Novartis v. Union of India (2013) 6 SCC 1
Rejection of a patent for a Drug which was not ‘inventive’ or had an superior ‘efficacy’-
Patent registration can be obtained in India for an invention. A patent is a right granted to an individual or enterprise by the government that disallows others from making, using, selling, or importing the patented product or process without approval or consent.
Patent filing is the primary step an inventor initiates to protect his or her invention from being misused. Patent filing in India is a tedious process, but it can be done quickly with proper guidance and support. An individual who wishes to secure a patent should get a consultation from expert patent practitioners.
Before a patent registration is obtained, a rigorous check is done on whether the product is innovative or novel and industrially applicable. An individual can search the intellectual property regulator of India’s database to check if there is an object or invention that is the same or similar to the applicant’s invention.
However, patent registrations are not applicable for all inventions, and the invention should satisfy specific criteria to obtain a patent in India.
A patent registration application for an invention can be made by any of the following people either alone or jointly with any other person:
The true and first inventor
True and first inventor’s assignee
The representative of the deceased true and first inventor his / her assignee
According to the Patent Act, a “person ” is any natural person, company, or association or body of individuals or government body, whether incorporated or not.
In the case of a proprietorship firm, the application should be made in the proprietors’ name.
In partnership firms, the names of all personally responsible partners must be included in the patent application.
An assignee can also be a natural person or other than a legal person such as a registered company, an LLP, Section 8 Company, an educational institute, or government.
The applicant is required to disclose the name, address, and nationality of the true and first inventor.
The Patent Act states that for an invention to be patentable, the invention must be a new product or process that involves an inventive step and can be used in the industry. For an invention to obtain patent registration, it should be technical and meet the following criteria-
Novelty – The matter disclosed in the specification is not published in India or elsewhere before filing the patent application in India.
Inventive Step – The invention is not apparent to a person skilled in the art in light of the prior publication/ knowledge/ document.
Industrial applicability – Invention should possess utility so that it can be made or used in the industry.
Provisional application – Also known as a temporary application, a provisional application is filed when an invention is still in the pipeline and has not been finalized. Early filing of a patent will prevent any other related inventions from being designated as prior art to the inventor’s application.
This type of patent application is filed when an invention requires additional time for development.
Ordinary or Non-Provisional application – This type of application does not have any priority to claim or if the application is not filed in pursuance of any preceding convention application. A complete specification can be filed through:
Direct Filing: Wherein complete specification is initially filed with the Indian Patent Office without filing any corresponding provisional specification.
Subsequent Filing: Wherein complete specification is filed after the filing of the corresponding provisional specification and claiming priority from the filed provisional specification.
Convention application – The convention application is filed for claiming a priority date based on the same or similar application filed in any of the convention countries.
To avail a status of the convention, an applicant must apply to the Indian Patent Office within a year from the date of the initial filing of a similar application in the convention country.
To re-iterate in simpler terms, a convention application entitles the applicant to claim priority in all the convention countries.
PCT international application – Though the PCT international application does not provide an international patent grant, it paves the way for the streamlined patent application process in many countries at one go.
The Patent Corporation Treaty governs it and can be validated in up to 142 countries. Filing this application will protect an invention from being replicated in these countries.
PCT National application – This application is filed if the applicant discovers that he has come across an invention, a slight modification of the invention that has already been applied for or patented by the applicant. PCT National application can be filed if the invention does not involve a substantial inventive step.
Divisional application – An applicant may choose to divide an application and furnish two or more applications if a particular application claims more than one invention. The priority date for these applications is similar to that of the parent application.
To file a successful patent registration, you need to ensure that your invention idea is unique. Carrying a patent search will confirm this, and the individual can also avoid lengthy procedures.
Patent Filing is considered to be the most crucial aspect. The complete process specification is a specialized task that can be done correctly through expert advice.
Drafting a patent application is an art, and it will be wise to choose to seek expert help. If the individual is in the initial stages of research and development, it is best to file a provisional patent application.
The patent professionals or agents will then do extensive research and prepare the patentability report. Hence, the applicant should attach all the specified documents along with the patent application.
After this, the application is then published in the Patent journal within 18 months. Request for early filing of the patent can be made along with the prescribed fees.
Publication of Filed Patent
For patent registration in India, the Indian patent office keeps every patent application confidential until it gets officially published in the Patent Journal.
The publication of filed patent happens automatically after 18 months from filing the applications, and there is no need for any request to be raised.
Within 48 months from the patent’s first filing, there would be a formal submission of a request for the patent examination. Suppose the applicant fails to file within the specific time, the application will be treated as withdrawn by the patent office. The examiner then conducts a comprehensive investigation and releases the first examination report called patent prosecution.
Patent applications also receive objections, so it is mandatory to analyze the patent examination report and draft a proper response to the objections.
Once all the patentability requirements are met, the grant patent’s notification will be published in the Patent Journal.
It is filed electronically using Form-1 and provisional/ complete specification, with the prescribed fee at the appropriate patent office. The jurisdiction of a patent office is decided based on the following:
Place of residence, domicile, or business of the applicant (first mentioned applicant in the case of joint applicants).
The place from where the invention originated.
Address for service in India given by the applicant, when the applicant has no business or domicile place in India (Foreign applicants).
The States of Gujarat, Maharashtra, Madhya Pradesh, Goa, Chhattisgarh, the Union Territories of Daman & Diu, and Dadra & Nagar Haveli fall under the Mumbai Patent Office jurisdiction.
The States of Haryana, Himachal Pradesh, Jammu and Kashmir, Punjab, Rajasthan, Uttar Pradesh, Uttarakhand, National Capital Territory of Delhi, and the Union Territory of Chandigarh fall under the Delhi Patent Office jurisdiction.
The States of Andhra Pradesh, Karnataka, Kerala, Tamil Nadu, and the Union Territories of Pondicherry and Lakshadweep fall under the Chennai Patent Office jurisdiction.
The rest of India, the States of Bihar, Orissa, West Bengal, Sikkim, Assam, Meghalaya, Manipur, Tripura, Nagaland, Arunachal Pradesh, and Union Territory of Andaman and Nicobar Islands fall under the Kolkata Patent Office jurisdiction.
A patent is a form of encouragement for innovations and inventions. Once the applicant is granted the patent, they become the owner of the invention or the idea.
Patent registration is essential for a business as the patent restricts the competitors from copying, selling, or importing the intellectual property without permission. This way, the patent holder can protect his patent rights in support of the existing laws.
Patents can be sold as well as licensed like other forms of property.
The inventor can also transfer it.
A patented product improves the brand perception and potentially enables the business to charge a premium.
With exclusive patent rights, the patent owner controls the use of the invention for twenty years and longer.
Rejection of a patent for a Drug which was not ‘inventive’ or had an superior ‘efficacy’-
First Patent Litigation in India post India’s 2005 Product Patent Regime which included public interest and pricing issues.
What Shall Be The Actual Date Of Grant Of A Patent?
India’s First Compulsory License
Speedy disposal of Intellectual property rights cases