Patent Basics

What is Patent?

Patent, is a legal document granted by the government giving an inventor the exclusive right to make, use, and sell an invention for a specified number of years. Patents are also available for significant improvements on previously invented items.

The goal of the patent system is to encourage inventors to advance the state of technology by awarding them special rights to benefit from their inventions. Books, movies, and works of art cannot be patented, but protection is available for such items under the law of copyright. Patent law is one branch of the larger legal field known as intellectual property, which also includes trademark and copyright law.

Patent law centers round the concept of novelty and inventive step (or lack of obviousness). The right which they accord is to prevent all others, not just imitators but even independent devisors of the same idea from using the invention for the duration of the patent. The special potential of a patent is accordingly that it may be used to prevent all others from including any form of invention in their product and services. A patent thus poses serious difficulties for its competitors. This is why patents are not freely available for all industrial improvements but only what is judged to qualify as a patentable invention.

What is patentable?

To qualify for a patent, the invention must meet three basic tests. First, it must be novel, meaning that the invention did not
previously exist. Second, the invention must be non-obvious, which means that the invention must be a significant improvement to existing technology. Simple changes to previously known devices do not comprise a patentable invention. Finally, the proposed invention must be useful. Legal experts commonly interpret this to mean that no patent will be
granted for inventions that can only be used for an illegal or immoral purpose.

Some types of discoveries are not patentable. No one can obtain a patent on a law of nature or a scientific principle even if he or she is the first one to discover it. For example, Isaac Newton could not have obtained a patent on the laws of gravity, and Albert Einstein could not have patented his formula for relativity, E=mc2.

Under the law of the European Patent Convention (EPC), patents are only granted for inventions which are capable of industrial application, which are new and which involve an inventive step. An invention may be defined as a proposal for the practical implementation of an idea for solving a technical problem. An invention is capable of industrial application if it can be made or used in any kind of industry, including agriculture, as distinct from purely intellectual or aesthetic activity.

An invention is said to be new if, prior to the date of filing or to the priority date accorded to the application from an earlier application for the same invention, it was not already known to the public in any form (written, oral or through use), ie it did not form part of the state of the art. An invention is said to involve an inventive step if, in the light of what is already known to the public, it is not obvious to a so-called skilled person, ie someone with good knowledge and experience of the field.

Under the Indian patent law a patent can be obtained only for an invention which is new and useful. The invention must relate to a machine, article or substance produced by manufacture, or the process of manufacture of an article. A patent may also be obtained for an improvement of an article or of a process of manufacture. In regard to medicine or drug and certain classes of chemicals no patent is granted for the substance itself even if new, but a process of manufacturing and
substance is patentable. The application for a patent must be true and the first inventor or the person who has derived title from him, the right to apply for a patent being assignable.

What is not patentable?

Some inventions cannot be patented. Under the law of the European Patent Convention (EPC) the list of non-patentable subject-matter includes methods of medical treatment or diagnosis, and new plant or animal varieties. Further information on such fields can be obtained from a patent attorney. Nor may patents be granted for inventions whose exploitation would be contrary to public order or morality (obvious examples being land-mines or letter-bombs).The following are not
regarded as inventions: discoveries; scientific theories and mathematical methods; aesthetic creations, such as works of art or literature; schemes, rules and methods for performing mental acts, playing games or doing business; presentations of information; computer software.

Under the Indian law the following are non patentable (as mentioned under section 3 and 5 of Indian Patents Act, 1970):-
An invention which is frivolous or which claims anything obvious contrary to well established natural laws. An invention the primary or intended use of which would be contrary to law or morality or injurious to public heath. The mere discovery of a scientific principle or the formulation of an abstract theory.

The mere discovery of any new property or new use for a known substance or of the mere use of a known process, machine or apparatus unless such known process results in a new product or employs at least one new reactant.

A substance obtained by a mere admixture resulting only in the aggregation of the properties of the components thereof or a process for producing such substance The mere arrangement or re-arrangement or duplication of known devices
each functioning independently of one another in a known way. A method or a process of testing applicable during the process of manufacture for rendering the machine, apparatus or other equipment more efficient or for the improvement or restoration of the existing machine, apparatus or other equipment or for the improvement or control of manufacture.

