WELCOME TO ALL DELEGATES By R Bhattacharya Assistant

WELCOME TO ALL DELEGATES By R. Bhattacharya Assistant Controller of Patents and Designs Patent Office, Mumbai Govt. of India

Organizational Chart CONTROLLER GENERAL OF PATENTS, DESIGNS AND TRADE MARKS MINISTRY OF COMMERCE AND INDUSTRY DEPARTMENT OF INDUSTRIAL POLICY AND PROMOTION PATENT OFFICE GRANT OF PATENTS UNDER THE PATENTS ACT, 1970 AND REGISTRATIONOF DESIGNS UNDER THE DESIGNS ACT, 1911 CALCUTTA PATENT INFORMATION SYSTEM TRADE MARKS REGISTRY DOCUMENTATION INCLUDING RERIEVAL AND TDISSEMINATION OF INFORMATION CONTAINED IN PATENT DOCUMENTS REGISTRATION OF TRADE MARKS UNDER THE TRADE AND MERCHANDISE MARKS ACT, 1958 MADRAS MUMBAI NEW DELHI CALCUTTA MADRAS NAGPUR AHMEDABAD NEW DELHI MUMBAI

The Patent Office, Todi Estate, 3 rd Floor, Sun Mill Compound, Lower Parel (West), Mumbai – 400 013, Ph. No. 022 -24924058, 24925092 Fax No. 022 -24950622 Email: patmum@vsnl. net Web site: www. ipindia. nic. in

Trade Access Protect Generate Apply Create Own Knowledge IPR

Type of Intellectual Property Rights • • • Patents Industrial Designs Trademarks Geographical Indications Copyright and Related Rights Layout-Designs (Topographies) of Integrated Circuits • Protection of undisclosed Information • Control of Anti-Competitive Practices in Contractual Licenses

What rights a Patent confers on the patentee If the patent is for a product : - the right to prevent others from - making - using - offering for sale - selling - importing the patented product

What rights a Patent confers on the patentee If the patent is for a process : - the right to prevent others from the act of - using the process - using the product directly obtained by the process - offering for sale the product directly obtained by the process - selling the product directly obtained by the process - importing the product directly obtained by the process

Type of Patent Applications 1. Ordinary application(sec. 9 & 10) (i) application with provisional specification (ii) application with complete specification 2. Convention application (sec. 10 & 135) 3. PCT National Phase Application (Rule 20)

What is Invention Under Section 2(1)(j) “Invention” means a new product or process involving an inventive step and capable of industrial application; “inventive step” means a feature that makes the invention not obvious to a person skilled in the art; “capable of industrial application”, in relation to an invention, means that the invention is capable of being made or used in an industry.

Non Patentable Inventions [Under Section 3] a) An invention which is frivolous or which claims anything obvious contrary to well established natural laws; b) an invention the primary or intended use or commercial exploitation of which could be contrary to public order or morality or which causes serious prejudice to human, animal or plant life or health or to the environment; c) the mere discovery of a scientific principle or the formulation of an abstract theory or discovery of any living things or non-living substance occurring in nature;

Non Patentable Inventions [Under Section 3] d) the mere discovery of any new property or new use for a known substance or of the mere use of a known process, machine or apparatus unless such known process results in a new product or employs at least one new reactant; e) a substance obtained by a mere admixture resulting only in the aggregation of the properties of the components thereof or a process for producing such substance; f) the mere arrangement or re-arrangement or duplication of known devices each functioning independently of one another in a known way;

Non Patentable Invention [Under Section 3] g) ----- Section 3(g) of the Patents Act, 1970 has been omitted; h) a method of agriculture or horticulture; i) any process for the medicinal, surgical, curative, prophylactic, diagnostic, therapeutic or other treatment of human being or any process for a similar treatment of animals to render them free of disease or to increase their economic value or that of their products;

Non Patentable Inventions [Under Section 3] m) a mere scheme or rule or method of performing mental act or method of playing game; n) a presentation of information; o) topography of integrated circuits; p) an invention which, in effect, is traditional knowledge or which is an aggregation or duplication of known properties of traditionally known component or components’.

Atomic Energy Related Inventions Not Patentable (Under Section 4) No patent shall be granted in respect of an invention relating to Atomic energy falling within sub section (1) of section 20 of the Atomic Energy Act, 1962. e. g. Inventions relating to compounds of Uranium, Beryllium, Thorium, Plutonium, Radium, Graphite, Lithium and more as notified by Central Government from time to time.

Product per se Claims - Not Patentable [Under Section 5(1)] (a) claiming substances intended for use or capable of being used as food or as medicine or drug or (b) relating to substances prepared or produced by chemical processes (including alloys, optical glass, semiconductors and intermetallic compounds), Only process of manufacture of above substances is patentable ‘Explanation – For the purpose of this section “chemical processes” include biochemical, biotechnological and microbiological processes’.

