P R E F A C E - naarm.org.in of technological maturity and it is possible to set up plants based on ... Chairmanship of Dr. Bakshi Tek Chand, ... definition of invention has been provided.

P R E F A C E

In less than five decades since independence, there has been significant change

in the economic scene in the country mainly due to rapid increase in industrial

and R&D activities. By and large the industrial infrastructure has now reached a

stage of technological maturity and it is possible to set up plants based on

indigenous technological capabilities in almost all industries, with only marginal

inputs of foreign assistance. However, the quest for new technologies by Indian

industries has been ever increasing in the country with a view to become a global

player in the international market. As a result “Patent” has assumed a great

importance in recent time. Since its basic function – to promote innovation – is an

essential component of economic growth and social evolution. Patent is not just

an incentive to invest in the innovation process per se, but is also increasingly

important for trade and industry worldwide. For developing and industrializing

countries in particular, patent is an essential component of the framework they

need in order to attract foreign investment and faster technology transfer.

In order to establish a user friendly patent system it is essential that there should

be a manual of Patent Office. Although Indian Patent Office has a very long

history behind it, unfortunately there was no manual of Patent Office. Now the

Patent Office has made an effort to publish the manual of Patent Office which is

intended to familiarize industries, R&D organizations, individual research workers

and other users of the system with the patent practice and procedure in India for

obtaining and maintaining the patents under the existing patent law i.e. the

Patents Act, 1970 as amended by the Patents (Amendment) Act of 1999. Within

a very short period this manual has been completed and there may be some

shortcomings in it. However, constant revision and updating is required for any

such manual which will be done in this case also.

It is expected that this manual will be of considerable use to the industries, R&D

organizations, research workers and all others who are engaged in innovative

and inventive activities in developing and marketing new products.

(H.D. Thakur)Controller General of Patents ,Designs &TradeMarks

Any suggestion for improvement of the manual will be accepted with thanks and it

is assured that due consideration will be given to that.

INTRODUCTION

Background

1. The Patent Act, 1970 came into force on 20.4.1972 replacing IndianPatents and Designs Act, 1911. When India became independent, theGovt. of India appointed the Patent Enquiry Committee under theChairmanship of Dr. Bakshi Tek Chand, a retired Judge of Lahore HighCourt in 1949 with a view to ensure that the Patent system was moreconducive to national interest. The committee submitted its final report inApril 1950. A bill based on the recommendations of this Committee wasintroduced in the Parliament in 1953, but it lapsed due to dissolution of theLok Sabha.

2. In 1957, Govt. of India further appointed Justice N. Rajgopalan Ayyangerto examine and review the Patent law in India who submitted his report inSeptember 1959 recommending the retention of Patent System despite itsshortcomings. The Patent Bill, 1965 based mainly on hisrecommendations and incorporating a few changes, in particular relatingto Patents for food, drug, medicines, was introduced in the lower house ofParliament on 21st September, 1965. The bill was referred to a jointcommittee of Parliament on 25th November 1965. A bill was formerlymoved in lower house of Parliament on 5th December 1966, whicheventually lapsed with the dissolution of Lok Sabha on 3rd March 1967.Finally the bill was cleared by the Parliament and became law known asthe Patents Act, 1970 after more than two decades. The present law wassuited to changed political situation and economic needs for providingimpetus to technological development by promoting inventive activities inthe country.

3. The present Act contains XXIII chapters, which are relating to Patentingprocedure, International arrangement and other misc. matters. This Act isregulated by the Patents Rules, 1972 which inter alia include FiveSchedules concerning with fees, forms etc.

4. Under the existing Act the Government of India is authorized to makerules for carrying out the purposes of the Act and regulating the PatentAdministration and accordingly Govt. brought into force Patents Rules,1972 w.e.f. 20.4.1972. These Rules were amended on 2.6.99, under thepresent Act and rules in addition to grant of Patents. Provisions of grant ofEMR have also been provided.

5. There are five Schedules to Patents Rules, 1972; the First Scheduleprescribes the fees to be paid in respect of any matter arising out underthe Act. Where any form specified in the Second Schedule to the Patents

Rules, 1972, it shall be accompanied by specified fees or where paymentis made within a prescribed period of time after the forms have been filed,the specified fee shall be paid within that period. The texts of variousforms required in connection with activities under the Patents Act, 1970are set out in this schedule. These forms must be used wherever requiredand they are not to be modified without the consent of the Controller. TheThird Schedule prescribes form of Patent that to be granted. The FourthSchedule prescribes various types of costs to be awarded in variousproceedings under the Act. As stated above, the fifth schedule specifiescertain amendments to the Indian Patents & Designs Rule, 1933.

6. The Patents Act, 1970 in comparison with Indian Patents and Designs Act,1911 has far more reaching effect in some areas such as food, Drug andMedicines where all the patents granted under this category and deemedto be endorsed with the words “Licence of Right”. Further the term ofPatents related to Food, Drug & Medicines is seven years from the date ofPatent or 5 years from its grant whichever is less. More elaboratedefinition of invention has been provided. Product Patents for Drugs &Medicines including certain class of chemicals, which are produced bychemical reactions, have been abolished. However, inventions relating tomethods or processes of their manufacture are patentable. The area ofsearch for novelty has been extended to any documents publishedanywhere in the world. The provisions for appeals to the High Court fromthe decision of Controller have also been provided. The provision forgrant of compulsory license, license of right and revocation of Patenton the ground of nonworking has also been incorporated. Many of theseprovisions are kept in line with the development of Patent law indeveloped countries, particularly Great Britain. The major departure is inthe reduction of the term of patent for the invention relating to the drug,Medicine & food and abolition of Product patent per se for Drug,Medicines, Food and Chemicals.

7. The chapter XXII provides international arrangements with the countriesoutside India, which afford to the applicants for Patents in India or citizensof India, similar privileges as are granted to its own citizens in respect ofgrant of Patent and the protection of their patent rights. Accordingly theCentral Govt. may by notification in the Official Gazette declare suchcountry/countries to be a conventional country/countries for the purpose ofthe Act.

8. India has become a member of the Paris Convention and PCT w.e.f.7.12.1998 and by virtue of this, the Head Office of Patent Office & itsBranch offices have become receiving offices for the purpose ofinternational applications filed under PCT. In view of these developments,the Patents Rules, 1972 have been amended by incorporating a newchapter IIA dealing with international application which can be filed at

Head office of the Patent office at Calcutta or Branch Offices at Delhi,Chennai & Mumbai w.e.f. 17.11.99 as applicable.

9. The present Act under Chapter IVA provides specific provisions for thegrant of EMR (Exclusive Marketing Rights) with a view to fulfill itsinternational obligation under the provisions of article 70.8 & 70.9 of TRIPsagreement which are in force w.e.f. 1.1.1995.

ii. GUIDELINES FOR OBTAINING PATENTS IN INDIA

1. The commercial value of any industrial product depends upon alarge number of factors, such as, its utility, cost of production,attractiveness of appearance and the reputation established for it in trade.Advantages in respect of utility and cost of production may be gained bythe adoption of “inventions” leading to a new manner of manufacture;advantage in respect of attractiveness of appearance may be secured bythe adoption of new or original “designs” for the shape, configuration orornamentation of the vendible product; and advantage as regardsreputation in the course of trade may be gained by adopting andpopularizing a suitable “trade mark” for marketing the product.

2. TYPES OF PATENT APPLICATIONS

a. Patent applications under Patents Act 1970.b. International applications under PCT.

3. GENERAL PRECAUTION FOR APPLICANT

3.1 It is a common experience that through ignorance of patent law,inventors act indiscreetly and jeopardize the chance of obtaining patentsfor their inventions. The most common of these indiscretions is to publishtheir inventions in newspapers or scientific and technical journals, beforeapplying for patents. Publication of an invention, even by the inventorhimself, would (except under certain rare circumstances) constitute a barfor the subsequent patenting of it. Similarly, the use of the invention inPublic, or the commercial use of the invention in public or even in secrecy,prior to the date of the patent would be a fatal objection to the grant of apatent for such invention thereafter. Hence inventors should not tell theworld about their inventions before they apply for patents nor should theyuse their inventions for commercial purposes. There, is however, noobjection to the secret working of the invention by way of reasonable trialor experiment, or to the disclosure of the invention to other confidentially.

3.2 Another mistake, which is frequently made by inventors, is to wait untiltheir inventions are fully developed for commercial working, beforeapplying for patents. Delay in making application for a patent involvesrisks, namely, (i) that other inventors might forestall the first inventor inapplying for the patent, and (ii) that there might be either an inadvertentpublication of the invention by the inventor himself, or the publicationthereof by others independently of him. It is, therefore, advisable to applyfor a patent as soon as the inventor’s idea of the nature of the inventionhas taken a definite shape.

3.3 In this connection inventors should note that it is permissible to file anapplication for a patent accompanied by a “Provisional Specification”describing merely the nature of the invention. The application maytherefore, be made even before the full details of working the invention aredeveloped. The filling of an application for a patent disclosing merely thenature of the invention would secure “provisional protection”*, and therebyenable the inventor to work out the practical details of the invention underprotection.3.4 Another matter, which should not be neglected by inventors, is theclarification of their rights with reference to those of their employers, co-workers, contractors and assistants, if any, with whom they are broughtinto contact in the course of the development of their inventions. Neglectin this direction may lead to costly litigation.

4. DOCUMENTS REQUIRED FOR FILING AN APPLICTION FOR PATENT

a) Application form in triplicate in the prescribed form no. 1.b) Provisional or complete specification in triplicate. If the provisional

specification is filed it must be followed by a complete specification within12 months (15 months with extension) to be drawn on prescribed form no.2.

c) Drawing in triplicate (if necessary).d) Abstract of the invention in triplicate.e) Information and undertaking listing the number, filing date and current

status of each foreign patent application in duplicate on the prescribedform no. 3.

f) Priority document(s) (if priority date is claimed) in case of conventionapplication.

g) Declaration of inventorship where provisional specification is followed bycomplete specification complete specification or in case of conventionapplication on prescribed form no. 5.

h) Power of attorney (if filed through Patent Agent).i) Fee (Patent in cash/by cheque/by demand draft).

5. PROVISIONAL SPECIFICATION

Application for patent may be accompanied by the provisionalspecification. It should contain the description of the invention withdrawing if required. It is not necessary to include claim. However thecomplete specification including claims fairly based on the matterdisclosed in the provisional specification should be filed within 12 months(extendable by 3 months) from the date of filing of provisionalspecification. The date of patent will be the date of filing of completespecification.

6. COMPLETE SPECIFICATION

Complete specification should fully describe the invention withdrawing if required disclosing the best method known to the applicant andend with claim/claims defining the scope of protection sought. Normally itshould contain the following matter.

1) Title of invention 2) Field of invention 3) Background of inventionwith regard to the drawback associated with prior art 4) Object of invention5) A summary of invention 6) A brief description of the accompanyingdrawing if any 7) Detailed description of the invention with reference toexamples and drawing 8) Claim(s)

7. ABSTRACT

The abstract is the concise summary of the invention preferablywithin 150 words. It should be prepared in such a way that one canunderstand the technical problem and solution with its usefulness. Ifnecessary most relevant drawing should also be included in the abstractparticularly in mechanical type inventions. However, it cannot be used forthe purpose of interpreting the scope of protection in legal proceeding.

