INTELLECTUAL PROPERTY INDIA PATENTS || DESIGNS || TRADEMARKS || GEOGRAPHICAL INDICATIONS MANUAL OF PATENT PRACTICE AND PROCEDURE THE PATENT OFFICE, INDIA Intellectual Property Office, Mumbai Intellectual Property Office, Delhi Intellectual Property Office, Chennai Intellectual Property Office, Kolkata Office of the Controller General of Patents, Designs & Trade Marks Boudhik Sampada Bhawan S.M. Road, Antop Hill Mumbai – 400 037. Patent Office, Kolkata (Head Office) Boudhik Sampada Bhawan CP-2, Sector V, Salt Lake City Kolkata – 700 091. Patent Office, Chennai Intellectual Property Building G.S.T. Road, Guindy Chennai – 600 032. Patent Office, Delhi Boudhik Sampada Bhawan Plot No.32, Sector-14, Dwarka New Delhi – 110 075. Patent Office, Mumbai Boudhik Sampada Bhawan S.M. Road, Antop Hill Mumbai – 400 037. Third Edition – 2008 Manual of Patent Practice & Procedure © Controller General of Patents, Designs & Trade Marks, India. 2 PREFACE This Manual is intended to provide detailed information to the public and users of Patent System on the practices and procedures followed by Patent Office for processing of patent applications. The Manual incorporates provisions of the Patents Act, 1970 as amended by the Patents (Amendment) Act, 2005 and the Patents Rules, 2003 as amended by the Patents (Amendment) Rules, 2006. The format of the Manual is to reproduce successive sections and relevant rules of the Patents Act and Patents Rules followed by explanation and past decisions of the Patent Office, wherever available. References to decisions of the courts of India and other countries have been included to provide guidance and help the users. The Manual does not constitute rule making and hence do not have the force and effect of law. Statements made in the Manual are not in themselves an authority for any action by an officer of the Patent Office. While the Manual may be regarded as a guide, it does not impose any particular line of such action and may not be quoted to that end. The Manual will be updated periodically in order to reflect important judgments, decisions and changes in practice and to correct errors, if any. Due care has been taken to avoid mistakes. However, if any shortcomings are noticed by the users, suggestions to improve the Manual will be appreciated. (V. RAVI) Controller General of Patents, Designs &Trade Marks 3 CONTENTS Chapter I: Introduction 6-60 - Origin of the Patent System - History of Indian Patent System - Patent Administration in India - Patentable subject matter - Novelty - Inventive Step - Industrial Applicability Chapter II: Non-patentable Subject Matter 60-91 -Inventions related to Atomic Energy Chapter III: Application for Patents 92-162 - Persons entitled to apply - Where to apply? - How to apply? - Statement and Undertaking regarding Foreign Filing - Types of Patent Applications - Specification and Drawings - Provisional Specification - Complete Specification - Unity of Invention - Sufficiency of Disclosure - Structure of Claims - Drawings - Claims - Markush- type of claims - General Guidelines for the Applicant Chapter IV:Publication and Examination of Applications 163-203 - 18-month Publication - Early Publication - Request for Examination - Guidelines for Formal Examination - Technical Examination - Priority of Claims 4 - Strategy for Novelty Search - Issue of FER and Procedures Thereafter - Change of Applicant - Amendment of Application and Specification - Time for putting the application in order for Grant Chapter V: Opposition Proceedings to Grant of Patents 204-238 - Pre-grant Opposition by Representation - Post-grant Opposition - Action in case of wrongful obtaining Chapter VI: Anticipation 239-245 Chapter VII: Secrecy Directions for Inventions Related 246-252 to Defence Chapter VIII: Grant of Patents 253-263 Chapter IX: Patent of Addition 264-267 Chapter X:Amendment of Applications & Specifications 268-278 Chapter XI: Restoration of Lapsed Patents 279-284 Chapter XII: Surrender and Revocation of Patents 285-306 Chapter XIII: Register of Patents 307-316 Chapter XIV: Patent Office & its Establishment 317-320 Chapter XV: Powers of Controller 321-327 Chapter XVI: Working of Patents and 328-353 Compulsory Licenses Chapter XVII: Use of Inventions by Government 354-360 And acquisition of invention by Central Government Chapter XVIII: Suit Concerning Infringement of Patents 361-363 Chapter XIX: Appellate Board 364-368 Chapter XX: Penalties 369-373 Chapter XXI: Patent Agents 374-386 Chapter XXII: International Arrangements 387-393 Chapter XIII : Miscellaneous Provisions 394-402 Annexure 1 The First Schedule (Fees) 403-402 5 Annexure 2 PCT Fees 407-408 Annexure 3 Forms 409-434 6 CHAPTER I Introduction The Patent System in India 1.1 A patent is granted as an exclusive right by the Government