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Recently Asked Questions:
1. An applicant filed a complete specification in Indian patent office and he further wants to file an international patent application within 12 months from the date of filing. But the same patent application is imposed under Secrecy direction (S. 35). Is it possible to file the international application when the said specification is under secrecy direction?
Answer: As per section 136, application under this act for a patent within twelve months after the date on which the basic application was made, the priority date of a claim of the complete specification, being a claim based on matter disclosed in the basic application, is the date of making of the basic application.
Therefore, there are two possibilities,
(i) If complete application is filed after filing provisional application then the person have already crossed 12 month period to file conventional application which is reckoned from filing of the basic application (the priority date).
(ii) If the date of filing complete specification is also priority date, then the person gets 12 month to file conventional applications.
After filing priority documents (either provisional or complete) then national law allows Patent office to perform primary scrutiny to impose secrecy direction if they fit so. And till secrecy direction is imposed the person is not allowed to file internation application. (Reference section 39)
Reference link (Secrecy Direction): http://www.lexcampus.in/courses/pae-paper-1-course-patents-act-and-rules/lessons/opposition-secrecy-and-grant/topic/secrecy-provisions/
2. What is the difference between Grantee and Patentee? (S. 50 and 51)
Answer: A grantee is the person to whom something is granted. Grantee is a Noun.
A Patentee is one to whom a grant is made, or a privilege secured, by patent. Patentee is an adjective.
3. What will be the consequence if the Form 3 is not filed within 6 months from the date of filing convention application? (S. 8)
Answer: When an applicant for patent in India is prosecuting either alone or jointly with any other person the application (same or substantially same invention) in any country outside India has to file Form 3. Form 3 includes statement setting out detailed particulars and undertaking to keep the controller informed.
Before the grant of patent any person may in writing, represent by way of opposition to the controller against the grant of patent on contravention to section 8 i.e. Form 3 filing. As per section 25(1)(h), the person can raise opposition against grant of patent. Controller may proceed with opposition proceeding.
4. A complete specification is filed along with request for publication (Form 9) and published within a month from the date of filing. Is it possible for postdating the same application?
Answer: Yes, as per section 17(1), after filing of application and before the grant of the patent, the controller on request (made in a prescribed manner) of the applicant directs the application to be post-dated to a requested date not exceeding Six month from the actual date.
5. What is the difference between Claimant and Applicant? (S. 20(1))
Answer: Claimant is a person who wants to come in as new applicant. Claimant as a person receives something from applicant, which entitles to become an applicant by any assignment, agreement or operation of law. The controller may by virtue of interest of the applicants or to an undivided share of the patent or of the interest direct the application shall proceed in the name of claimant(s) and applicants as the case may allow.
6. What is meant by ‘Speaking Order’? (S. 55(5))
Answer: As per Rule 55(5), on consideration of the statement and evidences filed by applicant and opponent and after hearing both parties, the controller decides by passing a speaking order. The controller rejects the objections, require amendment of the application or reject the grant patent to the application. “Speaking Order” is when adjudicating bodies provides reasoning in support of their decisions, and are treated as reasoned decision.
7. Section 52 (2) (ii) describes about the grant of patent to the petitioner in case of the patent is obtained by another in fraud of him. If a part of the patent is to be granted, the Controller asks the petitioner to file a new complete specification claiming that part of the invention for which the patent has to be granted. In this case, do the petitioner has to file an Examination request along with specification?
Answer: No, the petitioner doesn’t have to file the examination request as this scenario happens after grant of patent and revocation under section 64. After the patent is granted, the petitioner by virtue of decision by appellate board or court, submit FORM 12 to controller to change whole or a part of the patent with his name. Here the main patent is already granted means has been gone through examination by the patent office. In this case only renaming and renumbering of the new patent takes place.
8. What Form should be used for surrender of a patent?
Answer: When patentee wants to voluntarily surrender the patent, then he give notice in a prescribed manner to the controller offer to surrender. Then controller publishes the notice of offer and notice is open for opposition. Any interested person with in three month of publication of notice submit opposition to the controller in form 14. Opposition proceeding follows as per rule 57 to 63.
9. How many times is the Patent act 1970 and Rules amended, what are the amendment and in which year, can you please provide the summary. It would be a great help.
Answer: Patent act 1970 have undergone 3 amendments i.e. 1999, 2002 and 2005. India became WTO member in 1st January 1995, under the WTO agreement on Trade Related Aspects of Intellectual Property Right (TRIPs) patent for any invention in all technological field was required in member state.