8. DRWAING

Drawing should be filed on standard A4 size sheet in triplicate oneof which should be on tracing cloth or transparent paper or semitransparent sheet or plastic/ fiberglass film or thick & durable paper.Drawing should be drawn in black Indian indelible ink on the sheet withmargin of 2.5 cm on each side. Figure should be shown clearly onsufficient scale in upright position with respect to top & bottom position ofthe sheet. At left-hand top corner of the sheet the name of the applicantshould be mentioned. No. of sheets & sheet no. Should be mentioned at

the right hand top corner. At the right-hand bottom signature of theapplicant/agent should be made mentioning the name there under. Areference letter/numerals as used in the description should also be used indenoting the corresponding component/part in the figure (s). Nodescriptive matter should appear on drawing except under certain casessuch as flow sheet, chemical & other reaction etc.

The sheets may be of a size, either 13 X8 or 30.00 centimeters X 20.50centimeters or 13 X 16, or 33.00 centimeters X 41.00 centimeters, the 13 or33.00 centimeters side being the top to bottom side when the drawing isplaced in the erect position. There should be a clear blank margin of ½ OR1.50centimeters in width all round.

Photographs are not acceptable.

Sketches or drawings should not be inserted in the letter press or thespecifications.

The same type of reference letters and figures, i.e., italic or Roman shouldbe used on the drawing and in the letter-press. The following types aresuitable:

A B C D a b c d 1 2 3 4.

The same letters or numerals should be used in different views of thesame parts.

If the scale is given, it should be drawn, and not denoted by words.

In complicated drawings or when there is no room to write the referenceletters in their proper places, the letters should be shown outside thefigures and connected by fine lines with the parts to which they refer.

9. Application Under Patent Cooperation Treaty (PCT)

The Patent Cooperation Treaty is an agreement for internationalcooperation in the field of patents. It is the most significant advancement ininternational cooperation in this field since the adoption of the ParisConvention itself. It is, however, largely a treaty for rationalization andcooperation with regard to the filing, searching and examination of patentapplications and the dissemination of the technical information containedtherein. The PCT does not provide for the grant of “international patents”. Thetask and responsibility for granting patents remain exclusively in the hands ofthe patent Offices of, or acting for, the countries where protection is sought(the “regional Offices”).

PCT is a special agreement under the Paris Convention open only tostates, which are also party to the Paris Convention. The PCT does notcompete with but, in fact, complements the Paris convention.

9.1 Principal Objectives Of The PCT

The principal objective of the PCT is to simplify and to render moreeffective and more economical—in the interests of the users of the patentsystem and the offices which have responsibility for administering it—thepreviously established means of applying in several countries for patentprotection for inventions. Before the introduction of the PCT system, virtuallythe only means by which protection of an invention could be obtained inseveral countries was to file a separate application in each country; theseapplications, each being dealt with in isolation, involved repetition of the workof the filing and examination in each country. To achieve its objective, thePCT:

• establishes an international system which enables the filing, with asingle patent Office (the “Receiving Office”), of a single application (the“International Application”) in one language having effect in each of thecountries which are party to the PCT which the applicant names(“designates”) in his application;

• provides for the formal examination of the International Application bya single patent Office, the Receiving Office;

• subjects each International Application to an international search whichresults in a report citing the relevant prior art (mainly published patentdocuments relating to previous inventions) which may have to be takeninto account in deciding whether the invention is patentable; that reportis made available first to the applicant and is later published;

• provides for centralized international publication of InternationalApplications with the related international search reports, as well astheir communication to the designated Offices; and

• provides the option of an international preliminary examination of theInternational Application which gives to the Offices that have to decidewhether or not to grant a patent, and to the applicant, a reportcontaining an opinion as to whether the claimed invention meetscertain international criteria for patentability.

The procedure described in the preceding paragraph, comparing it withthe traditional procedure, is illustrated by two timelines such as chapter I andchapter II of PCT. It is commonly called the “International Phase” to describethe first part of the patenting procedure, whereas one speaks of the “NationalPhase” to describe the last part of the patent granting procedure which, asexplained in paragraph above, which is the task of the designated Offices,that is, the national Offices of, or Regional offices acting for the countries

which have been designated in the International Application. (In PCTterminology, a reference to “national” Office, “national” phase and “national”fees, includes the reference to the procedure before a regional patent Office.)

Under the PCT system, by the time the International Application reachesthe national Office, it has already been examined as to form by the ReceivingOffice, searched by the International Searching Authority and possiblyexamined by an International Preliminary Examining Authority, thus providingthe national patent Offices with the important benefit of reducing their workloads since they have the benefit of these international phase centralizedprocedures and thus need not duplicate those efforts.

Further main objectives of the PCT are to facilitate and accelerate accessby industries and other interested sectors to technical information related toinventions and to assist developing countries on gaining access totechnology.

9.2 Functions Of The Receiving Office

1. Receiving Office receives the International Application from the applicant.

2. Receiving Office checks the International Application to determinewhether it meets the prescribed requirements as to form and content ofInternational Applications. This check is of a formal nature only and does notgo into the substance of the invention. It therefore extends only to a certainnumber of rather elementary requirements specified in the Treaty as formingpart of that check.

3. Receiving Office accords an international filing date (Article 11).

4. Receiving Office checks certain formal and physical requirements (Article14). That check by the Receiving Office may show that the InternationalApplication does not meet certain requirements as to form and content andthat the fees are not, or not fully, paid. In that case, the Receiving Officecommunicates with the applicant in order to give him an opportunity to correctany defect.

5. If, possibly after correction, the check by the Receiving Office shows thatthe International Application meets the requirements of Article 11(1) for givingthe application an international filing date, the Receiving Office accords theinternational filing date.

6. If the language of filing of the International Application is accepted by theReceiving Office but is not accepted by the International Searching Authoritythat is to carry out the international search, the applicant is required to furnish,within one month from the filing of the application, a translation into alanguage which is all of the following: (i) a language accepted by theInternational Searching Authority that is to carry out the international search;(ii) a language of publication; and (iii) a language accepted by the Receiving

Office (unless the International Application is filed in a language ofpublication). In cases where the applicant fails to furnish, within the applicabletime limit, a translation for the purposes of international search, the ReceivingOffice invites the applicant to furnish the missing translation, in certain casessubject to the payment of a late furnishing fee. A separate invitationprocedure is provided for the case where the request does not comply withlanguage requirements. Where the applicant does not furnish the missingtranslation within the time limit fixed in the invitation, the InternationalApplication will, subject to certain safeguards for the applicant, be consideredwithdrawn and the Receiving Office will so declare.

7. Not all the requirements of the International Application are required to beexamined by the Receiving Office. For instance, the Receiving Office doesnot deal with substantive questions such as whether the disclosure of theinvention in the application is sufficient and whether the requirement of unityof invention is complied with. It also does not check all the many detailedphysical requirements of the International Application. Those requirementsare only checked to the extent that compliance with such requirements arenecessary for the purpose of reasonably uniform international publication.

8. Typical examples of defects which may be corrected without affecting theinternational filing date are:– non-payment or partial payment of fees;– lack of signature of the request;– lack of a title of the invention;– lack of an abstract;– physical defects.

9. As stated, in all such cases lack of correction leads to the applicationbeing considered withdrawn, except where a physical defect would notprevent reasonably uniform international publication and except for thepayment of fees. With regard to the later, Rule 16b provides that theReceiving Office must invite the applicant to pay the missing fees togetherwith a late payment fee. If the applicant still does not pay the fees within thetime limit fixed in the invitation, the Receiving Office will declare that theInternational Application is being considered withdrawn. This solution protectsthe applicant against any loss of his application due to an erroneouslydelayed or incomplete payment of fees.

10. The third step in the procedure before the Receiving Office is that it musttransmit the “record copy” of the International Application to the InternationalBureau and the “search copy” to the International Searching Authority. TheReceiving Office keeps a third copy, the “home copy.” The transmittals do nottake place if and as long as national prescriptions concerning nationalsecurity apply. The Receiving Office will then declare that national securityprovisions prevent the International Application from being treated as such.

11. The Receiving Office must mail the record copy promptly to theInternational Bureau and in any case not later than five days prior to the

expiration of the 13th month from the priority date. In many cases, theInternational Application claims the priority of an earlier national applicationand is filed at the end of the 12-month priority period; the Receiving Officehas only a few weeks for its processing tasks

12. The search copy must be transmitted by the Receiving Office to theInternational Searching Authority at the time of the transmittal of the recordcopy to the International Bureau except where the search fees has not beenpaid on time, in which case the transmittal of the search copy takes placeafter that fee has been paid.

13. If an applicant who is a resident or national of a PCT Contracting State;erroneously files his International Application with a national office which actsas a Receiving Office under the Treaty but which is not competent under Rule19.1 or 19.2, having regard to the applicant’s residence and nationality, toreceive that International Application, or if an applicant files his InternationalApplication with the competent Receiving Office in a language which is notaccepted by that Office under Rule 12.1(a) but is in a language acceptedunder that Rule by the International Bureau as Receiving Office, theInternational Application will be considered to have been received by thenational Office on behalf of the International Bureau as Receiving Office onthe date on which it was received by the national Office, and will be promptlytransmitted to the International bureau as Receiving Office (unless suchtransmittal is prevented by national security prescriptions). The transmittalmay be subjected by the national Office to the payment of a fee equal to thetransmittal fee. All other fees already paid to that Office will be refunded bythat Office to the applicant and the applicable fees will have to be paid to theInternational bureau as Receiving Office

9.3The following conditions should be fulfilled for according aninternational filing date:

(i) the applicant should be a resident or national of the ContractingState for which the Receiving Office acts, and has consequently the rightto file with that Receiving Office (note, however, that the InternationalApplication is to be transmitted to the International Bureau as ReceivingOffice under Rule 19.4(a)(i) if that condition is not fulfilled);

(ii) the International Application should be in the language, or one ofthe languages, accepted by the Receiving Office for the purpose of filingInternational Applications (note, however, that the International Applicationis to be transmitted to the International Bureau as Receiving Office underRule 19.4(a)(ii) if that condition is not fulfilled);

(iii) the International Application should contain at least the followingelements:

(a) an indication that it is intended to be an International Application,(b) the specific designation of at least one Contracting State under

Rule 4.9(a),

(c) the name of the applicant in a form allowing the applicant’sidentity to be established,

(d) a part which on the face of it appears to be a claim or claims.

(iv) If one of these requirements is only complied with after correction,the international filing date will be the date on which the correction wasreceived. In other words, in these cases a defect which is corrected lateraffects the international filing date. If all such defects are not properlycorrected, the application will not be treated as an InternationalApplication.

(v) For all the other cases, non-compliance with the formalrequirements does not affect the international filing date. In other words, ifthe applicant corrects a defect in such cases, the international filing dateremains unchanged. If the applicant does not correct, the defect properly,the International Application will, however, be considered withdrawn by theReceiving Office. Extension of the time limit fixed by the Receiving Officefor the correction of defects under Article 14 may be requested.