A method of agriculture or horticulture. Any process for the medicinal, surgical, curative, prophylactic or other treatment of human being or any process for a similar treatment of animals or plants to render them free of disease or to increase their economic value or that of their products.

No Patent shall be granted in respect of an invention relating to Atomic energy. Claiming substances intended for use, or capable of being used, as food or as medicine or drug Relating to substance prepared or produced by chemical processes (including Alloys, optical glass, semiconductor and inter-metallic compounds), no patent shall be granted in respect of claims for the substances themselves, but claims for the methods or processes of manufacture shall be patentable. The criteria under the US laws are also quite similar as above. Books, movies, and works of art cannot be patented, but protection is available for such items under the law of copyright.

History of Patents

The first patent law was passed by the city of Venice in 1474. It protected the interests of inventors by assuring them the right to their inventions and prohibiting unauthorised copying. In 1624, the Statute of Monopolies was enacted in England. This allowed patents to be granted for a limited period to the true and first inventor. The increasing number of national patent laws led in 1883 to the conclusion of the Paris Convention, providing a guarantee of equal treatment for patent applicants in all its member states. It was originally adopted by 20 countries from around the world and has since been adopted by most
others.

In addition, most of the worlds nations have signed several other treaties dealing with patent issues during the 20th century. For example, more than 120 countries have signed the 1994 Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS). This treaty strengthened legal protection for patents worldwide.

In the United States, patent law dates to 1641, when the first patents for inventions were issued by the Massachusetts Bay Colony for the manufacture of salt. The Constitution of the United States, which became effective in 1789, gave Congress the power to enact federal patent laws. Congress adopted the first patent law in 1790 as one of its first actions. It has frequently amended U.S. patent law since then. The current patent law was adopted in 1952 and is administered by the U.S.
Patent and Trademark Office (PTO), an agency within the Department of Commerce. Despite the early development of patent law in the United States, there was no central administrative office to determine the validity of U.S. patents until the PTO was established in 1836. Since then, the PTO has examined all applications for patents to decide whether they meet the requirements of the patent laws.

The Patent Act, 1970 came into force on 20.4.1972 replacing Indian Patents and Designs Act, 1911. The Patents Act, 1970 in comparison with Indian Patents and Designs Act, 1911 has far more reaching effect in some areas such as food, Drug and Medicines where all the patents granted under this category and deemed to be endorsed with the words License of Right. India has become a member of the Paris Convention and PCT w.e.f. 7.12.1998 and by virtue of this, the Head Office of
Patent Office & its Branch offices have become receiving offices for the purpose of international applications filed under PCT.

In view of these developments, the Patents Rules, 1972 have been amended by incorporating a new chapter IIA dealing with international application which can be filed at Head office of the Patent office at Calcutta or Branch Offices at Delhi, Chennai & Mumbai w.e.f. 17.11.99 as applicable. The present Act under Chapter IVA provides specific provisions for the grant of EMR (Exclusive Marketing Rights) with a view to fulfill its international obligation under the provisions of article
70.8 & 70.9 of TRIPs agreement which are in force w.e.f. 1.1.1995.

Patent Offices

A U.S. patent for an invention is the grant of a property right to the inventor(s), issued by the U.S. Patent and Trademark Office. Despite the early development of patent law in the United States, there was no central administrative office to determine the validity of U.S. patents until the PTO was established in 1836. Since then, the PTO has examined
all applications for patents to decide whether they meet the requirements of the patent laws.

The right conferred by the patent grant is, in the language of the statute and of the grant itself, "the right to exclude others from making, using, offering for sale, or selling" the invention in the United States or "importing" the invention into the United States.

To get a U.S. patent, an application must be filed in the U.S. Patent and Trademark Office. Since June 8, 1995, the United States Patent and Trademark Office (USPTO) has offered inventors the option of filing a provisional application for patent which was designed to provide a lower-cost first patent filing in the United States and to give U.S. applicants parity with foreign applicants under the GATT Uruguay Round Agreements.

A provisional application for patent is a U. S. national application for patent filed in the USPTO under 35 U.S.C. §111(b). It
allows filing without a formal patent claim, oath or declaration, or any information disclosure (prior art) statement. It provides the means to establish an early effective filing date in a non-provisional patent application filed under 35 U.S.C. §111(a). It also allows the term "Patent Pending" to be applied. A non provisional utility patent application must be in the English language or be accompanied by a verified translation in the English language and a fee set forth in 37 CFR §1.17(i).

Under the Indian Patents Act, 1970 sections 73-76 talk about Patent Office. It is the office along with its branches established to administer various provisions relating the grant of patent and maintenance of Register of patents under the Act. The Head Office of Patent Office is located at Calcutta and branch offices are located at Mumbai, Delhi & Chennai.

The Patent Office is under the charge of Controller General of Patents, Designs & Trade Marks who is the Controller of Patents for the purpose of the Act. The Central Government has power to specify for the purpose of facilitating the registration of Patents, the establishment of Head Office and branch offices at the places it may think fit. The Patent Offices and branch offices shall have seal of Patent Office. The Patent office and its Branches are having territorial jurisdiction on a
zonal basis as given in the introduction chapter.

Officers and employees of the Patent Offices, who are in service, are prohibited from requiring, taking any right or interest in a patent issued by the office directly or indirectly except by inheritance or bequest. The Officers and employees are also prohibited from furnishing information on a matter which is being dealt with under the Act and from assisting in the preparation of a document to be filed in the Patent Office under the Act or for conducting a search in the Patent office
records except when required or authorized by this Act or under the directions in writing of Central Government or Controller or by order of a Court.

The European Patent Office (EPO) grants European patents for the contracting states to the European Patent Convention (EPC), which was signed in Munich on 5 October 1973 and entered into force on 7 October 1977. It is the executive arm of the European Patent Organisation, an intergovernmental body set up under the EPC, whose members are the EPC
contracting states. The activities of the EPO are supervised by the Organisations Administrative Council, composed of delegates from the contracting states.

The European Patent Convention (EPC) makes it possible to obtain patent protection in up to 20 European countries on the basis of a single application. The applicant decides which countries the European patent should cover. European patents are granted by the European Patent Office (EPO) using a unitary and centralised procedure conducted in one of its three official languages English, French or German. They have the same legal effects as national patents in each country for which they are granted. European patents are cost-effective and time-saving so as to obtain sound protection in a range of European countries.

Identification of patents and patent applications.

An assignment relating to a patent must identify the patent by the patent number. An assignment relating to a national patent application must identify the national patent application by the application number (consisting of the series code and the serial number, e.g., 07/123,456). An assignment relating to an international patent application which designates the United States of America must identify the international application by the international application number (e.g., PCT/US90/01234).

If an assignment of a patent application filed under 1.53(b) is executed concurrently with, or subsequent to, the execution of the patent application, but before the patent application is filed, it must identify the patent application by its date of execution, name of each inventor, and title of the invention so that there can be no mistake as to the patent application intended. If an assignment of a provisional application under 1.53(c) is executed before the provisional application is filed, it must identify the provisional application by name of each inventor and title of the invention so that there can be no mistake as to the provisional application intended.

The patent or patent application to which an assignment relates must be identified by patent number or application number unless the assignment is executed concurrently with or subsequent to the execution of the application but before the application is filed. Then, the application must be identified by the date of execution, the name(s) of the inventors, and the title of the invention. If an assignment of a provisional application is executed before the provisional application
is filed, it must identify the provisional application by name(s) of the inventors and the title of the invention.

The Office makes every effort to provide applicants with the application numbers for newly filed patent applications as soon as possible. It is suggested, however, that an assignment be written to allow entry of the identifying number after the execution of the assignment. An example of acceptable wording is:

"I hereby authorize and request my attorney, (Insert name), of (Insert address), to insert here in parentheses (Application number, filed) the filing date and application number of said application when known."

Filing of Patents

USA
To obtain patent protection in the United States, an inventor must file a patent application with the PTO. This application has three parts: (1) the specification, which gives a general description of the invention; (2) the claims, which provide more detailed statements explaining exactly how the invention works or is assembled; and (3) drawings that illustrate the invention. A specially trained official, called a patent examiner, reviews the application to determine if it qualifies for a patent.

