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IPR > Patents > Flashcards

Patents Flashcards

1
Q

What are patents used for

A

inventions - section 2(1)(j) defined as novel product/process involving an inventive step and capable of industrial application, that doesn’t fall under any category of non-patentable invention as per section 3 and 4 of Patents Act 1970

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2
Q

explain the principle of novelty of invention

A
  • matter must not already exist in the public domain or form part of the state of the art - e.g. anticipated by publication, research existing patents OR form part of traditional knowledge in any part of the world
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3
Q

how is the novelty of invention determined during the examination procedure?

A

provisions of section 13 read with the provisions of sections 29-34 are applied

  1. not considered novel if anticipated by publication before the date of filing of application in any of the specifications filed to pursue the patent application in India, on or after the Jan 1 1912
  2. not considered novel if anticipated by publication in any document in any country before the date of filing or priority date
  3. not considered novel if claimed in any claim of any other complete specification filed in india, filed before the application but published after the application
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4
Q

outline the general procedure to determine novelty of invention

A
  • examiner in patent office - search for anticipation by previous publication or prior claim by examining patent and non-patent literature
  • determined before inventive step is determined because the creative contribution of the inventor can only be assessed once you determine the invention is novel
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5
Q

what is the general rule to define an invention lacking novelty?

A

PRIOR PUBLIC USE - if info about anything falling within its scope has already been disclosed

e.g. if a claim specifies alternatives or defines an invention by reference to a range of values (e.g. temperature, composition) then the invention is not new if one of these alternatives or a single example falling within the range of values if already known

a specific example is sufficient to destry the novelty of a claim to the same thing defined generically

e.g. generic disclosure does not threaten the novelty of a more specific claim, e.g. earlier reference to a metal coil spring cannot be used to attack the novelty of a claim specifying spring made of copper

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6
Q

exception to the definition of novelty

A

disclosure of a small and restricted field of possible alternatives may be considered disclosure of every single member of the field, e.g fluid may be taken to include both liquid and gas

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7
Q

exception to the rule of prior public use

A

if an invention has been publicly worked in India within one year before the prioirty date by the patentee or anyone to whom the patentee has given consent to work the invention

and the invention was only for the purpose of reasonable trial which was necessary due to the nature of the product

then such trial does not anticipate the invention and does not violate the prior public use rule

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8
Q

define inventive step

A

Sec 2(1) of the patents act:

  • a feature of an invention involving technical advance compared to existing knowledge in the public domain and/or having economic significance that makes the invention not obvious to someone skilled in the art
  • must lead to the invention not having been anticipated by any document in any country before prioirty date
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9
Q

issues involved with assessment of inventive step

A
  1. what was the problem addressed by the invention?
  2. for how long had the problem existed?
  3. how significant was the problem?
  4. how widely known was the problem and how many were likely to be seeking a solution
  5. what prior art would likely have been known to most of who would have been expected to be involved in finding a solution?
  6. what other solutions were presented in the time leading up the the publication of the patented development?
  7. to what extent were there factors which would have held back the exploitation of the solution even if it was technically obvious?
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10
Q

inventions not patentable

PROVISIONS IN SECTIONS 3 AND 4 OF PATENTS ACT

A
  1. claims anything obviously contrary to established natural laws
  2. commercial exploitation of which could be contrary to public order or morality, or cause serious prejudice to any kind of life or the environment
  3. mere discovery of a scientific principle or formulation of an abstract theory; discovery of any living thing or non-living naturally occurring substances
  4. mere discovery of a new form of a substance which does not result in the enchancement of a known efficacy of that substance/mere discovery of a new property/new use of a known process or apparatus unless the process results in a new product or employs at least one new reactant (e.g. salts, mixtures of isomers, particle size)
  5. substance obtained by mere admixture leading to aggregation of properties of components
  6. mere arrangement/rearrangement/duplication of known devices that each function independently of each other in a known way
  7. method of agriculture/horticulture
  8. any medicinal, surgical, curative or prophylactic procedures to treat human or animal disease or increase their economic value
  9. plants and animals (other than micro-organisms) including seeds, varieties and species as well as biological processes to produce plants and** animals**
  10. mathematical/business method or computer programme/algorithm
  11. **literary/artistic work or other aesthetic creation **
  12. mere rule of performing mental act/playing games
  13. presentation of info
  14. topography of integrated circuits
  15. **invention that is traditional knowledge or an aggregation of traditionally known components
    16.     inventions relating to atomic energy **falling within subsection (1) of section 20 of the Atomic Energy Act