9.4 Monitoring of time limits

Easy supervision and monitoring of only a few time limits and events isrequired by applicants, namely:

(i) monitoring the receipt of the confirmation of receipt of the InternationalApplication by the Receiving Office;

(ii) monitoring the time limits for payment of fees;

(iii) checking the notification from the International Bureau confirming thereceipt of the International Bureau confirming the receipt of the recordcopy (Form PCT/IB/301) for correctness of the designations indicated onthe Form and if needed, confirm precautionary designations within 15months from the priority date;

(iv)deciding, after receipt of the international search report, whether or notto file a demand for international preliminary examination (which must befiled prior to the expiration of 19 months from the priority date in order todelay entry into the national phase until at least 30 months from thepriority date);

(v) deciding, after receipt of the international search report, whether or notto file amended claims under Article 19, within the applicable time limit;this will usually be considered only if demand for international preliminaryexamination is not filed;

(vi)monitoring the receipt, during the 19th month from the priority date, ofthe notice from the International Bureau (Form PCT/IB/308) that thepublication of the International Application and its communication to thedesignated Offices (Article 20) has been effected;

(vii) entering the national phase before the expiration of 20 months fromthe priority date, or 30 months if Chapter II applies (in some designated orelected Offices, even later), by paying the national fees and furnishing (ifrequired) a translation of the International Application.

9.5 Filing of the International Application:

a) Request form :

1. International Application must be filed with any of the receiveing officesi.e. Patent office ,Calcutta,New Delhi,Mumbai, and Channai or IB ofWIPO.

2. The International Application must contain a request, a description,one or more claims, one or more drawings (where required) and anabstract; it must comply with the prescribed physical requirements; itmust be in one of the prescribed languages; finally, the required feesmust be paid. These requirements will be dealt with one by one.

3. The request may be made on a printed form, copies of which can beobtained free of charge from the Receiving Office or from theInternational Bureau of WIPO. The request may also be presented asa computer printout as prescribed by Section 102(h) of theAdministrative Instructions or, alternatively, as a computer printoutprepared using the PCT-EASY software, in which case it must beaccompanied by a computer diskette containing a copy in electronicform of the data contained in the request and of the abstract.

4. The request must first of all contain a petition, that is, a request that theInternational Application be processed according to the PCT. It mustfurther contain the title of the invention, the necessary data concerningthe applicant, the inventor and the agent representing the applicant,the designation of the Contracting States for which protection isdesired, that is, a list of the Designated States. It must be signed bythe applicant or his agent. Where there are two or more applicants,each applicant must sign at his choice either the request or, if therequest is signed by an agent, a separate power of attorney.

5. The request may contain some optional indications, in particular apriority claim according to the Paris Convention for the Protection ofIndustrial Property. Further, when a Designated State offers severalkinds of protection for inventions, such as patents for invention andutility models, the applicant can indicate his choice in the request.

b) Priority

1. Only one certified copy is required of each priority application, within 6months from the priority date; no copies for each designated Office areneeded. The copies for the designated Offices are prepared—at noadditional cost to the applicant—by the International Bureau.

2. Transmittal of the priority document need not be monitored if a requestfor transmittal by the Receiving Office to the International Bureau of anapplication filed with that Receiving Office was made in the Request Formand the applicable fee for a priority document was paid to the ReceivingOffice.

c) Description

1. The description of the invention in the International Application mustdisclose the invention in a manner sufficiently clear and complete for theinvention to be carried out by a person skilled in the art.

2. The description first repeats the title of the invention. It then specifies thetechnical field to which the invention relates. It indicates the so-called“background art,” that is, the technical and, in particular, patent literature,pertaining to that technical field, constituting the “prior art” or “state of theart” or known technology for the newly filed application. It discloses theintention in a way which allows the technical problem and its solution to beunderstood. It states the advantageous effects of the invention as comparedwith the known technology. It briefly describes the figures in the drawings. Itsets forth the best mode contemplated by the applicant for carrying out theinvention and any other mode he wants to include. Finally, it indicates theway in which the invention is capable of exploitation in industry.

d) Sequence Listing : -

1. Section 806 of PCT allows a designated Office to require that a copyof a sequence listing part filed only on an electronic medium under newSection 801 be furnished , for the purposes of the national phase, onpaper.

2. For applicants who do not wish to file the sequence listing part of theirinternational applications under new Section 801, the currentprovisions will continue to apply, including the filing in written form only(under Rule 5.2) and the concurrent or subsequent furnishing, asprovided under PCT Rule 13ter and Section 208, of the sequencelisting parts in computer readable from but only for the purposes ofinternational search and/or international preliminary examination. Insuch cases the current system for calculating the basic fee, on thebasis of the total number of sheets of the international applicationincluding the sequence listing part, will continue to apply (see item 1(b)of the Schedule of Fees).

3. It is important to note that international application filed under newsection 801 may only be filed with receiving Offices, which areprepared to accept them, and on such electronic media as specified bythe receiving Offices (for further details pl. see PCT Applicant’s Guide).

e) Claims :

1. The claims must define the subject matter of the invention for whichprotection is sought. They must be clear and concise and fully supportedby the description.

2. With respect to the structure and drafting of claims, the PCT requirementsare largely similar to what is accepted in most patent Offices.

f) Drawings:

1. The drawings are only required where they are necessary for theunderstanding of the invention. This will be the case for a mechanicalinvention. It will not be the case when an invention cannot be drawn, as isthe case for a chemical product. Here again, the requirements are similarto those of most patent Offices.

g) Abstract :

1. The abstract is intended to serve the purpose of technical information.The Treaty says clearly that it cannot be taken into account for any otherpurpose. This means in particular that it cannot be used for the purpose ofinterpreting the scope of the protection sought.

2. The abstract consists of a concise summary of the disclosure of theinvention as contained in the description, claims and drawings inpreferably not more than 50 to 150 words. It must be drafted in a waywhich allows the clear understanding of the technical problem, the gist ofthe solution of that problem through the invention, and the principal use ofthe invention..

9.6 International Search.

1. A high quality international search report is established by the InternationalSearching Authority. For the purpose of Indian applicant following areCompetent International Searching Authorities( ISAs)

Austrian Patent Office(AT)Australian Patent Office (AU)European Patent Office(EP)China Intellectual Property Office(CN)United States Patent & Trademark Office (US)Swedish Patent Office(SE)

2. If the International Application did not claim any priority, the internationalsearch report is available within nine months from the international filingdate, which is before the payment of designation fees becomes due. Ifpriority is claimed, that report is available usually during the 16th monthfrom the priority date.

Even where priority is claimed, the international search report is normallyavailable in time before publication of the International Application. Thisallows time for the applicant to withdraw the application before publication, ifdesired.

9.7 Language :

1. The International Application must be filed in the language, or one of thelanguages which the Receiving Office accepts for that purpose (Rule 12.1(a)).Neither the Treaty nor the Regulations enumerate the languages in whichInternational Applications may be filed. Whether a given language can beused depends on the readiness of the Receiving Office to accept InternationalApplications in that language. Each Receiving Office must, however, acceptat least one language for the filing of International Applications which is both alanguage accepted by the International Searching Authority or, if applicable,by at least one International Searching Authority, competent for theinternational searching of International Applications filed with that ReceivingOffice and one of the languages of publication (that is, Chinese, English,French, German, Japanese, Spanish or Russian), so that applicants alwayshave the option of filing the international search or international publicationpurposes; in other words, either words, either the International Application inits original language or the translation will be sufficient for the processing bythe Receiving Office, for international search and for international publication.

2.If the language of filing of the International Application is accepted by theReceiving Office but is not accepted by the International Searching Authority,the applicant is required to furnish, within one month from the date of receiptof the application, a translation into a language which is all of the following: (i)a language accepted by the International Searching Authority that is to carryout the international search; (ii) a language of publication; and (iii) a languageaccepted by the Receiving Office (unless the International Application is filedin a language of publication) (Rule 12.3).

3.If the language of filing of the International Application is accepted by theReceiving Office and the International Searching Authority but is not alanguage of publication (at present, this is the case only where theInternational Application is filed in Dutch and certain Nordic languages), theInternational Application will be published in English, the translation into thatlanguage being prepared under the responsibility of the InternationalSearching Authority which undertakes the search (see Rule 48.3).

4.The request must always be filed in a language which is accepted by theReceiving Office and which is also one of the seven languages of publication.

9.8 Fees:

1.International Application filing fees can be paid in the national currency andto one Office, the Receiving Office. They may all be paid within one monthafter filing (for the designation fee, however, see next paragraph).

2.Designation fees must be paid before the end of the priority year or withinone month after filing, whichever time limit expires later. If no priority isclaimed and designation to all Contracting States has been made in theInternational Application, the option is kept open–at no cost–for one year toselect designations and pay designation fees only for those countries wherethe applicant wants the International Application to remain in effect.

3.Only one designation fee must be paid under the PCT for a regional patentindependent of the number of States party to the regional patent treaty whichare designated for a regional patent. It is therefore advisable to designate inthe International Application all States party to the regional patent treatyconcerned and make the selection of individual States at the start of theregional phase (for example, in respect of a European patent, at 21 monthsfrom the priority date, or 31 if Chapter II applies, when payment of theEuropean designation fee for each individual State is required). The sameobservation applies to the designation of states for the purpose of an ARIPOpatent.

4.A maximum designation fee under the PCT (which corresponds to 6designation fees) permits the designation of all Contracting States. Eachdesignation in excess of 6 is free of charge. This makes it possible todesignate all Contracting States at reasonable cost at the time of filing and tothereby keep the option for a foreign patent open in any Contracting Stateuntil at least 21 months from the priority date, or at least 31 months if ChapterII applies.

5. Failure to pay fees or underpayment of fees can be corrected under Rule16b is. An invitation to pay missing amounts will be issued by the ReceivingOffice. Payment can be made later, together with a late payment fee.

6. Mode of Payment: To facilitate the payment in US Dollar, as required byInternational Bureau of World Intellectual Property Organisation andInternational Searching Authority selected by the applicant, an account has beenopened by RO/IN in the name of the controller General of Patents, Designs &Trade Marks, with the State Bank of India, New York Branch, 460, Park Avenue,New York-NY-10022 assigning account No. 2111-250821-001.

THE PCT FEES, AN INDIAN APPLICANT REQUIRED TO PAY:

a. To Receiving Office (The Patent Office, Calcutta and its branchoffices at New Delhi, Mumbai, Chennai)i. Transmittal fee : INR 1,500 [for individual(s)]

INR 5,000 [for legal entity]ii. Basic fee : USD 382*iii. Designation fee : USD 82* per designation

(maximum 6, any designationover 6 being free of charge)

iv. Supplement per sheet : USD 9*in excess of 30

v. Search fee : ISA/AT – USD 170ISA/EP – USD 846**ISA/AU – USD 510ISA/CN – USD 100ISA/US – USD 700ISA/SE – USD 990

vi. Fee for preparing : INR 1,000 [for individual(s)]certified copy of priority INR 3,000 [for legal entity other

thandocument and transmissionof the same IB.

b. To the International Preliminary Examination Authority (IPEA) (Optional).i. Handling fee*

IPEA/AT – ATS 2022.76IPEA/AU – AUD 238IPEA/EP – DEM 287.57 OR EUR 147IPEA/CN – CNY EQUIVALENT TO CHF 233IPEA/US – USD 153IPEA/SE – SEK 1,270

ii. Preliminary Examination Fee (Optional)IPEA/AT – ATS 2,200IPEA/AU – AUD 450IPEA/EP – DEM 2,998.29** (OR EUR 1,533)IPEA/CN – CNY 800IPEA/US – USD 750***IPEA/SE – SEK 4,200

In view of above, an Indian applicant, filing an International Application forPatent under Patent Cooperation Treaty, is required to remit the consolidated

amount in US Dollar by Demand Draft, payable to the Controller of Patents atState Bank of India, New York Branch, for payment towards basic fee,designation fee and search fee.