As per Article 65.4, “if a developing country did not provide product patent protection in a particular area of technology when the TRIPS Agreement came into force (1 January 1995), it has up to 10 years (to 1 January 2005) to introduce the protection. “
Retrospectively from 1st January 1995, an ordinance was brought and replaced by Patent (Amendment) Act, 1999. The amended act facilitated filing of applications for product patent in the area of drugs, pharmaceuticals and agro chemical as was not allowed before amendments. However, such applications were to be examined only after 31-12-2004. Till this time, the applicants were allowed Exclusive Marketing Rights (EMR) for 5 years or till grant of the patent to sell or distribute products in India subject to certain conditions.
This act was published in The Gazette of India, on Tuesday, June 25, 2002. Act came into force on 20th May 2003 with introduction of the new rule 2003 replacing earlier patent rule, 1972.
The third Amendment was introduced through ordinance in 2004. The ordinance later replaced by patent (amendment) Act 2005 on 4th April 2005 and brought into force from 1st January 2005.
Other Major changes include
- Twenty years Patent Period
- Reversal of burden of proof on the infringer
- Establishment of Appellate board
- Public Interest Safeguard and measures for protecting Traditional Knowledge.
- Introduction of definition of “Invention” means a new product or process involving inventive step and capable of industrial application.
- Section 3 added few non-patentable criterions.
- Biological Material is mentioned, notified and geographical origin should be disclosed.
- 18-month publication period has been introduced.
- Request for examination and examining in serial order provision was introduced.
- Withdrawal of application anytime before grant was introduced.
- Time of putting application in order as per U/S 21 introduced.
- Ground for opposition U/S 25 as well as revocation U/S 64 was introduced.
The Patent Rule 2003 has undergone 9 amendments i.e. 2005, 2006, 2012, 2013, 2014, 2016, 2017, 2019, and 2020. The patent (amendment) rule 2021 was published in gazette of India on 09/02/2021. During every amendment new rules have been added or modified by Central Government as per Patent act section 159.
10. Case laws important for the preparation, can you please enlist case laws pertaining to the patent II exam preparation?
Answer: As such there is no mention of important case in the syllabus; but its always recommended to read famous cases pertaining to particular sections.
Some of them are:
- Novartis case pertaining to section 3(d),
- Bayer-Natco Pharma case pertaining to section 84.
- Yahoo’s Patent Application Denied Due to Section 3(k)
11. When we have a statement in the disclosure like:
” Alternatively, it may be formed from an absorbent material of a density lower than that of the liquid collection means ” or like something (X), may be formed of a substance (y).
How can I add it to the claims or is it required to be added to the claim?
How should I frame the sentence?
Answer: The material disclosed in specification includes both subject matter to be claimed and disclaim. When an inventor confirms that alternative means are subject matter to be claimed then only its added to the claim. Otherwise it is deemed to fall in Public domain.
In the example (as in question), alternative means can be added in dependent claim, under the broader concept as Independent claim.
- A device comprising
a shock absorbing mechanism…. .
- The device in claim 1, comprises absorbent material as means for the shock absorbing mechanism.
12. Why answer for below is option b and not option a., because in section 117A (2), there is no mention of section 64 that talks of revocation of patent.
23. Alex sues Brown for the infringement of his patent (granted on 01.05.2010 and covering a pharmaceutical product) in a district court of India. Brown wishes to invalidate the patent on 01.06.2011. Brown can—
- File a revocation petition at the IPAB
- File a revocation petition at the High Court
- File a counterclaim in the District Court asking that the patent be revoked
- File a post grant opposition to the patent
Answer: Since it’s an infringement case, the defendant will go higher court i.e. High court on a counterclaim in a suit for infringement. Not to IPAB.
IPAB takes original appeal by a person who is aggrieved from the decision, order and direction of Controller (patent office).
13. Why answer below is option d and not option c, because as per section 15, option c is right.
26. On which of the following grounds the controller has the power to pass an order under Section 15?
- Grounds for Opposition under S. 25(1)
- Grounds for Opposition under S. 25(2)
- Application does not comply with the requirements of the Act and Rules
- Both a & c
Answer: 4 is the correct option as, controller can reject the application U/S 15 as per act and rule, as option a say explicitly about per-grant opposition U/S 25. Option d agrees with both statements and is more relevant answer.
Power of controller to refuse application: http://www.lexcampus.in/courses/pae-paper-1-course-patents-act-and-rules/lessons/publication-and-examination-of-applications/topic/refuse-require-amendment-and-division-of-applications/
14. Why answer to below is option d; it should be a, b,c as per section 92(1) 50. As per section 92, if the Central government is satisfied, it may make a declaration to that effect, by notification in the Official Gazette under these circumstances
- National emergency
- Extreme urgency
- Public non- commercial use
- Bi-lateral treaty with another country
Answer: Option d is incorrect. Under circumstances a, b, c central government can grant compulsory license as U/S 92.