The applicant receives no patent rights until the PTO approves and issues the patent. During the patent examination process, the patent examiner may ask the applicant to answer various questions about the invention. The law requires the patent applicant to disclose all information in his or her possession that is relevant to whether the patent should be issued. Because this process often goes back and forth several times between the applicant and the examiner, a patent examination can be very time-consuming and the legal fees can be expensive.

A provisional application for patent has a pendency lasting 12 months from the date the provisional application is filed. The 12-month pendency period cannot be extended. Therefore, an applicant who files a provisional application must file a corresponding non-provisional application for patent during the 12-month pendency period of the provisional application in order to benefit from the earlier filing of the provisional application. In accordance with 35 U.S.C. §119(e), the corresponding non-provisional application must contain or be amended to contain a specific reference to the provisional application.

However, converting a provisional application to a non-provisional application (versus filing a non-provisional application claiming the benefit of the provisional application) will have a negative impact on patent term. The term of a patent issuing from a non-provisional application resulting from the conversion of a provisional application will be measured from the original filing date of the provisional application. By filing a provisional application first, and then filing a corresponding non-provisional application that references the provisional application within the 12-month provisional application pendency period, a patent term endpoint may be extended by as much as 12 months.

The provisional application must be made in the name(s) of all of the inventor(s). It can be filed up to one year following the date of first sale, offer for sale, public use, or publication of the invention. (These pre-filing disclosures, although protected in the United States, may preclude patenting in foreign countries.)

A filing date will be accorded to a provisional application only when it contains:
A written description of the invention, complying with all requirements of 35 U.S.C. §112 ¶ 1 and Any drawings necessary to understand the invention, complying with 35 U.S.C. §113. If either of these items are missing or incomplete, no filing date
will be accorded to the provisional application.

To be complete, a provisional application must also include the filing fee as set forth in 37 C. F. R. 1.16(k) and a cover sheet identifying:
the application as a provisional application for patent;
the name(s) of all inventors;
inventor residence(s);
title of the invention;
name and registration number of attorney or agent and docket number (if applicable);
correspondence address; and
any US Government agency that has a property interest in the application.
A non provisional utility patent application must include a specification, including a claim or claims; drawings, when necessary;
an oath or declaration; and the prescribed filing fee. A complete non provisional utility patent application should contain the elements listed below:

Utility Patent Application Transmittal Form or Transmittal Letter
Fee Transmittal Form and Appropriate Fee
Application Data Sheet (see 37 CFR § 1.76)
Specification (with at least one claim)
Drawings (when necessary)
Oath or Declaration
Nucleotide and/or Amino Acid Sequence Listing (when necessary)

If the patent examiner finds that the invention meets the three basic legal tests viz., novelty, non obviousness and usefulness the PTO will grant a patent. Under current U.S. law, a patent is valid for 20 years from the date the patent application is filed. The patent is granted to the individual or individuals who made the invention. If that person is an employee who did the work as part of a job, however, the employer has a right to use the invention as well. A patent only grants rights within the jurisdiction that issued it. Therefore, a U.S. patent will not provide any rights in other countries.

A patent application becomes abandoned for failure to file a complete and proper reply as the condition of the application may require within the time period provided under § 1.134 and § 1.136 unless an Office action indicates otherwise. Abandonment may be either of the invention or of an application. An abandoned application, in accordance with 37 CFR §§ 1.135 and 1.138, is one which is removed from the Office docket of pending applications. An application that has been declared abandoned is "dead" and no longer pending. Abandonment occurs under several circumstances. The most common reason is when the USPTO does not receive a response to an Office action letter from an applicant within 6
months from the date the Office action letter was mailed.

The U.S. government grants patents for machines; compositions of matter, such as new chemical compounds to be used in industry; manufactured items; and industrial processes, provided they meet a number of strict legal tests. Patents are also available for significant improvements on previously invented items. Special patents can be obtained for the invention or discovery and asexual reproduction of certain distinct and new types of vegetation.

