summarize : The main categories, which do not qualify for patentability under the IPA are: · An invention, whose use could be contrary to the public order or morality or which causes serious prejudice to human, animal or plant life or health or to the environment. For example, a new type of gambling machine. · Inventions relating to atomic energy. This is so because the Central Government has the sole responsibility for the development of atomic energy and for obvious reasons will not like its programmes to be hampered by patent claims. · An invention which is frivolous or which claims anything obviously contrary to well established natural laws. For example, an invention that claims a perpetual motion machine will not be patentable because the claim would be contrary to well-established laws of nature. · The mere discovery of a scientific principle or the formulation of an abstract theory. For example, a discovery merely unveils a hidden thing; it does not involve an act that makes it useful; it is therefore not an invention and hence not patentable. Similar reasoning applies to the formulation of an abstract theory. · Discovery of any living thing or non-living substances or objects occurring in nature; · A substance obtained by a mere admixture of the components, or a process of producing such mixture; · Mere arrangement or rearrangement or duplication of known devices, each functioning independently of one another in a known way without changing the end results; · An invention which in effect is traditional knowledge; · A mathematical or business method or a computer programme per-se or algorithms. Besides these rather obvious items the following items are also not inventions within the meaning of the Patents Act, as a matter of policy and are therefore, not patentable: · A method of agriculture or horticulture; · Any process for the medicinal, surgical, curative, prophylactic, diagnostic, therapeutic or other treatment of human beings and animals; · Plants and animals in whole or part thereof other than micro-organisms; · Seeds and biological processes for production of plants and animals; The following two categories belong to different fields of intellectual property and are not subject matter of patents: · A literary dramatic, musical or artistic work including cinematographic work and television productions (covered by copyright); · Topography of integrated circuits (separate field). In the case of substances falling within certain categories no claim for patenting the substance can be entertained; however, claims for the methods or processes of manufacture of these substances can be patented. Such categories of substances are: · Substances which could be used as food or medicine or drug; · Substances prepared or produced by chemical processes (which include biochemical, biotechnological and microbiological process). However a claim for patenting a substance can be entertained if the substance itself is intended for use as medicine or drug – excepting chemical substances which are ordinarily used as intermediates in the preparation or manufacture of any medicines. Computer programmes and microorganisms have emerged as two special categories where patent protection is increasingly sought

summarize: Under the Indian law, computer programmes are protected under the Copyright Act, Indian Patent Law 1957; they are not entitled to protection through patents. However, the British law recognises that under certain circumstances Computer programme can be patented. Such will be the case when a computer programme enables the computer to carryout a system that produces a required result. A computer so programmed is a modified equipment to operate in a new way and as such the computer, along with the programme is patentable. In 1980, the US Supreme Court granted a patent to Dr. Ananda Chakraborty for a genetically engineered bacterium, which could degrade oil spills. It did not exist in nature. It satisfied the criteria of novelty, non-obviousness and utility for a patentable invention. For the first time in history a living entity, the engineered microorganism, was accorded the status of a product. In the same year, the US Patent office granted a patent to Dr. Stanley Gohen and Dr. Herbert Boyer for the method and composition for replication of exogenous genes in micro organisms though the criterion of nonobviousness was not considered in many countries as clearly satisfied. With biotechnology and genetics emerging as major fields of research, employment of living entities – microorganism, viruses, genetic elements like DNA, RNA, enzymes, plant cell lines, animals, etc. – has become inevitable and common in developing newer technologies. In view of their far-reaching importance for advancement of science and technology and the vast potential for creating wealth and profits, it is imperative to offer intellectual property protection to technologies and technological products emerging from application of living entities. It may be mentioned here that patent protection involving living entities bristles with serious ethical and legal issues and even the USA could not grant patent protection to the creation of the animal clone that resulted in the birth of Dolly, the cloned sheep. A point to remember in this context is that in the field of biotechnology, the distinction between ‘discovery’ and ‘invention’ in many cases may not be very clear and even though discoveries may relate to living entities they may qualify as inventions. The definitions of ‘discovery’ and ‘invention’ therefore need to be reviewed to make differentiation between them easy and unambiguous

