Tag: Internet of Things

The Patents Act provides certain safeguards for restoring a lapsed patent. Accordingly a patent that is ceased to have effect because of failure to pay the prescribed fees within the prescribed period under Section 53 of the Act or within such period, allowed under Section 142 of the Act.

The patentee of his legal representative, may, make an application in the prescribed manner for the restoration of the lapsed patent. In the case where the patent was held by two or more persons jointly then with the leave of the Controller one or more of them without joining others may submit the application for restoration within eighteen months from the date on which the patent is ceased to have effect. Though the renewal fees can be paid by any person, the application for the restoration of a lapsed patent, the application has to be made by the patentee or his legal representative.

If the patentee fails to pay the renewal fee within the prescribed period and also within the extendable period of six months by requesting extension of time, the patent ceases to have effect or lapses from the date of expiration. Patent lapsed, due to non-payment of renewal/maintenance fee can be restored within eighteen months from the date of lapse.

Within one year of an application for restoration of patent that lapsed should be made. If an overdue annuity is not paid within the extension period, the one year period for seeking restoration commences from the date of recordal.

Section 60 Indian Patent Act:

(1) Where a patent has ceased to have effect by reason of failure to pay any renewal fee within the prescribed period or within that period as extended under sub-section (3) of section 53, the patentee or his legal representative, and where the patent was held by two or more persons jointly, then, with the leave of the Controller, one or more of them without joining the others, may, within eighteen months from the date on which the patent ceased to have effect, make an application for the restoration of the patent.

(2) An application under this section shall contain a statement, verified in the prescribed manner, fully setting out the circumstances which led to the failure to pay the prescribed fee, and the Controller may require from the applicant such further evidence as he may think necessary

The Essential Requirements to Restore a Patent:

1. Under Section 60 of the Patents Act 1970, an application for restoration of lapsed patent should be made by patentee or his legal representative.
2. Prescribed fee on Form 15
3. Proof to support that failure of the renewal/ maintenance was unintentional.

Although there is no additional fee for Patent of addition, but the patent holder or the patentee has to submit each form individually for each additional patent with that of the parent restoration application.

Effect of non-payment of renewal fees

To keep the patent in force for its prescribed term, an annual renewal fee is paid to the patent Office. If the same is not paid in the stipulated period then it lapses (ceased to have effect) and becomes a public property. The Act provides certain Safeguards for restoring a lapsed patent.

Accordingly, a patent which is to have effect by reason of Failure to pay the prescribed renewal fees within the prescribed period under Section 53 of the Act, the patentee or his legal representative may make an application in the prescribed manner, for the restoration of the lapsed patent. In case where the patent was held by two or more persons jointly, then, with the leave of the Controller, one or more of them, without joining others, may submit the application for restoration within eighteen months from the date on which the patent ceased to have effect ( Section 60(1)).

Procedure for Disposal of Application for Restoration

a) When the Controller is prima facie satisfied that the failure to pay renewal fee was unintentional and there had been no undue delay, the application for restoration will be published in the official journal.

b) If the Controller is satisfied that a prima facie case for restoration has not been made, the Controller may issue a notice to the applicant to that effect. Within one month from the date of notice, if the applicant makes a request to be heard on the matter, a hearing shall be given and the restoration application may be disposed. If no request for hearing is received within one month from the date of notice by the Controller, the application for restoration is refused. In case of rejection of the application for restoration, a speaking order shall be issued.

c) Any person interested may give Notice of Opposition, in the prescribed manner, to the application within two months of the date of Publication in the official journal on the grounds that the failure to pay the renewal fee was not unintentional or that there has been undue delay in the making of the application.

d) The Notice of Opposition shall include a statement setting out the nature of the opponent’s interest, the grounds of opposition, and the facts relied upon. The notice of opposition shall be sent to the applicant expeditiously by the Controller.

e) The procedure specified in rules 57 to 63 for post grant opposition for filing of written statement, reply statement; reply evidence, hearing and cost shall apply in this case.

f) When no opposition is received within a period of two months from the date of publication of the application for restoration, or opposition, if any, is disposed of in favour of the Patentee, the Controller shall issue an order allowing the application for restoration. The unpaid renewal fee and the additional fee, as mentioned in the first schedule, shall be paid within one month from the date of order of the Controller.

g) The fact that a patent has been restored shall be published in the official journal.

h) To protect the persons who have begun to use the applicant’s invention between the date when the Patent ceased to have effect and the date of Publication of the Application for restoration, every order for restoration includes the provisions and other conditions, as the Controller may impose, for protection and compensation of the above-mentioned persons. No suit or other proceeding shall be commenced or prosecuted in respect of an infringement of a Patent committed between the date on which the Patent ceased to have effect and the date of the Publication of the Application for restoration of the patent.

Opposition to the Restoration af a Lapsed Patent

• If after hearing the applicant in cases where the applicant so desires or the Controller thinks fit, the controller is prima facie satisfied that the failure to pay the renewal fee was unintentional and that there has been no undue delay in the making of the application he shall publish the application in the prescribed manner and within the prescribed period any person interested may give notice for opposition for the restoration of the patent on either or both of the following grounds:-

a) That the failure to pay the renewal was not unintentional; or

b) That there has been undue delay in the making of the application for restoration (Section 61(1)).

• No other Grounds are prescribed for filing such notice o opposition for the restoration of a lapsed patent. Only person interested can file the notice of opposition for the restoration of the lapsed patent.
• The time period for filing the notice of opposition is two months from the date of publication and the same is filed on Form 14 with its prescribed fee. Indian Patent Act and the rules do not provide any extension beyond the period of two months for filing the opposition. However, a petition under Rule 138 of Patent Rules can be filled seeking extension of time beyond the two months period with its prescribed fees. It should be noted that the petition for extension to be filed within the period of two months only. Since the grant of the extension under rule 138 is the discretionary power of the Controller, the grant of extension cannot be taken for granted.

Rights of Patentee of Lapsed Patent which have been Restored SECTION 62

• On the restoration of a patent, the rights of the patentee shall be subject to such provision as may be prescribed by the Controller in his order and to such other provisions as he thinks fit to impose for the protection of compensation of persons who might have began to avail them of. Or the patented invention between the date when the patent ceased to have effect and the date of publication of the application for the restoration of patent Section 62(1),
• On the lapsing of the patent due to Nonpayment of the renewal fees, the patentee loses his right in the patent and the invention becomes public property. The provision contained in section 62 of The Act is to safeguard the interests of those persons who after ascertain from the Register of Patents that the patent has lapsed due to Nonpayment of the renewal fees and become public property had started commercially using the invention

Surrender of patents

(1) A patentee may, at any time by giving notice in the prescribed manner to the Controller, offer to surrender his patent.

(2) Where such an offer is made, the Controller shall advertise the offer in the prescribed manner, and also notify every person other than the patentee whose name appears in the register as having an interest in the patent.

(3) Any person interested may, within the prescribed period after such advertisement, give notice to the Controller of opposition to the surrender, and where any such notice is given the Controller shall notify the patentee.

(4) If the Controller is satisfied after hearing the patentee and any opponent, if desirous of being heard, that the patent may properly be surrendered, he may accept the offer and, by order, revoke the patent.

Invention under the Patent Act

The Act under Section 2(1)(j) defines “invention” as a new product or process involving an inventive step capable of industrial application.

The term “industrial application” refers to capable of industrial application in relation to an invention means that the invention is capable of being made or used in an industry. One of the pre-requisite of invention is that it should be new i.e. the invention proposed to be patented has not been in the public domain or that it does not form part of the state of the art.

Under the Patent Act, both processes and products are entitled to qualify as inventions if they are new, involve an inventive step and are capable of industrial application.

Requirements to Qualify as Invention

1. The Invention must be new;
2. Invention must involve an inventive step;

• The invention must be capable of industrial application or utility;

1. The invention shouldn’t come under the inventions which are not patentable under Section 3 and 4 of the Patent Act, 1970;

Non-patentable inventions are enumerated under Section 3 and 4 of the Patent Act. Such inventions are delineated below:

• Any Invention which is frivolous or which claims anything obviously contrary to well established natural laws is not patentable.
• Inventions which are contrary to public order or morality is not patentable.
• An idea or discovery cannot be a subject matter of a patent application.
• Inventions pertaining to known substances and known processes are not patentable i.e. mere discovery of a new form of a known substance which does not enhance the known efficacy of that substance is not patentable.
• An invention obtained through a mere admixture or arrangement is not patentable.
• A method of agriculture or horticulture cannot be subject matter of patent.
• A process involving medical treatment of human and animals or to increase their economic value cannot be subject matter of a patent.
• Plants and animals in whole or in part are not patentable.
• A mathematical or business method or a computer program per se or algorithms is excluded from patent protection.
• Matters that are subject matter of copyright protection like literary, dramatic, musical or artistic work is not patentable.
• Any scheme or rule.
• Presentation of information
• Topography of integrated circuits.
• Traditional knowledge.
• Inventions relating to atomic energy
• As defined in Section 2 (j)the term “invention means a new product or process involving an inventive step and capable of application”. The invention should be of absolute novelty as neither it has been used nor published in any part of the world.

Section 3 And 4 Of The Indian Patent Act

Section 3 and Section 4 of the Patent Act is highly debatable and deals with the list of exclusions that are non-patentable that do not satisfy the above conditions. Following are not the “inventions” under the meaning of this act:

(a) Inventions that are frivolous and contrary to natural laws.

Inventions which are frivolous or contrary to well established natural laws.

Example– Inventions that are against the natural laws that are any machine giving 100% efficiency, or any machine giving output without an input cannot be considered as obvious and cannot be patented.

b) Inventions which go against public morality

Inventions in which the primary or intended use or commercial exploitation of which could be contrary to public order or morality (that is against the accepted norms of the society and is punishable as a crime) or which causes serious prejudice to human, animal or plant life or health or to the environment.

Example–As in Biotechnology, termination of the germination of a seed by inserting a gene sequence that could lead to the disappearance of butterflies, any invention leading to theft or burglary, counterfeiting of currency notes, or bioterrorism.

(c) Inventions that are a mere discovery of something that already exists in nature.

The mere discovery of a scientific principle or the formulation of an abstract theory or discovery of any living or non-living substances occurring in nature.

Explanation–Mere discovery of something that is already existing freely in nature is a discovery and not an invention and hence cannot be patented unless it is used in the process of manufacturing an article or substance. For instance, the mere discovery of a micro-organism is not patentable.

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Landmark Cases of Non-patentable Inventions

In Bilski V. Kappos,

This case deals with the Patentability of a business method. In this case, Bilski and Warsaw applied for the patent on hedging risks on commodities trading but their patent got rejected by the US Supreme Court on grounds that an abstract idea cannot be patented.

(d) The mere discovery of a form already existing in nature does not lead to enhancement of efficacy.

The mere discovery of a new form of a known substance which does not result in the enhancement of the known efficacy of that substance or 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.

Explanation: For the purposes of this clause, salts, esters, ethers, polymorphs, metabolites, pure form, particle size, isomers, mixtures of isomers, complexes, combinations and other derivatives of known substance shall be considered to be the same substance, unless they are significantly different in terms of efficacy.

The mere discovery of any new property or use of a known substance is not patented unless it is of greater efficiency than the original substance hence, the mere incremental innovation does not fall under the gamut of patenting.

(d) The mere discovery of a form already existing in nature does not lead to enhancement of efficacy.

The mere discovery of a new form of a known substance which does not result in the enhancement of the known efficacy of that substance or 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.

Explanation: For the purposes of this clause, salts, esters, ethers, polymorphs, metabolites, pure form, particle size, isomers, mixtures of isomers, complexes, combinations and other derivatives of known substance shall be considered to be the same substance, unless they are significantly different in terms of efficacy.

The mere discovery of any new property or use of a known substance is not patented unless it is of greater efficiency than the original substance hence, the mere incremental innovation does not fall under the gamut of patenting.

Case laws

In Glochem Industries Ltd vs Cadila Healthcare Ltd14,[2]

The Bombay High Court held that “Section 3 (d) consists of all fields including the field of pharmacology. Further, in this case, the court held that “the test to decide whether the discovery is an invention or not? It is on the patent applicant to show that the discovery has resulted in enhancement of known therapeutic efficacy of the original substance and if the discovery is nothing other than the derivative of a known substance, then, it must be shown that the properties in derivatives are significantly different in terms of efficacy. So under this sub-section, the very discovery of a new form of a known substance which does not result in the enhancement of the known efficacy of that substance will not be treated as an invention.

In Ten Xc Wireless Inc & Anr vs Mobi Antenna Technologies,

The Delhi High Court held that “a method of replacing conventional antennae with split-sector antennae; a split-sector asymmetric antenna for replacing conventional antennae – are all mere uses for the asymmetric antenna already known. Under Section 3(d) the subject matter claimed is therefore not an invention.

In Novartis Ag v. Union of India15,

The Supreme Court of India said that “mere discovery of an existing substance would not amount to the invention”. The Supreme Court of India further, in this case, held that for pharmaceutical patents apart from tests of novelty, inventive step and application, there is a new test of enhanced therapeutic efficacy for claims that cover incremental changes to existing drugs which also Novartis’s drug did not qualify”.

(e) Mere admixing of mixtures leading in the aggregation of properties are non- patentable.

A substance obtained by a mere admixing of two or more mixtures resulting only in the aggregation of the properties of the components thereof or a process for producing such substance is not considered the invention.

Explanation- mere addition of mixtures is non-patentable unless this satisfies the requirement of synergistic effect i.e., interaction of two or more substances or agents to produce a combined effect greater than the separate effect.

(f) Mere aggregation or duplication of devices working in a known way is not an invention.

The mere aggregation or re-arrangement or duplication of known devices each functioning independently of one another in a known way.

Explanation- mere improvement on something or combinations of different matters known before cannot be patentable unless this produces a new result or article.

(h) Horticulture or agricultural method is non-patentable.

A method related to agriculture or horticulture.

Explanation- a method of producing plants like cultivation of algae and mushrooms or improving the soil is not an invention and cannot be patentable.

(i) Medicinal, curative, prophylactic, diagnostic, therapeutic for treating diseases in human and animals are non-patentable.

Any process for the medicinal, surgical, curative, prophylactic, diagnostic, therapeutic or other treatment of human beings or any process for a similar treatment of animals to render them free of disease or to increase their economic value or that of their products.

Explanation: those medicinal methods administering medicines orally or injecting it, surgical methods like stitch free surgeries, curative methods as curing plaques etc does not fall under the ambit of the invention and are non- patentable.

Case law

In Mayo Collaborative Services V. Prometheus Laboratories, Inc20.

In this case, the US Supreme Court said that “diagnostic and therapeutic methods (which includes the treatment or cure of diseases) is not patentable as it claims a law of nature”.

(j) Essential biological processes for the production or propagation of animals and plants is not an invention.

Plants and animals in whole or any part thereof other than micro-organisms but including seeds, varieties and species and essentially biological processes for production or propagation of plants and animals.

(k) Simple mathematical or business or computer programs are not an invention.

A mathematical or business method or a computer program per se or algorithms;

Explanation– any mathematical calculation, any scientific truth or act of mental skills any activities related to business methods or algorithms (which are like the law of nature) cannot be patented.

(l) Aesthetic creation is not an invention.

A literary, dramatic, musical or artistic work or any other aesthetic creation whatsoever including cinematographic works and television productions.

Explanation– such activities like writings, painting, sculpting, choreographing, cinematographing all these which are related to creativity cannot be patented and fall under the gamut of Copyright Act, 1957.

(m) Mental act, rule or method is not an invention.

A mere scheme or rule or method of performing mental act or method of playing a game.

Explanation- playing a game such as chess, sudoku etc are not considered as inventions rather these are mere brain exercises and hence are not patented.

(n) Presentation of information is non-patentable.

Explanation- a mere presentation of information by tables, chars is not an invention and hence are not patentable, for example, railway timetables, calendars etc.

(o) The topography of integrated circuits is non-patentable

Such as semiconductors used in microchips are not patented.

(p) Traditional Knowledge is not an invention.

An invention which in effect, is traditional knowledge or which is an aggregation or duplication of known properties of the traditionally known component or components.

Explanation- the traditional knowledge is know-how, skills, that is passed from generations to generations of a community and is already known cannot be patented for example the antiseptic properties of turmeric.

(q) Atomic-Energy inventions are non -patentable.

Section 4 deals with inventions relating to atomic energy, that are also not patentable and that fall within sub-section (1) of section 20 of the Atomic Energy Act, 1962.

Will NCPI (Bhim) Qualify For Patents?

Unified Payments is a payments mechanism that allows bank customers to send and receive money via a smartphone in real time. These payments settlements technology has been developed by NPCI (National Payments Corporation of India) which is a Reserve Bank of India backed entity with support from Indian banks.

NPCI indicated that the proximity-based solution offered by Tone Tag(a Bangalore based tech startup) could employ a tone, a sound, a near field communication (NFC), a radio-frequency identification device (RFID) or deploy ultra-high frequency (UHF) technology or a combination of these relying upon algorithm encryption. The request for proposal of NCPI added a  clause that raises questions about whether NPCI’s RFP violates Section 3(k) of the Act, as amended in 2002, lists ‘a mathematical or business method or a computer programme per se or algorithms’ under ‘inventions not patentable.

Patentability of Artificial Intelligence

The AI applications are modern-day machine learning functions and are of significant importance, especially in the commercial AI sector. However, the question is, should AI be patentable?

Indian Patent System for AI-based inventions

In India for patenting an AI technology one needs to follow the Computer-related Inventions (CRIs) guidelines which exclude a computer programme or algorithms from being patented (under 3(k) of the Indian Patent Act). At present these guidelines are focused on computers/algorithm/software based inventions and also are used to examine AI based inventions.

To claim for patenting the inventions based on AI following are needed:

• Describe hardware (eg computer system, server, sensors etc.) along with AI algorithms in your patent;
• Claim working method/process of the invention which uses AI; and
• Refrain from focussing directly on programming codes/algorithms of AI.

The word “Artificial Intelligence” can be seen in claims of the granted patents but it is to be noted that this word is used to represent part of a system that utilizes data/commands provided by AI system. However, no focus is made on the operating principle of AI.

A patent is a form of intellectual property that gives the owner the legal right to exclude others from making, using, selling and importing an invention for a limited period of years, in exchange for publishing an enabling public disclosure of the invention. In most countries patent rights fall under civil law and the patent holder needs to sue someone infringing the patent in order to enforce his or her rights. In some industries patents are an essential form of competitive advantage; in others they are irrelevant.

The procedure for granting patents, requirements placed on the patentee, and the extent of the exclusive rights vary widely between countries according to national laws and international agreements. Typically, however, a patent application must include one or more claims that define the invention. A patent may include many claims, each of which defines a specific property right. These claims must meet relevant patentability requirements, such as novelty, usefulness, and non-obviousness.

Under the World Trade Organization’s (WTO) TRIPS Agreement, patents should be available in WTO member states for any invention, in all fields of technology, provided they are new, involve an inventive step, and are capable of industrial application. Nevertheless, there are variations on what is patentable subject matter from country to country, also among WTO member states. TRIPS also provides that the term of protection available should be a minimum of twenty years.

The word patent originates from the Latin patere, which means “to lay open” (i.e., to make available for public inspection). It is a shortened version of the term letters patent, which was an open document or instrument issued by a monarch or government granting exclusive rights to a person, predating the modern patent system. Similar grants included land patents, which were land grants by early state governments in the USA, and printing patents, a precursor of modern copyright.

In modern usage, the term patent usually refers to the right granted to anyone who invents something new, useful and non-obvious. Some other types of intellectual property rights are also called patents in some jurisdictions: industrial design rights are called design patents in the US, plant breeders’ rights are sometimes called plant patents, and utility models and Gebrauchsmuster are sometimes called petty patents or innovation patents.

The additional qualification utility patent is sometimes used (primarily in the US) to distinguish the primary meaning from these other types of patents. Particular species of patents for inventions include biological patents, business method patents, chemical patents and software patents.

• 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, i.e 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.

• Non 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.

• Rights in a Patent

Patent registrations confers on the rightful owner a right capable of protection under the Act i.e. the right to exclude others from using the invention for a limited period of time. The monopoly over patented right can be exercised by the owner for a period of 20 years after which it is open to exploitation by others.

Patent confers the right to manufacture, use, offer for sale, sell or import the invention for the prescribed period.

Time Period for which Patent is granted:

Initially, the Act provided for a shorter term pf protection for medicine or drug substances. However, vide the Amendment Act of 2005 uniform period of 20 years was provided for all the Patents. Thus, once the prescribed period of 20 years is over, then any person can exploit the patented invention. Here it would be relevant to mention that similar to a trademark even the term of a patent begins from the date of application of patent.

Requirements for Grant of Patent:

1. The application for Patent shall be made at the Indian Patent Office.
2. Any person i.e. Indian or a Foreigner, individual, company or the Government can file a Patent Application.

• The person applying for Patent shall be the true and first inventor of the invention proposed to be patented.

1. The patent application can also be made jointly.
2. The patent application shall primarily disclose the best method of performing the invention known to the applicant for which he is entitled to claim protection.
3. The applicant shall also define the scope of invention.

• The invention desired to be patented shall be- new, should involve an inventive step and must be capable of industrial application.
• A patent application can be made for a single invention only.

1. An international application made under the PCT (Patent Co-operation Treaty) designating India shall be deemed as an application made under the Patents Act with the priority date accruing from the date of the international filing date accorded under the PCT.

Invention under the Patent Act:

The Act under Section 2(1)(j) defines “invention” as a new product or process involving an inventive step capable of industrial application.

The term “industrial application” refers to capable of industrial application in relation to an invention means that the invention is capable of being made or used in an industry. One of the pre-requisite of invention is that it should be new i.e. the invention proposed to be patented has not been in the public domain or that it does not form part of the state of the art.

Under the Patent Act, both processes and products are entitled to qualify as inventions if they are new, involve an inventive step and are capable of industrial application.

Requirements to Qualify as Invention:

1. The Invention must be new
2. Invention must involve an inventive step

• The invention must be capable of industrial application or utility;

1. The invention shouldn’t come under the inventions which are not patentable under Section 3 and 4 of the Patent Act, 1970;

Non-patentable inventions are enumerated under Section 3 and 4 of the Patent Act. Such inventions are delineated below:

• Any Invention which is frivolous or which claims anything obviously contrary to well established natural laws is not patentable.
• Inventions which are contrary to public order or morality is not patentable.
• An idea or discovery cannot be a subject matter of a patent application.
• Inventions pertaining to known substances and known processes are not patentable i.e. mere discovery of a new form of a known substance which does not enhance the known efficacy of that substance is not patentable.
• An invention obtained through a mere admixture or arrangement is not patentable.
• A method of agriculture or horticulture cannot be subject matter of patent.
• A process involving medical treatment of human and animals or to increase their economic value cannot be subject matter of a patent.
• Plants and animals in whole or in part are not patentable.
• A mathematical or business method or a computer program per se or algorithms is excluded from patent protection.
• Matters that are subject matter of copyright protection like literary, dramatic, musical or artistic work is not patentable.
• Any scheme or rule.
• Presentation of information
• Topography of integrated circuits.
• Traditional knowledge.
• Inventions relating to atomic energy.

Infringement of Patent:

Infringement of Patent primarily refers to intrusion or violation of the rights of a Patentee against which the Patentee has statutory rights under the Act.

The factors that are essential in determining infringement of a Patent are as under:

1. While determining infringement it has to be assessed whether the infringing activity fell within the scope of the invention. Thus, the infringement has to be determined with regard to what has been claimed as invention under the Patent Act by applying the principles or standards of construction.
2. To determine whether the infringing activity violated any statutory rights conferred to the Patentee under the Act. In this respect reference can be made to Section 48 of the Act which enumerates the rights of the Patentee with respect to a product patent and process patent.
3. To determine the infringer i.e. the person liable for the infringement.
4. To determine whether the infringing act fell within the acts which do not amount to infringement under the Patents Act i.e. excluded acts of Government use, use of patented product or process for experiment or research, import of medicine or drug by Government and patents in foreign vessels and aircrafts.