6: Who can Apply for a Patent ..................................................................................... 23

XXII. By any person claiming to be true and first inventor of the invention: .................. 23

XXIII. By any person being the ‘assignee’ of the person claiming to be the true and first
inventor in respect of right to make such an application: ...................................................... 23

XXIV. By the legal representative of any deceased person who is immediately before
his death was entitled to make such an application: .............................................................. 24

Employer and Employee relationship ....................................................................................... 24

FORM OF APPLICATION .......................................................................................................... 26

International Application under Patent Cooperation Treaty .................................................... 26

Application to Name First and True Inventor ........................................................................... 27

Title Of Invention ...................................................................................................................... 27

Field of Invention and Use of invention.................................................................................... 27

Prior Art and Problem to be Solved .......................................................................................... 28

Objects of the Invention ............................................................................................................ 28

Summary of invention ............................................................................................................... 28

Detailed Description of Invention ............................................................................................. 28

Drawing, Model or Sample ....................................................................................................... 29

Abstract ..................................................................................................................................... 29

Claim ......................................................................................................................................... 30

Declaration as to Inventorship................................................................................................... 30

Claims in respect of Development of Inventions ...................................................................... 30

PROVISIONAL AND COMPLETE SPECIFICATION.............................................................. 31

Section 9 .................................................................................................................................... 31

Essentials of Complete Specification ........................................................................................ 31

Section 11 Priority dates of claims of complete specification .................................................. 32

Information and undertaking regarding Foreign Applications .................................................. 33

PUBLICATION AND EXAMINATION OF APPLICATION ................................................... 35

Publication of Application ........................................................................................................ 35

Request for Examination and Report ........................................................................................ 36

Search For Anticipation ............................................................................................................ 36

Anticipation : Power of Controller ............................................................................................ 38

Potential infringement: powers of controller ............................................................................ 38

Representation and Opposition ................................................................................................. 39

GROUNDS OF OPPOSITION ................................................................................................. 39

Opposition Board ...................................................................................................................... 40

Grant Of Patent And Rights Of Patentee .................................................................................. 40

Permitted Uses In Respect Of A Patent .................................................................................... 41

Rights of patentee ...................................................................................................................... 41

Rights of co-owners off patent .................................................................................................. 41

Amendment of application and specifications .......................................................................... 42

Restoration of lapsed patent ...................................................................................................... 42

REFERENCES ............................................................................................................................. 43
INTRODUCTION

MEANING OF PATENT

The term patent has been derived from the latin word “patene” meaning thereby “to open”.
Patent means an ‘exclusive right’ granted to the first and true inventor to make, use or vend his
invention and it is a “reward” granted to the inventor in return of disclosure of his invention to
the public for the benefit of the society. According to Section 2 (1) (m1) “Patent” means a patent
for invention granted under this act.

A patent creates a ‘statutory monopoly’ protecting the invention of patentee against any
unlicensed use of the patented device by anyone in society once it is open to public. A monopoly
of the patent is the reward of the inventor.2

Patentee is the inventor to whom the monopoly or exclusive right is granted over his invention
against unlicensed use by any one in society. According to Section 2(p3) patentee is the person
for the time being entered on the register as the “grantee or proprietor” of the patent.

Assignee is the person in whose favour the patentee has assigned or transferred his invention in
consideration of monetary gain. According to Section 2 (ab)4 assignee includes an assignee of
assignee and the legal representative of a deceased assignee and references to the assignee of
legal representative or that person.

EVOLUTION OF PATENT LAW IN INDIA

The History of Patent law in India can be traced back to the Act VI of 1856 which granted the
exclusive privileges to inventors in India. This Act of 1856 was modified by Act of 1859 which
enabled the Britishers to register and hold exclusive patent rights in India. In 1872 Patents and

1
The Patents Act, 1970.
2
Telemecanique & Control (I) Ltd. v. Schneider Electric Industries, 2002 (24) P.T.C 632 (Del.).
3
The Patents Act, 1970.
4
The Patents Act, 1970.
Designs protection Act was enacted with the extended provisions to the designs also and it was
followed by Protection of Inventions Act, 1883. These acts were consolidated in 1883.

Finally, a comprehensive legislation on patents and design was enacted in form of Indian Patents
and Designs Act, 1911 remained in operation in India until India became independent.
Thereafter, The Patents Act, 1970 which was enacted after several amendments to act of 1911
passed by Indian Parliament came into force in 1972.

Two committees were appointed to enquire the working of Indians Patents and Designs Act,
1911 because act of 1911 failed to keep pace with the “industrial development”. A committee
was appointed by the government in 1948 under the chairmanship of Justice Bakshi Tek Chand
which submitted its report in 1950 and another committee was appointed in 1957 under the
chairmanship of Justice N. Rajagopala Ayyanger and later’s report became basis of Patents Act,
1965. According to Justice Rajagopala Ayyanger the Patent Enquiry Committee is right in
stating that patent law would operate differently in the “industrialized countries” and “under-
developed countries”. And, Indian patent system has failed in its main purpose especially to
stimulate inventions among Indians and to develop and exploit inventions for industrial purposes
in the country so as to secure benefit to larger section of the society.

On the basis of the reports of these two committees the Patents Bill which was based on U.K
Patents Act, 1949 was introduced before Lok Sabha on 21st September, 1965. But, bill lapsed
due to dissolution of the first Lok Sabha on 33rd March, 1967. So, Patent bill was again
introduced in 1970 and same was passed by both the Houses of Parliament.

Enacted on: 19th September, 1970 Enforced on: 20th April, 1972

PREAMBLE

According to the Preamble it is an act to “amend and consolidate” law relating to patents. i.e.
this act has consolidated the scattered law relating to patents and is an “exhaustive act”.
OBJECTIVES

I. Protection of Individual Interest

Section 48 of the Patents Act, 1970 “subject to the conditions imposed under Section 47” confers
upon the patentee the right to prevent the third person who does not have consent of patentee:

From making, using, offer for sale, selling or importing for those purposes that product in
India where the ”subject matter” for which patent is obtained is a “product”, and
From act of using, offering for sale, selling or importing for those purposes that product
obtained directly through such process where the “subject matter” for which the patent is
obtained is a “process”.
A Patent like any other tangible property has some commercial value thus, a mere
invention does not create a “monopoly” or “property right” unless, it is patented.

II. Protection of Interest of Society and Encourage Scientific Research

The Patent Act, 1970 grants protection to the “invention” of the patentee against its unauthorized
use by anyone in the public without the free consent of the patentee. Therefore, the patentee has
right to disclose all the details along with the invention among the public however, exercising the
statutory right over his patent such that no unauthorized use is made anyone else in society.

