India: Modification In The Patent Practices

Last Updated: 1 April 2019
Article by Abhishek Sharma

In India, the Patents Act, 1970, and the Patents Rules, 2003, have undergone number of changes in last decade or so. The initial changes in the Act and corresponding Rules were mostly with a vision to make the Indian Patent Laws in conformity to the TRIPS guidelines with the allowed extent of exemptions. Later on, one can say that the focus of amendments moved towards making the procedure to apply for and grant of patent more transparent and swift. Now recently, the Office of Controller General of Patents, Designs & Trademarks had recently notified few changes in the Drafting Manual of a patent, India and the purpose of referrals to the changes is to prevent divergence and provide clarity on the implementation of the law.

MAJOR HIGHLIGHTS OF THE MANUAL

Illumination on determination of inventive step:

Before describing anything lets explains the condition to be satisfied by an invention to be patentable. As we know many of us know all the 3 important parts of the invention before letting it be patentable but let start from the basic. In most cases, a patent application is examined by a technical expert to ensure that it meets the substantive criteria for patentability.

The 1st of those criteria is that it has to be Novel (New).

The 2nd of those criteria is that it should have Inventive step and thirdly should be industrially applicable.

One of the most important criteria is that an invention should have Inventive step. Inventive step under the Act is defined as follows:

"Inventive step" means a feature of an invention that involves technical advance as 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.

  • How do we determine Inventive step?

The proposed invention is not obvious to a person skilled in art i.e., skilled in the subject matter of application.

In the determination of the Inventive step, it is not sufficient to draw the conclusion that a claimed invention is obvious merely because individual parts of the claims taken separately are known or might be found to be obvious.

  • Let's redefine it by the help of famous case

In the case of "Biswanath Prasad RadheyShyam vs. Hindustan Metal Industries Ltd."Hon'ble Supreme Court of India on the inventive step said: "the expression" does not involve any "inventive step" used in section 26(1) (a) of Act. "Obvious" has acquired special significance in the terminology of patent law.

This case can be considered to be the most important case in inventive step jurisdiction in India. Though the case was decided in 1978, the principle laid down in the case is followed even today & have been codified in the Indian Patent Act.

Here, the term "obvious" means that the invention does not go beyond the normal process of technology but merely follow plainly and logical form of the prior art. In other words, how would be defined inventive step is by just asking a question i.e., "Would a non-inventive mind have thought of alleged invention?", If the answer is "NO", then the invention is non-obvious.

In case of modification in applicant name:

The death of the patent applicant or Inventor has an impact on the patent application and the patents that they own.Although if there are living co-inventors, they may be able to enter a request by virtue of an agreement which allows them to proceed, without the deceased inventor participating.

Whereas in the cases of Substitution/Addition of the applicant before the grant of the patent, the request has been made by using form-6 to the Controller to allow changes in the applicant name.

Role of controller evolve:

  • 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.
  • 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 to Controller for registration of his title. Such a request shall be made in Form-16.
  • Wherein, in the case of Dispute between joint applicant regarding the Substitution/Changes in the applicant name. The Controller has given an opportunity of being heard to all the applicant, & Controller will take the decision after hearing the dispute parties as per proceeding under sub-section(5) of section-20.

No need of hardcopy of sequence listing:

  • Importance of Sequence listing

Firstly, we should understand the necessity of sequence listing. Generally, most of the Inventions related to biotechnology were involve with the isolation & purification processes, so for applying for the patent application they need the disclosure of Nucleotides and/or an amino acid sequence listing in the patent specification.

  • Guidance define for listing

In the application of patent discloses, sequence listing of nucleotides or amino acid sequences shall be filled in computer readable text format along with application form. No hardcopy needs to attach with the application form. The Specification of writing the Sequence number is defined as:

Nucleotides sequence shall be listed with a maximum of 60 bases per line; with a space between each group are 10 bases. The bases of coding part of the Nucleotide sequence shall be listed as triplets (codons). The base of a nucleotide sequence shall be listed in groups of 10 bases, except in the coding parts of the sequence.

  • Benefit

To make the practice of patent filling easier, then the sequence listing should be filed in a computer-readable format. By the help of it, Examiner/any other authorized body may easily carry out a sequence search on a database available to the office & freely available by using diverse tools. Any Sequence listing in the electronic document format as specified shall preferably be created by dedicated software such as Patent IN.

Conclusion

This latest notification has been able to tackle most of the issues raised in the past and made exemptions wider. It has simplified the entire process.

  1. The clarity on the concept of "non-obviousness" or the presence of the inventive step in a proposed invention which was still under debate among the patent office, courts, and patentees.
  2. The Rights of Death applicant were redefined by evolving the role of the Controller.
  3. The submission of nucleotide and amino acid sequences in computer-readable text format increases the correctness and presentation of nucleotide and/ or amino acid sequences which is helpful for the public at large to understand. And also Research institutions may have easy and uninterrupted access to the sequences for various purposes such as research, information, etc.

These are some points that highlighting the changes in the latest Draft Manual of Patent Office Practice and Procedure, 2019 as published by the office of Controller General of Patents, Designs, and Trademarks.

References:

1 http://www.ipindia.nic.in/writereaddata/Portal/IPOGuidelinesManuals/1_28_1_manual-of-patent-office-practice_and-procedure.pdf

2 https://www.wipo.int/edocs/pubdocs/en/wipo_pub_941_2017.pdf [3]https://www.wipo.int/export/sites/www/standards/en/pdf/03-25-01.pdf

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Authors
Similar Articles
Relevancy Powered by MondaqAI
Khurana and Khurana
Vaish Associates Advocates
 
In association with
Practice Guides
by Mondaq Advice Centres
Relevancy Powered by MondaqAI
Related Topics
 
Similar Articles
Relevancy Powered by MondaqAI
Khurana and Khurana
Vaish Associates Advocates
Related Articles
 
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Mondaq Free Registration
Gain access to Mondaq global archive of over 375,000 articles covering 200 countries with a personalised News Alert and automatic login on this device.
Mondaq News Alert (some suggested topics and region)
Select Topics
Registration (please scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.

Disclaimer

The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.

General

Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions