GUEST POST, POOJA KUMAR, CURRENT SCENARIO OF PATENTS IN INDIA

CURRENT SCENARIO OF PATENTS IN INDIA

By Ms. Pooja Kumar

(Registered Patent agent/Director of Innove Intellects)

Email id: pooja@innoveintellects.com

Patent is a monopoly, exclusive rights given to an individual or a company or an organization to make, sell, use and import an invention for a limited period of years. In India patents are granted to inventions that meets three important criteria namely novelty, inventive step and industrial applications. Patents can be given to either product or process. The product can be a device or apparatus or any formulations.

Over the years in India, people are getting serious about the protection of intangible property. And this can be observed by the below mentioned graph:

The WTO is the governing body at the international level, which covers Trade Related Aspects
of Intellectual Property Rights (TRIPs) and several allied agreements. The World Intellectual
Property Organization (WIPO) is another international organization that helps and ensures the
rights of creators and owners of Intellectual Property are protected worldwide and that inventors
thus, recognized and rewarded for their ingenuity.
PATENTS IN THE INDIAN SCENARIO:

The laws pertaining to Patent in India is governed by the Patents Act, 1970 which has been
amended twice by The Patents (Amendment) Act, 1999 and The Patents (Amendment) Act,
2002.
Now-a-days, India has become one of the top patent filers in the world. This graph shows the
efforts of our government and the people who take the initiative to aware people about
Intellectual Property rights (IPR). Indian government has started various startup schemes which
led to the 12-fold increase in the establishment of startups in last year. India, which has 1.6
million active trademarks, registered a total of 339,692 new one last year, 287,139 from domestic
and 52,553 of foreigners, according to the WIPO. Also, government has been provided different
facilities such as early publication, expedited examination, online filing procedures, online
hearings, etc to make the procedure of getting patent easier. Recently, Indian Oil Corporation
emerges as the one of the top patent filing organization in India.
Patent applications are divided into one or more types by the patent office, and as per Indian
Patent Office, a patent applicant can type multiple kinds of patent applications. The documentary
requirements and other formalities for each patent application type are different, and hence it is
crucial to identify the exact type of patent application before initiating the patent filing process.
While filing for a patent, few things are to be considered. The first is which type of application
you are filling. In patents, there are five types of patent applications:
(a) Ordinary Application is the application which is made at the Patent Office for grant of
patent and does not contain any priory claims of application made in any convention country or
countries.
(b) Convention Application is a subsequent application made under Section 135 of the Patent
Act, 1970, claiming the priority date on the application which was filed earlier, where applicant
has already filed an application for grant of patent in a convention country or countries.
(c) PCT Application stands for Patent Cooperation Treaty. The Patent Cooperation Treaty
(PCT) is an international patent law treaty, concluded in 1970. It provides a unified procedure for
filing patent applications to protect inventions in each of its contracting states/countries. The
applicant gets 30-31 months’ time to enter into these countries for getting protection on its
invention, wherein such an application is called PCT National Phase Application. In addition,
patent applicants can file a PCT International Application, either with the Indian Patent Office as
Receiving Office, or directly with International Bureau (IB) of the World Intellectual Property
Organization (WIPO).
(d) Divisional Application is filed under two circumstances:
When the applicant believes that his/her application contains more than one invention and the
other inventions can be differentiated from the original application and filed as a separate
application.

When the controller of patent is of the opinion that the application contains of claims for more
than one invention.

STEPS INVOLVED PATENT FILING TO GRANT:
1. The Filing of an application for grant of a patent accompanied by either a provisional
specification or a complete specification.
2. In case provisional specification accompanies the original application, then filing of the
complete specification within 12 months from the date of filing of the provisional
specification.
3. After the expiry of 18 months time the patents get published on Indian patent office journal.
4. Filing of examination request can be made on form 18 within 48 months from the date of
filing.
5. The patent office send FER response to the applicant and the said response should filed
within 6month of time period.
6. Pre grant opposition can be applied by any interested person after publication and before
grant of patent.
7. Finally Grant and sealing of the patent.
8. Renewal or Maintenance fees paid by the applicant after the grant of patent