threat to public order or morality, discovery of scientific principles or naturally occurring substances/organisms, new form of a substance that doesn’t enhance efficacy, substance that is a result of admixture, agricultural/horticultural methods, surgical procedures, concerning atomic energy, traditional knowldge

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11
Q

patents of addition

A
  1. app made for patent of an invention that improves or modifies of a primary invention and the applicant also applies for a patent for this primary invention, the controller general may grant this patent as a patent of addition
  2. where an invention being an improvement/modification of another is the subject of an independent patent, and both patents have the same owner, the controller general may revoke the secondary patent and grant instead a patent of addition bearing the same date

BOTH SUBJECT TO PROVISIONS OF SECTIONS 3 AND 4

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12
Q

term of patents of addition

A
  1. PoA granted for a term equal to that of the patent for the main invention or the amount of which that hasnt expired
  2. if the patent for the main invention is revoked, patentee may request the controller general to make PoA an independent patent for the remainder of the term of the patent of the main invention
    3.
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13
Q

which section of the PA concerns the surrender of patents

A

section 63

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14
Q

outline the procedure to surrender patents

A
  1. patentee must notify controller general of offer to surrender, and this must be published by controller and all interested parties should be notified
  2. any interested person can then oppose the surrender within 3 months
  3. if patentee or opponent wants to be heard, controller may accept offer and revoke patent after hearing
  4. if offer to surrender patent is accepted by controller, they may: direct patentee to return patent, revoke it by order AND publish revocation of patent
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15
Q

which section of PA concerns revocation of patents

A

64

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16
Q

what are the 3 ways in which a patent can be revoked by the Appellate Board

A
  1. by petition filed by any interested person
  2. by petition filed by central govt
  3. by counter-claim in infringment suit by the High Court
17
Q

who has the power to revoke a granted patent

A

the Appellate Board

18
Q

what are the grounds for revocation of patents

A
  1. subject lacks novelty, inventive step, non-obviousness, full disclosure
  2. patent was obtained by fraud - e.g. based on an application filed by a person not entitled to do so; false suggestion; secretly used before prioirty date
  3. patent has been retained from market - demands of public not reasonably met
  4. subject of a claim is not an invention as defined by PA SEC 23 or is not patentable
  5. invention is not useful
  6. scope of any claim is not defined properly
  7. complete spec does not disclose source or geographical origin of biological material used for invention, or mentions wrong info
19
Q

what are the core exclusive rights of patentees according to section 48?

A

make, use, sell and import the patent invention inside India, while excluding third parties from doing so without approval

prevents unauthorised use of invention and encourages ingenuity and innovation

20
Q

which section of the PA concerns exclusive rights of patentees

A

section 48

21
Q

what are extra privileges and rights offered by the Act to patentees?

A
  1. mark the patented product with the term ‘patent(ed)’ and patent number to notify public and prevent infringements
  2. sue for infringement under section 104 A
  3. issue a duplicate patent under section 135 in case of loss or destruction
  4. make ‘convention application’ under s135 to protect patents in Convention Countries according to reciprocity and national treatment
  5. transfer or license patent completely or partly to other entities or individuals to realise maximum advantage from invention
  6. file for patent extension in particular circumstances, like regulatory delay or patent interference proceedings, so patentees are not unfairly disadvantaged by outside influences
  7. challenge the patent’s validity in court to avoid possible errors in the patent-granting procedures
22
Q

obligations of patentee

A
  1. abuse of patent - must not violate law, hurt public interest or unfairly disadvantage the industry e.g. false or deceptive claims
  2. perform the invention - must market, manufacture or license inventions to satisfy reasonable public demand, not retain from marketplace
  3. payment of legal, support and renewal fees as specified by section 142
  4. respond to objections by patent examiners - must address problems within prescribed time frame or risk having patent application denied
  5. correct disclosure of invention in patent application with all needed updates during patent process (because patents are given in return for public disclosure of invention!)
  6. request re-examinations of patent applications under section 11B within stipulated time to confirm appropriate evaluation
23
Q

when does a patent become lapsed?