15. Please provide insights on abolishing IPAB in the year 2021 and related transfer of cases to respective High Courts from the tribunal.
Answer. Intellectual Property Appellate Board (IPAB) was a quasi-Judicial body established by Central government on 15 September 2003 under Trademark Act 1999. Sole purpose of the IPAB was to hear appeal against decision of Registrar as well as to hear rectification petition for trademark registration application under trademark act 1999. In 2002 the IPAB jurisdiction was extended to the Patent Act, 1970, but practically notified by central government by 2007 after rebuke from madras high court. The court was hearing an appeal from IPO regarding Novartis case, which ought to have been heard by the IPAB. After notification the high court transferred Novartis petition and subsequently all other pending cases. IPAB was further extended to the copyright 1957. IPAB’s main objective was to bring best group of expertise in IP regime by possessing technical members and scientific knowledge into which many landmark judgments could be delivered.
An ordinance was introduced by the central government to dissolve tribunals for Patent, Copyright, Trademark, Plant Variety and cinematography Under “The Tribunal Reform Act 2021”. The reform bill seeks to abolish IPAB and transfer powers to high court in order to reorganize the functioning of tribunal and avoid delay in allowance of justice.
REASONS FOR DISSOLVING IPAB
IPAB from long time has been associated with irregularities pertaining to procedure, fractured infrastructure and concentration of power to deal with appeals pertaining to trademark, patents, geographical indication and copyright as well. The reign of IPAB is succumbed to difficulties due to lack of technical members for long time in lieu of that leads to pendency and delay in managing appeals.
The Constitutionality of the Trademark act provision for establishing IPAB was challenged in a petition filed by Late Shamnad Basheer in the Madras High court.
In the petition, qualification of IPAB members and filling up vacancies were challenged and even petition to the Supreme Court seeking extension of the term of chairperson. IPAB being a tribunal with judicial powers, its members did not possess the necessary experience and were executives. In 2018, a new chairman was appointed after two years of being vacant. New technical member were appointed after the Indian Drugs Manufacturer Association sued the government. Administrative staffs were often being on deputation. During summer due to frequent and long hour power cut at IPAB office, faked keenness to work.
Government faced difficulty to find knowledgeable and experienced people who would qualify to be IPAB members. There was lack of expertise due to the appointments of inexperienced and incapable members diminished the quality of decision passed by IPAB.
The jurisdiction of cases was split into trademark, patent, copyright and geographical indication. IPAB was expected to juggle time with different forms of IP with setting in five different cites. With one chairperson to issue summons parties and paper to these entire cities added burden to the work. IPAB was also handicapped due to long gap in the appointment of the chairperson. There was no technical member for patent since 2016, for trademark since 2018 and no appointment for Copyright board. Since IPAB office was in Chennai so for circuit hearing chairperson had to fly to Delhi or Mumbai, thereby increasing cost of litigants.
With the objective to have specialized patent expertise, IPAB was expected to dispose off patent cases pending before high court. In first decade of operation, a total of 769 patent cases were filed which include appeals against from the decision of controller (U/S 117A(2)) or government and revocation petitions (U/S 64). Among all petitions only 207 cases were decided by IPAB. Over 70% cases were pending and since 2016 no cases were decided, as there was no appointed chairman and technical members. Average Patent disposal rates were 20 cases a year, which was underperformance in contrast to the expectation.
Most of the infringement suits cannot by law proceed until the IPAB decides the revocation/rectification petition for registered Trademark and Patents and as a result delays before high court/district court.
All these factors cumulatively added to make IPAB a liability and made it difficult to hold the fort for long.
OBSTRACLE FOR FURTHER JOURNEY:
Although IPAB has struggled to maintain its function, finding qualified members to settling matters timely, many critics have argued that dissolving the board will completely swallow away the high court time. This may delay the speedier judgment at a reduced cost. The hundreds of matters pending before IPAB will burden high court.
Although, the high courts are well equipped with resources, a smoother solution would have been to revamp IPAB and make it accountable. This would have saved Courts time and take up the matters where litigants are unhappy with IPAB’s Order. This decision of Government was both welcomed and criticized by experts in IP Field.
16. Which sections/ rules in the Patent Act or Patent Rules do this dissolution IPAB will change/omit/ or transform.
Answer: Dissolution is not by Patent Act. “The Tribunal Reform Act 2021” abolished the tribunal (IPAB) and recommended certain amendments in the Patent Act, 1970.
Section 2(a), u (ii) sub-clause (B), Section 52, Section 58, Section 59, Section 64, Section 71, Section 76, Section 113 have been omitted. All reference pertaining to the appellate board is omitted.