BENEFITS OF PATENTS FOR STARTUPS
Patents have become the yardstick for growth for the startup industry. Disruptive start-ups are
currently challenging the incumbent industries with their patented ideas. Having a patent in their
name helps the startups to get noticed in the industry and also helps in securing funding from
potential investors. In 2015, the Government of India announced its flagship initiative of
“Startup India” and offered various incentives for businesses that drives entrepreneurship and
innovation. The key takeaway points from the initiative are as follows:
 Simplifying the startup process with Single Window Clearance through a mobile app
 Fund of funds with a total corpus Rs 10,000 crore (Covered for four years)
 Compliance based Self-certification
 Start-up India hub – A single point of communication for the entire Startup ecosystem
 Patent protection – Fast track mechanisms for start-ups patent applications
 Exception from Capital Gain Tax and tax on earnings for three years)

 Exemption from tax for incubators investing above Fair Market Value
 Faster Exits (90-day exit window)
 New initiatives for IPR rights protection
 Encourage entrepreneurship through Credit Guarantee Fund (Rs 500 crore per year)
 Promoting entrepreneurship through Atal Innovation Mission
 Innovation-centred initiatives for students – Five lakh schools to target ten lakh children
for innovation program.
 Establishing 35 new incubators in institutions
The Patents Act, 1970 has also made special provisions for startups and small entities via the
amendment done in 2016. Rule 24C allows for expedited examination of patent applications, if
the applicant is a small entity or a startup. For a company to be recognized as a startup, it must
satisfy the following criteria:
 The company is enrolled as a Private Limited company
 Its age should not be more than five years
 Its turnover has not exceeded INR 25 crore in any financial year
 It is working towards innovation, development, and commercialization of new product or
services driven by technology
 It has not been formed by reconstruction of an existing business already in operation or as
a subsidiary.

PATENTS AND PHARMACEUTICALS
Since India became a TRIPS member in 1995, the Government of India had to amend the India
Patent Act, 1970. Prior to 2005, product patents were not allowed, only patents to novel
processes were granted and that too for a period of only 14 years. This all changed after 2005,
when the new act allowed the product patents especially of pharmaceutical products and the term
of patent was extended up to 20 years.
A pharmaceutical patent claim may cover any one of the following:
 Active ingredient (API) independently
 API along with formulations, isomers, salts, prodrugs etc
 A manufacturing process
 A manufacturing process and a product
Since the amendment of 2005, it has been difficult for foreign pharmaceutical companies to get
their drugs patented in India, since the majority of the inventions have been slight alterations of
the already existing drugs. Section 3(d) of the Indian Patents Act, 1970 forbids against such
“evergreening” of drugs as is evident from the Novartis case. In 2013, after decades long battle,

the Supreme Court promptly upheld the decision of the lower court and the patent office by
saying that the invention was a slight modification of the known drug (disclosed in 1993) and
that the company did not provide enough evidence to distinguish it from the prior art. This
stringent patent laws have allowed the development of generic drugs, which the people from
even the lower socio-economic groups can afford.
About the author:
POOJA KUMAR
She is the founder and director of Innove Intellects and is also a registered patent agent and start-
up facilitator with the Government of India and having more than 12+ years of experience in
searching, drafting, and filing patent application for diverse companies, organizations and
universities. Pooja has worked with Sanshadow Consultants as a Patent Consultant and also with
Amity University in IPR cell. She has also been involved in conducting training and awareness
programs related to Intellectual Property Rights in over 20+ universities. She has also been
awarded for women entrepreneur in 2018 by GECL foundation. She had also helped university
in developing IPR Policy and IPR cell. Till now she had filed more than 200 application in India
She had opened IPR Cell facility in Swami Vivekanad University Meerut in May 2018. Many of
applications from different IPR category like copyright design and trademark has been granted
from the patent offices. Patent status is still pending with the Indian patent office.
Disclaimer
Actual resolution of legal issues depends upon many factors, including variations of fact
and laws of the land. Though the author has taken utmost care in the preparation of this
article, the information contained herein is not intended to constitute any legal advice and
the firm cannot accept any responsibility towards those who rely solely on the contents of
this article without taking further specialist advice. The reader should always consult with
legal counsel before taking action on matters covered by this article.
Reference:
1)India is granting patents like never before by Ananya Bhattacharya
2) https://drugpatentsint.blogspot.com/search/label/INDIA
3)https://www.spiegel.de/international/world/india-disregards-evergreening-drug-patents-to-
help-companies-and-poor-a-869601.html
4) https://www.dr-hempel-network.com/digital-health-startups/start-up-india/
5) http://www.mondaq.com/india/x/27903/Patent/Patents+The+Present+Indian+Scenario

