This article has been written by Arushi Gupta, 4th year BA LLB student of D.E.S. Law College, Pune University. In this article she discusses “Patent: Procedure for filing an Application”.
Introduction
The World Trade Organisation defines intellectual property rights as the rights given to persons over the creations of their minds. Patent is such form of intellectual property rights, similar to Copyright, Trademark and Design. Patent gives exclusive rights over the use of such creations for a specific period of time. In India, patents are governed by the Patents Act, 1970, which enumerates provisions regarding everything about patents, including the procedures for filing applications for patent.
Who may apply for a Patent?
Section 6 of the Act provides for the persons entitled to make an application for a patent. Any person who is the first and true inventor of an invention can apply for a patent in regards to that invention in the patent office. However, such a right to make an application can be transferred in favour of an assignee of the first and true inventor of the invention. In such case, the application has to be accompanied by a proof of right to make an application[1] along with a declaration that the person so claiming is the first and true inventor of the invention[2]. An application for a patent may also be filed by a legal representative of a deceased person who was entitled to such patent before his death.
Different types of Applications under The Patents Act, 1970
Convention Application:
According to Section 135 of the Act, a convention application is an application made under the Act within 12 months from the date on which the application for a patent in respect of an invention in a convention country[3] (also called ‘basic application’). The application is filed in terms of an international treaty such as the Patent Cooperation Treaty (PCT) designating India. In such a case, the priority date of the complete specification is the date on which the basic application was filed, if the claim is based on the matter disclosed in the basic application.
For the purpose of determining the period of 12 months in case the applicant has furnished two or more similar applications, the period of 12 months starts from the date on which the earliest application was furnished.
International Application:
International application is an application that is filed in accordance with the Patent Cooperation Treaty. Such applications provide patent protection in a large number of countries through a single application instead of filing a number of regional applications. Such application is treated as an application for a patent under the Act if it is filed before the Controller in India. The filing date of such application is considered to be the international filing date as accorded under the Patent Cooperation Treaty. The complete specifications include descriptions, drawings, abstracts and claims filed along with the International application under the Act.
Divisional Application:
Section 16 of the Act deals with the division of an application. Such application may be made either at the desire of the applicant before the grant of the patent or on the demand of the Controller to remedy the objection raised by him on the grounds that the claims of the complete specification relate to more than one invention. In such case, the applicant may file further application in respect of the invention mentioned in the provisional or complete specification, as the case may be, along with the already mentioned application. However, the complete specification furnished with the further application must not include anything not already mentioned in the specification filed along with the previous application.
It may be noted that the further application filed along with the complete specification is deemed to be filed on the date on which the previous application has been filed and is proceeded with accordingly as a substantive application.
Application for Patent of Addition:
Section 54 of the Act states that when an applicant has made an application for patent of an improvement or modification of an invention described in complete specification filed and the applicant has either applied for the patent of that invention or is the patentee of the invention, then he may be granted a patent for that improvement or modification as the patent of addition.
Form of Application for a Patent
Ordinary Application
According to Section 7 of the Act, the application for a patent shall be filed in the Patent Office in the prescribed form. Every application for a patent shall be accompanied by a provisional or complete specification. Such provisional or complete specification need not be accompanied in case of convention application or an application made under the Patent Cooperation Treaty.
In case the applicant has furnished provisional specifications along with the application, he shall submit a complete specification within 12 months from the date of filing the application, failure of which may result in the abandonment of the application[4]. In case two or more applications are filed regarding cognate inventions and where such inventions can be included in one patent, a single complete specification may be filed in respect of all the inventions, at the discretion of the Controller[5]. After furnishing of the complete specification, the provisional specification is cancelled and the application is post-dated to the date on which the complete specification is filed.
Convention Application
In case of a convention application, it shall be accompanied by the following[6]:
- The complete specification;
- The date and the convention country in which the application was made or in case of two or more applications, the first application was made.
- A statement purporting that no application has been made before that date in any convention country by the applicant or by any person from whom he derives the title.
In addition to the aforementioned, a convention application may also include the following[7]:
- Any specifications or corresponding documents, in addition to the complete specification filed or deposited by the applicant in the patent office of the convention country, within the time period as specified by the Controller;
- If the document is in a foriegn language, the translation of the same along with an affidavit, as required by the Controller;
- A certificate by the the official chief or the head of the patent office of the convention country certifying the date on which the application was made in the convention country
What Constitutes a Specification?
