Monday, November 16, 2015

Patent Application outside India

An Indian applicant can file a PCT International application in the following manner:
a)   Filing in the Indian Patent Office acting as Receiving Office. In such cases, it is advisable that the application be accompanied by permission for foreign filing granted u/s 39 by the Controller through Form 25. If such permission is sought along with the application, there is a probability that the permission may be deferred and the application may be referred to DRDO / Department of Atomic Energy for their directions.
·         An international patent application can be filed in Indian Patent Office as a Receiving Office, in request form (PCT / RO / 101) in triplicate, which can be obtained free of charge from the Receiving Office or from the International Bureau of WIPO or can be downloaded from WIPO website.
·         In this case, the applicant shall make request for permission under Section 39. After the grant of such permission, the Indian Patent Office shall transmit the patent application to the IB. Applicant has to pay the prescribed transmittal fee in addition to the International Application fee and search fee.
b)   Filing directly in the International Bureau of WIPO after taking permission u/s 39 from the Indian Patent Office.
·         An international patent application can be directly filed in IB along with the prescribed fee, in request form (PCT / RO / 101), in duplicate. Permission u/s 39 is required for filing directly in IB. Such an application may also be filed electronically.
c)    After filing a patent application in India, anytime before the expiry of 12 months from the date of filing, file an international in IB of WIPO or in Indian Patent Office as Receiving Office. However, if the international filing is within 6 weeks from the date of filing in India, such filing shall be made after taking permission u/s 39 from the Indian Patent Office.
·         An international patent application can be filed within twelve months from the filing of patent application in India, in the Indian Patent Office, as a Receiving Office. However, if such an application is filed before the expiry of 6 weeks from the date of filing in India, permission u/s 39 is required. Applicant has to pay the prescribed transmittal fee in addition to the International Application fee and search fee.
·         An applicant has another option to file an International Application within twelve months from the filing of patent application in India, directly in IB, claiming the priority of the previously filed Indian Patent Application along with the prescribed application fee. A certified copy of the Indian Patent Application may be filed with the International application within sixteen months from the date of priority.
Many companies operating from India cater to foreign markets, especially US. Hence, such companies are keen on filing patent applications outside India. Such companies generally contemplate adopting two options:
1.      File patent applications in foreign countries without filing a patent application in India
2.      File a patent application in India, and soon after, file patent applications in foreign countries  

1. File patent applications in foreign countries without filing a patent application in India
When the first option is adopted, patent applicants have to complete a formality with the Indian Patent Office (IPO) before proceeding with patent application filing outside India. This formality has to be completed if one or more inventors in the patent application are residents of India. The formality requires the patent applicant to request the IPO to grant permission to apply for patent outside India. The IPO grants the permission within 21 days from the date of making the aforementioned request. Permission may be rejected by the IPO if the subject matter is relevant for defence purposes and atomic energy.

2. File a patent application in India, and soon after, file patent applications in foreign countries 
When the second option is adopted, patent applicants should not, immediately after filing the Indian patent application, apply for patent outside India. If the patent applicant wishes to file patent applications as soon as possible, then permission shall be sought from the IPO. On the other hand, patent applicants can wait for six weeks from the date of filing the Indian patent application, and thereafter proceed with foreign patent applications filing, if a notification has not been issued by the IPO in those 6 weeks to the contrary. This formality has to be completed, if one or more inventors in the patent application are residents of India.
Once the IPO grants permission or 6 weeks have passed since the filing of the Indian patent application, patent applications can be filed in one or more countries outside India. 

When an inventor or a company who is a resident in India, desires to file a patent application directly in a foreign country, it is necessary to obtain an FFL from the Indian Patent Office.
In 2002, the foreign filing license requirement was introduced in the Indian Patents Act of 1970. This requirement provided that any inventor who is a resident of India should file or cause to be filed a patent application for his/her own invention first in India; and only after a period of six weeks after the date of filing of the patent application, a filing could be done in a country outside India. Alternatively the inventor was required to obtain the Controller’s permission for filing the patent application outside India. The scope and applicability of section 39 did not create much of a stir among inventors in India, but there has been a lingering confusion over the definition and coverage of the term “residence” provided in section 39. Since the written permission takes time resulting in a loss of priority, filing an application first in India is the preferred way of complying with these provisions.