 

Pooja Kumar

Founder & Director

Innove Intellects

Mobile: +91-9910627125

Email: Info@innoveintellects.com, pooja@innoveintellects.com

Web: www.innoveintellects.com

 pooja@innoveintellects.com

/////////GUEST POST, POOJA KUMAR, CURRENT SCENARIO,  PATENTS, INDIA

Overview of the Patent System in Korea

 South Korea

http://www.kipo.go.kr/kpo/user.tdf?a=user.english.main.BoardApp&c=1001

The Korean Intellectual Property Office (KIPO) is the patent office and intellectual property office of South Korea. In 2000, the name of the office was changed from “Korean Industrial Property Office” to “Korean Intellectual Property Office”.^[1] It is located in Daejeon Metropolitan City.^[2]

References

1.  KIPO web site, KIPO’s history. Consulted on January 20, 2008.
2.  KIPO web site, Contact Us. Consulted on January 20, 2008.

External links

• Korean Intellectual Property Office, in English
• Korea Intellectual Property Rights Information Service (KIPRIS), in English
  • Patent search database in KIPRIS, in English
  • K2E-PAT Interface in KIPRIS (wherein “K2E-PAT” stands for “Korean to English Automatic Machine Translation”, see European Patent Office, “Lost in translation? Get the right type of Korean patent translation for your needs”, Patent Information News, Issue 1, 2010, p. 4)
• Information about patent law in South Korea on the European Patent Office web site

Overview of the Patent System in Korea

History of the Korean patent system

What is a patent?

Purpose of the patent system

Requirements for acquiring patent rights

Effects and term of a patent right

Information on patent applications

First-to-file rule and first-to-invent rule

Inventions and devices

Patent examination system

Accelerated examination system

Deferred examination system

Divisional application

Converted application

Priority claim under treaty

Claim for domestic priority

Ex officio amendment

Request for reexamination (reexamination before a trial)

Pendency period

Korean Intellectual Property Office

http://www.kipris.or.kr/enghome/main.jsp

Patent Patent Search Websites; IP Related Organizations in Korea …

http://engpat.kipris.or.kr/engpat/searchLogina.do?next=MainSearch

Searching in databases – Korea

Tips & tricks for searching in databases
Easy, step-by-step instructions on how to use official Korean databases. Click on the links below to download the respective search guides.

Number search and document retrieval

• Retrieving Korean full text data from KIPRIS (PDF, 556 KB)
• NEW: “Patent of my concern” – free monitoring tool for Korean publications in KIPRIS (PDF, 823 KB)
  NEW: Searching Korean prior art using the ‘cross lingual retrieval’ function in KIPRIS (PDF, 234 KB)

English machine translations

• NEW: Retrieving free English machine translations in KIPRIS (PDF, 650 KB)

Legal status information

• Retrieving detailed English legal status information from KIPRIS (PDF, 246 KB)
• Retrieving information on fee payment from KIPRIS (PDF, 557 KB)
• Finding cited documents on KIPRIS (PDF, 457 KB)
• Retrieving patent term extension information from KIPRIS (PDF, 471 KB)
• Finding information on divisional applications in KIPRIS (PDF, 410 KB)
• Retrieving information on inventors, applicants and representatives in KIPRIS (PDF, 158 KB)
• NEW: “Super citations”: basic search tool for cited documents in KIPRIS (PDF, 447 KB)

Searching trade marks and designs

• Searching for trade mark information on KIPRIS (PDF, 531 KB)
• Searching for design information on KIPRIS (PDF, 515 KB)

Searching information on pharmaceutical patents

• Searching in the “green list” for linkage patents (PDF, 81 KB)

Patents....Merits of applying in India

 Flowchart of the Process from Application to Grant of a Patent
INDIA

Merits of applying in India

Applying for intellectual property rights in India has the following merits to it.