Before a patent is granted, a patentee is required to submit all details about the invention i.e.
novel product or process of which the product is the outcome with clarity and completeness of all
technical details. The objective of disclosure of information relation to invention in the society is
that it encourages the scientific research and serves as a source of inspiration to foster more
invention sand research among the public.5 Grant of patent not only ‘recognizes the creativity of
inventor’ but also acts as an inspiration for further inventions which ultimately contributes to the
technological developments of a nation by guaranteeing to the holder of the patent an exclusive

5
Biswanath Prasad Radhey Sham v. Hindustan Metal Industries, (1979) 2 S.C.C 511.
right to prevent all others from manufacturing, using or selling invented goods for a “particular
number of years” to the exclusion of all others.6

IS IT MANDATORY TO GET PATENT

It is “not mandatory” for an inventor to apply for a patent in respect of his invention and same is
optional. However, it is preferable to get the invention i.e. novel product or process be patented
and exercise monopoly right to exclusive use of others. In case the inventor does not get it
patented so he runs the risk of his invention being disclosed to the competitors either by way of
reverse engineering or by way of communication of information by someone who possess such
information and is under no obligation to keep the invention as secret and due to this some third
party may start manufacturing the product by stealing the actual effort of the inventor.

PATENT OF “PRODUCT” AND “PROCESS”

Patent is granted for an invention which may either be a “product” or a “process”.

But, it is essential that such product or process should be:

 new,
 involve an inventive step and
 Capable of industrial application.

Prior to the Patents Amendment Act, 2005, only “process patents” were granted in respect of
food, drugs and pharmaceuticals in India. “No product patent” was granted in respect of
substance themselves.

CAN PATENT BE GRANTED FOR DISCOVERY OR AN IDEA

A “discovery” is not patentable as such. Patents are granted ‘only’ for inventions. It is the
practical application of discovery which leads to patentability.

6
Bayer Corporation v. Union of India, Writ Petition No. 1323 of 2013 decided on 15thh July, 2014.
“Discovery” is the unearthing of causes, properties or phenomena already existing in nature.

“Invention” is the application of such knowledge to the satisfaction of social needs.

In Reynolds v. Smith7, Lord Justice Buckley observed that “Discovery adds to amount of human
knowledge, but it does so only by lifting the veil and disclosing something which before has
been unseen or dimly seen. On the other hand, Invention necessarily involves suggestion of an
act to be done, and it must be an act which results in a new product or a new result or new
process, new combination of producing an old product or old result.

Like Discovery- Idea is also not patentable unless some inventive step is carried out and
invention is made of commercial application and viability.

PATENTING A BIO-TECHNOLOGICAL INVENTION

Bio-Technology plays a very important role in the fields of medicine, food, fertilizer, energy and
protection of environment. It concerns living organisms such as plants, animals and other micro-
organisms as well as non-living biological material, such as seed cells, enzymes and plasmids.

The TRIP’s Agreement makes it obligatory for the member states to protect bio-technology
inventions but allows them to exclude plants and animals from patentability. However, it is
obligatory to protect micro-organisms and essentially biological processes for production of
plants and animals. Member states shall also provide protection for plant varieties either by
patents or by an effective sui generic system or by any combination thereof.

In India after amendment in Patents Act in 2002, micro-organisms were made patentable. The
amendments were made to fulfill our obligations under the TRIP’s agreement.

CONCURRENT PATENTS

The two persons who made an invention by their ‘independent effort’ shall not get independent
patents for the same invention. Rather, patent is to be granted to the “first inventor”.

7
(1903) 20 R.P.C 305 (C.A).
The patent protection shall be denied to the inventor who made his invention at later stage even
though he was not aware of first invention and has no opportunity to know about first invention.

CONTROLLER OF PATENT AND PATENT OFFICES

The Controller General of Patents, Designs and Trade Marks appointed under Section 3 of Trade
Marks Act, 1999 is to be Controller of Patents. The Central Government may appoint as many
as examiners and other officers as it thinks fit. Such officers are under superintendence and direct
control of Controller of Patents. The Controller has the right to withdraw any matter or
proceedings going on before any officer and starts it de novo or from the stage left by either
trying matter himself or by transferring the same to any police officer.

The Head Office of the Patent Office is at Kolkata. For the purpose of facilitating registration of
patents, the Central Government established its offices at Mumbai, New Delhi and Chennai.

TERMS OF PATENT

According to Section 53, the term of every patent granted after commencement of the patents
(Amendment) Act, 2002, and the term of every patent which not expired and has not ceased to
have effect on the date of such commencement shall be 20 years from the “date of application of
patent”.

And, term of patent in case of International Applications filed under the PCT designating India
shall be 20 years from the International Filing Date accorded under the PCT.
PATENTS OF ADDITION

Patent of Addition may be granted for improvements or modifications in the main invention
which patentee might have made during the ‘course of working of patent’, but, which might not
possess sufficient inventiveness to qualify for an independent patent. The patent for addition is
granted only for ‘unexpired term’ of main patent.

Where an application is made for a patent in respect of any improvement in or modification of an

invention described or disclosed in the complete specification filed therefore and applicant also
applies for the patent for that invention or is the patentee, so the Controller may if the applicant
so requests, grant the patent for improvement or modification whatever as a patent for addition.

A patent for addition is not to be granted as a patent of addition unless the date of filing of the
application was same as or later than the date of filing of the application in respect of the main
invention. A Patent for addition is not to be granted before grant of patent for main invention.

Term of patent of addition is equal to patent for main invention or so much thereof has not
expired. Such patent is to remain in force during that term or until the previous cesser of patent
for the main invention.

If patent for main invention, however is revoked, the Court or Controller on the request of
patentee, may order that the patent of addition is to become an independent patent for the
remainder of the term for the patent for the main invention.

Validity of Patents of addition cannot be challenged on ground of lack of inventive step with
respect to disclosure in main application or patent.

In determining the novelty of the invention claimed in the complete specification filed in
pursuance of application for a patent of addition regard shall be had also to complete
specification in which invention is described.
PATENTABILITY

MEANING OF INVENTION

As per the Patents Act, 1970 Invention meant any new or useful art, process, ,method or manner
of manufacture; machine, apparatus or other article; substance produced by manufacture and
includes any new improvement of any of them or alleged invention.

The definition of “invention” has been amended by Patents Amendment Act, 2002 and as per
Section 2 (1) (j)8 the invention means new product or process involving an “inventive step” and
capable of “industrial application”.

In order for a patent to be “patentable” it is necessary that the invention of product or process
must be a new and novel invention capable of industrial application which has not fallen in the
public domain ever before the date of filing of patent application.

III. New Invention:

New invention means afresh, new or novel invention or technology which has not been
anticipated by publication in any document or is not used in any country around the world before
the date of filing of patent application with complete specification. In simple words, such
invention or research ought not to have fallen in the “public domain” anytime before the date of
filing for registration of patent application anywhere before in the world and must be first hand
invention. Furthermore, “public domain” here means that the work or invention must not have
been circulated or published so as to be accessible to the public around the world in any way by
written or oral description.

