Peculiar features of the Indian Patent Law and Rules

We would once again like to highlight briefly the following :

1.         What is Now Patentable And What is Not

»        Product patents in respect of novel compositions, drugs, chemicals, agrochemicals, food, new micro-organisms and non-biological processes for production or propagation of plants or animals are now allowed.

»        Mathematical methods, business methods, computer program per se, algorithms and transgenic plants or animals including any part of a plant or animal such as plant or animal cell, remain not patentable. Though a computer program/ software per se continues to be barred, we believe software in combination with hardware will be patentable as in the past.

»        New use of a known compound or new form of a known entity will not be patentable, unless such new form exhibits higher efficacy. Similarly, new use of a known process, machine or apparatus unless such known process results in a new product or employs at least one new reactant, will not be patentable.

»        Salts, isomers, polymorphs and derivatives of known substances shall be considered to be the same substance, unless they differ significantly in properties with regard to efficacy.

»        Method of Treatment Claims are not patentable

»        “Swiss type” use claims and claims relating to “use”, per se, are not patentable.

2.         Amendment at the Time of Filing

Amendment of claims and specification is permitted of PCT national phase applications at the time of filing the application.

3.         Filing of Annual Statement on Working or non-Working of a Patent

»        A Statement regarding the working of the patent on a commercial basis in India has to be filed for each calendar year ending by 31 March of the next year, e.g. The statement for the period January to December 2006 has to be filed by 31 March 2007.

»        Though non-filing of working report does not result in revocation of the patent, non-filing of working statements not providing such information when called for by the Controller, can result in imposition of a fine of US$20000 approximately, under the law. Moreover, furnishing of false information to the Controller in this respect is punishable by fine or imprisonment or both.

4.       Compulsory Licence

          An interested person may seek a compulsory licence after expiry of three years from the date of grant of the patent, if he is able to establish that the patent has not been worked within the territory of India, or that the reasonable requirements of the public with respect to the patented invention have not been satisfied, or that the patented invention is not available to the public at a reasonably affordable price.

5.         Oppositions
Pre-grant Oppositions can be filed by any person after publication of a patent application and before grant of the patent. Post-grant Oppositions can now be filed by any interested person, within one year of publication of grant of the patent.

6.         Damages and Infringement

»        A Patentee will now be able to claim damages from the date of Publication of the patent application, should infringement be established after Grant. It will also be possible to enforce a Granted Patent even though it may be under opposition.

»        Import, into India, of any patented product or such product made by a patented process, without the consent of the patent owner, is construed as an infringement, along with manufacture, sale and use of such product in India.

7.         Timelines

»        The time for putting a patent application in order for grant will be 12 months from the date of First Examination Report. There is no provision now for any extension of time.

»        This implies that all pending patent applications for which First Examination Reports have been issued on or after 05 November 2005, will receive the benefit of the new 12 month deadline for placing the application in order for grant. 

»        This also implies that all formalities including technical and other amendments necessary [and as required by the Indian Patent Office] to put a patent application in order for grant must be met within this 12 month period. It is not sufficient to just submit the Response to the First Examination Report within the 12 month deadline, as further office actions with fresh objections are normally issued by the Indian Patent Office, sometimes even a day before the deadline for putting a patent application in order for grant. Any subsequent office action must be satisfactorily answered for the application to be in order for grant before the 12 month deadline.

»        The applicant is required to furnish information relating to objections, if any, in respect of novelty and patentability of the invention and any other particulars like allowed claims, in respect of corresponding applications filed in other countries, as may be available, within 6 months from issuance of the First Examination Report. This is a one time submission and does not require an update, though a copy of the corresponding patent, if granted, is usually filed to expedite prosecution.

The Head Office of the Indian Patent Office is situated in Calcutta

»          Since 1912, Calcutta has been the home of the Indian Patent Office.

»          Patent Office, Calcutta is the only office where design applications are examined, prosecuted and registered.

Some unique features of the Head Office of the Indian Patent Office in Calcutta and Advantages of Filing Patent Applications at the Head Office 

»          Total number of Examiners, Assistant Controllers and administrative staff is highest in Calcutta, compared to the filings.

»        Most experienced Examiners and most diverse technology coverage

»          Statistics reveal that the Head Office in Calcutta is more efficient than any other branch office.