Patents Around the World: India Dr. Rajeshkumar Acharya

July 11, 2015© H K ACHARYA & COMPANY2 Contents Indian phase entry time line Statement and Undertaking regarding foreign applications Examination Request & Examination Report’s Reply Divisional Application Amendments Renewal fees Statement regarding working of Patent in India Compulsory License Patent Marking Indian Patent System Features

July 11, 2015© H K ACHARYA & COMPANY3 Indian phase entry time line  Do’s :  Taboo : –Priority can not be claimed under IPA PCT National Phase Application In India Within thirty one months from the date of priority Conventional Application In India Within twelve months from the date on which the basic application was made

July 11, 2015© H K ACHARYA & COMPANY4 Statement and Undertaking regarding foreign applications  Do’s: Applicant has to submit information regarding status of same application in other foreign countries till grant (i.e. Under examination, Published or Granted, Objected). Applicant has to submit detail particular regarding foreign application when demanded by controller (i.e. objection raised respect of novelty and patentability)  Taboo: If requirement is not filed or it contains false information then application can subject to revocation or opposition under IPA 1970

July 11, 2015© H K ACHARYA & COMPANY5 Chemtura Corporation V/s the Union of India Chemtura filed infringement of its patent Defendants- revocation application- not a valid patent as it failed to disclose the information required under Section 8 of the Act to the Controller The Court - vacated the interim injunction granted originally- while vulnerability of a patent was an issue

July 11, 2015© H K ACHARYA & COMPANY6 Maj. (Retd.) Sukesh Behl & Anr. And Koninklijke Phillips Electronics Defendants in - written statement - denied the plaint allegations but also made a counter claim for revocation of the suit Patent on the ground of failure of the plaintiff to disclose to the Controller of Patents (CPO) the information as required by Section 8 The plaintiff on –submitted information U/S 8 requesting to consider it along with an attorney’s affidavit – stating information printed on the reverse of the first page was inadvertently omitted

July 11, 2015© H K ACHARYA & COMPANY7 Continue… The defendants contested -letter dated filed by the Patent Attorney - amounts to admission of suppression of vital information and patent should be revocked Held “that though any violation of the requirement under Section 8 may attract Section 64(1)(m) for revocation of the patent, such revocation is not automatic”

July 11, 2015© H K ACHARYA & COMPANY8 Do’s: Examination request must be filed within 48 months from the date of priority  Taboo: Failure to do- application is considered as withdrawn Do’s: Time for putting an application in order for grant is 12 month from date of issuance of First office action If controller is not satisfied with reply then personal hearing may be issued  Taboo: Application deemed to have been abandoned under IPA 1970 for non- compliance of reply in time frame. Examination Request & Examination Report’s Reply

July 11, 2015© H K ACHARYA & COMPANY9 Divisional Application If claims relating to more than one invention (i.e. question of Unity must be questioned) and such defect may be remedied by filing a further application. At any time before the grant of patent either by applicant, if so desires or with a view to remedy the objection raised by the Controller on the ground that the claims of the complete specification relate to more than one invention.

July 11, 2015© H K ACHARYA & COMPANY10 Amendments The amendment - allowed only if it is by way of disclaimer, correction or explanation. Only for the purpose of incorporation of actual fact. Amendment -not -allowed if the specification as amended describes matter not in substance disclosed or shown in the specification before the amendment or the amended claims do not fall wholly within the scope of a claim of the specification before the amendment

July 11, 2015© H K ACHARYA & COMPANY11 Renewal fees  Do’s: Renewal fees should be paid for continuation of patent right Renewal fees from 3 rd year (i.e. after filing date) shall be paid in advance till 20 th year of patent.  Taboo : Patent rights are lapsed if Renewal fees are not paid in stipulated time limit.

July 11, 2015© H K ACHARYA & COMPANY12 Statement regarding working of Patent in India  Do’s: Applicant shall annually furnish detail for working of patent in India after grant of patent. Particulars of Form 27: Whether invention worked or not worked in India If not worked: reasons for not working and steps being taken for working of the invention If worked: quantum and value (in INR) of the patented product (i) manufactured in India (ii) imported from other countries  Taboo : Heavy penalty imposed on patentee [Rs.10 Lac ($17000)]

July 11, 2015© H K ACHARYA & COMPANY13 Continue…  Patentee should take care about compliance of following criteria by patent as working requirement: 1) The reasonable requirements should be satisfied, 2) Availability at a reasonably affordable price, or 3) Working in the territory of India.

July 11, 2015© H K ACHARYA & COMPANY14 Non-working of invention in India is made ground for Compulsory License. Controller have power to decide terms and royalty for compulsory license. Non-working of patent in India shall be a ground for requesting the Controller to revoke the Patent after two years from the date of first compulsory license was granted. Continue…

July 11, 2015© H K ACHARYA & COMPANY15 Patent Marking  Do’s: Applicant or Patentee can label their product Example: “patent”, “patented”, “patent applied for”, “patent pending” Taboo: False representation: fine up to one lakh rupees (i.e. around $2000) Patent Marking is optional

July 11, 2015© H K ACHARYA & COMPANY16 Indian Patent System Important Features No. Patent systems featuresIndia (IPO) 1Patent granting on the basis of first- to-file? Yes 2Filing permitted in any language?Hindi or English 3Are patent applications published?Yes 4Can patent examination be deferred? No

July 11, 2015© H K ACHARYA & COMPANY17 No.Patent systems featuresIndia (IPO) 5Patent term20 years from date of the application in respect of all the patents; For PCT national phase- PCT international filing date 6Grace period (amount of time invertors have to file patent applications after their inventions have been made public) 12 months with restriction ( e.g: disclose in central government exhibition) Continue…

July 11, 2015© H K ACHARYA & COMPANY18 No.Patent systems featuresIndia (IPO) 7Revocation?Yes 8Compulsory licensingYes 9Legal system Patent Civil 10Patent commissionersProfessional bureaucrat 11Patent documentsPublic good Continue…

July 11, 2015© H K ACHARYA & COMPANY19 From: H K ACHARYA & COMPANY Advocates, Patent & Trademark Attorneys 19, HK Avenue, Swastik Society, Navrangpura, Ahmedabad India Tel: /5259 Fax: / Web: