Introduction

In essence, patents are monopolistic rights given by the government of the nation to the owner of the invention in any field to make, use, manufacture, and market the invention, provided the invention satisfies certain requirements stipulated within the law, and such rights are granted for a limited period of time, i.e., for 20 years.

The purpose of granting the first patent is to promote inventions and ensure that they are used in India on a large scale and to the fullest degree that is technically feasible without causing unnecessary delay.

Unlike copyright which becomes invested in the author the moment he creates the work, the invention of a person cannot and does not become entitled to a patent unless the procedure prescribed in the PATENT ACT of 1970 is fulfilled and the invention is approved for the grant of patent.

There is no ipse dixit claim of the patent, nor is there a suo moto grant of a patent by authorities. The act has prescribed a detailed procedure, which begins with the filing of the application and is completed with a grant of the patent. Various steps are discussed hereunder.2

Filing Of Application

The process of claiming The process for claiming a patent begins with the filing of an application under Section 6. The following persons, either alone or jointly, can file the application:

(i) any person claiming to be the true and first inventor of the invention;

(ii) any person being the assignee of the person claiming to be the true and first inventor in respect of the right to make such an application;

(iii) the legal representative of any deceased person who immediately before his death was entitled to make such an application; and

1 www.lexology.com

2 Ahuja VK, Law relating to Intellectual Property Rights, Lexis Nexis, Third edition, 2021

(iv) an application under subsection (i) may be made by any of the persons and shall be made in the prescribed form and filed in the patent office.

In the case of an invention made by an employee, the application for a grant of a patent may be made either by an employee or by the employer. It will depend on the contractual terms. Generally, the employee will be entitled to make the application, but if there is a specific agreement in favor of the employer, the employer will claim the patent.

I. Form Of Application

Each patent application must be for a single invention. It is that two inventions cannot be clubbed together, and a separate-applications for each invention are required to be made in a prescribed form before the Controller of Patent. 3

Section 7(2) provides that where an application is made by virtue of assignment of the right to apply for a patent for the invention, there shall furnished with the application and within such period as may be prescribed after the filing of the application, the proof of the right to make the application i.e, some document showing that assignment by the true and first invent actually been made in favour of the applicant.

Section 7(3) lays down that every application under this section shall be that the applicant is in possession of the invention and shall name the claiming to be the true and first inventor and where the person so claiming to be a true and first inventor is not the applicant (for instance an employee t application shall contain a declaration that the applicant (for instance, employer or assignee) believes the person so named to be the true and t inventor.

Section 7(4) provides that an application made by a citizen of India is to be accompanied by a provisional or complete specification. It also provides the where an application is made by a foreign national of a convention country, i.e., a country offering the reciprocal right to an Indian citizen to apply for a patent in that country; the patent application is to be accompanied by the complete specification and not provisional specification.

II. International Patent Application

3 The office of Controller of Parenting India is situated in Kolkata, with its branch office in Mumbai, Chennai, and Delhi.

Where an international application is filed under Patent Co-operation Treaty (PCT) for a patent in any member country designating India shall be deemed to be an application under the Indian Act, provided a corresponding application has also been filed before the Controller in India. The filing date of such an application shall be deemed as an international filing date accorded under the PCT. This will be based on the principle of reciprocity and national treatment

III. Special Provision For Foreign Application

Section 8 provides that foreign applicants shall furnish information setting out the name of the country where the application is being pursued, the serial number and date of filing of the application, and such other particulars as may be prescribed. A foreign applicant is also required to give an undertaking that up to the date of acceptance of the complete specification by the Controller, he would keep the Controller informed in writing of the details and developments in any patent application filed outside India.

IV. Application By Indians in other Countries

According to the Patents (Amendment) Act, 2005, no person who resides in India may, unless authorised by a written permit made outside of India for the award of a patent and obtained in the way prescribed and granted by or on behalf of the Controller:

(a) an application for a patent for the same invention has been made in India, not less than six weeks before the application outside India; and

(b) either no direction has been given under sub-section (1) of Section 35 in relation to the application in India, or all such directions have been revoked.¹

Withdrawal of Application- The applicant may, at any time after filing the application but before the grant of a patent, withdraw the application by making a request in the prescribed manner.