Product per se Claim Under Section 5(2) Notwithstanding anything contained in Sub Section (I), a claim for patent of an invention for a substance itself intended for use, or capable of being used, as medicine or drug, except the medicine or drug, specified under sub -clause (v) of clause (l) of sub section (I) of section 2, may be made and shall be dealt, without prejudice to the other provision of this Act, in the manner provided in Chapter IVA. (i. e. grant of Exclusive Marketing Right).

Patent Grant Procedure Filing of patent application Publication after 18 months Request for examination Examination: Acceptance or Refusal Notification of acceptance in the Gazette of India Opposition to grant of patent GRANT OF A PATENT

Grant of patents of be subject to certain conditions The grant of a patent under this Act shall be subject to the condition that 1. any machine, apparatus or other article in respect of which the patent is granted or any article made by using a process in respect of which the patent is granted, may be imported or made by or on behalf of the Government for the purpose merely of its own use; 2. any process in respect of which the patent is granted may be used by or on behalf of the Government for the purpose merely of its own use;

3. any machine, apparatus or other article in respect of which the patent is granted or any article made by the use of the process in respect of which the patent is granted, may be made or used, and any process in respect of which the patent is granted may be used, by any person, for the purpose merely of experiment or research including the imparting of instructions to pupils; and 4. in the case of a patent in respect of any medicine or drug, the medicine or drug may be imported by the Government for the purpose merely of its own use or for distribution in any dispensary, hospital or other medical institution maintained by or on behalf of the Government or any other dispensary, hospital or other medical institution which the Central Government may, having regard to the public service that such dispensary, hospital or medical institution renders, specify in this behalf by notification in the Official Gazette.

Indian Patent Applications Fees Sr. No. On what payable From No. Natural Person(s) Fees for other than natural Person(s) 1 Application for Patent 1 Rs. 750/- Rs. 3000/- 2 Examination 19 Rs. 1000/- Rs. 3000/- 3 Sealing 9 Rs. 1500/- Rs. 5000/-

Indian Patent Renewal Fees Sr. No. On what payable For Natural Person(s) (In rupees) For other than Natural Person(s) (In rupees) 1 Renewal fee for 3 rd year 600 3200 2 Renewal fee for 4 th year 600 3200 3 Renewal fee for 5 th year 600 3200 4 Renewal fee for 6 th year 600 3200 5 Renewal fee for 7 th year 1500 4500 6 Renewal fee for 8 th year 1500 4500 7 Renewal fee for 9 th year 1500 4500 8 Renewal fee for 10 th year 1500 4500 9 Renewal fee for 11 th year 3500 10000 10 Renewal fee for 12 th year 3500 10000 11 Renewal fee for 1 3 th year 3500 10000 12 Renewal fee for 14 th year 3500 10000 13 Renewal fee for 15 th year 3500 10000 14 Renewal fee for 16 th year 5000 15 Renewal fee for 17 th year 5000 16 Renewal fee for 18 th year 5000 17 Renewal fee for 19 th year 5000 18 Renewal fee for 20 th year 5000 15000

Worldwide Filing Sr. No. Country Local Filing Foreign Filing 1 Australia 9196 34125 2 Austria 2506 75985 3 Brazil 2655 29451 4 Canada 3316 45938 5 China 11698 41016 6 Finland 3262 61556 7 Germany 56757 98338 8 India 1660 6632 9 Japan 340861 60390 10 Korea 68446 45548 11 Mexico 389 30305 12 United Kingdom 25269 164084 13 United states of America 111883 111536

Case study (i) Honeywell in 1993 won $96 million damages from Minolta for infringement of Honeywell's auto-focus technology for cameras. This judgement was effectively used by Honeywell to make several licensing deals with other camera manufacturers which brought in an additional $400 million. This demonstrates the spillover effects of confirmed and established knowledge ownership. (ii) Polaroid vs Eastman Kodak continues to be a historic judgement in 1990 when Polaroid won over $900 million as compensation from Kodak for infringement of its patents related to instant cameras. $454 million was awarded as compensation and $455 million was added as interest. Kodak is also known to have moved out of the instant camera market after the case. This illustrates the potentially disastrous impact on a Corporate for infringing someone else's IPR. (iii) Fonar vs General Electric is an example demonstrating that size of a firm does not necessarily matter while enforcing IPR. Fonar had filed several patents in 1970 s related to magnetic resonance imaging techniques and machines for in situ and non-evasive detection of cancer and diseases in living bodies. Subsequently General Electric and Hitachi entered this market. Fonar filed infringement suits against these companies. Hitachi settled out of court. As the end of the suit, GE was ordered to pay $128. 7 million to Fonar. Interestingly Fonar's annual revenue is only $17 million. Fonar claimed it lost profits corresponding to 600 MRI machines it could have sold if GE had not infringed its patents. The Jury concluded that, inter alia, Fonar could have sold 75 machines and therefore awarded them lost profits for 75 machines @ $371, 000 per machine and royalty for 575 machines @ $65, 000 per machine.