Novelty of an invention is a “mixed question of law and fact”. There is no uniform test and it is
completely dependent upon the circumstances of the case. The only thing to be seen is that there
ought not to be any prior public knowledge or publication of information, product or process and
any such prior knowledge prevailing among public can ne a ground of disqualification of patent.

8
The Patents Act, 1970.
In Landmark Judgment the Apex Court9 has also held that novelty always does not mean the new
invention as in the case of pharmaceuticals and chemicals it may not altogether mean something
completely different. However, it means “something different from recent previous” or “better
than what went before” or “in addition to others of same kind”. In simple words invention may
be of same kind but recent one must be efficacious than previous one of same kind.

IV. Inventive Step:

Inventive Step means a feature of invention that involves “technical advances” as compared to
“existing knowledge” or having “economic significance” or both that makes invention not
obvious to person not skilled in art. Inventive Step by amendment of 2002 has been explained as
a step that “makes the invention not so obvious to the person skilled in the art”. By further
amendment in 2005 it means “a feature of invention that involves technical advance as compared
to the existing knowledge or having economic significance or both and that makes the invention
not so obvious to the person skilled in art”. A person skilled in art would pre suppose that the
said person would have the knowledge and the skill in the said field and will not be unknown to
the particular field of art and it is from this angle that we have to see that whether the prior piece
of information or document if placed in the hands of such person so can he make work upon the
same and achieve the desired results. If the answer to this is in affirmative so yes, it is obvious to
the person skilled in art.

V. Non-Obviousness

In order to be patented the invention needs to be non-obvious. The essential element of novelty
and inventive step would depend upon on given facts of case. If particular manner of
manufacture is the same, then there cannot be any novelty in the subject matter. If there is no
inventive step so it implies that it is obvious.

The Supreme Court has also held that the expression “does not involve any inventive step” used
in Section 26 (1) (e) of the Patents and Designs Act, 1911 is equivalent to the word “obvious”.
Non-obvious means that the new invention lies so much out of the track of the previous known

9
Novartis A.G v. Union Of Iindia, 2013 54 P.T.C 1 (S.C) at P.80.
work so as not naturally to suggest itself to a person thinking on the subject, it must not be the
natural or obvious suggestion of what was previously known.10

The United States Supreme Court observed that in order to determine obviousness, court should
consider the- (i) scope and content of prior art, (ii) difference between the prior art and claims at
issue , (iii) level of ordinary skill in pertinent art. Along with this court may see additional issues
like- Commercial success, long felt but unsolved needs and failure of others to solve the
problem.11

The Indian Court12 also observed that the test of “obviousness” that forms the part of term
“inventive step” under Section 2 (ja) of the Patents Act, 1970 will have to be decided only in
appropriate manner in a full fledged trial. It is sufficient to say that prima facie there is novelty in
which “means and invention” has been registered under the Patents Act with priority date and
enablement of novelty has been proved by the applicant by marketing the product in such large
extent and without objection fairly for long 5 years and it is not proved so far the product of
applicant is “obvious”.

VI. Capable of Industrial application:

Capable of Industrial application means that the invention is capable of being made or used in
industry. Invention may not be final outcome, it shall be patentable only if it has some
“commercial viability” and is capable of being put to use in society and drain out some economic
output. Mere usefulness of invention is not sufficient; it is physical substance which has potential
of commercial use/utility or manifestation.13 Utility means an invention better than the preceding
knowledge better of the trade as to a particular article.

10
Rado v. John Two & Sons. Ltd., (1967) R.P.C 29.
11
Grahm v. John Deere Co., 383 U.S 1. (1966) at p. 1142.
12
Bajaj Auto Ltd. v. T.V.S Motor Company Ltd., 2008 (36) P.T.C 417 (Mad.) at p.440.
13
F. Hoffman La Roche v. Cipla Ltd., 2016 (65) P.T.C 1 (Del.) 9D.B), at p. 15.
SECTION:3
WHAT ARE NOT INVENTIONS

Section-3 lays down situation and list where Invention so called cannot be “patentable”. In a
case14, court observed that this provision relates to inventions that may otherwise meets test of
“invention” and “inventive step” but, still may not be granted patents as a matter of policy.

According to Section- 3 Following are not inventions within the meaning of act-

VII. Invention which is Frivolous or which claims anything contrary to well established
laws:

If any invention is of frivolous nature or claims anything contrary to the well established law so
it is not patentable U/s 3 (a). For example: A machine purporting to produce with perpetual
motion and with 100% efficiency or to give output without any input.

VIII. Invention Contrary to Public Order or Morality:

An invention contrary to “public order” may be one the primary use of which would be a
criminal act, punishable as a crime and same shall not be patentable U/s 3 (b). For example:
Invention of instrument used for pick pocketing, any device for committing theft or burglary, any
device for counterfeiting currency, device or method used for gambling, invention which can
cause serious prejudice to human beings and animals, invention which would disturb public
order or intended use of which would violate the accepted and settled norms of society as in
cloning of human beings.

However, intended use of any invention which would not intend any commercial exploitation or
exploitation of any animal, plant etc. can be considered as an “invention” and will be said to be
“patentable”.

IX. Discovery of a Scientific Principle or Living Thing or Non-Living Thing Substance:

14
F. Hoffman La Roche Ltd. v. Cipla Ltd., 2016 (65) P.T.C 1 (Del.) (D.B), p. 16.
As per Section 3(c), “mere discovery” of a scientific principle or formulation or discovery of any
living or non-living substance “occurring in nature’ is not an invention and hence not patentable.
A scientific theory is a statement about the natural world and these theories are themselves not
considered to be inventions, no matter how radical or revolutionary an insight they may provide,
since they do not result in product or process. However, if any theory leads to any practicable
application in the process of manufacture of an article or substance, it may well be ‘patentable’.

X. Mere Discovery of New Form of Known Substance:

According to Section 3 (d) all of the following are not considered inventions and hence are not
patentable-

“mere discovery of a new form of known substance which does not result in enhancement of
known efficacy of that substance or mere discovery of any new property of a known substance or
mere discovery of new use for a known substance or mere use of a known process unless such
known process results in a new product or employs at least one new reactant or mere use of
known machine or apparatus.”

The Conclusion drawn is that:

A new form is not substance,

A new form is also not a same product,
If you show enhancement in efficacy, one will get a patent for the new form
If one does not know shoe enhancement of efficacy, no patent will be granted as it will be
considered to be a same substance,

Moreover, according to Section 3 (d) salts, esters, ethers, polymorphs, metabolites, pure form,
particle size, isomers, mixtures of isomers, complexes, combinations and other derivatives of
such known substance may be considered as patentable only if they significantly differ in
properties.

Section 3 (d) assumes that structurally similar derivatives of a ‘known substance’ will also be
functionally similar and hence ought not to be patentable. It provides if new form of a known
substance is found despite a structural similarity to demonstrate a better functionality i.e.
enhancement of the known efficacy it would qualify to be patentable
The Delhi High Court observed that Section 3(d) discouraged “ever greening” and prevented
such derivative or other forms of the already patented product being granted patent unless the
derivatives or other forms ‘differed’ significantly in properties in regard to efficacy.15

In Novartis AG v. Union of India16, the Madras High Court observed that from amended section
and explanation in pharmacology field, if any discovery is made from a ‘known substance’, so a
duty is cast upon the patent applicant to show the discovery had resulted in enhancement of
known efficacy of that substance and whether to grant a patent or not on such discovery. So, the
explanation creates a ‘deemed fiction’ that all derivatives of a known substance would be
deemed to be a same substance unless it differ significantly in properties with regard to efficacy.

XI. Substance Obtained by Mere Admixture:

Section 3(e) provides that a substance by “mere admixture” resulting only in the aggregation of
the properties of the components thereof or process for producing such substance is not an
invention. An admixture resulting in “synergistic properties” is not considered as mere admixture
like soap detergent or lubricant and hence may be considered to be patentable.

In general all the substances which are produced by mere admixing or a process of producing
such substances should satisfy the requirement of synergistic effect in order to be patentable.

In an infringement suit17, the defendant challenged the validity of patent of plaintiff for the
invention of the manufacture of pouch for storage and dispensing liquid such as lubricating oil./
The Delhi Court revoking the patent on the ground that invention was not new and not an
invention within the meaning of section 3 observed that :

“Thickness of plastic film or layer depends upon the tolerance of the contents of the pouch. Same
is merely arrangement or re-arrangement of the mixture of the material and cannot be termed as a
novel concept and does not have any novelty. And, such arrangement or rearrangement is not an
invention it is merely an improvement of microns as per strength of layers.”

15
Supra (Note 13).
16
(2007) 4 M.L.J 1153.
17
M/s Stanipack Pvt. Ltd. v. M/s. Oswal Trading Co. Ltd, A.I.R 2000 Del. 23.
XII. Duplication of Known Devices Functioning Independently:

According to Section 3 (f)”mere arrangement or re-arrangement or duplication of known devices

each functioning independently of one another in a known way is not an invention. It is mere
“juxtaposition” of known devices where each device is working independently and is not
considered ‘patentable’. For example: a flour mill provided with sieving means.

However, where the old integers when placed together have some working inter-relation,
producing new or improved results , then there could be patentable subject matter have some
work inter-relations brought about by collection of integers.

A new combination may be ‘subject matter of patent’ although every part of the combination per
se is old, for here the new article is not parts themselves but, the assembling and working of the
parts together. The merit of a new combination very much depends upon the result produced.
Where a slight alteration turns that which was practically useless into what is useful and
important, it is a fit subject for a patent.

The Bombay High Court also observed that ‘Mosaicing’ is cobbling together bits and pieces, is
not in and of itself a complete defence to a patent infringement action except in very limited
circumstances. Material previously known to art have been used in completely unique and novel
way, the precisely in combination of their works.

XIII. Method of Agriculture or Horticulture

A method of agriculture or Horticulture is not invention as per Section 3 (h) and hence is not
patentable. For Example: a method of producing a plant by merely modification of conditions
like green house effect or method of producing soil from soil or any method of producing
mushrooms or algae.

XIV. Process for Medicinal or Surgical Treatment of Human Beings or Animals:

Any process for the medical, surgical, curative, prophylactic (diagnostic, therapeutic) or other
treatment of human being or animals to render them free of disease is not patentable.

Medicinal Methods like process of administering medicines orally or through injectables or

surgical methods like stitch free cataract removal or Curative Methods like method of cleaning
plaque from teeth, diagnostic methods, therapeutic methods- all these are not patentables.
However, surgical, diagnostic and therapeutic instruments or apparatus may be patentable.

XV. Plants and Animals other than Micro-Organisms:

According to Section 3(j), plants or animals in whole or any parts thereof, seeds, varieties and
species and essentially biological processes for production or propagation of plants and animals
are not inventions and hence are not patentable. However, the “micro-organisms” that are not
created by natural process are patentable. Plant varieties are subject matter of protection under
Protection of Plant Varieties and Farmer Rights Act, 2001.

XVI. Mathematical and Business Method:

A mathematical or business method or computer programme per se or algorithms are not

inventions and hence are not patentable. Mathematical methods are considered to be acts of
mental skill. A method of calculation, formulation of equations, finding square roots, cube roots
and all other methods directly involving mathematical methods are not patentable.

Business Methods claimed in any form are not patentable subject matter. The term business
methods involves whole gamut of activities in a commercial or industrial enterprise relating to
transaction of goods and services. This exclusion applies to all business methods and hence if
any substance relates to business methods even with help of technology, they are not considered
to be patentable subject matter. The reason for not giving them patent protection is that it may
unnecessarily cut the competition and promote monopoly which may unnecessarily give rise to
litigations.

Even algorithm in all forms but not limited to a set of rules and procedure or any sequence of
steps whether for solving a problem or otherwise are excluded from patentability. However, the
Delhi High Court18 held that this bar of Section 3(k) applies to algorithms which are theoretical
in nature. This bar does not apply when in a patent involving modern day technology, algorithms
which are employed in order to perform certain calculations or selections which are thereafter
utilized by the hardware components or elements to improve technology and create a practical

18
Telefonaktiebolaget L.M Ericsson v. Intex Technologies (India) Limited, 2015 (62) P.T.C 90 (Del.).
effect or result in physical realization. Court held that any invention that has a technical
contribution or has a technical effect and is not merely a computer program per se is patentable.

XVII. Literary, Drama, Music or Artistic Work or Cinematographic Work:

A literary, dramatic, musical or artistic work or any other aesthic creation including
Cinematographic works and television production is not an invention. All are subject matters of
protection under Copyright Act, 1957.

XVIII. Method of Performing Mental Act or Playing Game:

Mere scheme or rule or method of performing a act or playing game like playing chess or
teaching etc which are based on mental faculties are not patentable.

XIX. Presentation of Information:

Any manner, means or method of expressing information whether visual, audible or tangible by
words, codes, signals, symbols or any other mode of representation is not patentable.

XX. Traditional Knowledge:

An invention which is in effect, is traditional knowledge which is an aggregation or duplication

of known properties of traditionally known components is not patentable.

