Chapter 08
Examination & Grant
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Request
for Examination
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Reference for Examination
a.
Chemistry
and allied subjects. b.
Biotechnology,
Microbiology and allied subjects. c.
Electrical,
Electronics & related subject d.
Mechanical
and other subjects. The reference to the Examiner is
made ordinarily within one month from the date of publication or one month
from the date of request for examination, whichever is later, and is made in
order in which the request is filed.
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12. |
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Examination of application |
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Search for
anticipation by previous publication and prior claiming.
a.
International classification. b.
Search strategy adopted. c.
Key word(s) used. d.
Databases consulted for both Patent and non Patent literature. e.
List of search queries. f.
Prior art findings and analysis regarding the patentability. g.
Limitation on search if any, such as non clarity of claims or
multiplicity of inventions or any other reason due to which a reasonable
search cannot be conducted. |
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Novelty a)
An invention is considered as new if
it is not anticipated by prior publication, prior use or prior public
knowledge. An invention is new (novel) if it has not been disclosed in the
prior art, where the prior art means everything that has been published,
presented or otherwise disclosed to the public before the date of filing of
complete specification. b)
For the purpose of determining
novelty, an application for Patent filed at the Indian Patent Office before the
date of filing of complete specification of a later filed application but
published after the same is considered for the purposes of prior claiming. c)
While ascertaining novelty,
the Examiner takes into consideration, inter alia, the following
documents: §
which have been published before the date of filing of complete
specification. §
such Indian Patent Applications which have been filed before the date of
filing of complete specification and published on or after the date of filing
of the complete specification, but claims the same subject matter. §
also the Examiner may consider such documents which have been published
before in a transaction of a learned society or exhibited before in an
authorized manner as designated by the Government within one year from the
date of such filing. d)
A prior art will be
considered as anticipatory if all the features of the invention under
examination are present in the cited prior art. e)
The prior art should disclose
the invention either in explicit or implicit manner. f)
Mosaicing of prior art documents is not followed in the determination of
novelty. g)
A generic disclosure in the
prior art may not necessarily take away the novelty of a specific disclosure.
For instance, a metal spring may not take away the novelty of a copper spring. h)
A specific disclosure in the
prior art takes away the novelty of a generic disclosure. For instance, a
copper spring takes away the novelty of a metal spring. i)
In a case where a prior art
is cited as an anticipation in the Examination Report, which is not deemed to
be an anticipation by reason on Section 29-34, the onus of proving is on the
applicant. |
Section
2(1)(j), 13, 29, 30, 31, 32, 33, 34 |
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Inventive step |
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General principle Inventive step is a feature of an invention that involves
a technical advancement compared to the existing knowledge or having economic
significance or both and that makes the invention not obvious to a person
skilled in the art. An invention is patentable only if it involves one or
more inventive step. In relation to the determination of patentability, an
Examiner first conducts an enquiry as to the novelty of the claimed invention
and then proceeds to conduct an enquiry on whether the claimed invention
involves one or more inventive step. |
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Determination
of inventive step a)
For determination of
inventive step, all or any of the prior art(s) revealed during the search
process to perform an enquiry as to whether such prior art(s) disclose(s) the
claimed invention, are relied upon. b)
Publications existing on the
date of filing of complete specification would be considered as a prior art. c)
However, Indian Applications
filed before but published on or after the date of filing of complete
specification of the instant application are considered as a prior claiming. d)
Invention
as a whole shall be considered. In other words, it is not sufficient to draw
the conclusion that a claimed invention is obvious merely because individual
parts of the claim taken separately are known or might be found to be obvious. e)
If
an invention lies merely in verifying the previous predictions, without
substantially adding anything for technical advancement or economic
significance in the art, the inventive step is lacking. f)
For the purpose of
establishing obviousness of the invention, citing a mosaic of prior arts is
permissible, provided such prior art is enabling. g)
If the invention is predictable based on the available
prior art, merely requiring workshop improvement by a person skilled in the
art, the inventive step is lacking. |
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Industrial Applicability
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Inventions
not patentable Under
the Patents Act, 1970, the following are not inventions and hence are not
considered to be patentable. However, examples given are mere illustrations
and may not be conclusive on the subject. Objective decisions may be taken on
case to case basis. |
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An invention which
is frivolous or which claims anything obviously contrary to well established
laws is not an invention. Some examples of a frivolous nature and contrary
to natural laws are:- §
A machine
purporting to produce perpetual motion. §
A machine
alleged to be giving output without any input. §
A machine
allegedly giving 100% efficiency. |
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An invention, the primary or intended use or commercial
exploitation of which would be contrary to public order or morality or which
causes serious prejudice to human, animal or plant life or health or to the environment
is not an invention. Some examples are: a.