(1) India is one of the four BRICs countries, attracting attention as a market where high economic growth in the near future is likely.

(2) Because India accepts applications in English, the applicant can use applications in Europe or the United States to apply and thereby save on translation expenses.

(3) Because India is a member of the Paris Convention, the applicant may claim priority when filing a patent granted in Japan.

(4) India is a member of the Patent Cooperation Treaty (PCT) and accepts national phase applications under the PCT.

2. Patents

• 2.1 Duration

Patent rights in India last for twenty years from the application date (India Patent Act Section 53). However, unlike in Japan, there is no system for lengthening the duration of pharmaceutical product inventions, et cetera.

• 2.2 Inventions Subject to Protection

Section 3 of the Indian Patent Act gives specific examples of “things that are not patents.” In India, material patents are acknowledged, but “the mere discovery of a new form of a known substance” (India Patent Act Section 3[d]). Regarding already-known derivatives such as salts, unless they substantially differ in efficacy from known substances, they are considered equivalent to the known substances.

Software itself will not be awarded a patent, but software that is combined with some form of hardware may pass.

India does not have a utility model system.

• 2.3 Application

Figure 1 shows the flow of a patent application from the opening of an application to registration of a patent. Here follows a simple explanation of each stage.

- Application -

Because India is a member of the Paris Convention, the applicant may claim priority based on a Japanese patent application.

Because India is a member of the PCT, the applicant may specify India in a PCT international application.

Within six months of application, the applicant must submit information on foreign applications (India Patent Act Section 8 [1], India Patent Rules 12 [1A]). If before the grant or rejection of grant of a patent, the Controller requests particular details concerning the processing of the application in other countries, the applicant must submit such details (India Patent Act Section 8 [2], Patent Rules 12 [3]).

- Publication of the Application -

An application is published eighteen months from either the date of application or the priority date of the relevant application (India Patent Rules 24). If an applicant wishes to acquire patent rights early, he or she should utilize the early publication system (India Patent Act Section 11 [2]).

- Request for Examination -

The applicant must make a request for examination within forty-eight months of the priority date of the relevant application or of the application date (India Patent Rules 24B). If the request is not made within this period, the India Patent Office will treat the application as if it had been withdrawn (India Patent Act Section 11 [B]).

- Examination -

If the examiner finds any objections to granting a patent, a First Examination Report is issued. If the applicant responds to this office action, the examiner will examine the application again. If no reason is found for rejection, a decision to grant the patent is made.

If the applicant does not revise the application so that grant of a patent is possible within twelve months (the Acceptance Period) after the First Examination Report is sent, the application will be treated as abandoned (India Patent Act Section 21 [1], India Patent Rules 24 [B]).

If an application is rejected, the applicant may file a request for re-examination (under India Patent Act Section 77 [f]) or appeal (under India Patent Act Section 117A).

(Procedures that the Applicant May Take during the Examination Period)

(a) Amendment

With permission from the Controller, the applicant may amend the application (India Patent Act Section 57). However, the Controller will not recognize an amendment when the amended specification claims or describes things that were not substantially disclosed or indicated in the specification prior to the amendment, or when the claims of the amended specification will not completely fit within the parameters of the pre-amendment specification’s claims (India Patent Act Section 59).

(b) Divisional Application

If a patent has not yet been granted, the applicant may divide the application at any time (India Patent Act Section 16).

(c) Interview with the Examiner

The applicant may seek to have an interview with the examiner after the examiner has begun to examine the application. According to representatives in India, an interview with the examiner is an extremely effective measure.