A

failure to pay fees in time as specified by section 53 or a period of time allowed under section 142 - including extendable period of six months upon request

24
Q

outline the procedure to restore a lapsed patent

A
  1. patentee or their legal representative ONLY must make an application for restoration by proving failure to repay fees was unintentional
  2. if patent was held by two or more people jointly, one or more may submit this application without joining the others
  3. application to be made and pending renewal fees to be repaid within 18 months of the date of lapse
  4. any person can pay the renewal fees of the application for the Restoration of a Lapsed Patent in India but application to be made only by patentee/legal rep
  5. if overdue annuity is not paid within extension period, the one year period for seeking
25
Q

what is compulsory licensing

A

government allows someone else to produce a patented product or process without the consent of the patent owner, or plans to use the patent-protected invention itself .

26
Q

grounds for compulsory licensing

A
  1. The reasonable requirements of the public with respect to the patented invention have not been satisfied (retention from market)
  2. invention is not available to the public at a reasonably affordable price
  3. Patented invention is not worked in the territory of India.
  4. public emergency
  5. lack of technical expertise
  6. cost of exploiting patent is too high
  7. lack of funds
27
Q

procedure for granting compulsory licence

A
  1. procedure outlined in Section 87
  2. parties interested in obtaining compulsory license must file application in the country that wishes to use the invention with controller general
  3. applicant may request hearing if application is rejected
  4. If the matter is decided in favor of the applicant, necessary terms and conditions shall be decided by controller, e.g. royalties to be paid to the patentee will be decided by the Controller
  5. BUT procedure in Section 87 shall not apply if Controller determines that a national emergency or a circumstance of extreme urgency exists
28
Q

opposition of application for compulsory license

A
  1. patentee or any other person may file a notice of opposition within 2 months of app being made via Form 14 with prescribed fee.
  2. Controller wil give both applicant and opponent an opportunity to be heard before deciding the case
29
Q

examples of compulsory licensing in India

A

first-ever and so far only compulsory license in India - production of a generic version of Bayer’s Nexavar (a medication for liver and kidney cancer) was granted to Natco Pharma in 2012

30
Q

examples of compulsory licensing attempts

A

Lee Pharma v. AstraZeneca - Lee Pharma applied for CL for Saxagliptin (Diabetes drug) but was rejected

Claim: The patented invention was not available to the public at a reasonably affordable price: It was held that all related drugs were in the same price range and that Saxagliptin® being sold at unaffordable price was not justified.

BDR Pharmaceuticals v. Bristol-Myers Squibb

BDR wanted CL for Sprycel® which is used in cancer treatment

Controller found that BDR had made no credible attempt to procure a license from the patent holder and the applicant had not acquired the ability to work the invention to public advantage. Thus, the compulsory license was denied.

31
Q

surrender vs revocation of patent

A

Revocation of a patent is a legal procedure initiated by interested parties

surrendering a patent is a voluntary action taken by the patentee which will end in the controller revoking the patent by order

32
Q

when are patents surrendered

A
  1. owner cannot pay renewal fees
  2. owner no longer wishes to exploit
33
Q

what is a priority date and why does it matter?

A

Priority date refers to the earliest filing date in a family of patent applications.

priority date is how we determine whether another patent filing or publication qualifies as prior art against your patent application

34
Q

what does disclosing an invention mean?

A

providing enough details or clarity about how the invention works so it can be used and replicated by others

full disclosure of the invention’s workings is a fundamental condition for granting a patent (or else, rejection of the application or invalidation of the granted patent)

35
Q

renewal fees to be paid for patent of addition

A

no renewal fees will be payable for a patent of addition UNLESS it becomes an independent patent under sub-section 1 - in this case the same fees shall be payable upon the same dates

IPR (10 decks)

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