Any
device, apparatus or machine or method for committing theft/burglary. b.
Any
machine or method for counterfeiting of currency notes. c.
Any
device or method for gambling. d.
An invention
the use of which can cause serious prejudice to human beings, plants and
animals. e.
Inventions,
the intended use or commercial exploitation of which is found to be injurious
to public, animal or plant life or health, such as, a method of
adulteration of food. f.
An
invention, the primary or intended use of which is likely to violate the well
accepted and settled social, cultural, legal norms of morality, e.g. a method
for cloning of humans. g.
An
invention, the primary or proposed use of which would disturb the public order e.g. a device for house-breaking. h.
However,
if the primary or intended purpose or commercial exploitation of a claimed
invention is not causing serious prejudice to human, animal or plant life or
health or to the environment, such subject matter may be considered to be an
invention and may be patentable. For instance, a pesticide. |
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The mere discovery of a scientific principle or the formulation of an abstract
theory or discovery of any living thing or non-living substance occurring in
nature is not an invention. i) A claim for discovery of
scientific principle is not considered to be an invention, but such a
principle when used with a process of manufacture resulting in a substance or
an article may be considered to be an invention. ii)
A
scientific theory is a statement about the natural world. These theories
themselves are not considered to be inventions, no matter how radical or
revolutionary an insight they may provide, since they do not result in a
product or process. However, if the theory leads to practical application in
the process of manufacture of an article or substance, it may well be
patentable. A claim for formulation of abstract theory is not considered to
be an invention. For example, the
fact that a known material or article is found to have a hitherto unknown
property is a discovery and not an invention. But if the discovery leads to
the conclusion that the material can be used for making a particular article
or in a particular process, then the article or process could be considered
to be an invention. iii) Finding out that a particular
known material is able to withstand mechanical shock is a discovery and
therefore not patentable, but a claim to a railway sleeper made of the
material would not fall foul of this exclusion, and would be allowable if it
passed the tests for novelty and inventive step. Similarly, finding of a new
substance or micro-organism occurring freely in nature is a discovery and not
an invention. |
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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 is not an invention. Section 3(d) provides an
explanatory clause to make it more clear which reads as follows: “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 differ
significantly in properties with regard to efficacy”. According
to this provision, the following are not inventions and hence not patentable: (a) mere
discovery of a new form of a known substance which
does not result in the enhancement of the known efficacy of that substance; (b) the mere discovery of any new property of a known
substance; (c) the mere discovery of new use for a known
substance; (d) the mere use of a known process unless such
known process results in a new product or employs at least one new reactant; (e) the mere use of a known machine or apparatus. The
explanation to Section 3(d) further clarifies that the salts, esters,
ethers, polymorphs, metabolites, pure form, particle size, isomers, mixtures
of isomers, complexes, combinations and other derivatives of known substance
may be considered to be the same substance. It however states that
such salts, esters, ethers, polymorphs, metabolites, pure form, particle
size, isomers, mixtures of isomers, complexes, combinations and other
derivatives of such known substance may be considered as patentable
only if they differ significantly in properties with regard to
efficacy. The Examiner on a case to case
basis applies the test as to what constitutes such salts, esters, ethers, polymorphs, metabolites, pure form, particle
size, isomers, mixtures of isomers, complexes, combinations and other
derivatives to differ
significantly in properties with regard to efficacy from the known
substance. The complete specification may bring out clearly and categorically
in the description, as to how the subject matter differs significantly in properties with regard to efficacy from
the known substance thereof, at the time of filing of the application or
subsequently by way of an amendment of specification under section 59. In a recent case in relation to a
pharmaceutical substance, the Madras High Court held that efficacy means
therapeutic efficacy. It was held that: “going by the meaning for the word
“efficacy” and “therapeutic”… what the
patent applicant is expected to show is, how effective the new discovery made
would be in healing a disease having a good effect on the body? In other
words, the patent applicant is definitely aware as to what is the
“therapeutic effect” of the drug for which he had already got a patent and
what is the difference between the therapeutic effect of the patented drug and
the drug in respect of which patent is asked for.” “Due to the advanced technology in all fields of science,
it is possible to show by giving necessary comparative details based on such
science that the discovery of a new form of a known substance had resulted in
the enhancement of the known efficacy of the original substance and the
derivatives so derived will not be the same substance, since the properties
of the derivatives differ significantly with regard to efficacy.” (Novartis
AG Vs. Union of India, W.P. No. 24760/06). |
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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 is not an invention. An
admixture resulting in synergistic properties is not considered as mere
admixture, e.g., a soap, detergent, lubricant and polymer composition etc, and
hence may be considered to be patentable. A mere
aggregation of features must be distinguished from a combination invention.
The existence of a combination invention requires that the relationship
between the features or groups of features be one of functional reciprocity or that they show a combinative effect
beyond the sum of their individual effects. The features should be
functionally linked together which is the actual characteristic of a
combination invention. In
general all the substances which are produced by mere admixing, or a process
of producing such substances should satisfy the requirement of synergistic
effect in order to be patentable. Synergistic effect should be clearly
brought out in the description by way of comparison at the time of filing of
the Application itself. The subsequent submissions regarding synergism can be
accepted in a reply to the office action as a further support of synergy.
However, such submitted data may be incorporated in the Specification,
subject to the provisions of Section 59. |
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The mere arrangement or re-arrangement or duplication of known devices
each functioning independently of one another in a known way is not an
invention. In
order to be patentable, an improvement on something known before or a
combination of different matters already known,
should be something more than a mere workshop improvement; and must
independently satisfy the test of invention or an 'inventive step'. To be
patentable, the improvement or the combination must produce a new result, or
a new article or a better or cheaper article than before. A combination of
old known integers may be so combined that by their working inter-relation,
they produce a new process or an improved result. Mere collocation of more
than one integers or things, not involving the exercise of any inventive
faculty, does not qualify for the grant of a patent. (Biswanath
Prasad Radhey Shyam Vs.
