As we all know that patent has not been properly defined in the patent act, 1970. Section 2(1) (m) defines “patent as, a patent means a patent for any invention granted under this act”. So what we can define about patent is “patent is the exclusive right to use or exercise an invention granted to a person for a limited period in consideration of the disclosure of the invention”.
The patent granted by the state ensures that the inventor, patentee or licensee as the case may be, will enjoy a limited monopoly in respect of the use of such invention. However, unless a patent is granted, no protection can be sought in respect of the invention. The patent is granted only when an application is made to the competent authority under the act and it fulfills all the prescribed conditions. The state doesn’t grant any patent suo motu i.e. on its own.
In patenting an invention, the applicant for the patent must disclose his invention to the authority. Therefore a patented goods or articles are open and available to the public, though they are produced legally, from using it till the patent grant or monopoly period expires. It is not obligatory for an inventor to get a patent for his invention, but a patentee always enjoys certain advantages. If the inventions are not patented and are used secretly by the inventors or proprietors, they alone have the responsibility of protection. In case of fraudulent use by others of such secret inventions, forming part of trade secret, the inventor or the proprietor has a legal remedy in case of fraudulent use by another or use without consent. The government doesn’t ensure any protection in such cases.
There are very similar qualities between UK patent and INDIAN patent obtaining procedures. Now we will discuss at length the procedure for grant of patent in India. For that we need to look after our Indian patent act, 1970 with respect to its provisions relating to obtain a patent.
But we need to remember that patent is granted not for the benefit of the patentee but for the benefit of the public at large. Our act reflects the legislative intention to maintain a balance between public interest and individual interest. The law enables the grant of patents in respect of inventions which are ‘Original’, ‘Novel’ and ‘Useful’.
FIRST STEP: SUBMISSION OF AN APPLICATION AND SPECIFICATION
In so far as the procedure for obtaining the patent in India is concerned, it starts with the filing of the application for patents and ends with the grant and sealing of the patents. Chapter III and sections 6 to 11 deals with this part under the patents act, 1970.
- Application for patents:- an application for an invention may be made by any of the following persons i.e.-
a. Any person claiming to be the true and first inventor of the invention;
b. Any assignee of such invention;
c. The legal representatives of any deceased person who could be either the first true inventor or assignee;
Therefore an application can be made by any of the above 3 categories of persons. In the case of assignee of such invention, he must have the right to make such application. A firm can also apply for a patent as assignee.
Every such application should be made in the prescribed form and filed in the patent office. The term “specification” has not been defined in the patent act but its contents are stipulated in section 10 and the types are suggested in section 9 of the act. It denotes the description of the invention and other details like best mode of working it.
A patent specification is a technical document describing the invention. A specification may be provisional which gives the initial description of an invention when the application is filed.
A complete specification gives full and sufficient detail of an invention in such a manner that a person skilled in the art can use the invention when he reads such a description. The purpose of filing a specification is to make available the invention to the public on the expiry of the term of patent. Section 10 lists the contents of complete specification.
Specification should be read as a whole. The proper way to read specification is not to read the claim first and then see what the full description of the invention is, but first to read the description of the invention. The patentee cannot claim more than he desires to patent.A specification must be construed impartially and the court should generally slow to construe it against the patentee. But the construction must not be only a benevolent but a reasonable one.
Every specification whether provisional or complete should describe the invention, it should begin with a title sufficiently indicating the subject matter to which the invention relates. If necessary, drawings may be supplied. If the controller to whom the application is submitted feels that an application should be supplemented by a model or sample of such model, the same should be furnished. However such model or sample is not deemed to be a part of the specification. Every complete specification should
(i) Fully and particularly describe the invention and its operation and use and the method etc.
(ii) Disclose the best method of performing the invention, and
(iii) End with a claim or claims defining the scope of the invention for which protection is claimed.
As regards provisional specification, it should give sufficient description to indicate the subject matter like in the case of complete specification beginning with the title. The basic objective of the provisional specification is to get the advantage of a prior date of the patent. The applicant gets a maximum period of 12 months within which he can file complete specification, after filing a provisional specification. During this time he may intensify his research to perfect the method of invention. Thereafter he can get advantage of priority in dating the claim. There is a provision also for post-dating of the patent under section 17 of the act but it can be done only to the date of filing of the complete specification. In fact it is the skill in drafting the specification, which is vital in obtaining the patent.
Sec. 10(2) provides that a controller may require drawings to be supplied which shall form part of the specification.
It is not necessary for a specification to explain all the advantages of an invention. It is also not necessary to describe the manner of performance of the invention with that length of detail with which the specification of the manufacturer of something is usually put before the workman, who is engaged to manufacture it.
