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Introduction
Advantages of patenting
Procedure of patent application
Patent offices in India
TNAU and Patenting

Introduction

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IA patent is an exclusive monopoly right granted by the Government for a new invention to an inventor for his disclosed invention for a limited period of time.  This exclusive monopoly right is valid only within the territorial limits of a country of grant. Exclusivity of right implies that no one else can make, use, manufacture or market the invention without the consent of the patent holder. This right is available only for a limited period of time

Requirements of Patenting

• Novelty
• Non obviousness
• Marketability and Utility

It is important to remember

• A patent has a time limit (20 years)
• A patent has a geographical limit
• A patent is restricted to the claims made in the application

Patenting in India – Old and under the New Act

Advantages of Patents

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• Patent gives the protection to the Patentee, enabling him to enjoy the right and to raise the capital for working his invention on a commercial scale. In case of not obtaining the patent the product may be taken over by others to commercialise its benefits

Example of Indian Legal cases
Turmeric:  In 1995, two non resident Indians at the University of Mississippi Medical Centre, Jackson, (Suman K.Das and Hari Har P.Cohly) were granted a US patent (patent number 54015041) for turmeric to be used for healing wounds. The Indian Council for Scientific and Industrial Research (CSIR) filed a    re-examination case with the US Patent Office challenging the patent on the grounds of “prior art”, i.e. existing public knowledge . The claim had to be backed by written documentation claiming traditional wisdom. CSIR submitted a document proof in the form of research paper published in 1953 in the Journal of the Indian Medical Association. The US Patent Office upheld the objection and cancelled the patent in 1997

Inventions can be patented if they satisfy three criteria:

1. Novelty
2. Non-obviousness
3. Marketability and Utility

           The turmeric case failed to meet the novelty and non-obviousness criteria

Neem: Neem (Azadirachta indica) is a tree from India and other parts of South and Southeast Asia. Neem is used as natural medicine, fungicide, pesticide and fertilizer and so, it has attracted a considerable amount of international interest
In 1994, the European Patents Office  granted  a Patent (patent number 436257) to the US chemical multinational company WR Grace & Co.  and USDA for preparation of a fungicide derived from the seeds of the Neem
Dr.Vandana Shiva, Director, Research Foundation for Science, Technology and Ecology produced the evidence of farmers using this knowledge for a long period  and also gave the evidence  and information of two Indian scientists conducting research on fungicidal property of Neem before the patent had been granted. European Patent Office revoked the patent in 2005.

Basmati: Basmati is top-quality rice from the Punjab provinces of India. The word means “fragrant earth”, and the rice is a slender aromatic and long grain variety that originated in this region and is a major export crop. In 1997, the US Patent Office granted a patent to US firm Rice Tec Co. (patent number 5663484) for a variety called Texmati rice (20 claims).Texmati rice has 16 claims similar to Indian Basmati rice . As per Geographical Indication, Basmati is an Indian Rice Variety which could not be patented by other country.

US patent could affect annual basmati exports of India and thus threaten the livelihood of thousands of Punjabi farmers. The brand name of Indian Basmati will be  largely affected. Agricultural and Processed Food Products Export Development Authority (APEDA) filed for revocation of the patents granted to Rice Tec Co. by the US Patent Office. Evidences from IARI, New Delhi and Directorate of Rice Research, Hyderabad proved that 16 claims are similar to traditional Indian Basmati rice. Rice Tec Co. withdrew these 16 claims. However US Patent Office has not revoked the patent. The patent was issued to Rice Tec Co. with just 4 claims.
For more information: http://www.american.edu/ted/basmati.htm

Ponni:A rice dealer in Malaysia has obtained the ‘Ponni’ Trademark for a rice variety. Improved white ponni is a variety released by TNAU in 1986 In this context TamilNadu Agricultural University is preparing to challenge this trademark. The Union Government has decided to formally contest the grant of registration for ‘Ponni’ rice as a trademark to a Malaysian company, Syarikat Faiza Sdn. Bhd. “We have authorised a legal firm to appeal against the registration. They will be doing so shortly,” Mr Asit Tripathy, Chairman of the Agricultural & Processed Food Products Export Development Authority (APEDA), told .APEDA has engaged K&S Partners, a Delhi-based intellectual property attorney, to file a cancellation application with the Malaysian Trade Marks Registry for removal of ‘Ponni’ from the register. (Govt to contest ‘Ponni’ trademark to Malaysian firm, The Hindu, Business Line, Aug 7, 2008)
 

• In case, the Patentee is not able to work the invention commercially, he would be able to make a profitable use of his invention by selling his patent or by granting license to others, permitting the use of his invention
• Patent System helps for industrial growth by introducing new technologies
• The scientific knowledge contained in the patent specification helps as a “stepping stone” for further research
• Patents provide inventive and creative ideas for further R & D in the field.
• Patent acts as tradable industrial asset for the enterprise and, thus the strength of patent portfolio of the company is the indication of the good economic health of the company.
• After the term of patent is over, or patent is not kept in force, the patented invention is available to the public for free use.