Hindustan Metal Industries (1979)
2 SCC, 511). A
new and useful application of an old principle may be good subject-matter. An
improvement on something known may also afford subject-matter; so also a
different combination of matters already known. A patentable
combination is one in which the component elements are so combined as to
produce a new result or arrive at an old result in a better or more
expeditious or more economical manner. If the result produced by the
combination is either a new article or a better or cheaper article than
before, the combination may afford subject-matter of a patent. (Lallubhai Chakubhai Vs. Chimanlal and Co. (AIR 1936 Bom 99.) An
invention claiming a mere juxtaposition of known devices in which each device
functions independently is not considered patentable. Merely placing
side-by-side old integers so that each performs its own function
independently of the others is not a patentable combination. [As for example:
a flour mill provided with sieving means]. However, where the old integers
when placed together have some working interrelation, producing a new or
improved result, then there could be a patentable subject matter in the
working interrelation brought about by the collection of the integers. When
two or more features of an apparatus or device are known, and they are
juxtaposed without any inter-dependence on their functioning, they should be
held to have been already known. (Rampratap v. Bhabha Atomic Research Center, 1976 IPLR 28 P. 35),
e.g., an umbrella with fan (388/Bom/73), bucket fitted with torch, clock and
transistor in a single cabinet. These are not patentable, since they are
nothing but mere arrangement and rearrangement of items without having any
working interrelationship between them and are devices capable of functioning
independently of each other. As
for instance, in the case of an application for a patent in respect of an
apparatus for producing metallic bellows, the hydraulic machine and the roll
forming machine disclosed therein were functioning as separate machines
independently of each other and as such had no novel feature. Hence, there is
no invention when a claim is made on known types of hydraulic forming and
roll forming machines functioning independently of each other. A new combination may be the subject matter of a
patent although every part of the combination, per se, is old, for here the new article is not the parts
themselves but the assembling and working of the parts, together. The merit
of a new combination very much depends upon the result produced. Where a
slight alteration turns that which was practically useless into what is
useful and important, it is fit subject matter for a patent.(Lallubhai Chakkubhai v. Shamaldas Sankalchand Shah,
AIR 1934 Bom 407). |
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A method of agriculture or horticulture is not an invention. Examples
of subject matters excluded from patentability under this provision are: (a) A method
of producing a plant, even if it involved a modification of the conditions
under which natural phenomena would pursue their inevitable course (for
instance a green house). (b) A method
of producing improved soil from the soil with nematodes by treating the soil
with a preparation containing specified phosphorathioates.
(c) A
method of producing mushrooms. (d) A
method for cultivation of algae. |
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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 is not an invention. This provision excludes from
patentability, the following: (a) Medicinal methods: As for
example a process of administering medicines orally, or through injectables, or topically or through a dermal patch. (b) Surgical
methods: As for example a stitch-free incision for cataract removal. (c) Curative methods: As for
example a method of cleaning plaque from teeth. (d) Prophylactic methods: As for
example a method of vaccination. (e) Diagnostic methods: Diagnosis is the identification of the nature of a medical illness, usually by investigating its history
and symptoms and by applying tests. Determination of the general physical state
of an individual (e.g. a fitness test) is considered to be diagnostic. (f)
Therapeutic methods: The term “therapy’’ includes prevention as well as
treatment or cure of disease. Therefore, the process relating to therapy may
be considered as a method of treatment and as such not patentable. (g) Any method of treatment of
animal to render them free of
disease or to increase their economic value or that of their products. As for
example, a method of treating sheep for increasing wool yield or a
method of artificially inducing the body mass of poultry. (h) Further examples of subject
matters excluded under this provision are: any operation on the body, which
requires the skill and knowledge of a surgeon and includes treatments
such as cosmetic treatment, the termination of pregnancy, castration,
sterilization, artificial insemination, embryo transplants, treatments for
experimental and research purposes and the removal of organs, skin or bone
marrow from a living donor, any therapy or diagnosis practiced
on the human or animal body
and further includes methods of abortion,
induction of labour, control of estrus or menstrual regulation. (i) Application of substances to the body for purely cosmetic
purposes is not therapy. (j) Patent may however be obtained
for surgical, therapeutic or diagnostic instrument or apparatus. Also the manufacture
of prostheses
or artificial limbs and
taking measurements thereof
on the human body are patentable. |
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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 are not inventions. The subject
matters excluded under this provision are: (a) plants in whole or in part (b) animals in whole or in part (c) seeds (d) varieties and species of
plants and animals (e) essentially
biological process(es) for production or propagation of plants and animals. Microorganisms, other than the
ones discovered from the nature, may be patentable. For instance, genetically
modified microorganisms may be patentable subject to other requirements of
Patentability. A new process of preparation of a vaccine under specific
scientific conditions, the vaccine useful
for protecting poultry against contagious bursitis
infection was held to be patentable by the Court on the ratio that the
statute does not make a manner of manufacture as un-patentable even if the
end products contains a living organism. (Dimminaco – A.G. Vs. Controller of Patents & Designs and Others). Plant varieties are provided
protection in India under the provisions of the ‘Protection of Plant
Varieties and Farmers’ Rights Act, 2002. |
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A mathematical or business method or a computer programme per se or algorithms are not inventions and
hence not patentable. a. Under this
provision, mathematical methods, business methods, computer programmes per se
and algorithms are not considered as patentable subject matter. b. ‘Mathematical
methods’ are considered to be acts of mental skill. A method of calculation,
formulation of equations, finding square roots, cube roots and all other
methods directly involving mathematical methods are therefore not patentable.
With the development in computer technology, mathematical methods are used
for writing algorithms and computer programs for different applications and
the claimed invention is sometimes camouflaged as one relating to the
technological development rather than the mathematical method itself. These
methods, claimed in any form, are considered to be not patentable. c. “Business
Methods” claimed in any form are not patentable subject matter. The term
‘Business Methods’ involves whole gamut of activities in a commercial or
industrial enterprise relating to transaction of goods or services. With the
development of technology, business activities have grown tremendously
through e-commerce and related B2B and B2C business transactions. The claims
are at times drafted not directly as business methods but apparently with
some technical features such as internet, networks, satellites, tele-communications etc. This exclusion applies to all
business methods and, therefore, if in substance the claims relate to
business methods, even with the help of technology, they are not considered
to be a patentable subject matter. d. Algorithms
in all forms including but not limited to, a set of rules or procedures or
any sequence of steps or any method expressed by way of a finite list of
defined instructions, whether for solving a problem or otherwise, and whether
employing a logical, arithmetical or computational method, recursive or
otherwise, are excluded from patentability. e. Patent
applications, with computer programme as a subject
matter, are first examined with respect to (b), (c) and (d) above. If the
subject matter of an application does not fall under these categories, then,
the subject matter is examined with a view to decide whether it is a computer
programme per se. f. If the
claimed subject matter in a patent application is only a computer programme, it is considered as a computer programme per se
and hence not patentable. Claims directed at ‘computer programme
products’ are computer programmes per se stored in a computer readable
medium and as such are not allowable. Even if the claims, inter alia, contain a subject matter
which is not a computer programme, it is examined
whether such subject matter is sufficiently disclosed in the specification
and forms an essential part of the invention. g. If the
subject matter of a patent application is not found excluded under the
foregoing provisions, it shall be examined with respect to other criteria of
patentability. |
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A literary, dramatic, musical or artistic work or any other aesthetic creation
whatsoever including cinematographic works and television productions is not
an invention. Writings,
music, works of fine arts, paintings, sculptures, computer programmes, electronic databases, books, pamphlets,
lectures, addresses, sermons, dramatic-musical works, choreographic works,
cinematographic works, drawings, architecture, engravings, lithography,
photographic works, applied art, illustrations, maps, plans, sketches,
three-dimensional works relating to geography, topography, translations,
adaptations, arrangements of music, multimedia productions, etc. are not
patentable. Such works fall within the domain of the Copyright Act,
1957. |
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A mere scheme or rule or method of performing mental act or method of playing
game is not
an invention. A mere scheme or rule or method of performing mental act or method of
playing game, are excluded from patentability, because they are considered as
outcome of mere mental process. For example, a. Method of playing chess. b. Method of teaching. c. Method of learning. |
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A
presentation of information is not an invention. Any
manner, means or method of expressing information whether visual, audible or
tangible by words, codes, signals, symbols, diagrams or any other mode of
representation is not patentable. For example, a speech instruction means in
the form of printed text where horizontal underlining indicated stress and
vertical separating lines divided the works into rhythmic groups is not
patentable. For instance, railway time table, 100years calendar etc. In the matter of application No.