Every specification, whether provisional or complete shall contain the following:
- A description of the invention, beginning with the title indicating the subject matter of the invention;
- A detailed drawing of the invention (if required by the Controller)
- A model or sample of anything that illustrates the invention or anything alleged to constitute an invention[8].
In addition to the aforementioned, every complete specification shall also constitute[9]:
- Full description of the invention including its operation, use and the method by which it is performed;
- Disclosure of the best way to perform the invention and which ensures safety as well;
- Claim defining the scope of invention;
- An abstract describing the technicalities of the invention.
In the case when the applicant files a complete specification after the provisional specification, the complete specification shall include the developments or the additions that has taken place in respect of the invention mentioned in the provisional specification, being the developments or additions that would entitle the applicant to make separate application under the provisions of Section 6 of the Act.
Priority Date
According to Section 11 of the Act, the priority date of the claims which are based on the matter disclosed in the complete specification is the date on which such complete specification is furnished. Following are the ways in which priority dates are decided in different scenarios:
When a Complete Specification is filed in Pursuance of a Single Application:
According to Section 11(2) of the Act when a complete specification is filed in pursuance of a single application along with which provisional specification and a specification as mentioned in Sub-section (3) of Section 9 is filed, and the claim is based on the subject matter disclosed in those specifications, then the priority date is the one on which the relevant specification is filed.
When a Complete Specification is furnished in Pursuance of Two or More Applications:
Section 11(3) of the Act provides for the priority date of the claim when a complete specification is furnished in pursuance of two or more applications filed along with the provisional specifications. In such cases, if the claim is based on the subject matter disclosed in one of the specifications, then the priority date shall be the date on which such application which was accompanied by the specification was filed. Whereas in cases where the claim is based on the subject matter disclosed partly in one specification and partly in the other one, then the priority date shall be the date on which application accompanied with specification was filed later than the other(s).
When Complete Specification is filed based on a Previously Filed Application[10]:
When a complete specification is filed in India based on a previously filed application within twelve months from the date of filing of the application and the claim is based on the subject matter disclosed in the previous application, then the priority date of the claims shall be the date on which the previous application was filed.
When a Complete Specification is filed in Pursuance of Further Application:
When a complete specification is filed in pursuance of a further application (or divisional application) as mentioned in sub-section (1) of section 16, and the claim is based on the subject matter disclosed in the provisional or complete specification furnished with the previous application, then the priority date of the claim is the date on which the previous application was filed.
Priority Date in Other Cases:
- When the priority date of the claim of a complete specification is more than one date, then the priority date of that claim would be the earliest date.
- When none of the aforementioned provisions apply, then the priority date would be the one on which complete specification was filed.
Priority Date in Case of Convention Application:
According to Section 135 of the Act, when an applicant has made a convention application along with a complete specification within 12 months of the filing of the basic application in the convention country, then the priority date of the claim of the complete specification is the date on which the basic application was filed, provided that the claim is based on the subject matter was disclosed in the basic application.
When a claim of complete specification is based on matters disclosed in two or more basic applications, then the priority date of the claim is the date on which the earliest application was filed in which the matter was disclosed[11].
Publication of Application
Section 11A of the Act provides for the publication of an application for a patent. Ordinarily, no application is made open to the public for a time period specified by the Controller. However, the applicant before the expiry of such term may request the Controller to publish the application. The Controller, on his discretion may publish the same except in the following conditions:
- when secrecy direction is imposed under section 35;
- When the application has been abandoned under sub-section (1) of section 9; or
- When the application has been withdrawn three months prior to the period specified under sub-section (1).
The publication of the application shall include the date of the application, the number of the application, name and address of the applicant and an abstract.
Examination of Application
According to Section 11B of the Act, the applicant or any other person interested shall make a request for examination of the application in the prescribed manner within the prescribed time period. If no such request is made, then the application shall be treated as withdrawn by the applicant. After the request is made, the Controller by virtue of Section 12 refers the application to an examiner to make a report. The examiner shall investigate, for the purpose of the application the following:
- Whether the claim of complete specification has been anticipated by any publication published before the filing of the complete specification by the applicant and dated on or after 1st January 1912;
- Whether the claim claimed by the applicant is the claim of any other complete specification published on or after the date of application made by the applicant and the priority date of which is or is claimed to be earlier than the date of the application made by the applicant;
- Whether the invention so claimed has been ascertained by a publication or any other document before filing of the applicant’s complete specification.