summarize: PROCEDURE FOR OBTAINING PATENT Who can Apply for Patent? An application for a patent for an invention may be made by a person claiming to be the true and first inventor of the invention or his assignee, or by the legal representative of any deceased person who immediately before his death was entitled to make such an application. The term true and first inventor means that the claimant has to be the actual inventor and not merely be the first importer of the invention or the first person to whom the invention is communicated from outside India. In case the inventor is employee of an organization, the inventions made during the employment would be patentable in the name of the employee. However, the ownership of the patent (i.e. rights of using, manufacturing, selling etc.) will be dependent on the terms of contract between the employee and employer. It is a common practice in the R&D organizations to keep the ownership rights with the employer though the patent is in the employee’s (inventor’s) name. Filing a Patent Application There is only one application filed for one invention. This must be done in a prescribed form along with the prescribed fees in the appropriate patent office. It should be accompanied by a provisional or a complete specification (see 4.4.3). If the application is filed by the assignee, it must be accompanied with the proof of the right to make the application. Every application must state that the applicant is in possession of the invention and shall name the owner claiming to be the true and first inventor. Where the true and first inventor is not the applicant, a declaration is required that the applicant believes the person so named to be the true and first inventor. Every international application under the Patent Co-operation Treaty (PCT) for a patent designating India shall be deemed to be an application under the Indian Patents Act if a corresponding application has also been filed before the Controller in India. Recently the World Intellectual Property Organization (WIPO) has launched the facility of electronic patent filing under PCT. Typically, the form of application for grant of an Indian patent asks for (i) full name, address, nationality of the applicant(s) and inventor(s), (ii) patent specifications, and (iii) whether an application has been made or patent granted in a PCT or a convention country, which affords to citizens of India, or applicants for patents in India. Similar privileges as granted to its own citizens in matters of patent and which has been so notified by the Central Government with relevant dates. Filing of Provisional and Complete Specification A specification is an accurate description of the patent stating how the invention can be carried out by the method best known to the applicant. The specification ends with a claim or claims defining the scope of the invention for which protection is claimed. Every application must be accompanied by a provisional or a complete specification. It is possible to file the application with provisional specifications. But it is necessary to file the complete specifications within one year of filing the original patent application. The application is deemed to be abandoned if this condition is not met. The twelve months limit can be extended to 15 months if an application is made to the Controller with such request and the prescribed fee is paid. A complete specification filed may include claims in respects of developments of or additions to the invention described in provisional specification. The inventor is entitled to apply for a separate patent in respect of such developments/additions. In case of a convention application the patent application must be accompanied with a complete specifications only. The claim/claims of a complete specification relate to a single invention, or to a group of inventions, which form a single inventive concept e.g. in an instrument there may be 8 or 10 different inventions used. All these could be separately patented; or they can be patented together as a group; if they form an integrated instrument. The specification must contain the following: · Title, sufficiently indicating the subject-matter; · Relevant drawings; Full and particular description of the invention; Indian Patent Law · Details of its operation or use and the method by which it is to be performed; · Disclosure of the best method of performing the invention; · Claims defining the scope of the invention substantiated by the disclosure; · Abstract providing technical information on the invention; · Declaration as to the inventorship of the invention. If an invention is an improvement in or modification of another invention, for which the patent has been obtained or has been applied for, the Controller may grant the patent for modification/improvement, as a patent of addition; however the patentee for both the original patent and the patent of addition has to be the same. Each claim of a complete specification has a priority date. In a simple case, where a complete specification is filed in pursuance of a single application with a provisional specification, the priority date of a claim is the date of the filing of the application. This is true if the claim is ‘fairly based’ on the matter disclosed in the specification. However, in some cases, the priority date may be different than the date of filing. A detailed discussion of the issue is not within the scope of the present course. Publication of the Application Normally every patent application is published after 18 months of filing the application and objections