94/Cal/2002, the Controller held that the Patent system was meant for protecting only one kind of
creativity i.e. technological creativity and since the claimed invention
relates to business method and method of presenting information, it is not
allowed. |
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Topography
of integrated circuits is not an invention. Since
protection of Layout Designs of Integrated Circuits is governed separately
under the Semiconductor Integrated Circuit Lay-out Designs Act, 2000,
three-dimensional configuration of the electronic circuits used in microchips
and semiconductor chips is not patentable. |
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An invention which in effect, is traditional knowledge or which is an
aggregation or duplication of known properties of traditionally known
component or components is not an invention. Traditional Knowledge, being knowledge already existing,
is not patentable. An example is the antiseptic
properties of turmeric for wound healing. Another example is the pesticidal and insecticidal properties of neem. The Examiner conducts an investigation by using
the Traditional Knowledge Digital Library (TKDL) and other resources to
decide as to whether the claimed subject matter falls within the purview of
this provision. |
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Sufficiency of
Disclosure Sufficiency of disclosure
is yet another aspect, which is checked by the Examiner while examining a
patent application. The Examiner will look for whether: a. the specification is properly titled. b. the subject matter is fully and
particularly described in the specification. c. the claims define the scope of the
invention properly. d. the Specification describes the best
method of performing the invention or not. e. the source and geographical origin,
in case of inventions related to biological materials, has been disclosed. f. approval obtained from Biodiversity
Authority, wherever applicable. g. accession number and other details of the depository are given, if
applicable |
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Unity of Invention a)
The
Claims of a Specification shall relate to a single inventive concept. In
case, an application comprises a plurality of inventive concepts the examiner
refers to the same in his report. The application may be divided in order to
meet the objection of plurality of distinct inventions. b)
The
determination whether a group of inventions is so linked as to form a single
inventive concept shall be made without regard to whether the inventions are
claimed in separate claims or as alternatives within a single claim. c)
Unity
of invention between process and apparatus or means requires that the
apparatus or means have been specifically designed for carrying out the
process, or at least a step of the process. d)
Independent
claims of different categories may relate to a single inventive concept. For
example: 1. Claims for a product and process
specially adapted for manufacture of the product. 2. Claims for a process and apparatus
or means specifically designed for carrying out the process. 3. A mould for casting an article, a
method of making that mould, a process of casting the article by using the
said mould will constitute a single invention. 4. A locking system containing plug
and socket wherein separate independent claims for a plug and socket may
constitute a single inventive concept. 5. A broadcasting system comprising
transmitter and receiver. 6. If an invention relates to a new
type of spray bottle, claims may be directed to the spray bottle itself (a
product) and a method of making the spray bottle (a process). 7. In case
of a genetically modified Gene Sequence/ Amino Acid Sequence claims may be directed to a Gene sequence / Amino Acid
sequence, a method of expressing the sequence, an antibody against that
protein / sequence, a kit containing such antibody / sequence. 8. In case of a drug or pharmaceutical
product, claims may be directed to a drug or pharmaceutical product, a
process of making the product, a composition containing the drug. |
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Report of Examiner
a.
whether
the application and the specification and other documents relating thereto
are in accordance with the requirements of the Act and rules made thereunder; b.
whether
there is any lawful ground of objection to the grant of patent under the Act; c.
the result of
investigations under Section 13.
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Consideration
of the Report by Controller and issuance of FER
a.
Lack
of novelty, inventive step and industrial applicability. b.
Subject
matter relating to a category, which falls within the purview of Sections 3
and 4. c.
Non-fulfillment
of any other requirement under the Act.
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Post-dating of Application 1. The
application for patent may be post-dated to a date not later than six months
from the date of application on a request made by the applicant at any time before
the grant of patent along with the prescribed fee.
i.
Where such request is made before the
examination of application, the same may be allowed and the examination shall
be conducted with reference to the date so post-dated.
ii.
Where such request is made after the
issuance of First Examination Report, the same may be allowed subject to
fresh examination with reference to the date so post-dated. 2. If the application or
specification (or drawings if any) or any document is required to be amended
under section 15 to comply with the requirements of the Act or the Rules, the
Controller may direct that the application or specification or other
documents related thereto be deemed to have been made on the date on which
the requirements are complied with or the date on which it is re-filed after
complying with the requirements. In case this provision is invoked, the
application shall be examined afresh with reference to the date as directed
by the Controller. 3. Following may be instances in
which Section 17(2) may be invoked by the Controller:
i.
A
missing part is brought-in through an amendment, for the purpose of meeting
the office objections during Section 15 proceedings, by the applicant.
ii.
A
new drawing is brought-in through an amendment for the purpose of explaining
the amended specification, and without such amended drawing the amended
specification cannot be explained. |
Section
9(4), 15, 17 |
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Pre-Grant
Opposition a. Any
person may file an opposition by way of representation to the Controller against the
grant of Patent, at the appropriate office, at any time after publication of patent
application u/s 11A, but before the grant of Patent on any of the grounds
mentioned in Section 25(1). The date of grant of Patent is the date on which
the Controller orders the grant of patent in the file. Simultaneously, the
patent number is generated and the fact of granting the patent is available
on the official website. b. If any pre-grant opposition is
received after the grant of the patent, the Controller shall return the
pre-grant opposition to the opponent and shall intimate such opponent about
the fact of grant of the patent. If the opponent is a person interested, he
may file a formal post grant opposition. c. A Patent is not granted before the
expiry of six months from the date of publication under Section 11A.
Therefore, a person may file the pre-grant opposition within the assured
period of six months from the date of Publication, to make sure that the
pre-grant opposition is filed before the grant of patent. d. The representation shall include a
statement and evidence, if any, in support of such representation and a
request for hearing, if so desired. e.
The
Controller shall consider the representation only after a Request for
Examination for that Application has been filed. f. The Pre-Grant Opposition, if
available on record, is considered by the Controller along with the report of
the Examiner. g. On consideration of the
opposition, if the Controller is of the opinion that the opposition is devoid
of any merit, an opportunity of hearing shall be granted to the opponent, if
requested. After hearing the opponent, if the Controller is still of the
opinion that the opposition shall be refused, a speaking order shall be
issued rejecting the pre-grant opposition, ordinarily within one month. h.
However,
if the Controller is of the opinion that pre-grant opposition has merit and
the application shall be refused or amended, a notice is given to the
applicant along with a copy of the representation. The applicant shall, if he so desires, give reply to that
representation along with his statement and evidence, if any, in
support of his application within three months from the date of the notice. i.
The Controller shall consider the statement and
evidence filed by the applicant and may either refuse the grant of patent or
ask for amendment of the complete specification to his satisfaction before
the grant of patent. j.
After
considering the representation and submissions made during the hearing, the
Controller shall proceed further simultaneously, either rejecting the
representation and granting the patent or accepting the representation and
refusing the grant, ordinarily within
one month from the completion of the above proceedings. If the application
for patent is to be refused on consideration of the pre-grant opposition u/s
25(1), a speaking order of refusal shall be issued under Section 15. |
Section
11A, 15, 25(1). |
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Grant
of Patent |
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Compliance of conditions under the
Act The Patent is granted as
expeditiously as possible when
For instance,
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Section 18, 43. |
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Consequences of grant
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Date
of Patent a.
The date of Patent is the date of filing of
the Application. However, in case of a PCT National Phase application, the
date of filing is the international filing date.
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Conditions subject to which a
Patent is granted
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Rights of Patentee
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Rights
of co-owners
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Term of Patent The term
of Patent is 20 years from the date of filing of application in respect of
all the patents, including those for which the term had not expired on 20th
May, 2003, when Patent (Amendment) Act 2002 came into force, provided that
the renewal fee is paid every year before the due date or within the extended
period (maximum six months). |
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