for an invention, for a limited period of time in consideration of disclosure of the invention by an applicant. A patentee enjoys exclusive right to prevent the third party from unauthorized act of making, using, offering for sale, selling or importing the patented product or process within the country during the term of the patent. A patented invention becomes free for public use after expiry of the term of the patent or when the patent ceases to have effect, by non-payment of any renewal fee. 1.2 History of Indian Patent System 1.2.1 The first legislation in India relating to patents was the Act VI of 1856. The objective of this legislation was to encourage inventions of new and useful manufactures and to induce inventors to disclose secret of their inventions. The Act was subsequently repealed by Act IX of 1857 since it had been enacted without the approval of the sovereign. Fresh legislation for granting ‘exclusive privileges’ was introduced in 1859 as Act XV of 1859. This legislation contained certain modifications of the earlier legislation, namely, grant of exclusive privileges to useful inventions only and extension of priority period from 6 months to 12 months. This Act excluded importers from the definition of inventor. This Act was based on the United Kingdom Act of 1852 with certain departures including allowing assignees to make application in India and also taking prior public use or publication in India or United Kingdom for the purpose of ascertaining novelty. 1.2.2 In 1872, the Act of 1859 was revisited to provide protection relating to designs. It was renamed as “The Patterns and Designs Protection Act” under Act XIII of 1872. The Act of 1872 was amended in 1883 (XVI of 1883) to introduce a provision to protect novelty of the invention, which prior to making application for their protection were disclosed in the Exhibition of India (?). A grace period of 6 months was provided for filing such applications after the date of the opening of such Exhibition. 1.2.3 This Act remained in force for about 30 years without any change but in the year 1883, certain modifications in the patent law were made in United Kingdom (UK) and it was considered that those modifications should also be incorporated in the Indian law. In 1888, new legislation was introduced to consolidate and amend the law relating to invention and designs in conformity with the amendments made in the U.K. law. The modifications introduced in the Indian law, by Act V of 1888, over the UK legislation, inter alia, includes: • Shifting of authority to administer the Act from the Home department to Secretary to Government of India; 7 • Extension of the jurisdiction of the Act to other courts apart from High Courts of Madras, Calcutta and Bombay; • Reduction in the fee; • Provision for detailed disclosure of the invention, including best mode of working the invention in full clear, concise and exact terms so as to enable any person skilled in the art or science to make use of the invention; • Provision of powers to call for a model of the invention; • Change of time for filing petition in respect of patent granted in United Kingdom from 12 months from the ‘letters patent’ to 12 months from the ‘date of sealing’; • Extension of term of exclusive privileges to ------ • Provision for granting compulsory licence where invention is not made accessible to public, on reasonable terms; • Appointment of Agents to encourage filing by foreign inventor; • Introduction of provision for protection of new or original design; • Provision for counting the grace period for filing application for invention displayed in the Exhibition from the date of admission of the invention into the Exhibition instead of the date of the opening of the Exhibition. 1.2.4 In 1911, the Indian Patents and Designs Act, 1911, (Act II of 1911) was brought in replacing all the previous Acts. This Act brought patent administration under the management of Controller of Patents for the first time. This Act was amended in 1920 to provide for entering into reciprocal arrangements with UK and other countries for securing priority. In 1930, further amendments were made to incorporate, inter-alia, provisions relating to grant of secret patents, patent of addition, use of invention by Government, powers of the Controller to rectify register of patent and increase of term of the patent from 14 years to 16 years. In 1945, another amendment was made to provide for filing of provisional specification and submission of complete specification within nine months. 1.2.5 After Independence, it was felt that the Indian Patents & Designs Act, 1911 was not fulfilling its objective. It was found desirable to enact comprehensive patent law owing to substantial changes in political and economic conditions