The Patents Act lays down a procedure for the grant of patent to an inventor to exploit his invention for 20 years subject to the fulfilment of certain conditions. The first step is to make an application in the prescribed form along with provisional or complete specification. The application is thereafter published, and examined (if requested) and search for anticipation is made.
Oppositions are invited from the public to the grant of patent and where there is no opposition or the opposition is decided in favour of inventor, patent is granted and sealed which confers certain rights on the patentee.
WHO CAN APPLY FOR A PATENT?
An application for a patent for an invention may be made by any of the following persons either alone or jointly with any other person:
- Any person claiming to be the true and first inventor of the invention;
- Any person being the assignee of the person claiming to be the true and first inventor in respect of the right to make such an application;
- The legal representative of any deceased person who immediately before his death was entitled to make such an application.
The term “person” as defined in the Patents Act includes Government. The term “person” as defined in the General Clauses Act, 1897 includes any company or association or body of individuals, whether incorporated or not.
- True and first inventor
“True and first inventor” means a person who has first made an invention. Where two persons have made the same invention independently and not disclosed it, then the inventor who applied first for the patent is to be taken as the first and true inventor of the invention, irrespective of the fact that he made the invention later than the other inventor.
According to section 2(1)(y),
“true and first inventor does not include either the first importer of an invention into India, or a person to whom an invention is first communicated from outside India.
In Norris’ Patent, it was held that a person who contributed one of two main ideas in an invention was a co-inventor.
In V.B. Mohammed Ibrahim v. Alfred Schafranek,
The court was considering the issue whether the plaintiff, who was a financing partner, could be deemed to be one of the inventors, or whether the firm could be treated as an inventor so that the name of the firm itself could be registered directly as a patentee. The court observed that it was not the plaintiff’s case that he contributed any part of his ingenuity or skill or technical knowledge towards the invention in question. He gave the finances for the running of the concern and that with this help experiments were made and ultimately the invention was evolved. It was not disputed that the persons that actually laboured and found out the process were defendants 1 and 2. Under these circumstances it was very difficult to accept that the plaintiff could be treated as an inventor. It was obvious that the persons who were responsible for the invention must be defendants and 2 and not the plaintiff.
- Assignee of the true and first inventor
Any person to whom an invention has been assigned by the true and first inventor is also eligible to apply for patent. Assignee can be a natural person or other than a legal person such as a registered company, a research organization, an educational institute or Government.
“Assignee” includes an assignee of the assignee and the legal representative of a deceased assignee. Invention assigned to a firm is a valid assignment. A firm, therefore, can also apply for a patent as assignee. A corporation can also apply for a patent as assignee.
- Legal representative of the deceased
The legal representative of any deceased person who immediately before his death was entitled to make an application for a patent for an invention is also eligible to apply for patent. Legal representative means a person who in law represents the estate of a deceased person. Thus, legal representative of
- a true and first inventor;
- assignee of true and first inventor;
- assignee of the assignee of first and true inventor are also eligible to apply for a patent.
FORM OF APPLICATION
According to section 7, every application for a patent shall be for one invention only. The application is to be filed in the Patent Office.
Under the Patents Act, 1970, patent offices could be established at various places. An application for a patent is to be made in the form prescribed and filed in the appropriate patent office.
Territorial 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).
- Place from where the invention actually originated.
- Address for service in India given by the applicant, when the Applicant has no place of business or domicile in India (Foreign applicants).
- International application under the Patent Cooperation Treaty
Every international application for a patent under the Patent Cooperation Treaty (PCT), as may be filed designating India is to be deemed to be an application under this Act, if a corresponding application has also been filed before the Controller General of Patents, Designs and Trade Marks in India. The filing date of such application and its complete specification processed by the Patents Office as designated office or elected office shall be the international filing date accorded under the PCT
An applicant in respect of an international application designating India shall before the aforesaid time
- pay the prescribed national fee and other fees to the patent office; and
- where the international application was either not filed or has not been published in English, file with the patent office, a translation of the application in English, duly verified by the applicant or the person duly authorized by him that the contents thereof are correct and complete. The translation of the international application shall include a translation in English of –
- The description;
- The claims as filed;
- Any text matter of the drawings; (iv) the abstract; and
- In case the applicant has not elected India and if the claims have been amended under Article 19, then the amended claims together with any statement filed under the said article;
- In case the applicant has elected India and any amendments to the description, the claims and text matter of the drawings that are annexed to the international preliminary examination report.
Where an application is made by virtue of an assignment of the right to apply for a patent for the invention, a proof of the right to make the application is to be furnished either along with the application or thereafter in the prescribed time.
PROVISIONAL AND COMPLETE SPECIFICATION
An application for patent is to be accompanied by a provisional or a complete specification. When the applicant finds that his invention has reached a stage wherein it can be disclosed on paper, but has not attained the final stage, he may prepare a disclosure of the invention in the form of a written description and submit it to Patent Office as a provisional specification which describes the invention.
A provisional specification secures a priority date for the application over any other application which is likely to be filed in respect of the same invention being developed concurrently. Thus, the object of filing a provisional specification is to fix the priority date in accordance with section 11 as discussed later in the chapter. In between the period of filing provisional specification and complete specification, the inventor may conduct further research and improve his invention. A provisional specification need not describe the invention fully and specifically.
In Imperial Chemical Industries Ltd. Application,” it was stated that a provisional specification needed to contain only a description of the general nature of the invention, its field of application and anticipated result.
Where an application for a patent (not being a convention application or an application filed under the PCT designating India) is accompanied by a provisional specification, a complete specification shall be filed within twelve months from the date of filing of the application. If the complete specification is not so filed, the application shall be deemed to have been abandoned.”
INFORMATION AND UNDERTAKING REGARDING FOREIGN APPLICATIONS
Where an applicant for a patent is prosecuting either alone or jointly with any other person an application for a patent in any country outside India in respect of the same or substantially the same invention, or where to his knowledge such an application is being prosecuted by some person through whom he claims or by some person deriving title from him, he shall file along with his application or substantially within the prescribed period as the Controller may allow, the following:
- A statement setting out detailed particulars of such
- Application; and an undertaking that, up to the date of grant of patent in India, he would keep the Controller informed in writing from time to time of detailed particulars in respect of every other application relating to the same or substantially the same invention, if any, filed in any country outside India subsequently to the filing of the statement, within the prescribed time.
At any time after an application for patent is filed in India and till the grant of a patent or refusal to grant of a patent is made thereon, the Controller may also require the applicant to furnish the prescribed details relating to the processing of the application in a country outside India. In such an event, the applicant is duty bound to furnish information available to him to the Controller within the prescribed period.!”
The intention of legislature behind section 8 is to provide the Controller true and faithful disclosure of all the information relating to the applications for patents which are same or substantially the same inventions and also to provide the information to the Controller in relation to the title of the said patent owned by the applicant and other persons in the foreign countries. It is a mandatory provision.
In Telefonaktiebolaget LM Ericsson (PUBL) v. Intex Technologies (India) Limited, The court stated that the purpose and object of section 8 is that there should be full and true disclosure and that the Indian Patent Office should be fully assisted in the examination process by the proceedings in other Patent Offices.