SECOND STEP: PUBLICATIONAND EXAMINATION OF THE APPLICATION
The patents act, 1970 under Chapter IV and sections 11 A to 21 deal with the publication and examination of the applications for the patents filed before the competent authority. The act provides that the application for patent shall ordinarily be open to the public for such period as may be prescribed. However, the applicant may request the controller to publish his application before the expiry of the period prescribed and subject to certain exceptions, the controller shall publish such application as soon as possible.
When the complete specification has been filed in respect of an application for a patent, the application along with the specification should be referred by the controller to an examiner.
The examination system followed in India entrusts the responsibility of deciding the validity of the application. The examination is conducted based on certain principles and parameters. The examination or search of the specification is done by the examiners in the patent office on a reference by the controller, to determine its compliance, procedurally as well as substantively with the provisions of the act and the rules framed there under. For the sake of convenience, the examination of the application may be divided into two types:
1. Formal examination which determines whether the application complies with the prescribed form, fee, particulars to be furnished and documents to be submitted;
2. Substantive examination, which determines whether the matter is an invention and whether the specification requirements under the act are complied with.
This includes a search to determine prior use, prior claims, prior publication and prior public working. A prior publication to be valid and proper, citation must substantially disclose the subject matter of the applicants’ invention. Therefore where the opponents failed to indicate all the steps and the invention in any of the publications relied by them, the opposition would be liable to be rejected.
Where the opponent claims that the prior publication is in either a foreign language or a language other than English, it would be necessary to produce the translation. If he fails to produce translation, the opposition would be liable to be rejected.
Thereafter the examiner to whom the application is referred by the controller should examine the test of definition of invention i.e. novelty and utility by the national standards. Then the test of inventiveness or non-obviousness is followed. After making the above examination, the examiner should ordinarily make the report to the controller within a period of 18 months from the date of reference. The examiner should also make an investigation for the purpose of ascertaining whether the invention has been anticipated by the publication before the date of filing of the applicant’s complete specification dated on or after the 1st day of January 1912 or whether the claim is already claimed in any other complete specification dated before claiming the priority date earlier than that date.
The examiner makes a search in the applications, specifications and other documents of prior applications and specifications of patent already granted, to see whether the same invention has already been published or claimed or is subject matter of existing or expired patents. The examination of application shall be made in accordance with Form 18 of patents rules, 2003.
EFFECT OF EXAMINATION AND INVESTIGATION AND VALIDITY OF PATENT
Section 13(4) of the act clearly states that the examination and investigation mentioned above doesn’t warrant the validity of any patent. The Delhi high court has recently explained the presumption of validity as under M/s. Stand pack Pvt. Ltd. V. M/s. Oswal Trading Co. Ltd.,
Sec. 13(4) of the act provides that the examination and investigations required under sec. 12 and 13 shall not be deemed in any way to warrant the validity of any patent, and no liability shall be incurred by the central government or any officer thereof by reason of or in connection with any such examination or investigation or any report or other proceedings consequent thereon. Thus, grant of patent in any manner doesn’t guarantee the validity of the patent. Reference may also be made to the provisions of section 64 of the patents act which deals with revocation of patents. It provides that a patent whether granted before or after the commencement of the act, may, on the petition of any person interested or of the central government or on a counter claim in a suit for infringement of the patent, be revoked by the high court on the ground that the subject of any claim of the complete specification is not an invention with the meaning of this act or that the invention so far as claimed in any claim of the complete specification is not new having regard to what was publicly known or publicly used in India before the priority date of the claim or to what was published in India or elsewhere in any of the documents referred to in sec. 13 or that the invention so far as claimed in any claim of the complete specification is obvious or doesn’t involve any inventive step, having regard to what was publicly known or publicly used in India, or what was published in India or elsewhere before the priority date of the claim.
It has been held in a series of judgments that no presumption of validity attaches to a patent granted by the controller under the act notwithstanding examination and investigation made under section 12 and 14. In this connection reference may be made to a decision where it was held that despite all the safeguards and circumspection contemplated in various provisions of the act against grant of patent in respect of a spurious, purloined or fake invention, the legislature minced no words in clarifying its intendment that no presumption of validity under the act, notwithstanding examination and investigation made under sections 12 and 13 thereof.
In this connection reference may be made to a decision of the Madras High Court in V. Manicka Thevar v. M/s. Star Plough Works, wherein it was held that if from the objections raised by the defendant it is clear that a serious controversy exists as to whether or not the invention involves any new inventive skill having regard to what was known or used prior to the date of the patent; courts would not grant an injunction restraining the defendant from pursuing his normal business activity. It was held that an interim injunction would not be granted if the defendant disputes the validity of the grant. In M/s. Niky Tasha India Pvt. Ltd. V. M/s. Faridabad Gas Gadgets Pvt. Ltd. it was observed by this court that no injunction should be granted when there is a serious question of the validity of the design to be tried in the suit and an application for cancellation has been made.
After the controller receives the report of the examiner, he has to consider the report. If the report is adverse to the applicant or requires any amendment of the application or of the specification to ensure compliance with the provisions of this act or the rules, the controller should, before disposing of the application, communicate the summary/gist of objections to the applicant. The applicant is entitled to be given an opportunity to present his case, and he must be heard if he so desires.
THIRD STEP: OPPOSITION TO GRANT OF PATENT
The next step in acquisition of a patent is the possibility of an opposition to the grant of patent. Chapter V and Sections 25 to 28 of the act deal with this aspect once the complete specification is accepted and it is advertised in the gazette, stating the reasons for such an acceptance, it will be thrown open to the public to oppose the grant of patent if any reasonable grounds exists therefore. At any time after the date of advertisement of the acceptance of a complete specification, any person interested may give notice to the controller, stating his opposition to the grant of patent. There are some grounds given for opposition such as:
- Wrongful obtaining of invention
- The inventions and claim of complete specification is publicly known.
- Already a similar complete specification was claimed with earlier priority date
- The claimed invention doesn’t involve inventive step and obvious.
- Subject matter is not an invention under the act.
- Complete specification doesn’t sufficiently describe the invention or best method.
- Applicant has failed to disclose to the controller the information required by sec. 8 etc.
Therefore a person who wants to oppose the grant of patent may oppose on any of the above grounds, by giving a notice of such opposition to the controller. Once the notice is given, the controller should notify the applicant and thereafter should provide an opportunity of hearing before deciding the case. If the controller finds, in any opposition that the invention claimed in any claim of the complete specification was obtained from the opponent, he may direct that the application shall proceed in the name of the opponent as if the application and the specification had been filed by the opponent on the date on which they were actually filed. However controller may also refuse to grant patent even without opposition, if he finds that the invention was already published and dated on or after the 1st day of January 1912.
FOURTH STEP: GRANT OF PATENT
This is the last stage in acquiring a patent. Chapter VIII and sections 42 to 53 deal with this process. Where a complete specification in pursuance of an application for a patent has been accepted and
(i) The application has not been opposed within the time prescribed; or
(ii) The application has been opposed and it has been decided in favour of the applicant; or
(iii) The application has not been refused by the controller by virtue of any power vested by him,
On the request made by the applicant, the patent should be granted to the applicant or applicants as the case may be. Thereafter the controller should direct the patent to be sealed with the seal of the patent office and the date of sealing should be entered in the register.
Generally a request for sealing of a patent could be made not later than the expiration of 6 months from the date of advertisement of the acceptance of the complete specification. However this period may be released in case of (i) pendency of litigation before the controller or the high court, (ii) on the date of the applicant or any of them. The original period of 6 months also can be extended by a maximum of 3 months.
Once the patent has been sealed in pursuance of an application, at any time after that the controller may amend the patent by substituting other person’s name if he is satisfied that (i) the patentee is died; (ii) in case of patentee being a body corporate, it had ceased to exist, before the patent was sealed.
CONCLUSION
As soon as the inventor gets a patent he gets a protection under sec. 53 of the act for the period of 20 years from the date of filing of the application for the patent. The term of patent can be cut short by the grant of compulsory license to any person to work the invention when the patentee fails to work the invention in public interest.
A patent is granted not for the benefit of the patentee but for the benefit of public at large. The patent act reflects the legislative intention to maintain a balance between public interest and individual interest.
The patent grant system in India is slightly time consuming and cumbersome as well as expensive and that is why there is a need to amend the procedure to make it easy and cheap and off course time saving. Usually inventor goes for PCT for obtaining a patent rather than going for home procedure because he gets patent in many countries at same priority date and its cheap and time saving process also.
It has been observed that at the stage of opposition many frivolous objections are lodged and there is no proper screening system available with patent office to screen such frivolous claims and opt for proper oppositions only which will save the time in between.
There are some changes required under Indian patent regime to make the patent granting procedure more practical and attractive which will definitely suffice the intent of legislature to encourage new technology and inventions. Due to this more and more inventors will disclose their inventions which can be used to serve the humanity at large. The protection must be very effective in such cases and inventor must be assured of full proof security to his invention.
Kishor Mahadeo Pole General Manager, M/s. Wal Chand Nagar Industries V. M/s. Thermax Private Ltd., 1988 PTC 213 (PO).