7.The required fees which must be paid to receiving office are theTransmittal Fee, the International Fee and the Search Fee. They must all bepaid to the Receiving Office.

8.The Transmittal Fee is for the benefit the Receiving Office. It is intended tocompensate that Office for the work which is required to be performed inconnection with the International Application. The amount is left to be fixed bythe Receiving Office. It is due within one month from the date of receipt of theInternational Application.

9.The International Fee is for the benefit of the International Bureau. It isintended to cover the cost of the work the International Bureau must performunder the PCT. The international fee consists of the basic fee and as manydesignation fees as there are national or regional Offices designated in theapplication by the applicant, with a maximum of 10 designation fees. Theamounts are fixed in the Schedule of Fees which forms part of theRegulations. The basic fee is due within one month from the date of receipt ofthe International Application. The designation fees are due within one yearfrom the priority date or one month from the said date of receipt, whichever islater.

10.The Search Fee is for the benefit of the International Searching Authority.It is intended to compensate that Authority for the work it must perform inconnection with the establishment of the international search report. It is duewithin one month from the date of receipt of the International Application. Theamount is fixed by the International Searching Authority.

9.9 Withdrawal:

1.An International Application can be withdrawn at any time during theinternational phase. Where the intent of the withdrawal is to preventpublication, the notice of withdrawal must reach the International Bureaubefore technical preparations for international publication have beencompleted (that is, not later than 15 days before the date of publication).

2.A withdrawal of an International Application can be made with the conditionthat the withdrawal be effective only if the international publication can still beprevented.

9.10 Amendments:

1.The claims can be adjusted to the results of the international search reportby amending them once (under Article 19) with effect in all designated States.Such amendments save costs for preparation of different sets of amendments

and for local agents filing such amendments before designated Offices, andguarantee better provisional protection and patents in registration countries.Individual amendments before each designated Office are also permitted inthe national phase (under Article 28 or 41) and all parts of the application canbe amended (under Article 34(2)) during the international preliminaryexamination procedure under Chapter II.

9.11 International Preliminary Examination:1. The following are Competent International Preliminary Examining

Authorities[IPEAs] for the purpose of Indian applicant:Austrian Patent Office(AT)Australian Patent Office(AU)European Patent Office (EP)(only if ISA was AT,EP or SE)China Intellectual Property Office (CN)United States Patent & trademark office (US)Swedish patent Office (SE)

2. The use of International Preliminary Examination

(i) is optional for the applicant;(ii) provides, in addition to the international search report, an internationalpreliminary examination report containing an opinion on the usual criteriaof patentability before expenses are incurred for the national phase (fortranslation, fees and foreign agents);(iii) helps the applicant to adapt the International Application to the resultsof the international search report;(iv)allows, with effect for all elected Offices, the amending of all parts ofthe International Application (description, claims and drawings) duringinternational preliminary examination;

(vi) defers until at least 30 months from the priority date entry into thenational phase if the demand is filed within 19 months from the prioritydate.

(vii) The international preliminary examination report gives, for minimalcost, an opinion and the probability of obtaining a patent:(viii) The application will be more or less ready for acceptance by theelected Offices after receiving international preliminary examination report.(ix) if the report is negative and it is decided to abandon the application,the applicant has saved all the expenses otherwise incurred before theelected Offices for the payment of national fees, the preparation oftranslations and the appointment of local agents.

9.12 The National Phase

1. The national phase follows the international phase. In the national Phasebefore processing and examination may start in the national phase in the

designated or elected Offices, the applicant must perform certain actsthereby effecting “entry into the national phase.” If the applicant does notenter the national phase, namely, if he does not perform these acts within theprescribed time limit, the International Application loses its effect in thedesignated or elected States concerned with the same consequences as thewithdrawal of any national application in that State (Article 24).

2. For entry into the national phase before a designated or elected Office, itis necessary that the national fee be paid to it and, where the InternationalApplication has not been filed or published in the official language, or one ofthe official languages, of that Office, that a translation into an officiallanguage be filed. This must be done within a certain time limit, which isdifferent depending on the circumstances: if the designated State concernedhas been elected for the purpose of international preliminary examinationwithin 19 months from the priority date, the time limit is 30 months from thepriority date; in all other cases (that is, if the designated State concerned hasbeen elected after 19 months from the priority date or if the Chapter IIprocedure has not been used in relation to that designated State), the timelimit is 21 months from the priority date. The time limits for entry into thenational phase are, in some Offices, even longer than 21 or 31 months. SeeVolume II of the PCT Applicant’s guide for further information.

3. The national fees to be paid are usually about the same as the feesrequired for the filing of a national or regional application. Some Offices, notin India however, levy lower national or regional filing, search or examinationfees, or refund certain fees, on account of the existence of the internationalsearch report or where an international preliminary examination report hasbeen established. This offsets, at least partly, the costs of filing anInternational Application.

4. Where the original drawings are of a good quality, the applicant is notrequired to file additional formal drawings with the Designated or ElectedOffices, permitting substantial economies in some cases. It is thereforeimportant to file drawings with the Receiving Office that fully comply with theformat requirements of the Regulations under the PCT.

5. Where the priority of an earlier application is claimed and a certified copyof that application has been provided, it is not necessary to submit a certifiedcopy of the priority document to each designated or elected Office. TheInternational Bureau sends any required copies of the priority document tothe Offices concerned.

6. Apart from the payment of the national fee and, where necessary, thefiling of a translation, no designated or elected Office may require compliancewith further requirements within the 21- or 31-month time limit. Certainadditional requirements, such as appointment of an agent, indication of anaddress for service of notifications, declaration of inventor, assignmentdocuments, and the like, are allowed, but the applicant must be given the

possibility of complying with those additional requirements after theexpiration of the time limits mentioned above.

7. The PCT leaves to each Contracting State freedom to prescribe thesubstantive conditions of patentability applied in the national phase. This isparticularly true of what constitutes “prior art.” However, since therequirements of prior art as defined in the PCT and its Regulations for thepurposes of the international phase are generally as strict as, or stricter than,those defined in any national law, there is very little likelihood of unpleasantsurprises of this kind occurring in the national phase. On the other hand, thePCT does not prevent any national law from requiring the applicant tofurnish, in the national phase, evidence in respect of any substantivecondition of patentability prescribed by that law.

Correction Of Translation

8. Where the translation of the International Application contains an error,that error may be rectified by the applicant during the national phase beforeall designated Offices with the exception of the national Office of theRepublic of Korea (which does not allow such correction).

9. The scope of the translation of the International Application may not,however, exceed the scope of the International Application in its originallanguage. Where, for example, as a result of incorrect translation, the scopeof the International Application in the language of the translation is narrowerthan in its original language, that scope may be broadened but must notexceed the original scope. Where the scope of the translation is broader thanthat of the International Application in its original language, the designatedOffice or any other competent authority of the designated Office or any othercompetent authority of the designated State may limit accordingly the scopeof the International Application or of a patent resulting from it (Article 46).

Amendments In The National Phase

10. The PCT guarantees the applicant the opportunity to amend thedescription, the claims and the drawings before any designated or electedOffice. Thus, in addition to any amendments made in the international phase,further amendments may be filed upon entering the national phase or withina prescribed time limit thereafter.

Legal Remedies; Protection Against Loss Of Rights

11. Where, as a result of a mistake which was not timely corrected, anInternational Application is considered withdrawn, the applicant may requestreview of that decision by each of the designated Offices. In addition torequesting review, the applicant has the opportunity to submit at the sametime, to each designated Office, a request for excuse of failure to comply witha time limit. The legal basis of, and the conditions for, such a request are tobe found in the applicable national law or regional convention, which applies

equally to International Applications. Where that law or convention providesfor reinstatement, this can be requested. Where there is a possibility ofrequesting further processing of the application, this can also be done.Procedural safeguards are thus available in each designated State to PCTapplicants in the same way as they are to applicants for national or regionalapplications not made via the PCT.

Preparation Of Patent Applications

1. Any patent application, drafted in accordance with the requirements of thePCT, allows a maximum flexibility and benefit from the advantages of thePCT:

(i) the same application documents can then be used for filingnational and/or international applicants;

(II) no adaptation of the original application is then required in amuch as the PCT format is valid for all designated Offices (includingthe EPO, the Japanese Patent Office and the United States Patent andTrademark Office).

9.13 Fee savings. National fees are reduced or completely dispensed with forthe procedure before some Offices which provides considerable savings, forexample:

European Patent Office (EPO):– European search fee waved if international search report by AT, EP, ES,

SE;– 20% reduction of European search fee if search report by AU, CN, JP,

RU, US;– 50% reduction of European examination fee if international preliminary

examination report by EP.

German Patent Office:– filing fee waived if the Office was the Receiving Office;– examination fee reduced if an international search report has been

established.

Hungarian Patent Office:– filing fee waived if the Office was the Receiving Office;report by EP.

Japanese Patent Office:– approximately 80% reduction of examination fee if international search

report established by JPO;– approximately 20% reduction of examination fee if international search

report established by ISA other than JPO.

United Kingdom Patent Office: refund of part of preliminary examination andsearch fee.

9.14 BASIC REQUIREMENTS

Under the said basic requirements to start the national phase in India, theapplicant is required to file the following with the DO/IN or RO/IN within theprescribed time limit:

(i) An application on a plain paper (national form is not mandatory,however the option remains with the applicant);

(ii)National fee in INR : INR 1,500 for individual(s)In case of no or one priority, and multipleof INR 1,500 in case of every multiplepriority,

INR 5,000 for legal entity other thanindividual(s) In case of no or one priority, andmultiple of INR 5,000 in case of everymultiple priority:

(iii) Where the international application has not been filed or published in oneof the official languages of DO/IN or RO/IN as the case may be, a translationof the application (this replaces the requirement in (i), above) in one of theofficial languages, [under PCT Article 22: Description, claims (if amended,both as originally filed and amended together with any statement under PCTArticle 19), any text matter of drawings, abstract. Under PCT Article 39(1),Description, claims, any text matter of drawings, abstract (if any of those partshas been amended, both as originally filed and amended by the annexes tothe international preliminary examination report)]

(iv)Additional Special Requirements

Under the said additional special requirements (PCT Rules 51 bis), nodesignated Office is to require before the expiration of the applicable time limitfor entering the national phase, the performance of acts other than thosereferred to in Article 22, namely the payment if the national fee, furnishing of atranslation and, in exceptional cases, the furnishing of a copy of theinternational application, and indication of the name of address of theinventor. All other requirements of the national law are referred as “specialrequirements” and they may be complied with once national processing hasstarted. As per DO/IN or RO/IN the special requirements of the Office are asfollows:

a) Name and address of the inventor if they have not been furnished in the“Request” part of the international application,

b) Instrument of assignment or transfer where the applicant in not theinventor,

c) Document evidencing a change of name of the applicant if the changeoccurred after the international filing date and has not been reflected in anotification from the International Bureau (From PCT/IB/306),

d) Declaration of inventorship by the applicant,e) Statement regarding corresponding applications in other countries,f) Power of attorney if an agent is appointed,g) Address for service in India (but no representation by an agent is

required),h) Verification of translation, andi) International application or translation to be furnished in three copies.