Like Kilta is a traditional product for carrying agricultural produced which was traditionally
made up of bamboo. Plaintiff and Defendant made same kilta of actual material polyethylene
they were just little different in kind of structure. So, court held actual product of both plaintiff
and defendant is same but just that little different in components used. However, it is not
invention because it is based on traditional knowledge.19

XXI. Topography of Integrated Circuits:

Topography of Integrated Circuits is not an invention. It is protectable under Semi-conductor

Integrated Circuit Layout Designs Act, 2000.

19
Dhanpat Seth v. Nil Kamal Plastic Crates Ltd., 2008 (36) P.T.C 123 (H.P) (D.B) at p. 127.
APPLICATION FOR PATENTS

The Patent Act lays down the procedure for the grant of patent to an inventor to exploit his
invention for 20 years subject to fulfillment of certain conditions. The first step is to make an
application in prescribed form along with provisional or complete specification and that
application is further published, examined upon request and search for anticipation is made.
Oppositions are invited from the public to the grant patent and where there is no opposition or
the opposition is decided in the favour of inventor, patent is granted and sealed which confers
certain rights on the patentee.

SECTION-6: WHO CAN APPLY FOR A PATENT

According to Section 6 of the Patents Act, 1970 “subject to the provisions of Section 134, an
application for a patent for an invention may be made by any of the following persons either
“severally or jointly” by an application in form prescribed as under Section 7:

I. By any person claiming to be true and first inventor of the invention:

“True and First Inventor” means any person who has first made the invention. When two persons
have made the same invention independently and not disclosed it, then the inventor who applied
first for the patent is to be taken as first and true inventor of the invention, irrespective of the fact
that he made the invention later than the other inventor. According to Section 2 (1) (y), “true and
first inventor” does not include either the first importer of invention into India, or a person to
whom an invention is first communicated from outside India.

II. By any person being the ‘assignee’ of the person claiming to be the true and first
inventor in respect of right to make such an application:

Any person to whom an invention has been assigned by the true and first inventor is also eligible
to apply for patent. Assignee can be ‘natural person or other than a legal person’ such as a
registered company, a research organization, an educational institute or Government. Assignee
includes an assignee of the assignee and the legal representative of a deceased assignee. A
Firm20 or Corporation21 can also be an assignee of the patent.

III. By the legal representative of any deceased person who is immediately before his death
was entitled to make such an application:

The Legal representative of any deceased person who immediately before his death was entitled
to make an application for a patent for an invention is also eligible to apply for patent.

Legal representative means a person who in law represents the estate of a deceased person. Thus,
legal representative of a (a) true and first inventor, (b) assignee of true and first inventor (c)
assignee of the assignee of first and true inventor are also eligible to apply for a patent.

EMPLOYER AND EMPLOYEE RELATIONSHIP

Generally, an invention made by an employee with his skill in the course of employment belongs
to his “employer” whereby there is a contract of employment and it consists a clause with respect
to credit of all inventions made during the course of employment. In rest all cases, particularly in
absence of contract, the employee may have initial rights in his own invention.

In Patchett v. Sterling22, Lord Simond observed that it is an implied term in the contract of
service of any workman that what he produces by the strength of his arm or skill of his hand or
the exercise of his inventive faculty shall become the property of his employer. However, it is
essential to show positive contract in the employer’s favour or an implied duty of trust of the
employee.

20
Shinning Industries v. Shri Krishna Industries, A.I.R 1975 All. 231.
21
V.B Mohammed Ibrahim v. Alfred Schafranek, A.I.R 1975 All. 231.
22
(1955) 72 R.P.C 50.
In Worthington v. Moore23, it was stated that invention may be the employee’s even though
made in the employer’s time and with his materials. It is clear that the employer is entitled to the
invention made by his employee in the course of normal duties or specifically assigned duties. In
absence of contract the employee will have initial rights in his own invention.

23
(1903) 20 R.P.C 41.
FORM OF APPLICATION

According to section 7(1), every application for a patent shall be for “one invention only” and
same has to be filed in Patents Office in prescribed form.

Territorial Jurisdiction of a patent office is to be decided on the basis of following:

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

case of joint applicants),
Place from where the invention actually originated,
Address for service in India given by the applicant, when the applicant has no place of
business or domicile in India (Foreign applicants).

INTERNATIONAL APPLICATION UNDER PATENT COOPERATION TREATY

Every International application under the Patent Cooperation Treaty for a patent as designating
India shall be deemed to be an application under this act, if a corresponding has also been filed
before the Controller in India.

The filing date of such application and its complete specification processed by the Patents Office
shall be international filing date accorded under PCT.

An applicant in respect of an international application designating India shall before the

aforesaid time-

 pay prescribed national fee and other fee to patent office,

 where international application was either not filed or published in English, file with the
patent office, a translation of application in English, duly verified by the applicant or the
person duly authorized by him that the contents thereof are correct and complete.

The Translation of International application shall include a translation in English of-

descriptions, claims as filed, text matter of the drawings, the abstract, in case applicant has not
elected India and if the claims have been amended under Article 19, then the amended claims
together with nay statement filed under that article. Moreover, in case the applicant has elected
India and any amendments to the description, claims and text matter of the drawings that are
annexed to the International Preliminary examination report.

Where an application is made by virtue of an assignment of the right to apply for a patent for
invention, so a proof of right to make application is to be furnished along with the application or
thereafter in prescribed time.

APPLICATION TO NAME FIRST AND TRUE INVENTOR

Every application is to state that the applicant is in possession of the Invention. It shall name the
true and first inventor.

Where the first and true applicant is not the applicant so the application must contain a
declaration that the applicant believes the person so named to be true and first owner.

TITLE OF INVENTION

The title should be sufficiently indicative of the subject matter of the Invention and shall disclose
the specific features of the Invention. It need not be the same as possible as preamble of the main
claim. It shall be brief, free from fancy expressions or ambiguity and as precise and definite and
it shall not go into details of invention itself and should not exceed fifteen words.

FIELD OF INVENTION AND USE OF INVENTION

The description should preferably begin with a general statement of invention so as to indicate
briefly the subject matter to which invention relates as the advantage of same is that it brings out
clearly the areas of application and preferable use of application. The applicant may substantiate
industrial applicability of invention on this part.
PRIOR ART AND PROBLEM TO BE SOLVED

This should indicate the status of technology in the field of invention with reference to
developments in the field, patents and pending applications in the specific art. When invention
relates to improvement on an existing product or process, a short statement of closest prior art
known to the applicant shall also be given. However, the statement must clearly distinguish the
invention from the closest prior art, known to the applicant.

OBJECTS OF THE INVENTION

The Invention should clearly mention the “technical problems” associated with the existing
technology and solution for that, bringing out differences between claimed invention and prior
art.

SUMMARY OF INVENTION

The description should include a summary of invention before giving the details of the invention
that it must feature method of performing it. The statement should clearly set forth distinguishing
novel features of the invention for which protection is desired.

DETAILED DESCRIPTION OF INVENTION

Description of an invention is required to be furnished in sufficient detail so as to give a

complete picture of invention. The nature of improvements or modifications effected with
respect to the prior should be clearly and sufficiently described.

The details of invention described should be sufficient for a person skilled in art to perform the
invention. It may include example/ drawings or both for clearly describing and ascertaining the
nature of invention.
In Patent of addition, the specification should contain at the beginning of description, a definite
statement indicating an improvement in or modification of the original invention and serial
number of application for patent in respect of original invention.

Moreover, when a biological material is described in the specification and when such material is
not available to the public and cannot be described adequately as per provisions of act, so such
material shall be deposited in order to make application complete. The deposit of material shall
be made at International Depository Authority under the Budapest Treaty, on or before the date
of filing.

The International Depository Authority in India is India is micro-bial type culture collection and
gene bank. The source and geographical origin of biological material too shall be disclosed.

DRAWING, MODEL OR SAMPLE

The Controller may require the applicant to supply drawings for the purposes of any
specifications, whether complete or provisional. Any drawing shall unless controller directs, be
deemed to be part of the specification. Drawings or sketches which require a special illustration
of invention shall not appear in description itself. Such drawings shall be on separate sheets

However, where the controller considers in any special case that application should be
supplemented by a model to be furnished, so, such model or drawing needs to be supplemented
along with illustrating Invention and its part. Such model or specification shall not be deemed to
be part of specification.

ABSTRACT

Every complete specification must be annexed with abstract to provide “technical information
and assistance” on invention. The abstract is to commence with title of invention and shall
contain summary about the technical field to which Invention belongs, technical problem to
which Invention relates and solution to the problem through invention and its principal uses of
Invention. Abstract may also contain any chemical formula wherever necessary. This
information of specification in a way makes it possible to assess the whether there is a need to
consult specification itself.
CLAIM

Claims are most important part of the patent application. Claim is a statement of ‘technical facts’
expressed in a legal terms defining “scope” of invention which is sought to be protected. Claims
must be drafted carefully so as to include all aspects of protection being sought at same time and
claims must not be too broad so as to encroach upon the subject matter which is in the public
domain and also should not be too narrow and hence, full benefit of invention may not accrue to
the inventor. It is to ensure that applicant gets the widest possible protection. Claim represents
the legal protection sought by the patentees and accordingly forms a protective fence around the
invention which is defined by words and phrases in words. The claims shall clearly defines the
scope of invention with conciseness, precision and accuracy so that others may know the exact
boundary into which they should ‘not trespass’. Whatever is not claimed in claim is deemed to
be disclaimed.24 In simple words, the patentee marks out with adequate distinctiveness what
boundary he exclusively owns.

DECLARATION AS TO INVENTORSHIP

Also, a declaration as to inventorship of the invention shall in prescribed cases be furnished with
the complete specification or within prescribed period after filing that specification.

CLAIMS IN RESPECT OF DEVELOPMENT OF INVENTIONS

A complete specification filed after a provisional specification may include claims in respect of
developments of, or in addition to, inventions which was described in the provisional
specification, being developments or additions in respect of which the applicant would be
entitled to make a separate application for a patent.

24
EMI v. Lissen, (1939) 56 R.P.C 23 at p. 39.
PROVISIONAL AND COMPLETE SPECIFICATION
According to Section 7(4), every application (not being a convention or an application filed
under the Patent Cooperation Treaty designating India) shall be accompanied by a provisional or
complete specification.

SECTION 9

Provisional specification is to ascertain and describe the “nature of invention”. Often, an inventor
files a provisional specification before all details of invention are known and then the application
has 12 months to file a complete application and if complete specification is not filed so the
provisional shall stand abandoned.

While the Complete Specification may also explain in what “manner” the invention is to be used
and carried out in execution and if any explanation has been made to provisional specification so
it cannot be said that patentee has abandoned his part of his claim. A complete specification must
contain a full description of the invention, together with claims and an abstract summarizing the
invention being disclosed and complete specification may be based on “one or more provisional
applications” and only those claims that are ‘fairly based’ on the relevant provisional
applications will be entitled to the priority date of provisional application.

A Provisional Specification is not a rough draft or skeleton of complete specification. The

complete specification which follows provisional specification does not replace the latter. Both
are permanent and separate documents and remain so in the file.

ESSENTIALS OF COMPLETE SPECIFICATION

Every complete specification must:

 fully and particularly describe the invention and its operation or use and the method by which
it is to be performed,
 disclose the best method of performing the invention which is known to the applicant and for
which he is entitled to claim protection, and
 end of claim or claims defining the scope of invention for which protection is claimed,
 be accompanied by an abstract to provide technical information on invention.
According to, Section 9(2) whenever there are two or more applications in the name of same
applicant and are accompanied by provisional specification in respect of invention or of which
one is the modification of the other and the controller is of the opinion that whole of the
invention are such to constitute single invention and may properly be included in one patent , he
may allow one complete specification to be filed in respect of all provisional specification.
Provided that, the time shall be reckoned from the date of filing of earliest provisional
application.

Where the application for patent (not being a convention application or application under Patent
Co-operation Treaty) is accompanied by complete specification so, the controller may on the
request of applicant may file and application within 12 months direct that such application
maybe treated as provisional application and proceed with the application accordingly.

Where the complete specification has been filed after the provisional specification or where
complete specification is treated as provisional specification so controller may on request of
applicant at any time before the grant of patent , cancel the provisional specification and posted
the application to date of filing of complete specification. Thus, post dating of a patent can be
done only to date of filing of complete specification.

SECTION 11 PRIORITY DATES OF CLAIMS OF COMPLETE SPECIFICATION

According to Section 11 there shall be a priority date for each claim of a complete specification.
Firstly, where a complete specification is filed in pursuance of a single application accompanied
by a provisional specification or where application is treated as provisional specification and the
claim is based on matter disclosed in such provisional specification. So, the priority date of claim
shall be date of filing of relevant provisional specification. Secondly, where the complete
specification is filed or proceeded with in pursuance of two or more applications accompanied by
provisional specifications , and the claim is fairly based on matters disclosed in those
specification so, the priority date shall be date of filing of application accompanied by
specification. However, where the claim is fairly based on matter disclosed partly in one and
partly in another so, the priority date shall be date of filing of application accompanied by
specification of later date. Thirdly, where a complete specification based on a previously filed
application in India has been filed within 12 months from the date of that application and claim
is fairly based on the matter disclosed in previously file application. Lastly, where any claim of a
complete specification would have two or more priority dates so, priority date shall be earliest of
those dates.

No claim in the complete specification of patent shall be invalid by reason of only- the
publication or use of invention so far as claimed in that claim on or after priority date of such
claim or grant of another patent which claims the invention so far as claimed in first invention in
claim of same or later date.