If the Controller has objections regarding the application made by the applicant, he shall communicate the same to the applicant. On being satisfied that the application or any other document does not comply with the provisions of the Act, the Controller may refuse the application or require it to be amended to his satisfaction before proceeding further. As per Section 17, after amendment, if the Controller directs, the application or the specification or any document shall be deemed to be made on the date it was so amended or on the date it was refiled after being returned to the applicant.
According to Section 18, if the claim of complete specification as filed by the applicant has been claimed in any other complete specification, then the Controller may refuse the application unless:
- The applicant shows that the priority date is not later than the date on which the other document was published;
- If the applicant amends the application up to the satisfaction of the Controller;
- If the applicant’s claim of complete specification is claimed in any other complete specification, on the discretion of the Controller, a reference to the other complete specification may be inserted in the applicant’s complete specification by way of notice to the public.
According to Section 19, if the Controller considers that there is a risk of potential risk of an infringement of claim of any other patent, then he may also direct to insert a reference of that patent in the applicant’s complete specification by a notice to the public. Such reference may not be required to be inserted if:
- The applicant establishes reasonable grounds to contest the claims of the other patent;
- The applicant amends the complete specification up to the satisfaction of the Controller.
The Controller may remove the reference to the other patent, if inserted, in the following cases:
- If the other patent is revoked or ceases to be in force;
- The relevant claim is deleted from the complete specification of the other patent;
- If the Controller is convinced that the claim of the other patent is invalid or is not infringed by the working of the applicant’s invention.
According to Section 21 of the Act, the applicant has to comply with all the requirements as imposed by the Controller in relation to the application, complete specification or any other documents within the period specified by the Controller, failure of which would result in the abandonment of the application.
Anticipation
In order to obtain a patent for an invention, it is important to establish the novelty of the invention. It is important that the invention is original and includes some inventive steps.
Anticipation by Previous Publication:
Section 29 of the Act states that the invention shall not be deemed to be anticipated merely because it has been mentioned in any other claim of complete specification in India before 1st January 1912. The invention shall not be deemed to be anticipated if the applicant proves that the priority date of the claim of complete specification is earlier than the priority date of the claim of other complete specification.
Anticipation by Previous Communication to Government:
An invention shall not be deemed to be anticipated merely because the invention has been communicated to the government or any official of the government for the purpose of being investigated for its use or merit.
Anticipation by Public Display:
An invention claimed in the complete specification shall not be deemed to be anticipated by the reason being shown or used with the consent of the true and first inventor at an industrial or other exhibition. It shall also not be deemed to be anticipated by the reason of the publication of its description at such exhibition. If the invention is used after the display of the same at such exhibition without the consent of the true and first inventor then the application shall not be deemed to be anticipated. It is important that the true and first inventor of the invention shall make the application for patent within 12 months from the display or use of the invention at such exhibition.
Application by Use and Publication of Provisional Specification
When a complete specification is filed in pursuance of an application filed along with the provisional application, then the controller cannot refuse or revoke a patent merely because the matter described in provisional specification was used or published in India after the filing of the provisional specification.
Opposition to the Patent
Section 25 of the Act states that any person may object to the application for patent after it has been published. There are two types of objections:
- Pre-grant objection
- Post-grant objection
Pre-grant Objection
Section 25(1) states that after the publication of the application and before the grant of the patent, any person in writing may represent their opposition against the grant of the patent. These are pre-grant objections which are raised before the grant of the patent. The grounds on which such objections can be raised are mentioned in Section 25(1) of the Act.
Post-grant Objection
Post-grant objections are raised after the grant of the patent to the applicant. These objections are supposed to be raised within one year of the publication of the notice of grant of patent by way of giving notice of opposition to the Controller. The grounds on which such objections can be raised are mentioned in Section 25(2) of the Act.
Upon receiving the notice of opposition, the Controller shall notify the patentee of such objection after giving the patentee a reasonable opportunity to be heard, may maintain, amend or revoke the patent.
Grant of Patent
According to Section 43 of the Act, the patent may be granted to the applicant or in case of joint application, to the joint applicants, as expeditiously as possible if the Controller is satisfied that the application of patent is in order for the grant of the patent and is not in contravention of any provisions of the Act. The patent shall have the seal of the patent office and the date on which the patent was granted shall be recorded in the register. On grant of the patent, a notice of such grant is published and the application and other documents related are made open for public inspection.
References
[8] Such model or sample may be furnished on the demand of the Controller but shall not deem to be a part of the specification – Section 10(3) of the Act.
[10] Section 11(3A) of the Act
[11] Section 137(2) of the Act