Chapter I

Preliminary

Contents

1.1.0 Short title, extent and commencement1.2.0 Definitions and interpretation1.3.0 Patentable inventions

1.1.0 Short title, extent and commencement:

1.1.1 Section 1 sub-section (1) of the Act relates to the title of the Act, which isto be called as the patents Act, 1970. Sub section (2) provides that this actis applicable to whole of India. It does not exclude any part of India. Subsection (3) provides that the Central Govt. may appoint any date fromwhich the Act comes into force. It also provides that different provisions ofthe Act may come into force on different dates. This sub section furtherprovides that any reference in any provisions to the commencement of theAct shall be construed as a reference to the coming into force of thatprovision. All the provision of this act except sections 12 (2), 13(2), 24(A)to 24(F), 157A, 28, 68 and 125 to 132 have come into force on 20th April,1972 vide Gazette notification No. S.O. 300 (E) dated 20.4.1972 inGazette of India Extra Part II Section 3(ii), pages 735. The provisions ofsections 12(2), 13(2), 28, 68 & 125 to 132 have come into force on1.4.1978 vide notification no. S.O. 799 dated 10.3.78 in Gazette of India1978 part II Section 3(ii) page 764.

1.1.2 Provisions of Section 24 A to 24 F which relate to Exclusive MarketingRight and provisions of Section 157A which relates to protection ofSecurity of India have come into force from 1.1.1995 by Act 17 of 1999notified in Gazette of India Extra part II, Section 3, dated the 26th March,1999.However vide same notification the provision of section 39 whichrelated to prior permission for person resident in India to apply for Patentoutside India have been abolished.

1.2.0 Definitions and interpretations

1.2.1 Sec. 2(1)(a): “Assignee” includes an assignee of assignee & the legalrepresentative of a deceased assignee & references to assignee of anyperson includes reference to assignee of legal representative or assigneeof that person. Therefore, “assignee” may be:(i) An assignee of the assignee(ii) Legal representative of deceased assignee(iii) Reference to assignee of any person includes references to the

assignee of legal representative or assignee of that person

1.2.2 Sec. 2(1) b: “Controller” means the Controller General of PatentsDesigns & Trade Marks referred to in Sec. (73) of the Act.

(i) Controller General of Patents, Designs & Trade Marks appointedunder Sec. 4(I) of Trade and Merchandise and Merchandise MarksAct, 1958 should be the Controller of Patents for the purpose of thisAct.

(ii) Controller includes Assistant Controller, Deputy Controller, JointController, & Senior Joint Controller.

(iii) The functions and duties performed by Assistant Controller, DeputyController, Joint Controller, & Senior Joint Controller shall bedeemed to have been performed by Controller.

(iv) In the absence of the respective Controller to whom the caserelates shall be transferred to the other Controller in writing by theSenior most controller present on the particular day. The powersenjoyed by the Controller of Patents under the Act or otherwiseunder administrative system shall be enjoyed in the same mannerby Assistant Controller, Deputy Controller, Joint Controller, &Senior Joint Controller.

(v) Any reference to the Controller shall be construed as including areference to any Officer discharging the function of the Controller inpursuance of Sec. 73 of the Act.

1.2.3 Sec. 2(1)(c): “Convention Application” means an application forpatent by virtue of Sec. 135.

(i) Convention application should be filed in India within 12 monthsfrom the date of filing of basic application in the convention country.

(ii) The convention application can be filed by any person whethernatural or legal entity or legal representative or assignee of thatperson.

(iii) Application filed under PCT claiming priority date of membercountry of the Paris Convention.

(iv) The application filed by a person who is the national of any of themember countries notified by Central Govt. by notification in theOfficial Gazette declaring such member country to be a conventioncountry within prescribed time shall also be considered asconvention application.

1.2.4 Sec. 2(1)(d): “Convention Country” means a country notified as suchunder sub section (1) of Sec. 133. The Central Govt. has power to notify acountry or group of countries or union of countries as conventioncountry.”Convention countries” include those countries which have beennotified as convention countries by Central Govt. vide notification datedJan. 3,1995, September, 28, 1998 in Gazette of India Part II Sec. 3

1.2.5 Sec. 2(1)(e): “District court” has the meaning assigned to that expressionby the Code of Civil Procedure, 1908 (V of 1908).

(1)“District court” is defined Under Sec. 2(4) of Civil Procedure Code asfollows.

“District” means the local limit of the jurisdiction of a principal CivilCourt of original jurisdiction called as a “District Court”.

(2)The term “District Court” includes all the district courts of all statesfalling within the jurisdiction of appropriate office.

1.2.6 Sec. 2(1)(f): “Exclusive Licence” means a licence from a patentee whichconfers on the licencee and persons authorized by him, to the exclusionall other persons (including the patentee), any right in respect of thepatented invention, and “exclusive licencee” shall be construedaccordingly.

(i) Licence may be explicit, implied and statutory.(ii) Exclusive licencee excludes all other persons including patentee

from the right to use the invention.(iii) Exclusive licencee is a person to whom the rights in respect of

patented invention have been assigned to the exclusion of all otherpersons including the patentee.

1.2.7 Sec. 2(1)(g): “Food” means any article of nourishment and includes anysubstance intended for the use of babies, invalids or convalescents as anarticle of food or drink.

(i) Any article of nourishment having some calorific value is a food.(ii) Any substance, which can be used for the use of babies, invalids or

convalescents as an article of food or drink, shall also beconsidered as food.

(iii) Any substance used for nourishment of plants or animals shall notbe considered as food for the purpose of this Act. e.g. fertilizer,plants growth promoters or plant growth hormones.

1.2.8 Sec. 2(1)(h): “Government undertaking” means any industrial undertakingcarried on-

(i) By a department of the Government, or(ii) By a corporation established by a Central Provincial or State Act,

which is owned or controlled by the Government, or(iii) By a Government company as defined in section 617 of the

Companies Act, 1956 (1 of 1956)

and includes the Council of Scientific and Industrial Research and anyother institution which is financed wholly or for the major part by the saidcouncil.

“Government undertaking” means any Industrial undertaking carried on bya department of Government or by a corporation established by a Centralprovincial or state act, which is owned or controlled by the Government orby a govt. company as defined in Section 617 of the company Act, 1956.

(i) It also includes the council of Scientific & Industrial Research or anyother institution, which is financed wholly or for the major part, bythe said council.

1.2.9 Sec 2(1)(i) “High Court” means-

(i) In relation to the Union territory of Delhi, the High Court ofDelhi;

(ii) In relation to the State of Arunachal Pradesh and the Stateof Mizoram, the Gauhati High Court ( the High court ofAssam, Nagaland, Meghalaya, Manipur, Tripura, Mizoramand Arunachal Pradesh);

(iii) In relation to the Union territory of the Andaman and NicobarIsland, the High Court at Calcutta;

(iv) In relation to the Union territory of the Lakshadweep, theHigh Court of Kerala;

(v) In relation to the Union territory of Goa, Daman and Diu andthe Union territory of Dadra and Nagar Haveli, the HighCourt at Bombay;

(vi) In relation to the Union territory of Pondicherry, the HighCourt at Madras;

(vii) In relation to the Union territory of Chandigarh, the HighCourt of Punjab and Hayana; and

(viii) In relation to any other State, the High Court for that State;

1.2.10 Sec. 2(1)(j):“Invention” means any new and useful-

(i) Art, process, method or manner of manufacture(ii) Machine, apparatus or other article;(iii) Substance produced by manufacture,

and includes any new and useful improvement of any of them, and analleged invention. The detailed interpretation of the word “invention” is given under the title“patentable subject matter”.

1.2.11 Sec. 2(1)(k): “Legal representative” means a person who in lawrepresents the estate of a deceased person.

(i) A person to become legal representative should be capable ofrepresenting the deceased person by any means under the law.

(ii) It recognizes that right to apply is a right, which on the death of theowner right devolves to his legal representative.

1.2.12 Sec. 2(1)(l):medicine or drug means:-

(i) All medicines for internal or external use of human beings oranimals,

(ii) All substances intended to be used for or in the diagnosis,treatment, mitigation or prevention of diseased in human being oranimals.

(iii) All substances intended to be used for or in the maintenance ofpublic health, or the prevention or control of any epidemic diseaseamong human beings or animals.

(iv) Insecticides, germicides, fungicides, weedicides and all othersubstances intended to be used for the protection or preservation ofplants,

(v) All chemical substances, which are ordinarily used as intermediatesin the preparation or manufacture of any of the medicines, orsubstances above referred to.

1. All substance capable of being used for internal or externaluse of human beings or animals are medicine or drug. Itdoes not include all the above-referred substance for internalor external use of plants.

2. If a Substances falls within the scope of section 3(b) of theDrugs & Cosmetics Act of 1940 it is also to be considered asDrug or medicine [Reference ICI Ltd’ Patent 1976, IPLR 185at Page-188] The term “drug” under Drugs & Cosmeticd Act,1940 defined as-

(I) All medicines for internal or external use of humanbeing or animals and all substances intended to beused for or in the diagnosis, treatment, mitigation orprevention of diseases in human beings or animalsand

(II) Such substances other than foods intended to effectthe structure or any function of the human body orintended to be used for the destruction of thevermin’s or insects which cause diseases in humanbeings or animals, as may be specified from time totime by the Central Govt. by notification in theofficial Gazette.

“The Central Govt., have, by notification [Ministry of Health Notification No.1-20/60-D, dated 3-6-1961] specified by following substances as drug

(1) Contraceptives(2) Disinfectant,(i) Disinfective fluids made from coaltar oils, coal tar acid or similar

acids derived from petroleum with or without hydrocarbons

(ii) Disinfectant fluids made from synthetic or naturally occurringsubstances other than those mentioned in (I) above by virtue oftheir Composition possessing disinfectant properties or withclaim to possess disinfectant properties.

3. All the substances falling in this section as drug or medicine ifused for the purposes other than the use for human beings oranimals shall not be considered as used for drug and medicine.

4.An undertaking to that effect those substances are not used forhuman beings or for animals, shall be given in the specification.

5.The substances capable of being used as drug or medicine whenused in detergents and paint preparations, they are not consideredas drug for the reason that they are only preventive and notcurative. Moreover, they are not being used for the treatment ofhuman being and animals.

1.2.13 Sec. 2(1)(m): “Patent” means a patent granted under this Act andincludes for the purposes of section 44, 49, 50, 51, 52, 54, 55, 56, 57, 58,63,65, 66, 68, 70. 78. 134. 140. 153, 154 and 156 and Chapters XVI, XVIIand XVIII, a patent granted under the Indian Patents and Designs Act,1911 (2 of 1911)

(i) It includes patent of addition, patent granted on divisionalapplication and all other types of patents permissible under the Act.

1.2.14 Sec. 2(1)(n); “Patent agent” means a person for the time being Registered under this act as a patent agent.(i) A person acting or intending to act as patent agent should be

registered in the register of patent agent.(ii) While signing the document he should give a registration number.

and year in which he is registered.(iii) The applicant on the prescribed form with the prescribed

court/stamp fee should duly authorize him.(iv) The person acting as a patent agent should give declaration that he

is acting in good faith, honestly deligently and with properauthorization along with the statement that he is well conversantwith the matter he is dealing with.

1.2.15 Sec. 2(1)(o): “patented article” and “patented process” means respectivelyan article or process in respect of which a patent is in force.

(i) In case where patent is granted in respect of an article or aprocess, but not being in force by virtue of non payment of renewal

fee or otherwise shall not be construed as patented article orpatented process.

(ii) “Patented article” includes any article made by a patented processbut may not include an article made by a patented machine if themachine alone could be said to be a patented article. [Co-operative Union Ltd’s application 1934) 50 RPC 161].

1.2.16 Sec. 2(1)(p): “Patentee” means the person for the time beingentered on the register as the grantee or proprietor of the patent.

(i) Patentee includes exclusive licencee or assignee or legalrepresentative or assignee of assignee.

(ii) Such a person has the power to assign;/grant licence under orotherwise deal with the patent and to give effectual receipts for anyconsideration for any such assignment, licence or dealing subject tothe provision of this act.

1.2.17 Sec. 2(1)(q): “Patent of addition” means a patent granted inaccordance with section 54.

(i) Grant of patent of addition cannot be objected on the ground ofnovelty.

(ii) The patent of addition is granted for a term equal to a patentgranted for a main invention.

(iii) The term of patent of main patent and Patent of Addition thereforerun concurrently.

(iv) No renewal fee is payable for patent of addition.(v) Application for patent of addition shall be filed in the office where

the application for main application filed.(vi) A separate application shall be filed for each patent of addition

distinct only to main application.(vii) Application for patent of addition cannot be filed for series of

inventions for which separate patent are in existence (HSJ’sApplication, 31 RPC 47).

1.2.18 Sec. 2(1)( r): “Patent Office” means the patent office referred to insection 74.

(i) Patent office under the Act means the Head Office of the Patentoffice, existing branch offices and any more branch office whichmay be opened in future as the Central Government has power todo so under section 74 of the Act.

(ii) The patent office is the office established for the purpose of The Actto administer various provisions relating to the grant of Patent andmaintenance of the register of patent. The officers appointed bythe Central Govt. will discharge the function of the Controller, which

the Controller may authorize them to discharge. While dischargingthe function of the Controller under the power delegated to them,the Officers have to work within the provision of the Act.

If any person uses on his place of business, or any documentissued by him or otherwise the words “PATENT OFFICE” or anyother words suggesting that his place of business is, or is officiallyconnected with, the patent office, he shall be punishable withimprisonment for a term which may extend to six months, or withfine, or with both.

Hours of Business : The office is open to the public from 9.30A.M. to 6.P.M. on all working days from Monday to Friday. OnSaturdays, Sundays and Government Holidays the office remainsclosed to the public.

1.2.19 Sec. 2(1) (s): “Person includes the Govt”.

(i) For the purpose of the Act, a person may be natural or legal entityor registered society.

(ii) The Govt. is also a person under the Patents Act 1970 whether it isCentral Govt. or State Govt..

(iii) Corporations, Govt. undertakings and other autonomous institutionwill also be a person under the Act.

(iv) Partnership firm or body, which is un-incorporated, is not a personand is not considered as a person under the Act because thepartners operate the firm and it has no independent existence. Theactual karta of partnership firm are its partners. The applicationmay be filed in names of all personally responsible partners.

1.2.20 Sec. 2(1)(t): “Person interested” includes a person engaged in, or inpromoting, research in the same field as that to which the inventionrelates.

(i) The person to be interested person under the Act should have inhis possession a patent or patents relating to the same field or heshould have manufacturing interest or trading interest.

(ii) A person who has assigned his interest in a patent application hasno locus standi subsequently to oppose the application or to applyfor revocation of patent granted on the basis of the application.

(iii) A financial interest of a holding company, whose subsidiary is aperson interested suffices to enable the holding company to opposethe grant of the patent (KAISER Aluminum & ChemicalsCorporation Vs. Reynold Metals Co. (1972 RPC 648).

(iv) In addition to the above a person who can establish any bonafideinterest can also be a person interested under the Act.

1.2.21 Sec. 2(1)(u): “prescribed” means in relation to proceedings beforeHigh Court, presented by the rules made by the High Court and inother cases prescribed by the rules under this Act.

1.2.22 Sec. 2(1)(v): “Prescribed” manner includes the payments of theprescribed fee.

(i) For the purpose of this Act, the form as prescribed under 2nd

schedule of the patent rules should be used.(ii) This should be filed within prescribed time.(iii) The forms or any letter should be filed if necessary along with

prescribed fee.(iv) Prescribed fee shall mean the fee prescribed under first

schedule of the rules of the Patents Rules, 1972 as amended bythe Patents (Amendment) Rules,1999.

1.2.23 Sec. 2(1)(w); “Priority date” has the meaning assigned to it bySecton 11.

1.2.24 Sec. 2(1)(x): Register means the register of patents referred to insec. 67.

(i) Register of patents maintained at the branch offices are alsoRegister of patents under this Act.

1.2.25 Sec. 2(1) (y): “True & first inventor” does not include either the firstimporter of invention to India or a person to whom an invention is firstcommunicated from outside India.

(i) The first importer of invention into India is not a true & firstinventor.

(ii) First communicatee is also not a true & first inventor.

1.3.0 Patentable Inventions

1.3.1 Patentable inventions: The fundamental principle of Patent law is that,any subject matter to be patentable must be an invention.

Sec. 2(1)(j) of this Patent Act, 1970 defines the term “invention” asfollows.

“Invention” means any new & useful-(i) Art, process method, or manner of manufacture,(ii) Machine, apparatus or another article,

(iii) Substances produced by manufacture, and include any new& useful improvement of any of them, and an allegedinvention.

1.3.2 According to this definition of invention there are three ingredients

(i) the subject matter should be a manner of manufacture(ii) it should be new, and(iii) it should be useful (utility)

1.3.3 Manner of Manufacture – Any subject matter to be Patentable shouldrelate to a manner of manufacture, which includes not only a process ofmanufacture but also a manufactured product. The word manufacture hasnot been defined under the Patents Act, 1970. Therefore in the absenceof any definition of the term in this Act, it is established law that naturalmeaning of the word manufacture, in the standard dictionaries, should beaccepted.

i.) The dictionary meaning of the word manufacture in most of thestandard dictionaries is, making of any article, substance or product, byhand or construction.ii) The reason why any art, process method or a manner of manufactureshould result into a substance or an article is that, the provision of sec.48(2) of patents Act, 1970 Confers on the patentee, the exclusive rightonly for an article or substance or a method or process of manufacture ofan article or substance. An article includes any machine or apparatus.iii) A manner of adopting natural material by the hands of man or by manmade devices or machinery is a manner of manufacture (48 RPC 185).iv) The term “art” refers to applied art or technology of manufacture andnot to fine art for which protection should be sought under copyright law.v) An alleged invention means something, which is alleged as a manner ofnew manufacture, even though, in fact, it may not be a new manufacture.But an alleged invention must satisfy the requirement of the otherdefinition.vi) In GEC Application Justice Morten held that a method or process is amanner of manufacture if it (a) results in the production of some vendibleproduct, or (b) improves or restores to its former condition, of a vendibleproduct or (c) has the effect of preserving from deterioration somevendible products to which it is applied. However this is not a hard andfast rule to cover each and every case.

1.3.4 Invention relating to improvement or combination

1. An improvement on something known before or combination in differentmanner already known, in order to be patentable should be more than

mere workshop improvement and should independently satisfy the test ofinvention.2. The improvement or combination should produce a new result or a

new article or a better article.3. The combination of old known integers should be such that it should

result in a improved process or article by their inter-related working.

4. Mere colocation of more than one integers or things, not involving theexercise of any inventive faculty does not qualify as invention.

5. The subject matter for patent may satisfy the requirement of manner ofmanufacture but may lack in novelty. In such case the subject mattercannot be considered as invention.

1.3.5 Novelty

1. In order to be novel the subject matter should satisfy the criteria ofnovelty as laid down under section 13 of Patents Act with exceptionsprovided under the heading ‘ANTICIPATION’ in chapter VI of the Act.

1.3.6 Utility:-1. An invention to be Patentable must be useful or has some utility.If the

subject matter is devoid of utility it does not satisfy the requirement ofinvention.

2. For the purpose of utility ,the element of commercial or pecuniarysuccess has no relation to the question of utility in patent law.However, where the improvement by reason of cheaper production,such a consideration is of the very essence of the patent itself andthe question is of thing claimed can not be considered an inventionunless that condition is fulfilled [4RPC 449 p. 462 (HL) per LordChancellor]

3. If the invention gives the result as promised in the specification,objection on the ground of usefulness should fail.

4. The usefulness of an alleged invention depends not on whether byfollowing the directions in the complete specification all the resultsnot necessary for commercial success can be obtained, but onwhether by such directions the effects that the application/patenteeprofessed to produce could be obtained.

5. The meaning of usefulness is therefore useful for the purposeindicated by the applicant or patentee whether a non-commercialutility is involved.

6. The usefulness of the invention is to be judged, by the reference tothe state of things at the date of filing of the patent application, if theinvention was then useful, the fact that subsequent improvementhave replaced the patented invention render it obsolete andcommercially of no value, does not invalidate the patent.

1.3.7 Patentability of Biotechnological Inventions.

In view of the Office instructions of the Controller General of Patents,Designs & Trademarks dated 15th July, 1991, view point regardingpatentability of biotechnological inventions in India is:

(1) Inventions relating to organisms or biological material per se viz(a) living entities of natural or artificial origin such as animals,plants and microorganisms, biological material such as plasmids,viruses, gene, recombinant DNA, bacteria, fungi, algae and othermaterials having self replicating properties and parts thereof, (b)naturally occurring substances from living entities, biologicalmaterials and also process for their production, are not Patentableunder the Act. Hence no claim is allowable for such inventions.

(2) Inventions relating to process or methods of production of tangibleand nonliving substances like enzymes, antibiotics, insulin,hormones, interferon, alcohols, vaccines etc. by bioconversion orusing such microorganisms or by utilizing the above referredbiologically active substances as well as chemical substancesproduced by using genetically engineered organisms or suchexisting substances made more economically by use ofbiotechnology and/or microbiology are patentable under thePatent Act, 1970.

(3) While claiming the inventions in respect of above subject wherestrain/bacteria have been used and deposited in depositingauthorities and allotted their accession number, such depositionsor accession number should be followed by the characteristics ofsuch strain or bacteria.

1.3.8 Computer Programs

1. Computer program is not patentable invention as computer program isa set of instructions for controlling a sequence of operations of a data-processing system. It closely resembles a mathematical method .Itmay be expressed in various forms eg. A series of verbal statements, aflow chart, an algorithm, or other coded form and may be presented ina format suitable for direct entry into a particular computer, or mayrequire transcription into a different format (or computer “language”). Itmay merely be written on paper or recorded on some machine-

readable medium such as magnetic tape or disc or optically scannedrecord, or it may be permanently recorded in a control store formingpart of a computer. Thus it is evident that a program may be presentedin terms of either software or firmware.