Patents may also be granted for certain types of industrial designs, such as a distinct tread pattern on the soles of hiking boots or tennis shoes. Computer programs have been granted patent protection, as have various living organisms, such as specialized mice that were bred to help in cancer research. Books, movies, and works of art cannot be patented, but protection is available for such items under the law of copyright.

Europe
Under the law of the European Patent Convention (EPC), patents are only granted for inventions which are capable of industrial application, which are new and which involve an inventive step. A European patent can be granted on the basis of a direct European patent application, which may be a first filing or, more commonly, one claiming the priority of a
national application filed within the previous 12 months. A European patent application can also be derived from an international application filed under the Patent Cooperation Treaty (Euro-PCT application), either with or without a priority claim.

The Patent Cooperation Treaty (PCT) offers a simplified patent application procedure for over 100 countries worldwide. It enables inventors to file a single international application designating many countries, instead of having to file separately for national or regional patents. In the international phase, an international search and on request international preliminary examination is performed. In the national or regional phase, the patent granting procedure is then carried out by the relevant national or regional patent offices. As a regional office, the EPO also grants European patents on the basis of international applications filed under the PCT.

All the EPC contracting states offer the possibility, as a first step, of applying for a national patent. Filing a patent application
with a national office gives the advantage of a relatively inexpensive foot in the door and allows applicants to deal with a patent authority which is local and speaks their own language. If they decide that they also need protection in other countries, they then have 12 months to file applications for the same invention elsewhere and claim the benefit
of the filing date of the first application (priority claim).

European patent applications may be filed either with the European Patent Office in Munich, The Hague or Berlin, or with national patent offices in the contracting states. Applicants may, within 12 months of the date on which a national or European patent application was filed, claim for the same invention the date of this first application for a subsequent national or European filing. The application is published 18 months after the date on which the European or national first
application was filed (priority date). The search report is published either with the application or later on. Applicants then have six months to decide whether or not to pursue their application by requesting substantive examination.

The three criteria for patentability are novelty, inventive step, and industrial applicability. If a European patent is granted,
competence is transferred to the designated contracting states, where it affords the same level of legal protection as a national patent. On average it takes 44 months to obtain a European patent. Under certain circumstances more rapid processing is possible at no extra cost. A European patent is valid for 20 years from the date on which the application was filed.

Within nine months of the date of grant, any third party may file opposition against a patent they believe does not comply with the substantive provisions of the EPC. The EPO opposition division's decision in such matters holds good in all the contracting states designated for the patent concerned. Appeals may be lodged against the decisions of the Receiving Section, the examining divisions and the opposition divisions. The members of the boards of appeal of the EPO are
impartial, their decisions being governed solely by the provisions of the EPC. Where necessary, cases may be referred to the Enlarged Board of Appeal as the body responsible for ensuring uniform application of the law.

The mission of the EPO is to support innovation, competitiveness and economic growth for the benefit of the citizens of Europe. Its task is to grant European patents for inventions, on the basis of a centralised procedure. By filing a single application in one of the three official languages (English, French and German) it is possible to obtain patent protection in some or all of the EPC contracting states.

The European Patent Office (EPO) grants European patents for the contracting states to the European Patent Convention (EPC), which was signed in Munich on 5 October 1973 and entered into force on 7 October 1977. It is the executive arm of the European Patent Organisation, an intergovernmental body set up under the EPC, whose members are the EPC contracting states. The activities of the EPO are supervised by the Organisations Administrative Council, composed of delegates from the contracting states.

The wide-ranging economic significance of patents can be derived from the fact that patentees can prevent competitors from exploiting their inventions for up to 20 years. This enables them to recoup their development costs and gives them enough time to get a fair return on their investment. Effective patent protection is a stimulus to R&D and a key requirement for raising venture capital. It fosters technical innovation, which is crucial to competitiveness and overall economic
growth.

India
In India as per the Patent Act of 1970, an application for a patent may be made by the actual inventor of the invention, or an
assignee of the right to make an application or a legal representative of either. It is the person who first applies for a patent who is entitled to the grant. A prior inventor of the invention who applies subsequently will not get the patent as against the first applicant. A person who has merely communicated the idea to another, who actually gave practical shape to the idea and developed the invention, cannot claim to be the first and true inventor. A foreign national resident abroad is not prohibited from making an application and obtaining a Patent in India.

An application for a patent in the prescribed form along with the prescribed fee should be filed in appropriate office of the patent office. An application is required to be filed according to the territorial limits where the applicant or the first mentioned applicant in case of joint applicants for a patent normally resides or has domicile or has a place of business or the place from where the invention actually originated. If the applicant for the patent or party in a proceeding having no business places or domicile in India, the appropriate office will be according to the address of service in India given by the applicant or party in a proceeding.


Patent Office Branch, Mumbai- The States of Gujarat, Goa, Maharashtra, Madhya Pradesh and the Union Territories of Daman and Diu and Dadra and Nagar Haveli

Patent Office Branch, New Delhi- The State of Haryana, Himachal Pradesh,Jammu& Kashmir, Punjab, Rajasthan, Uttar Pradesh and Delhi and the Union Territory of Chandigarh.

Patent Office Branch, Chennai -The States of AndhraPradesh Karnataka, Kerala, Tamilnadu and Pondicheri and the Union Territories of Laccadive, Minicoy and Aminidivi Islands.

Patent Office (Head Office), Kolkata - Rest of India

The application should be accompanied by a provisional or complete specification. A provisional specification should describe the invention only briefly and need not contain the claims. Where the application is accompanied by a provisional specification, a complete specification should be filed within 12 months from the date of filing the application. If this is not done, the application will deemed to be abandoned.

The complete specification should fully and particularly describe the invention and the method by which it is to be carried out. It should disclose the best method of performing the invention known to the applicant and end with a claim or claims defining the scope of the invention for which protection is claimed. The claim should relate to single invention. They should be clear and be fairly based on the matter disclosed in the specification. The specification should be accompanied by drawings where appropriate and necessary. The specification should relate to single invention.

The application is examined by examiners of patents to see whether it complies with the requirements of the Act and the Rules, whether there is any lawful ground of objection to the grant of patent, and whether the invention has already been published or claimed by any other person. The examiner makes a search in publications available in the Patent Office and specification of prior applications and Patents to see whether the same invention has already been published or claimed or is the subject matter of existing or expired patents.

After examination of the application, the Patent Office will communicate to the applicant, the objections if any to grant of a
patent. The objections generally relate to the drafting of the specifications and claims, anticipation of any of the claims in prior publication of any specification or claims, or documents. In many cases these objections can be overcome by suitably amending the description of the invention and the claims and in some cases by insertion of the reference to the prior specification number. If the objections are not satisfactorily met, the Controller of Patents, after giving an
opportunity of hearing to the applicant will refuse the application.

Where the application has satisfactorily removed the official objections the controller will accept the complete specification and advertise it in the Official Gazette. From the date of acceptance to the date of sealing of the patent the applicant will get the benefits of the grant except that he will not be entitled to institute infringement proceedings until the patents is sealed. Any person interested may give notice of opposition within three months from the date of advertisement in the Official Gazette. The Controller will forward the copy a copy of the notice of opposition to the applicant who may file their evidence in support of their respective cases and the matter will be heard and decided.

Where an application is accepted either without opposition, a patent will be granted if a request for sealing is made by the
applicant. An inventor, if he so desires, may make a request for mentioning his name in the patent. The Controller, if satisfied, will cause his name to be mentioned as inventor in the patent granted, in the complete satisfaction and in the register of patents. The mention of the inventors name in the patent will not confer or derogate from any rights under the patent.

Under Indian law the term of patent is not the same for all kinds of invention as in most of other developed countries. In respect of process patents relating to drugs and fruits, the term is five years from the date of sealing the patents or seven years from the date of patent i.e. the date of filing the complete specifications whichever is shorter. In respect of all other patents the term is 14 years from the date of patent.

A patent can be kept alive only by paying the renewal fee from time to time. Also in case of any improvement in or modification of a previous invention already patented, a patent called patent of addition may be obtained. The term of the patent of addition will run concurrently and terminate with the main patent. No renewal fee is payable so long as the main patent remains in force.

Regards
PP