- Opposition to Grant of a Patent Prior to the Granting of the Patent -

After the publication of a patent application, if a patent has not been granted, anyone may register an opposition to the patent grant with the Controller (India Patent Act Section 25 [1]).

• 2.4 After Grant of a Patent

Following the grant of a patent and up to one year after the announcement of the grant of the patent, anyone privy to the matter may register an opposition to the grant (India Patent Act Section 25 [2]).

Apart from an opposition to the grant of a patent, one may file an application to have the patent revoked (India Patent Act Section 64).

The patentee must give a working statement regarding exploitation of the patent annually (Indian Patent Act Section 146, India Patent Rules 131 [2]).

A patented invention that has not been exploited in India’s territory within three years after the granting of the patent may be cause for grant of a compulsory license (India Patent Act Section 84).

If two years have passed since the order for the first licensing of a compulsory license and the patented invention is still not being exploited in India’s territory, the patent may be revoked (India Patent Act Section 85).

3. Designs

• 3-1. Duration

The duration of a design is ten years from its registration date and may be extended only once for five more years (India Designs Act Section 11). Note that the registration date is treated as the date of application for registration (India Design Act Section 5 [6]).

• 3.2 Designs Subject to Protection

Section 2(d) of the India Designs Act defines design: “‘design’ means only the features of shape, configuration, pattern, ornament or composition of lines or colours applied to any article . . . by any industrial process or means . . .”

Section 2(a) of the India Designs Act defines article: “‘article’ means any article of manufacture and any substance, artificial, or partly artificial and partly natural and includes any part of an article capable of being made and sold separately.” Furthermore, “partial designs” which cannot be sold independently of a whole design are not protected.

• 3.3 Application

Because India is a member of the Paris Convention, the applicant may claim priority based on a Japanese right.

A request for examination is not necessary (India Designs Act Section 5).

If the examination results in a rejection decision, the applicant may appeal to the High Court (India Designs Act Section 5 [4]).

• 3.4 After Grant of a Design

Anyone privy to the matter may file an application to have the design right revoked (India Designs Act Section 19).

4. Trademarks

• 4.1 Duration

Trademarks are protected for ten years. Trademark protection may be extended with an application for renewal.

• 4.2 Trademarks Subject to Protection

In addition to product trademarks, service marks are protected (India Trademark Act Section 2 [1] [zb]).

There is a system for organizational trademarks (Section 61).

Three-dimensional shapes and color combinations are also protected (Section 2 [1] [m]).

• 4.3 Application

Because India is a member of the Paris Convention, the applicant may claim priority based on a Japanese right. However, India is not a member of the Madrid Protocol.

As in Japan, India follows the one application, one trademark policy, but within one application the applicant may specify multiple sections (India Trademark Act Section 18).

The applicant may pay an additional fee to request an early examination (India Trademark Rules Section 38 [1]).

If the result of the examination is a rejection decision, the applicant may make an appeal (under India Trademark Act Section 91).

India has a system for challenging trademarks, and for the three months after the trademark is announced, anyone may register an objection to the trademark grant (India Trademark Act Section 25 [1]).

• 4.4 After Registration

In renewal examinations, whether or not the trademark is actually being used is not judged.

Anyone privy to the matter may request a trial for invalidation of a trademark (India Trademark Act Section 57).

If a trademark is not used for five years and three months, it may be subject to a trial for cancellation for non-use (India Trademark Act Section 47).

When the agent or representative of an owner of the a registered trademark files a registration or other paperwork in his or her own name without receiving a power of attorney, the owner of the trademark may register an objection against this paperwork (India Trademark Act Section 146). However, the owner must do so within three years of knowing of the problem.

[Bibliography]

1. International Association for the Protection of Intellectual Property (AIPPI) Japan. Investigation report on India’s intellectual property protection systems and their operation statuses. 2007.

2. “The influence of India’s Patent Act revisions.” In Patento 61, No. 2 (2008), 42-48.

3. Third International Committee. Points to remember when acquiring patents in countries of Asia and Oceania. Revised edition. Resource No. 332. May 2006.