INFORMATION AND UNDERTAKING REGARDING FOREIGN APPLICATIONS

If applicant is interested in protecting his invention in foreign jurisdictions, the maximum time
allowed is 12 months from the date of first filing date. Based on countries interested in,
applicant can opt to file a convention application and Patent Cooperation Treaty System to
reserve your right.

According to Section 8, Where an application for patent is prosecuting either “alone or jointly”
with any other person an application for patent in “any country outside India” in respect of same
or substantially same invention, or where according to his knowledge such application is being
prosecuted by any other person through whom he claims or by some person deriving title from
him, he shall file along with his application or substantially within the prescribed period as the
controller may allow the following:

Statement setting out detailed particulars of such application, and

An undertaking that up to, date of grant of patent in India, he would keep the Controller
informed in writing from time to time of the detailed particulars in respect of every other
application relating to same or substantially the same invention, if any filed in country
outside.

From the date of application for patent in India and till the grant of a patent or refusal to grant or
refusal to grant patent is made, so, controller thereon may also require the applicant to furnish the
prescribed details relating to the processing of application in country outside India. Thus, the
applicant is duty bound to furnish information available to him to the Controller within the
prescribed period.

Section 8 is a “mandatory provision”, wherein the intention of legislature is that applicant is to

provide the Controller true and faithful disclosure of all information relating to application for
patents which are same or substantially same invention and also to provide to the controller in
relation to title of said patent owned by applicant and other persons in foreign countries.

The Delhi High Court25 observed that purpose and object of Section 8 is to keep the Indian
Patents Office informed about every shred of paper filed by the applicant in foreign country and
keep the Indian Patents Office informed about all the major jurisdictions where the patent has
been granted.

25
Telefonaktiebolaget L.M Ericsson (PUBL) v. Intex Technologies (India) Ltd., 2015 (62) P.T.C 90 (Del.).
PUBLICATION AND EXAMINATION OF APPLICATION

One the application is submitted in the patents Office so, it is thereafter published and examined
(if requested) and search for anticipation is made in the manner as discussed hereby:

PUBLICATION OF APPLICATION

According to Section 11 A, no applications for patent shall ordinarily be open to the public for
18 months from the date of filing of application or date of priority of application whichever is
earlier and applicant may request the controller to publish his application at any time before the
aforesaid period and only then the controller may publish the application as soon as possible.

Every application shall be published after the expiry of 18 months from the date of filing of
application, except in the following cases where:

 Secrecy direction is imposed under Section 35,

 Application has been abandoned because twelve months have passed from the date of
provisional specification and complete specification has not been submitted,
 Application has been withdrawn three months prior to the 18 months i.e. before the end of 15
month, from the date of filing or priority whichever is earlier.

Publication of every application is to include name of applicant, number of application, name

and address of the applicant identifying the application and abstract.

On and from the date of publication of application for patent until the date of grant of patent in
respect of application, the applicant shall have the like privilege and rights as if a patent for the
invention has been granted on the date of publication of the application. Hence, the applicant
shall not be entitled to institute any infringement proceedings till the grant of the patent.

Moreover, upon the “publication of an application”, the depository institution is likely to make
the biological material mentioned in specification available to the public. On payment of
prescribed fee, the Patent office may make specification and drawing is any, of such applications
available to public.
REQUEST FOR EXAMINATION AND REPORT

As per Section 11B no application for a patent shall be examined unless the ‘applicant’ or ‘any
other interested person’ makes a request for examination within 48 months and if it is not made it
is deemed to be withdrawn by the applicant. Applicant has the opportunity to withdraw such
application after filing of application but, before the grant of patent.

In case of “imposition of secrecy direction” under Section 35, the request for examination may
be made after the publication of application, but within 48 months from date of priority or date of
filing or within 6 months in case secrecy direction has been revoked whichever is later.

The Role of examiner is that whenever request for examination is made and controller transfers
to examiner application, specification and documents so, examiner shall make a report to the
controller within 1 month or at maximum 3 months as to whether the application, specification
and documents are in accordance with the requirements of act and whether there is any lawful
ground or if there is valid ground for rejection and further about result of investigation or any
other matter as prescribed (procedure U/s 12 of Patents Act, 1970). And, according to Section-
144 the Controllers are under “obligation” to keep the reports of examiner confidential and
reports shall not be open to ‘public inspection’ or be published by controller. Moreover, such
reports shall not be liable to production or inspection in any legal proceeding as evidence.

SEARCH FOR ANTICIPATION

The examiner to whom application for a patent is referred, is to make investigation for the
purpose of “ascertaining” whether the invention so far claimed in any claim of complete
specification has been anticipated by publication before the date of filing of applicant’s complete
specification in any specification filed in pursuance of an application for patent made in India or
is claimed in any claim of any other complete specification published on or after the date of
filing of applicant’s complete specification, being a specification filed in pursuance of
application for patent made in India and dated before or claiming priority date earlier than that
date.
The examiner shall examine in addition make such investigation for the purpose of ascertaining
whether the invention has been anticipated by publication in India or elsewhere in any other
document before date of filing of applicant’s specification and the examiner conducts a search in
the Indian database of other countries such as: EPO database, WIPO database, USPTO database,
Digital Library and this search is concluded to find out any publication which may anticipate the
claimed subject matter.

Such an examination and investigation will not be deemed in any way to warrant validity of any
patent, and no liability shall be incurred by the Central Government or any officer thereof by
reason of it or in connection with such examination or report or proceeding consequent to it.

It is merely to satisfy the examiner such that further he can report to the controller as to whether
the invention submitted in the application satisfies the matters mentioned in Section 12.

According to Section 14, where the report of the examiner which is submitted to controller is
opposite or adverse to application of the applicant so, the Controller before proceeding to dispose
off the application shall communicate as expeditiously as possible the “gist” of the objection to
the applicant.

Where the Controller is satisfied that the application or any specification or any other document
does not comply with the requirements of the Act or rules, the Controller may refuse the
application or may require the application, specification and other documents to be amended.

An applicant may, at any time before the grant of patent, if he so desires, or with a view to
remedy the objection raised by the Controller on the ground that claims complete specification
relate to more than one invention , may divide the application into several further applicants in
respect of invention disclosed in complete and provisional specifications. The divisional
application should be accompanied by complete application and shall not include any matter not
in substance disclosed in the main application.

As per Section 17 the applicant can request the controller after the filing of an application and
before the grant of the patent that the application shall be post dated to such date maybe specified
in the request. However, no application is to be post dated to a date later than 6 months from the
date on which it was actually made or would have been deemed to made. By postdating the
applicant gets more time to comply with the requirements of the patent’s office. The applicant
needs to be more vigilant while applying under this provision.