are invited. The patent application shall not be open to the public for eighteen months after the date of filing, or date of priority, whichever is earlier. However, if the invention is considered relevant for defence purposes, the Controller may issue direction to prohibit or restrict such publication. In the case of secrecy direction, the application will be published when the secrecy directions cease to operate. The publication will include the particulars of the date of application, number of application, name and address of the applicant and an abstract. Upon publication of an application, the patent office, on payment of the prescribed fees, will make the specification and drawings, available to the public. If the specification mentions a biological material, which is not available to the public, the applicant is required to deposit the material in an authorised depository institution. From this institute, the biological material mentioned in the specification is made available to the public, as necessary. Examination of the Application For granting a patent, examination of the application is a mandatory step. However, such examination is taken up only if the applicant or any other interested person makes a request in the prescribed manner for such examination within 48 months from the date of filing of the patent application. If such request is not made within the prescribed time, the patent application is treated as withdrawn. When the patent application is in respect of an invention for a chemical substance used as an intermediate in the preparation of a medicine or drug including insecticides etc used for protection or preservation of plants, the request for examination has to be made within a period of 12 months from 31st December, 2004 or within 48 months from the date of the application, whichever is later. If such a request is not so made, the application shall be treated as withdrawn. After a request for examination is made, the Controller refers the application, specification and the related documents to an examiner for making a report within 18 months on: a) whether these are in accordance with the requirements of the IPA; b) whether there is any lawful ground of objection to the grant of the patent; c) whether the invention has been anticipated by publication before the date of filing of applicant’s complete specification; and d) on any other matter which may be prescribed. Of these matters, Search for anticipation by previous publication and by prior claim is important. This search requires investigation in the publications and specifications of prior applications and specifications of patents already granted to see whether the same invention has already been published or claimed or is the subject matter of existing or expired patents. If the examiner raises any objections, the Controller will communicate the gist of the objections to the applicant. If the objections raised by the examiner are removed satisfactorily within 12 months, the Controller will accept the complete specification. If the objections are not removed satisfactorily, the application is refused after giving an opportunity of hearing to the applicant. Acceptance and Advertisement of Complete Specifications Once the complete specification is accepted, Controller notifies it to the applicant and also advertises it in the Official Gazette. On advertisement, the application and the specification with the drawings, if any, are open for public inspection. From the date of advertisement of the acceptance of the complete specification and until the date of sealing of the patent, the applicant will have the like privileges and rights as if a patent for the invention had been sealed on the date of advertisement. However, the applicant is not entitled to initiate any proceedings for infringement until the patent has been sealed. Opposition to the Grant of Patent Any person interested in opposing the grant of patent may give notice to the Controller of such opposition within 4 months from the date of advertisement of the acceptance on the grounds like: · the invention was wrongfully obtained by the inventor/applicant; · the invention, as claimed in any claim of the complete specification has been anticipated in a specification filed for another patent earlier; or · the invention as claimed in any claim was publicly known/used in India before the priority date of the claim; or · the subject of the patent is not an invention, within the meaning of the Act; or · the information furnished is false; or · geographical origin of biological material is not disclosed or falsely disclosed; or · in the case of a convention application (an application filed in India following a patent application for the same invention made in a convention country), the application was not made in the prescribed time. Convention country means a country notified as such by the Central Government On receipt of the notice of opposition, the Controller shall notify the applicant of it and may give opportunity of hearing to both parties, and arrive at a decision. Grant and Sealing of Patent Where the application for a patent along with complete specification has been accepted either without opposition or after the opposition, a patent shall be granted if the applicant makes a request in the prescribed manner for a grant of patent. The request has to be made within six months from the date of advertisement of the acceptance of the complete specification. The patent so granted shall be sealed with the seal of the patent office and the date of sealing of patent shall be entered in the register.