Chapter -
10
Post-grant procedures
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Maintenance of Patent – renewal To keep a patent in force, the
renewal fees shall be payable at the expiration of the second year from the date
of the patent or of any succeeding year and the same shall be remitted to the
patent office before the expiration of the second or the succeeding year. Further, renewal of a patent can
be done beyond the due date in the extended period of six months from that
date by filing Form-4 along with the prescribed fee. This period of six
months is not extendable. a. Where a patent is granted later
than two years from the date of filing of the application, the fees which
have become due in the meantime may be paid within a period of three months
from the date of the recording of the patent in the register. The date of
recording of patent in the register of patents is communicated to the
applicant through a letter which accompanies the Certificate of Patent. The period
for payment of renewal fees may be extended by a maximum of six months by
filing Form-4 with the required fee. b. If a patent is granted before the
expiry of two years from the date of filing of application, the first renewal
fee becomes due in respect of the third year. However, the renewal fee shall
be paid before the expiry of second year. This period is extendable by
maximum six months. c. First Renewal fee for a patent
becomes due in respect of the third year counted from the date of filing of
application for patent. However, the renewal fee for third year has to be
paid before the expiry of second year. For clarification, the renewal fee may
be paid before the expiration of the fourth year from the date of Patent for
the fifth year and so on. d. While paying the renewal fee, the
patentee shall quote correctly the patent number, date of patent and the year
in respect of which the renewal fee is being paid. Any mistake in the above
said particulars may lead to a lapse of patent. e. For the Patent of Addition no
renewal fee is required to be paid. f. Annual renewal fee may be paid for
2 or more years in advance. |
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Restoration of Lapsed Patents a. When a Patent has ceased to have
effect due to non-payment of renewal fees within the prescribed time, the
Patent may be restored by filing an application for restoration, in Form-15,
within eighteen months from the date on which the patent ceased to have
effect. Such an application can be made by the patentee / assignee, or his
legal representative and in case of joint applicants, then, with the leave of
the Controller, any one or more of them without joining the others. b. The applicant has to state, the
circumstances which led to the failure of payment of renewal fees. The
application must include a statement fully setting out the circumstances that
led to the failure to pay the renewal fee. This statement may be supported by
evidence and copies of any documents referred to. c. The evidence must support the
patentee's claim that the failure to pay was unintentional and there has been
no undue delay in applying for restoration. d. The Controller may call for
further evidence to justify that the failure to pay was unintentional and
that there has been no undue delay for making the application. e. If a patentee has failed to
register a change of name before cessation he must first apply under Rule 94
for alteration in the register. If he changed his name after cessation he
must prove his identity. In both cases he must draw and sign the application
in his new name but in the latter case must add 'formerly known as' to his
identification. |
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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. [See Chapter 9- Post-grant opposition] 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. |
Section 60, 61, 62. |
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Registration of
assignments/Transfer of Right a. An assignment of a patent or of a
share in a patent, a mortage, licence or the creation of any other interest
in a patent shall be valid only if the same were in writing and the agreement
between the parties concerned is reduced to the form of a document embodying
all the terms and conditions governing their rights and obligations and has
been duly executed. b. Any person who becomes entitled by
assignment, transmission or operation of law to a patent or to a share in
patent or becomes entitled as a mortgagee, licencee or otherwise to any other
interest in a patent, may apply in writing in Form-16 to the Controller, for
the registration of his title or as the case may be of notice of his interest
in the register. Such an application can also be made by the assignor,
mortgagor, licensor or other party as the case may be. c. Where such application is made for
the registration of title or notice of interest of any person, the
Controller, upon proof of title or interest to his satisfaction, shall enter
in the register such particulars as are appropriate. d. If there is any dispute between
the parties the Controller may refuse to take any action to make an entry in
the register, until the rights of the parties have been determined by a
competent court. e. Except for the purpose of making
an application for registration of right, title or interest in the register
of patents or for an application for rectification of the register of patents
in the IPAB, a document in respect of which no entry has been made in the
register shall not be admitted by the Controller or by any court as evidence
of the title of any person to a patent or to a share or interest therein
unless the Controller or the court, for reasons to be recorded in writing,
otherwise directs. f. If requested by the patentee /
licensee, the terms of the license may be kept confidential and not disclosed
to any person, except under the order of a Court. |
Section 68, 69. |
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Surrender Of Patents a. The patentee may at any time offer
to surrender his patent through an application on plain paper. On receipt of
such an offer the Controller publishes the offer in the Official Journal and
also notifies every person (other than the patentee) whose name appears in
the register as having an interest in the patent. b. An opposition against the offer to
surrender the patent may be filed by any person interested in Form 14 (in
duplicate) within 3 months from the date of publication of such offer in the
Official Journal. The Controller shall inform the Patentee on receipt of such
notice. c.
The
procedure relating to filing of written statement, reply statement leaving
evidence and hearing of the opposition is similar to that of the opposition
to the grant of Patents as per Rules 57-63 [See Chapter 9- Post-grant
opposition].
d.
In
case, the Controller accepts the patentee's offer to surrender the patent, he
may direct the patentee to return the patent and on the receipt of which, the
Controller shall by order, revoke it and publish such revocation in the
official journal. |
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Working
of Patents a. Patents are granted to encourage
inventions and to secure that the inventions are worked in India on a
commercial scale and to the fullest extent that is reasonably practicable
without undue delay. b. The Controller has the power to
call for the information such as periodical statements as to the extent to
which the patented invention has been commercially worked in India, as may be
specified in the notice issued to that effect at any time during the
continuance of the Patent c. A patentee or a licensee shall
furnish such information within two months from the date of such notice or
within such further time as the Controller may allow. d. The patentee and every licensee
shall furnish a statement as to the extent to which the patented invention
has been worked on a commercial scale in India, in Form 27, in respect of
every calendar year, within three months of the end of each year. |
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Amendments after the grant of
patents a. After the grant of patent, the
patentee may apply in Form-13 for an amendment of the application for patent,
complete specification or any document relating thereto to be amended subject
to such conditions, if any, as the Controller thinks
fit. Such a request may be filed in Form-13 with prescribed fee. Such request
may also be made for amendment of priority date. b. The request shall state the nature
of the proposed amendment, highlighted in an annexed copy along with the
reasons. The amendments are allowable only by way of disclaimer, correction
or explanation. Such amendments shall be for the purpose of incorporation of
actual fact only. Further, no amendment of a complete specification shall be
allowed the effect of which would be that the specification as amended would
claim or describe matter not in substance disclosed or shown in the
specification before the amendment, or the amended claim(s) do not fall
wholly within the scope of claim(s) of the specification before the
amendment. c. An application for amendment may
be published along with the nature of proposed amendment. However, if the
nature of proposed amendment is substantive, the application for amendment
shall be published. For instance, any application for amending the complete
specification or the claims or the application for patent shall be published.
d. The amended pages have to be filed
in duplicate by the applicant along with duly cancelled original pages. e. Any person interested may file a
notice of opposition in Form-14 within three months from the date of
publication of the application for amendment. Where such a notice of
opposition is filed, the Controller notifies the applicant for amendment. f. After giving an opportunity to the
applicant and opponent, if any, the Controller shall dispose off the case.
The procedure specified in rules 57 to 63 for post grant opposition for
filing of written statement, reply statement, reply
evidence, hearing and costs shall apply in this case. [See
Chapter 9- Post-grant opposition] g. Amendments allowed after the grant
of patent shall be published. h. A leave to amend the complete
specification obtained by fraud is a ground for revocation of patent under
Section 64. i.
If
any suit for infringement is pending before a Court or any proceeding for
revocation of the Patent is pending before the High Court, the Controller
shall not pass any order allowing or refusing the application for amendment. |
Section 57, 59. Rule
57, 58, 59, 60, 61, 62 63, 81, 82, 83. |
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Procedure
to be followed, after the grant of patent, in case of death of an applicant a. If the applicant had died before
the grant of patent, but the patent was granted in his name, a person in
whose name the patent ought to have been granted may make a request to the
Controller for substitution. The Controller may amend the patent by
substituting the name of the deceased applicant with the name of such
claimant. Such a request has to be made in Form-10. b. If the applicant dies after the
patent has been granted, any person who becomes entitled to the patent or to
a share in the patent, by operation of law, may make a request for
registration of his title. Such a request shall be made in Form-16. |
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Register of Patents a. A register of patents is available
to public at each Patent Office location and contains details about the
patentee, notifications in respect of assignments, transmissions, patents,
licences under patents, and amendments, extension and revocations of patents. b. A copy of, or extracts from, the
register of patents, certified to be a true copy under the hand of the
Controller or any officer duly authorized by the Controller is admissible in
evidence in all legal proceedings. c. Upon grant of a patent, the
Controller enters in the Register of Patents the names, addresses and
nationality of the patentee, title of the invention including the categories
to which the invention relates, date of the patent, date of granting thereof
and address for service of the patentee. The fact of payment of renewal fee
shall also be entered in the register of patents. d. The Controller shall also enter in
the register of patents, particulars regarding proceedings under the Act,
before the Controller or in the Courts in respect of every patent. e. An application for alteration of
name, nationality, address or address for service as entered in the register
of patents may be made to the Controller in respect of any Patent. The
Controller may require such proof of the alteration as he may think fit
before acting on the request. If the Controller allows such a request,
entries in the register are altered accordingly. f. If a patentee makes a request in
writing along with the prescribed fees for entering an additional address for
service in India and the Controller is satisfied that the request shall be
allowed, the additional address shall be entered in the register. g. Entries in the register for each
patent are available to the public on the official website. |
Section 67, 72. |
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Rectification of register of
patents a. An application for rectification
of register of patents may be made to the Intellectual Property Appellate
Board (IPAB) by any person aggrieved:
i.
by
the absence or omission from the register of any entry; or
ii.
by
any entry made in the register without sufficient cause; or
iii.
by
any entry wrongly remaining on the register; or
iv.
by
any error or defect in any entry in the register. b. Notice of such application made
before the IPAB is given to the Controller, who is entitled to be heard on
the application. Further, if so ordered, the Controller shall appear before
the IPAB. c. If IPAB passes any order
rectifying the register, a notice of rectification is served upon the
Controller, who, upon such receipt, rectifies the register. |
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