The transitional provision of the Amendment requires to treat every application for the grant of exclusive marketing rights filed before the 1st day of January 2005 in respect of a claim for a patent covered under sub-section (2) of Section 5 of the principal Act. Such application shall be deemed to be treated as a request for examination for the grant of a patent.

V. Filing of Provisional and Completed Specification

Section 9 provides that where an application is accompanied by a provisional specification, the complete specification has to be filed within twelve months from the date of filing of the application, and if the complete specification is not so filed, the application shall be deemed to have been abandoned. The said period of time shall be reckoned from the date of filing of the earliest provisional specification.

[image Sources : Shutterstock]

In Standipack Put. Ltd v. Oswal Trading Co. Ltd The Delhi High Court ruled that the postdating of the patent by the Controller to 11.7.1989 initially appeared to be in violation of the provisions of section 9 of the Patent Act, 1970, given that the application for grant of the patent was originally filed by the plaintiff on 11.4.1989 and the complete specification was filed on 11.10.1990.

A technical document outlining the innovation is called a patent specification. When the application is submitted, a provisional specification that provides the initial description of an invention is submitted. To make the innovation accessible to the general public after the patent's term has expired, a specification must be filed.

Section 10 of the Act lists the contents of the complete specification as follows:

(1) the title sufficiently indicating the subject matter to which the invention relates;

(2) a full and particular description of the invention and its operation of use and the method by which it is to be performed:

(3) a disclosure of the best method of performing the invention which is known to the applicant and for which he is entitled to claim protection;

(4) v claim/claims defining the scope of the invention. The claim/ claims must relate to one invention only. Claimts) should be clear and succinct and should be fairly based on the matter disclosed in the specification;

(5) Section 10(2) provides that a controller may require drawings to be supplied, which shall form part of the specification. (A claim is a feature of the invention over which the applicant claims an exclusive right. It defines the monopoly. The function of a claim is to define and limit with precision what is it which is claimed to have been invented and,

4 AIR 2000 Del 23

therefore, entitled for patent protection); and (vi) a declaration as to inventorship of the invention.

Claim

In a patent or patent application, the claim is defined in technical terms, the attention. the scope of protection conferred by a patent or the protection sought in a patent application. The claims are of utmost importance both during prosecution and litigation alike.

In F. Hoffman la Roche Limited v. Cipla Limited, the Delhi High Court stated that the claim should not only describe the invention and its operation but also disclose the best method of performing the invention.

CONCLUSION

When an invention meets the requirements for patentability, the owner of the patent is awarded a patent. Many innovators' intellectual property has been safeguarded in India thanks to patenting, which has also helped the country's commerce and technology advance. A specific procedure must be followed before receiving a patent. A patent grant gives the patentee monopolistic rights, prohibiting third parties from using, manufacturing, or importing the patented goods without the patentee's permission. The patentee may file a lawsuit against the person who attempts to use, sell, produce, or import such patented goods in order to violate their rights.

BIBLIOGRAPHY

Book

1- Ahuja VK, Law relating to Intellectual Property Rights, Lexis Nexis, Third edition, 2021

2- Dr. M.K Bhandari, Law relating to Intellectual Property Rights Central Law Publications, 6th Edition, 2021

References:

S. Sahoo & Co.. http://ssahoo.com/act_rules.php?page=2494

Patents | Brands & Fakes. https://brandsandfakes.com/patents/

Section 7 Indian Patents Act 1970 (Form of application) - LawGlobal Hub. https://www.lawglobalhub.com/section-7-indian-patents-act-1970/

Section 7 Indian Patents Act 1970 (Form of application) - LawGlobal Hub. https://www.lawglobalhub.com/section-7-indian-patents-act-1970/

Section 39 Indian Patents Act 1970 - LawGlobal Hub. https://www.lawglobalhub.com/section-39-indian-patents-act-1970/

Indian Patent Act 1970-Sections. https://ipindia.gov.in/writereaddata/Portal/ev/sections/ps10.html

Patent Law: Patentability, procedure for grant of Patent, Limitations etc.. https://blog.ipleaders.in/patent-law/

claim |Usage example sentence, Pronunciation, Web Definition | Google dictionary. https://googledictionary.freecollocation.com/meaning?word=claim

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