Prima facie, the text of the Section 39 seems to mandate that a foreign filing license must be obtained before the filing of a PCT application, this would cause a detriment to every applicant filing a PCT application via the Registered Office. In such cases, the international filing date would only be granted after the Section 39 clearance is obtained. On the other hand, an applicant who first files for an application domestically, would have the right to claim initial filing date as the international filing date. This approach seems to discriminate between the two methods for filing a PCT application under the Act. Any applicant pursuing a PCT route should be aware of the fact that filing a PCT application by way of Section 39 clearance may lead to a waste of, in many cases, extremely precious days, with regard to the international filing date.

Violation of the above requirement results in criminal liability under section 118 of the Indian Patent Act of 1970, in which the term of imprisonment may extend to 2 years or a monetary fine imposed on the inventor, in addition to abandonment of the patent application or revocation of the patent even if it is already granted. Hence it very important to abide by the mandatory requirements stated in the section 39 of the Indian Patent Act of 1970, to fortify oneself from the ramification of Section 118 of the said Act.

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Opposition Proceedings under the Indian Patents Act

Under the Indian Patents Act 1970, third parties are given an opportunity to file oppositions against the grant of any patent. There is a specific duration specified in the act for the same. Section 25 of the Act deals with Opposition .The opposition period involves two stages- pre-grant and post-grant.

Pre-grant opposition (sec. 25(1)):
The Pre grant opposition can be made at any time after the patent application has been published but before the grant of patent.  Ordinarily, a patent application is published only after a period of 18 months from the date of filing the application or date of priority whichever was earlier. Any person may, in writing to the controller, contest the grant of a patent. The controller then on his discretion and after considering the evidences and statements submitted by the Patent applicant, decide to grant the patent or refuse it or require amendment to the complete specification to his satisfaction.

Post-grant opposition (sec.25 (2)):
The post grant opposition can be made at any time after the grant of patent but before the expiry of 1 year from the date of publication of grant of patent. Any ‘interested person’ can give a notice to the controller for post grant opposition. The person desiring to give the notice of opposition shall state the nature of his interest in the matter. Person interested includes a person engaged in, or in promoting research in the same field as that to which the invention relates. It may be an organization that has a manufacturing or trading interest in the goods connected with the patented article or which has a financial interest in manufacturing such goods or which possesses Patents relating to the same subject. The Controller constitutes an Opposition Board comprising of 3 members who conduct the examination of the Patent and submit their report to the controller. After hearing both the parties and upon consideration of the recommendations of the Board, the controller shall decide upon the opposition and inform the parties about the same with reasons thereof. The parties if not satisfied with the decision can appeal to the Appellate Board.

Grounds for Opposition:
The grounds for both the pre grant and post grant oppositions are the same. The Act enumerates eleven grounds on which opposition can be made. They include:
• Wrongful obtaining of the invention; • Anticipation in view of prior publication in India or elsewhere;  • Anticipation in view of prior claiming in India;• Anticipation in view of prior public knowledge or public use in India;• Obviousness or lack of inventive step in view of prior publication in India or elsewhere, or prior public use in India;• Not being an invention or not being patentable under the act;• Insufficiency and lack of clarity of description of the invention;• Failure to disclose information or provision of false information pertaining to related foreign filing patent application;• Failure to file a convention application within 12 months of filing the first application in a convention country;• Failure to disclose or wrongful mention of the source and geographical origin of the biological material used for the invention; and • Anticipation in view of traditional knowledge of a community (oral or otherwise) anywhere in the world.


Pre Grant:
The Pre grant opposition is made by way of ‘representation’ to the Controller of Patents within a period of three months from the date of publication or before the grant of patent whichever is later. The representation must include a statement of case; evidence, if any, in support of the representation; and a request for a hearing, if desired.

 However, the Controller shall consider the representation only when the request for examination of the application has been filed. The Indian patents regime provides that a request for examination can be filed, even by an interested person, if he or she can provide evidence of his or her interest. After considering the representation, the controller notifies the Patent applicant with a copy of the representation. Usually, alongside such notification, the controller also issues an examination report, citing his or her observations based on the examination of the application for compliance with the act, and the patentability of the invention. The applicant is required to respond to the notification with a statement and evidence (if any) in support of the application within three months of the date of the notice. If on the perusal of the representation, the Controller is of the opinion that the application for the grant of the patent should be refused or the application should be amended, he shall give a notice of the opposition to the applicant. The applicant has one-month time from the date of the receipt of the notice to file statement and evidence supporting the application. After considering the representation and submission and hearing the parties, the controller shall simultaneously either reject the representation and grant the patent or accept the representation and grant the patent. The Controller is required to deliver his decision ordinarily within a period of one month from the date of completion of the proceedings.