2. Since the claims may be couched in terms which tend to obscure thefact that the invention relates to a computer program, it is alwaysessential to analyse them, in the light of what is described and of theprior art, in order to identify the contribution to the art and hencedetermine whether this advance resides in, or necessarily includes,technological features, or is solely intellectual in its content. Forexample, if the new feature comprises a set of instructions (program),which may be formulated and presented in any one of a variety ofways, designed to control a known computer to cause it to performdesired operations, the computer being suitable for the purposewithout special adoption or modification of its hardware or organizationthen, no matter whether claimed as “a computer arranged to operateetc” or as “a method of operating a computer etc” .Such a subjectmatter is not Patentable and hence excluded from patentability . Theinvention here relates solely to the novel program. The claim might egstipulate that the instructions were encoded in a particular way on aparticular known medium but this would not affect the issue. If howeverthe format of the program, or the nature of the record medium (tape,disc etc.) necessitated some non-standard adaptation to the computeritself (this factor being integral to the invention and not an arbitraryunrelated addition) then the exclusion would not apply. Likewise aninvention which related to a particular manner of organizing the overalloperation of the Central Processing Unit and the peripheral units,regardless of whether the invention were implemented by means of aprogram or special hardware facilities, would not be excluded.

3. If the implementation of a new program requires internal modificationto a computer of such a nature that it may reasonably be regarded as anew computer then clearly a claim to this computer is not excluded,even though at first sight the invention may seem to relate merely to aprogram and the purpose of modifying the computer is subsidiary tothis. The modification must however be inventive itself; if a computer ismodified in a manner which is the obvious way of implementing theprogram, then the inventive contribution will still reside solely in theprogram itself.

4. As a general rule a novel solution to a problem relating to the internaloperations of a computer, although it may comprise a program or sub-routine, will also necessarily involve technological features of thecomputer hardware or the manner in which it operates and thus, ifappropriately claimed, may be patentable.

5. A hardware implementation performing a novel function is excludedonly if that particular hardware system is known or is obviousirrespective of the function performed.

6. An invention consists of hardware along with software or computerprogram in order to perform the function of the hardware ,suchinvention may be considered Patentable

CHAPTER II

Inventions Not Patentable

Contents• Non Patentable inventions• Non Patentable inventions relating to atomic energy• Inventions where only methods or processes of

manufacture Patentable

2.1.0 Section 3: Non Patentable Inventions

There are certain inventions fulfilling all the criteria of patentable inventionsuch as novelty, usefulness and manner of manufacture but they havebeen excluded from patentability under Sec. 3 of the Patents Act, 1970which are as follows.

2.1.1 Section 3(a)

An invention which is frivolous or which claims anything obviouscontrary to well established natural laws.

(i) Merely making in one piece, articles, previously made in more ortwo pieces is frivolous. Mere usefulness is not sufficient (Indianvaccum brake co. ltd vs. Laurd (AUR 1962 CAK 152).

(ii) Perpetual motion machine alleged to be giving output without anyinput is not patentable as it is contrary to natural law.

2.1.2 Section 3(b)

An invention the primary or intended use of which would be contraryto law or morality or injurious to public heath.

(i) The invention, the use of which is contrary to the law for the timebeing inforce or use of which is prohibited, is not patentable e.g.any devices, apparatus or machine for theft, gambling apparatus ormethod for gambling,method of adulteration of food etc.

(ii) If the inventions, the use of which is found to be injurious to publichealth are also not Patentable eg. method of adulteration of food.

2.1.3 Section 3(c)

The mere discovery of a scientific principle or the formulation of anabstract theory.

(i) Claim for discovery of scientific principle is not patentable, but sucha principle when used with process of manufacture resulting into asubstance, or an article, is patentable.

(ii) Scientific theory is a statement about the natural world. Thesetheories themselves are not patentable no matter how radical orrevolunationary in-sight they provide, but if they lead to practicalapplication in the process of manufacture of article or substance ,they may well be patentable.

(iii) The claim for formulation of abstract theory is not patentable on theground that they do not result in a manufacture of any product orprocess.

(iv) There is a difference between discovery & invention. The discoveryadds to the amount of human knowledge by disclosing something,which has not been seen before, whereas an invention also adds tothe human knowledge by suggesting an act, to be done whichresults in a new product or a new process. The formulation of anabstract theory does not suggest any act to be done which mayresult in a product or a process e.g. finding that a particular knownmaterial is able to withstand much shock, is a discovery & thereforeis not patentable, but a claim to a railway fastener made of thematerial would not fall of this exclusion and would be allowed if itpasses the test of patentable invention.

(v) Although a new method of calculation is not invention but newapplication for performing that method resulting into a process orproduct, or new apparatus for carrying out that method can beconsidered patentable. But it must be distinguished from noncalculating application by technical features for e.g. A guide rulediffering from known rules only in the scales is not patentable.

(vi) The fact that a known material or article is found to have a hithertounknown property is a discovery and not an invention. But if thediscovery leads to the conclusion that the material can be used formaking a particular article or in a particular process, then the articleor process could be patentable. For example finding out the factthat a particular known material is able to withstand mechanicalshock is a discovery and therefore unpatentable, but a claim to arailway sleeper made of that material would not fall underexclusion, and would be allowable if it passed the tests for noveltyand inventive step.

2.1.4 Section 3(d)

The mere discovery of any new property or new use for a knownsubstance or of the mere use of a known process, machine orapparatus unless such known process results in a new product oremploys at least one new reactant:

I. Mere discovery of new property is not patentable invention e.g. amere discovery of a new property of the substance such as aspirinfor use of treatment of some other disease cannot be consideredpatentable.

II. New use for a known substance is also not patentable; it means 2nd

or 3rd use for a known substance cannot be allowed.

III. Mere use of a known process is not patentable unless such knownprocess results in a new product or employs at least one newreactant.

IV. Mere use of Aspirin for cardio-vascular disease, which was earlierused for analgesic purpose, is not patentable. However, a new andalternative method for preparing Aspirin is patentable.

V. “Metric time showing Device” (101/Bom/72) was held notpatentable. The device comprises a normal clock or watch havingusual hands for indicating hours, minutes and seconds, whereindial or like visual numerical indicators are divided into 10 largedivisions for hours, hours divisions are divided into 100 divisionsindicating minutes and each minute divided into 100 partsrepresenting seconds. It was held to be a mere use of knowndevice hence not patentable.

2.1.5 Section 3(e)

A substance obtained by a mere admixture resulting only in theaggregation of the properties of the components thereof or aprocess for producing such substance:

(i) A claim for a substance obtained by mere admixture of ingredientsresulting only in the aggregation of the properties of suchcomponents or ingredients is not patentable invention e.g. amixture of sugar and some colorants in water to produce a softdrink is a mere admixture resulting into aggregation of theproperties. Similarly a mixture of different types of medicament ormedicine to cure multiple diseases is also a mere admixture ofsubstances, and is not patentable invention.

(ii) However an admixture resulting into synergistic properties of amixture instead of aggregation of properties of ingredients thereof isnot considered as mere admixture e.g. soap, detergent, lubricantsand polymer composition etc. Hence they are patentable.

(iii) A process for producing a substance by admixing, which isresulting into the aggregation of the properties components thereof,is also not patentable invention.

(iv) All the substances which are produced by mere admixing, or aprocess of producing such substances should satisfy therequirements of synergistic effect in order to be patentable.

(v) Anti-perspirants compositions for application to human skin(63/Bom/75) was held not patentable. The said compositioncomprises of : (a) non- cellulosic moisture absorbing polymercapable of absorbing moisture at least equivalent to its weight, and(b) a carrier. The composition was held admixture thereby notpatentable for the reason that the composition has got the total sumof the properties of two components namely, the properties ofabsorbent polymer to absorb moisture or to absorb perspiration onbeing applied to human skin, which has not been in any wayinfluenced by the presence of said carrier to act as carrier ordiluents.

(vi) A composition of two drugs, i.e. Paracetamol and Ibuprofen forcuring fever and pain or process of preparation thereof is notpatentable for the reasons that the composition is mere admixtureof two drug components resulting into aggregation of propertiesthereof since Paracetamol is well known for treatment of fever andother one for treatment of pain. However, if the mixture of drugscan give some unexpected results in the treatment, then theprocess of preparation of such composition can be consideredpatentable.

2.1.6 Section 3(f)

The mere arrangement or re-arrangement or duplication of knowndevices each functioning independently of one another in a knownway.

(i) Any duplication of known device or apparatus manufactured bymere arrangement and re-arrangement in which all the devices arefunctioning independently in known way is not patentable.

(ii) A mere juxtaposition of known devices in which each devicefunctions independently are not patentable.

(iii) It is accepted as sound law that mere placing side by side oldintegers so that each performs its own function independently of theothers is not a patentable combination (British Celanese Ltd., VsCourtaulds Ltd (52) RPC 171).

(iv) However where the old integers where placed together have someworking inter relation producing a new or improved results, then

there is a patentable subject matter in the idea of the workinginterrelation brought about the collocation of the integers.

(v) A mere juxtaposition of features already known before the prioritydate which have arbitrarily been chosen from among a number of adifferent combinations which could be chosen is not a patentableinvention. Further when two or more features of an apparatus ordevice are known and they are justaposed without any interdependence on their functioning of the apparatus or device shouldbe held to have been already known (Rampratap vs BhabhaAtomic Research Center, 1976 IPLR 28 P. 35)] ,Umbrella withfan (388/Bom/73),Bucket fitted with torch,Clock and transistorin a single cabinet.They are not patentable since they are nothingbut mere arrangement and rearrangement without having anyworking interrelationship between them and functioningindependently of each other.Another example is of play-cum-educational device (1532/Cal/76). The device comprises of a chart,a set of tokens for players and one or more dice. It was held notpatentable under the provisions of this section since the chart,token and dice, all are working independently of each other andthere is no inter-relation between them.

2.1.7 Section 3(g)

A method or a process of testing applicable during the process ofmanufacture for rendering the machine, apparatus or otherequipment more efficient or for the improvement or restoration of theexisting machine, apparatus or other equipment or for theimprovement or control of manufacture.

(i) A method or process of testing applicable during the process ofmanufacture is not patentable.

(ii) Any process applicable during the process of manufacture forrendering the methods, apparatus or other equipments moreefficient is also not patentable.

(iii) Any process for control of manufacture is not patentable.

(iv) Any method or process for restoration of existing machine is also not patentable.

(v) Process for testing of chlorine level in the water is a method oftesting not patentable. Further a method of laboratory testing inwater based culture media for zones of inhibition (310/Del/80) washeld not patentable.

2.1.8 Section 3(h)

A method of agriculture or horticulture.

(i) Any process or method of Agriculture is not patentable.

(ii) A method of producing a new form of a known plant even if itinvolved a modification of the conditions under which naturalphenomena would pursue their inevitable course is not patentable.(N.V. Philips Gloeiammpenfabrieken’s Application 71 RPC192).

(iii) A method of producing improved soil from soil with nematodes bytreating the soil with a preparation containing specifiedphosphorathioates was held not patentable (Virginia CarolinaChemical Corporation application 1958 RPC 38).