ANTICIPATION : POWER OF CONTROLLER

According to Section 18 where it appears to the controller by way of previous publication or by

claim of invention in other specification in or by way of investigation that , the invention claimed
incomplete specification has been anticipated in any of the afore said methods so, the controller
may refuse to accept the application unless the applicant :

 Shows to the satisfaction of the controller that the priority date of claim of said other
specification , or
 The complete specification is amended to controller

POTENTIAL INFRINGEMENT: POWERS OF CONTROLLER

If in the consequence of the investigations under this act, it appears to the controller that an
invention in respect of which application for a patent has been made can’t be performed without
substantial infringement of any other patent, he may direct that reference to that other patent
shall be inserted in applicant’s complete specification by way of notice to public unless within
the prescribed time applicant show to the satisfaction of the controller that there are reasonable
grounds for contesting the validity of said claims of other patent or complete specification is
amended to the satisfaction of the controller.

Where a reference to another patent has been inserted in the complete specification the controller
may delete such reference on the application of the applicant if other patent is revoked or
otherwise ceases to be enforced or specification of other patent is amended by deletion of
relevant claim or it is found in the proceedings before the court or the controller that relevant
claim of that other patent is invalid or is not infringed by any working of applicant’s invention.
REPRESENTATION AND OPPOSITION

Where an application for a patent has been published but a patent has not been granted, any
person may oppose against the grant of patent to the Controller on the grounds mentioned under
Section 25(1).

Prior to the Patents (Amendment) Act, 2005, only 'person interested could oppose the grant of
patent and 'Person interested' was to include a person engaged in or promoting research in the
same field as that to which the invention relates. However, after the amendment of 2005 any
person whether interested or not may oppose grant of patent. This has statutorily broadened the
concept of locus standi and has widened the scope of objection procedure by giving access to
‘any person’ who has as a concern for public interest, to raise an objection. According to section
25(2) any person interested may file post-grant opposition within one year.

GROUNDS OF OPPOSITION

According to Section 25(1) there are 11 grounds upon which any person in the public interest
can raise pre-grant opposition.

Firstly, the applicant for patent or the person under or through whom he wrongfully obtained any
invention or any part thereof from him or from a person under or through he claims,

Secondly, that the invention claimed in complete specification has been published before the
priority date of claim in any other application for a patent made in India or elsewhere,

Thirdly , the invention claimed in complete specification is also claimed in another complete
specification published on or after the priority date of applicant’s claim being a claim of which
priority date is earlier than that of applicant’s claim,

Fourthly, the invention claimed was publically known or publically used before the priority date
of the claim,

Fifthly, that the invention is obvious and clearly doesn’t involve any inventive step,
Sixthly, subject of any claim of complete specification is not an invention and hence, is not
patentable under the act,

Seventhly, that the complete specification doesn’t sufficiently and clearly describe the invention
or method by which it is to be performed

Complete specification does not or wrongly discloses the source or geographical origin of
biological material used for the invention, or

Invention is anticipated to have knowledge or otherwise available within the local limits of India.

The opposition can also be opposed on any other ground.

OPPOSITION BOARD

On receipt of notice of opposition, the controller shall constitute a board to be known as

OPPOSITION BOARD consisting of such officers as the controller may determine and may
refer such notice of opposition along with the documents to that board of examination which
shall conduct examination as per the procedure prescribed and submits its recommendation to the
controller who shall thereafter give the patentee and the opponent opportunity of being herd and
further to maintain or amend or to revoke the patent. Where the controller issues an order that
patent shall be maintained subject to amendment of specification or other document so patent
shall stand amended accordingly.

GRANT OF PATENT AND RIGHTS OF PATENTEE

Where an application for a patent has been found to be in order for grant of patent and either the
application has not been refused by the controller or application has not be found in
contravention of any of the provisions of the act so, patent is to be granted as expeditiously as
possible to the applicant or jointly in case of joint application with the seal of patent office and
date on which is granted and is to be entered in the register. On the rant of patent, the controller
is to publish the fact that the patent has been granted and there upon application, specification
and other documents related thereto shall be open for public inspection.

Every patent shall be in prescribed form and shall have the effect throughout India. It is generally
granted for when invention however, it is not competent for any person in suit of proceeding to
take any objection to a patent on the grounds that it has been granted for more than one
invention. According to section 45 every patent is to be dated as of the date on which the
application of the patent was filed. The date on which patent is granted , can’t be the date of
issuance of certificate, but it has to be the date on which orders are passed by the controller.

PERMITTED USES IN RESPECT OF A PATENT

The Patents Act 1970 allows certain uses in respect of a patent and also grant of patent is subject
to certain conditions like any machine, apparatus or other article in respect of which the patent is
granted or any article made by using a process in respect of which patent is granted maybe
imported or made by or used and any process in respect of which patent is granted maybe used
by any person for merely the purpose of experiment or research or maybe used by government
for its own purpose.

RIGHTS OF PATENTEE

The rights of the patentee are negative rights which are enforceable at the instance of patent
holder. A patent is to confer upon the patentee the exclusive right to prevent the third parties who
don’t have his content from the act of making, using, offering for sale, selling or importing any
product or a process whichever is the subject matter of the patent.

RIGHTS OF CO-OWNERS OFF PATENT

According to Section 50, where a patent is granted to two or more persons, each of them shall be
entitled to an equal undivided share in the patent unless the agreement to the contrary is
enforced.
AMENDMENT OF APPLICATION AND SPECIFICATIONS

On an application by the applicant for a patent, the controller may allow the application for the
patent or the complete specification or any document related to such conditions as controller may
thinks fit. The controller however, shall not pass pr refuse to pass any amendment order for a
patent/ specification/any other document while suit of infringement of patent before a court or
any or proceeding before high court for revocation of patent is pending. No amendment of
application for patent or complete specification or any document shall be made except by way of
disclaimer correction or explanation and no such amendment shall be allowed expect for the
purpose of in co-operation of actual fact and no complete amendment shall be allowed.

RESTORATION OF LAPSED PATENT

Where a patent has ceased to have affect by reason of failure to pay renewal fee within
prescribed time or any other reason under section 142(4) , the patentee of his legal representative
may within 18months from the date on which patent has ceased to have affect make an
application for restoration of patent and such application shall contain verified statement fully
setting out circumstances which led to failure to pay the prescribed fee.
REFERENCES

 BOOKS

 Ahuja V.K., LAW RELATING TO INTELLECTUAL PROPERTY, Lexis Nexis, Ed. 3rd, 2019(re-
print).

 Paul Meenu, INTELLECTUAL PROPERTY LAW, Reprint 2016.

 Bhandari M.K., LAW RELATING TO INTELLECTUAL PROPERTY, Central Law Publications.

 WEBSITES

 www.scconline.com
 www.lawfinder.com
 www.ilo.org