The patent system in India is governed by the patents Act of 1970 and the patent Rules of the year 2003. There is filing and providing of a complete specification as a requirement when applying for patent in India. Therefore, to achieve the aims and objectives of disclosure requirements it is necessary to make sure that the invention is described in a clear and detailed enough manner that a person possessing the same level of knowledge in the field of the invention can understand and recreate the invention on his own.

Complete Specification:

A specification which should provide a clear understanding of the entire concept that has been patented needs to be filed along with the application. This should be explained in a manner that could easily be understood and replicated by a person Experienced in the mentioned field (person skilled in the art). The specification often contain written descriptions, illustrations and in some cases, examples of how to make and use the invention.

One skilled in the art must be able to use the invention with the help of the specification and than not with the help of experimenting. It should unveil the best way the inventor thought of utilizing to set in practice the innovation. The best mode requirement one of which, for example, stipulates that the inventor of a patent should indicate the best known use of the invention at the time of application of the patent. Failure to disclose the best mode means that the patent may well be declared as such, that is, void.

The level of detail to be provided may vary based on the complexity of the invention as will be discussed in the later sections of the paper. The idea is to ensure that the inventor does not obtain a broad patent which does not allow others sufficient information to use the innovation. It is therefore required that one or more claims which particularly point out and particularly describe the matter to be embraced in the invention shall be provided in the last part of the patent application. Both 102(b) and 112 specify how much patent protection is required and so the specification always needs to support the claims. An abstract which is a summary of the invention and which is usually placed at the beginning of the application may be needed by some of the patent offices. If there are drawings needed to be made for the understanding of the invention, such must be incorporated into the patent application. It means that the labels and reference to drawing have to be incorporated in the description.

Affidavit of the inventor and legitimization that he / she is the true creator of the claimed invention is mostly demanded for patent application.

Patent prosecution and enforcement requires a legal person to adhere to some standards of disclosure the following are the main disclosure practices. It grants the creator the exclusive rights provided by the patent while ensuring the public awareness of such an invention.

                                                                                [Image Sources: Shutterstock]

Patent Examination Process

1. Filing a Patent Application: The first crucial step to follow in the procedure is to file a patent application at one of the India’s four patent offices of Delhi, Mumbai, Chennai and Kolkata. A person who invented it or his legal representative may file the application.

2. Check Formalities: The Indian Patent Office conducts a formality check whereby it checks whether the application conforms to the written law outlined in the Patents Act and Rules. In case, he or she is given a chance to correct a mistake in case there is one and this fosters creativeness.

3. Publication: When the priority or a filing date is given, the application is published after eighteen months. The application is public when it gets published.

4. Request for Examination: An assessment of the stated patent application is not a given. An inspection request may be filed either by the applicant or any third party, provided that this must be done within 48 months after the priority date or filing date.

5. Examination: The Indian Patent Office goes through the application to ensure that it meets the requirements that make it qualify for a patent such as Industrial applicability, Inventive step, and Originality. In the case of software, the patent office looks at whether the invention is a technical advance as opposed to a commercial or mathematical one.

6. Report on the First Examination (FER): Subsequent to a review, the application is analyzed and all the objections raised against it are documented as part of the First Examination Report (FER) available with the patent office. A right to respond to the FER within certain time is provided to the applicant.

7. Amendments and Hearings: To attend to concerns arising in the FER, the applicant can make change submissions into the application. The applicant may request for an oral hearing in order to make arguments out of the invention that he or she seeks to protect through patenting.

8. Grant or Refusal: In case all the demands of the patentability are met and the objections raised/are lodged the patent is granted. If not, the application may be rejected by the patent office, which means that any time it is submitted, the work of an author has chance to be rejected.

9. Post-Grant Opposition: Another category of people has a chance to appeal against a grant of a patent after it has been issued.

Case Laws

A. Union of India v. Novartis AG (2013):

From this case, some perspectives may be seen in the light of pharmaceutical patents. Imatinib Mesylate – the cancer medication that became famous for treating Chronic Myeloid Leukemia – had a beta crystalline form that Novartis sought to protect through a patent. Unfortunately, the Indian Patent Office rejected the patent application; therefore, the Supreme Court of India entertained the case. The court underlined the need for the increased efficiency of the established criteria for patentability and held that the amendment to section 3(d) of the Patents Act was constitutional. This decision offers guidance for other situations dealing with small steps and implications for the requirements of obtainability of patents of pharmaceutical breakthroughs.

B. Union of India v. Bayer Corporation (2010):

Here Bayer objected the operation of a compulsory licence by the Indian company Natco Pharma for producing a similar product as the proprietary medicine named Sorafenib Tosylate. The mandatory licence was granted by the Controller of Patents relying on the fact that the medication in question was not available or affordably priced. The aspects concerning the balance between protection of patent rights and concerns that relate to health have been discussed in the framework of the lawsuit.

C. Controller of Patents v. Yahoo Inc. (2012):

In this case, the conditions as to the trademark registered involving only software inventions were in dispute. Yahoo used to apply for a patent for what they called the ‘on the fly’ creation of hypertext links. The application was rejected by the patent office on the following basis that the invention related to two methods namely mathematical method and the method relate to commercial use which is not patentable under section 3(k). Concerning the case, the students are to learn the requirements that need to be fulfilled to obtain software and business process patents in India.

D. Cipla Ltd. v. F. Hoffmann-La Roche Ltd. (2017):

This was illustrated in this case in which issues of patent infringement in the pharmaceutical sector were discussed. According to Roche, Cipla released a form of medication that infringed on its Erlotinib Hydrochloride patent. The court ruled in favour of Roche stressing on behalf of its decision the importance of the protection of the intellectual property together with the reasonable behaviour of generic manufacturers.

Author : Abhishek Singh, in case of any query, contact us at Global Patent Filing or write back us via email at support@globalpatentfiling.com.

References:

1. The Indian Patents Act, 1970

2. The Patent Rules, 2003

3. Union of India v. Novartis AG, 2013

4. Controller of Patents v. Yahoo Inc., 2012

5. Cipla Ltd. v. F. Hoffmann-La Roche Ltd., 2017