(iv) A method of producing mushroom plant was held not patentable[445/Del/93].

(v) The plant and animal varieties are also not patentable Theexclusion of plant and animal varieties from patentability appliesonly when purely biological features characterize them.

(vi) A method for cultivation of an algae (264/Cal/79) and a method forproduction of mushrooms (445/Del/93) are held not patentable.Boththese methods were held not patentable for the reasons that theproduction of mushrooms and cultivation of an algae analogous toagriculture, since they belong to plant kingdom and therefore fallwithin the provisions of this section.

2.1.9 Section 3 (i)

Any process for the medicinal, surgical, curative, prophylactic orother treatment of human being or any process for a similartreatment of animals or plants to render them free of disease or toincrease their economic value or that of their products.

(i) A method of treatment of malignant tumor cells and method ofremoval of dental plaque and carries are not patentable, since theyare held to be treatment of human beings

(ii) A method of cultivation of an algae and method of production ofmushrooms as quoted above are held not patentable under theprovisions of this section also for the reasons that the purpose ofapplicants inventions is to achieve varying degree of growthpromotion, increased output, improved quality which definitelyincreases their economic value.

(iii) A method of medicinal treatment of human beings is not patentable.

(iv) Any process or methods for treatment of animals or plants to renderthem free of disease is also not patentable.

(v) Any process or method of treatment or animals or plants toincrease their economic value or that of their product is notpatentable.

(vi) The art of curing illness cannot be said to be an art of manufacture(English patent practice).

(vii) Surgical process and processes for the prevention and cure ofdisease in human beings are not patentable. In Uniliver Ltd.Application (1983) RPC 219, the patent courts in UK held that theterm therapy included the prevention as well as the treatment orcure of disease, therefore any process relating to therapy is alsonot patentable.

(viii) Prophylactic treatment such as vaccination, inoculation is to beregarded as therapy, which include treatment. The sameconsideration applies for animal as well as for human beings. Forexample prophylactic immuno therapy in animals are regarded astherapy.

(ix) Any application of substance to human body purely for cosmeticpurpose is not a treatment or therapy. On the other hand theapplication to the skin of an ointment designed to be effective toremove keratoges from the skin would be instance of medicaltreatment. To be treatment in relevant senses it seems that thepurpose of the application to the body whether a substance or aprocess must be the arrest or cure of a disease or diseasedcondition or correcting of some malfunction or amelioration of someincapacity or disability (Joos Vs. Commissioner of Patent (1973)RPC 59).

(x) It was held in Lee pharmaceuticals application (1978) RPC 51that since one of the results of sealing pits and fissures in teeth wasto prevent the onset of dental decay, the purpose of the treatmentwas therapeutic rather than cosmetics.

(xi) Patent may however be obtained for surgical therapeutic ordiagnostic instrument or apparatus.

(xii) In Oral Health Products Inc (Halstead’s) Application, [1977]RPC 612, claims to a method of removing dental plaque and/orcaries were refused, as was a claim to a method of cleaning teethwhich embraced both curative and cosmetic effects. This decisionhas been followed under the 1977 Act in ICI Ltd’s Application No7827383 (not reported), where a claim was refused to a method ofcleaning teeth which removed both plaque and stains; it wasargued that when applied to perfectly healthy teeth the method waspurely cosmetic, but the hearing officer observed that practically allmedical treatments which are preventative in nature (such asvaccination) must at times be applied to people who would haveremained healthy anyway, but they remained medical treatments.

(xiii) Dictionary definitions of “diagnosis” clearly point to it beingessentially concerned with identifying problems. The questions tobe asked therefore, in order to determine whether a methodconstitutes diagnosis for the purposes of the Act, are

(a) does the method, unaided by other tests, indicate whether ornot a person (or animal) is suffering from a medical disorder, and

(b) does the method identify the disorder where it is found to bepresent.

If both of these questions can be answered in the affirmative, themethod is diagnosis and is not patentable

(xiv) Surgery is defined as the treatment of disease or injury byoperation or manipulation (SOED, Stedman, MacNalty). It is notlimited to cutting the body but includes manipulation such as thesetting of broken bones or relocating dislocated joints (sometimescalled “closed surgery”), and also dental surgery. In general, anyoperation on the body which required the skill and knowledge of asurgeon would be regarded as surgery.

(xv) In Unilever Limited (Davis’) Application, [1983] RPC 219 (seealso 4.08, 4.09), Falconer J observed that any method of surgicaltreatment, whether curative, prophylactic or cosmetic, is notpatentable. This view, which was obiter, was cited by the hearingofficer in Occidental Petroleum Corporation’s Application (notreported) in refusing to allow claims to a method of implanting an

embryo transplant from a donor mammal into the uterus of arecipient mammal, since the method would necessarily have to becarried out by a surgeon or veterinary surgeon.

(xvi) Methods of treatment of the human or animal body by surgery ortherapy are excluded, as are methods of diagnosis practiced on thehuman or animal body. Methods of diagnosis performed on tissuesor fluids, which have been permanently removed from the body, aretherefore not excluded. “Body” should be taken to mean living body,and a method practiced on a dead body, for example in order todetermine the cause of death, would not be excluded. Methods oftherapy carried out on materials temporarily removed from the bodyfor example when blood is circulated through an apparatus whileremaining in living communication with the body, are not patentable(cf Calmic Engineering Co Ltd’s Application, [1973] RPC 684). InCiba-Geigy AG’s Application (not reported), objection was raised tocertain claims for a method of controlling parasitic helminthes(worms which may develop in the animal body, for example, in theintestinal tract of animals such as sheep) by the use of a particular(novel and inventive) antihelmintic composition. The applicantscontended that the composition when administered to an animalwould prevent the reproduction of the helminthes and kill themshould they infest the animal, but without affecting the animal’sbody, and that its use was therefore not “therapy”. However, theapplicants’ specification made it clear that an infestation of helminthworms can result in restricted growth, damage to the animals andeven death if not properly treated. Moreover, the application madeno mention of controlling helminthes by the use of the compositionin any environment other than the animal body. The hearing officerconsidered that such an infestation was therefore a diseaserequiring medical treatment of the animal and that such treatment,whether curative or preventative, constituted therapy practiced onthe animal body and consequently held that the claims in questionwere not allowable.

2.2.0 Section 4: Non patentable inventions relating to Atomic energyNo Patent shall be granted in respect of an invention relating toAtomic energy falling within sub section (1) of section 20 of theAtomic Energy Act, 1962.

(i) According to Sec. 20(1) of Atomic Energy Act, as from thecommencement of this Act, no patent shall be granted for theinvention when in the opinion of Central Govt. are useful for orrelated to the production, control, use or disposal of atomic energyor prospecting mining extraction, production, physical and chemicaltreatment fabrication, enrichment, canning or use of any prescribed

substance or radioactive substance or the insuring of safety inatomic energy operation.

(ii) According to Sec. 2(1) of Atomic Energy Act, atomic energy meansenergy released from atomic nuclei as a result of any processincluding the fission and fusion processes.

(iii) Under this Act “prescribed substances” means any substancesincluding any mineral which the Central Govt. may, by notification,prescribe, being a substance which in its opinion is or may be usedfor the production or use of atomic energy or research into mattersconnected therewith and includes uranium, plutonium, thorium,beryllium, deuterium or any of these respective derivative orcompounds or any other materials containing any of the aforesaidsubstances.

(iv) Under the atomic energy Act, the term “radioactive substances” or“radioactive material” is defined as any substance or material,which spontaneously emits, radiation in excess of the levelsprescribed by notification by the central govt.

(v) The Secretary, Deptt. Of Scientific Research, vide his letter no.AEC/21(28)/50/68437 Dated 12/12/1950 has directed that theCentral Govt. is pleased to prescribe uranium minerals of, thorium,beryllium, vanadium, lithium and other minerals containing the saidmetals as necessary ingredients such as urani-ferous allamiti,Triplita, Colourmbite and Tantalite as substance which in its opinionare or may be used for the production or use of atomic energy orresearch under Atomic Energy Act.

(vi) The central govt. vide its letter dated AEC/27(2)/50/358 dated28.1.1951 has declared “Ilmenite” as substance for the productionor use of atomic energy.

(vii) The Central Govt. vide its letter No. AEC/DIH/1/(7)/52/2696 dated19.5.53 by superseding the earlier notification has prescribed thesubstances specified in the following schedule & any of therespective compound as substances for the production or use ofatomic energy under the Atomic Energy Act.

THE SCHEDULE

1. Uranium2. Thorium3. Radium4. Zirconium5. Graphite

6. Beryllium7. Lithium8. Deuterium9. Plutonium10. Neptunium

The Central Govt. has power to amend the schedule and may issue anotification at any time.

2.3.0 Section 5: Inventions where only Methods & Processes ofManufacture Patentable

2.3.1 Sec. 5(1) In the case of inventions-

(a) Claiming substances intended for use, or capable of beingused, as food or as medicine or drug or

(b) Relating to substance prepared or produced by chemicalprocesses (including Alloys, optical glass, semiconductor andinter-metallic compounds), no patent shall be granted inrespect of claims for the substances themselves, but claimsfor the methods or processes of manufacture shall bepatentable.

(I) Only process claims are allowable in respect of substancesintended for use or capable of being used as food or asmedicine or drug and no product per se claims for suchsubstances are allowable.

(II) No product per se claims are allowable in respect ofsubstances prepared or produced by chemicals process.Only method claims are allowable.

(III) In case of alloys, optical glass, semi conductor and inter-metallic compound also, product per se claim are notallowable.

(IV) The meaning of phrase substance prepared or produced bychemical process, it must be construed that the process offiltration, extraction, distillation or sublimation are within themeaning of chemical process. Calcutta High Court inAluminum Co. of America Vs. Joint Controller of Patents& Designs affirmed this.

(V) The meaning of the terms food, Medicine or drug have thesame meaning under this section as defined in section 2(1)(g) & 2(1) (l) including that defined under drug & cosmeticsAct & also as defined by the Central Govt. by its notificationfrom time to time.

2.3.2 Section 5(2)

Notwithstanding anything contained in sub. Sec (I), a claim for patentof an invention for a substance itself intended for use, or capable ofbeing used, as medicine or drug, except the medicine or drug,specified under sub-clause (v) of clause (1) of sub section (1) ofsection 2, may be made and shall be dealt, without prejudice to theother provision of this Act, in the manner provided in Chapter IVA.

(i) From 1.1.95 a claim for patent for invention relating to substance(product per se) intended for use or capable of being used as medicineor drug can be filed for the grant of exclusive marketing right.

(ii) Claim for patent in respect of invention for all chemical substanceswhich are ordinarily used as intermediates as defined under section2(1) l(v) in the preparation or manufacture of any of the medicine orsubstances as defined in sec. 2(1)(l), is not allowable for the grant ofExclusive Marketing Right.

(iii) Application for claim for patent of an invention for the above-referredsubstances for the grant of exclusive marketing rights should be dealtwith in the manner provided in Chapter IVA.

(iv) No patent can be granted on the application filed under this sectionunless and otherwise the provisions are made in the Act.

(v) The application filed under this section shall be continued to bereceived and kept in the mailbox provided therefor.