Post Grant:
The post grant opposition is made by way of ‘notice of opposition’. The opponent must give the notice of opposition in the prescribed form to the Controller of Patents in duplicate. Along with the notice, opponent shall send a written statement in duplicate setting out the nature of his/her interest, the facts on which he/she bases his/her case, the relief that he/she seeks and evidence (if any) and shall deliver a copy thereof to the patentee.

Upon receiving the notice, the Controller shall constitute an ‘Opposition Board’ that consists of three members and shall nominate one of the members as the Chairman. The examiner who has dealt with the impugned patent application at the time of the grant is disqualified from being a member. The Opposition Board would examine the notice of opposition and shall forward a report to the controller within a period of three months from the date on which the documents were forwarded to it.
If the patentee desires to contest the notice of opposition, he/she shall leave the reply statement setting out fully the grounds upon which the opposition is contested and evidence within a period of two months from the date of receipt of the opponent’s written statement and notice. The patentee shall also forward a copy of his statement and evidence to the opponent. The opponent has the opportunity to rebut the case of the patentee. He/she may within a period of one month of the receipt of the patentee’s reply statement and evidence leave evidence strictly in reply confined to matters in the patentee’s evidence. After this stage evidence cannot be delivered except with the leave of the Controller. With respect to further evidence filing, either party shall do so before the Controller‘s notification on the fixation of the date of hearing

After the completion of presentation of evidence and after receiving the recommendations from the Board, the Controller shall fix a date for hearing. Both the parties shall be given a notice of not less than 10 days of such hearing. If either of the party desires to be heard, it shall give a notice along with the prescribed fee to the Controller. The Controller may refuse to hear any party which has not given such notice and fee. The Controller may require the members of Opposition Board to be present in the hearing. After hearing both the parties the controller shall give a reasoned decision.

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Thursday, November 5, 2015

The Proposed Patent (Amendment) Rules 2015

The draft Patent (Amendment) Rules 2015 have been published recently for public comments. The Patent Amendment Rules 2015 propose certain amendments to be made to the Patent Rules 2003. Now that digitalization has grown tremendously, the Patent rules 2015 focuses on incorporating these developments in the field of IPR as well. Many rules employing electronic transmission of applications and e-filing have been proposed. Moreover certain additional forms have been added to allow expedited examination for International Applications and for withdrawing applications. The amendments also tend to recognize the electronic communication devices. The fee structure has been varied a little to comply with the newly inserted Rules. Moreover, the formats of all the forms have also been changed to render it fit for electronic transmission. The proposed amendments have been tabulated hereunder for better understanding.  


Clause (ca) inserted to define electronic transmission duly authenticated.
Requires patentee to furnish to the controller an address for service in India.
Requires patentee to furnish to the controller a postal address for service in India and an e-mail address and also a mobile number provided by a service provider in India.
(1)    Includes courier service

(2)    Written communication addressed to the patentee at his address.

(3)    Courier service included
(4)    Courier service included

(1)    Courier service omitted
(1A) inserted after sub rule (1) which allows patent agent to send documents through electronic transmission duly authorized.
(2)    Written communication addressed to the patentee at his postal address or e-mail
(3)    Courier service omitted
(4)    Courier service omitted
After sub rule (5) sub rule (6) inserted – controller may condole the delay in case of war or natural calamity.
(2)(a)fee may be paid in cash or sent by bank draft or cheque.

(2)(a) fee may be paid in cash or through electronic means or sent by bank draft or Banker’s cheque.
(2)(b) omitted
(4) further adds - if controller is satisfied that during online filing process, fee is paid more than once for one proceeding, additional fee shall be refunded.
If any amount in excess of requisite fee is paid for any proceeding- not refundable.
(4A) inserted- fee paid for request for examination may be refunded to the extent prescribed in First Schedule.
(2) where no form specified for any purpose- applicant may adopt any form in 2nd Schedule.
(2) where no form specified for any purpose- applicant may use form30 of 2nd Schedule.
(4)….referred to in detail, in the specification.

Proviso- claims as those left with the provisional specification.
(7)(b) abstract to contain a summary of technical field,technical problem and solution and physical use or uses of the invention.

(4) …..referred to in detail, in the description and claims and the features illustrated by a drawing shall be followed by the reference sign in parenthesis used in that drawing.
Proviso- claims as those left or filed with the provisional specification.
(7)(b) abstract to contain a summary of technical field, technical advancement as compared to existing knowledge and principle use of the invention excluding speculative uses.
(8) (9)&(10) substituted.

Substituted – page incorporating amendments shall be retyped and submitted to form a continuous document.
Form 1
Form 1A

Clause (1A) inserted – request for examination may be withdrawn in Form 29.
(5)    Controller shall dispose of the application within 6 months

 not included
Inserted – expedited examination in Form 18A For PCT application only through electronic transmission (also specifies the grounds to apply).
Not included
Inserted – opposition proceedings
Request for withdrawing application under section 11B- no form prescribed (in writing)
Prescribes Form 29A

Sub rule (6) inserted to allow hearing to be conducted through video conferencing or other communication devices.
(4)applicant shall file his statement and evidence if any within 3 months from the date of notice.
(5).…require the complete specification to be amended…..
(6)……the Controller shall proceed further simultaneously either rejecting the representation and granting the patent or accepting the representation and refusing the grant of patent on that application, ordinarily within one month from the completion of above proceedings.
(4) applicant shall file his statement and evidence if any within 3 months from the date of notice with a copy to the opponent.
(5)).…require the complete specification and other documents to be amended…..
(6)…..the controller shall decide on the representation, ordinarily within one month from the completion of above proceedings.

Clause (3) inserted- for inventions relating to defence or atomic energy- period of 21 days shall count from the date of receipt of consent from the Central Government.
Issue certificate of the payment.
Issue certificate of renewal of the patent.
(2)(ii) has at least 15yrs,Practical or research experience.
(2)(ii) has at least 15yrs, technical, practical or research experience.
Not included
Inserted –disqualifications for inclusion in Roll of Scientific advisers
Furnishing his bio-data
By furnishing his bio-data

Further added- details of their renewal of registrations.

Further added-after notification of such examination and within the period as specified in the notification.

Inserted  clause (e)- if he ceases to be a citizen of India.
Not included
Inserted – Adjournment of hearing .
·         request if there exists a reasonable cause- at least 5 days before date of hearing
·         not adjourn for more than 3 occasions
·         Each adjournment not to be for more than 15 days.

Inserted clause (2)- certified copies can be obtained expeditiously within 1 week
Authorization of an agent shall be filed in Form 26 or in the form of a power of attorney.
Authorization of an agent shall be filed in Form 26 or in the form of a power of attorney at the time of filing of documents/applications or within a period of 3 months from the date of filing such application/ document, failing which no action shall be taken on such application/documents for further processing.
Power to extend time prescribed- 3 months
Power to extend time prescribed- 1month
Schedule 1

·         clause(iii) inserted in Entry 1 for listing of nucleotide and amino acid.
·         Clause (ii) and (iii) inserted in Entry 4 for time extension under Rule 24B and 24C.
·         Entry 9A inserted for filing representation opposing grant of Patent.
·         Entry 14A and 14B inserted for expedited Examination.
·         Additional entries inserted from Entry 50-54.
Schedule 2
Heading – FORMS

·         Form 18A inserted for expedited examination.
·         Form 29 inserted- request for withdrawal of request for examination and request for withdrawal of application for Patent.
·         Form 30 inserted- Used when no other form is prescribed.
*The formats of all forms are also changed in the Patent (Amendment )Rules 2015.

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Monday, November 2, 2015



A novel and non obvious innovation that has an industrial application is patentable in India. The Indian Patent Act does not provide any definition of the term “patent”. Instead it has only provided for inventions which are not patentable as under Chapter III of the Act. Any invention regardless of satisfying the Novelty, Utility and Non obviousness test, if falls within any criteria under Section 3 and 4, is not patentable. Section 3 specifically mentions sixteen exclusions which cannot be patented in India.

A frivolous invention or the one contrary to established natural laws is not patentable. A perpetual motion machine or a machine that gives more than 100% performance cannot be patented according to this clause. An  invention whose commercial exploitation is contrary to public order and morality or which causes serious prejudice to human, animal, plant or the environment is not patentable. Thus, a device for house breaking or a gambling machine cannot be granted a patent. An application which helps one hacking into email accounts of others can also not be patented. A terminator gene technology cannot be patented as it poses a serious threat to the animal and plant life as well as to the environment. Only genetically modified micro-organisms which do not fall under section 3 (b) are patentable.

The mere discovery of a scientific principle or the formulation of an abstract theory or discovery of any living thing or non-living substance occurring in nature is not patentable. This means the discovery of an existing phenomenon like a natural gas, or an element cannot be patented. It is for the simple reason that the discovery of the phenomenon or the theory is not an invention i.e. neither a new process nor a new product but a mere finding. Similarly, the mere discovery of any new form of a known substance which does not result in the enhancement of the known efficacy of that substance or 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 process results in a new product or employs at least one new reactant cannot be patented. The crystalline forms of known substance cannot be filed for a patent grant under this exclusion. New uses of the plant neem cannot be patented as per this clause. However, salts, esters, ethers, polymorphs, metabolite, pure forms, particle size, isomers, complexes, combinations and derivatives of a known substance with enhanced efficacy are patentable. Clause (e) excludes substances obtained by mere admixture resulting only in the aggregation of the properties of the components is not patentable nor is the process by which such substance is obtained.  However, Synergistic formulations are patentable. It means an admixture where one drug increases the other's effectiveness will be considered an innovation to be patented under the Act. A novel synergistic herbal formulation for diabetes cure comprising extracts from selected Indian medicinal herbs was granted the patent number 239060 in 2010.

Mere arrangement or re-arrangement or duplication of known devices, each functioning independently of one another in a known way is exclusion under clause (f). Thus, a torch attached to a bucket or a clock and a radio in a single closed cabinet cannot be patented as they work independently of each other. But, if such an arrangement results in a different use of the combined product then it is patentable.

A method of agriculture or horticulture, for example a new type of soil, or a new method of cultivating wheat cannot be patented. But this clause does not exclude filing for a patent of a new, better working agricultural equipment.

Any process for the medicinal, surgical, curative, prophylactic diagnostic, therapeutic or other treatment of human beings or any process for a similar treatment of animals to render them free of disease or to increase their economic value or that of their products for example process of carrying out a surgery or blood transfusion is not patentable. It is important to note that processes in this case are not considered inventions. However, systems and apparatuses are still considered as patentable subject matter. Plants and animals as a whole or parts thereof other than micro-organisms but including seeds, varieties and species and essentially biological processes for production or propagation of plants and animals is another exclusion under clause (j). Examples of it includes Clones of animals and new varieties of plants, a process for production of plants or animals if it consists entirely of natural phenomena such as crossing or selection, essentially biological process etc.

A mathematical method or business method or algorithms or computer programme per se is not patentable under clause (k). This exclusion about computer programmes per se has raised variety of questions about software patentability in India in the growing technological and digital world. Therefore, a computer program code in itself can be given protection under the Copyrights Act as a “literary work” but is not patentable. However a new calculating machine or combination of hardware and software is patentable. 
A literary, dramatic, musical or artistic work or any other aesthetic creation whatsoever including cinematographic works and television productions comes under the Copyrights Act protection and therefore is left out of the purview of Patents Act.  A mere scheme or rule or method of performing mental act or method of playing game example method of learning a language, or solving a crossword puzzle etc is excluded from Patent Law application. However, novel apparatus for playing game or carrying out a scheme is patentable. Presentation of information in any manner or method by spoken words, visual display, diagrams or symbols are not be covered under the Patent Act. Topography of integrated circuits is also not patentable. They can only seek protection under Semiconductor Integrated Circuit Lay-out Designs Act. Inventions which are of traditional knowledge or an aggregation or duplication of known properties of traditionally known component or components are not patentable. However, any value-addition using traditional knowledge leading to a new process or product, which is novel with inventive step and industrial applicability, can be patented, for example the extraction of a natural insecticide Azadirachtin from Neem.

Section 4 excludes inventions relating to atomic energy falling within Section 20(1) of the Atomic Energy Act, 1962. It says that no patents shall be granted for inventions which in the opinion of the Central Government are useful for or relate to the production, control, use or disposal of atomic energy or the prospecting, mining, extraction, production, physical and chemical treatment, fabrication, enrichment, canning or use of any prescribed substance or radioactive substance or the ensuring of safety in atomic energy operations. This exclusion clearly makes it evident that public interest if of prime importance to our patent law makers. This exclusion ensures that any invention out of atomic energy, if patented, can result in disastrous effect for the public at large.

The failure of the parliament to define the term “patent” and specifically providing for inventions which are not patentable has been largely criticized. Section 3 of the act has been in question for various ambiguities, especially in the cases of computer program patentability and pharmaceutical industries. The IP authorities in India did realize the growing need to define computer programmes per se and its patentability and published its “Guidelines for Examination of Computer Related Inventions” in the year 2013 on its website. The law makers must address this lacuna in the act to avoid further confusions and contradictions. 

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