Procedure for patent application

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There are two types of patent documents usually known as patent specification, namely

• Provisional Specification and (ii) Complete Specification

Provisional Specification

            A provisional specification is usually filed to establish priority of the invention in case the disclosed invention is only at a conceptual stage and a delay is expected in submitting full and specific description of the invention. Although, a patent application accompanied with provisional specification does not confer any legal patent rights to the applicants, it is, however, a very important document to establish the earliest ownership of an invention. Complete specification must be submitted within 12 months of filing the provisional specification. This period can be extended by 3 months. It is not necessary to file an application with provisional specification before the complete specification. An application with complete specification can be filed right at the first instance.

Complete Specification

Submission of complete specification is necessary to obtain a patent The contents of a complete specification would include the following

• Title of the invention.
• Field to which the invention belongs
• Background of the invention including prior art giving drawbacks of the known inventions & practices.
• Complete description of the invention along with experimental results.
• Drawings etc. essential for understanding the invention.
• Claims, which are statements, related to the invention on which legal proprietorship is being sought. Therefore the claims have to be drafted very carefully.

Cost of Filing Application in India

            The Government fee for filing a patent application (complete/provisional) in India is Rs.750/- for individuals and Rs.4,000/- for legal entities. An applicant is now required to make a request for examining the patent application within 48 months of filing of the application. An individual has to pay Rs.1, 000/- as examination fee and Rs.3, 000/- for legal entities. A sealing fee of Rs.1, 500/- for individuals and Rs.5,000/- for legal entities has to be paid at the time of grant (sealing) of patent.

Publication of applications

            All the applications for patents will not be open to the public for 18 months from the date of filing or date of priority whichever is earlier.  After 18 months, every application will be published except the applications in which a secrecy direction is given under section 35, and the same will be notified in the Official Gazette.  The publication includes the particulars of date of application, number of application, name and address of the applicant and abstract.

Request for Examination

            No application for a patent will be required to be examined unless the applicant or any other interested person makes a request in Form 19 within 48 months from the date of filing of the application for patent.

Examination and First examination Report

Acceptance & Notification of Complete Specification

            The controller of Patent shall accept the complete specification and inform the acceptance of complete specification to the applicant.  Further, the acceptance of complete specification will be notified in the Gazette of India, Part III, section 2 which is published weekly, on every Saturday.

Opposition to the Grant of Patent

            Any person interested can oppose the grant of patent within a period of four months, extendable by another month.  The desire to oppose the grant should be put in an appropriate form with appropriate fee.  An opponent shall file a Notice of Opposition giving details of the grounds on which he wishes to oppose the Grant of Patent.  The notice of opposition should be followed by full written statement explaining the various ground of opposition.  The opposition to the Grant of Patent coming before the controller is a bi-party proceedings wherein, the Controller, being a quasi-judicial authority, will decide the case based on the written statement and evidence placed by the opponent and, also the reply statement and evidence filed subsequently by the Applicant.

Grant of Patent

            If the application is not opposed or the opposition is decided in favour of the applicant or is not refused otherwise, then the patent is granted and sealed upon request made by the applicant in the prescribed manner along with fees on payment of Sealing Fee within 6 months from the date of advertisement of acceptance of complete specification.  The period is extendable by three months.  Patent rights will accrue to the applicant only when the patent is sealed and the rights are granted to him.
            In order to keep the patent in force, Renewal Fee is to be paid in the Patent Office annually. 

How can a patent be obtained worldwide?

            At present, no “world patents” or “international patents” exist. In general, an application for a patent must be filed, and a patent shall be granted and enforced, in each country in which you seek patent protection for your invention, in accordance with the law of that country. In some regions, a regional patent office, for example, the European Patent Office (EPO) and the African Regional Intellectual Property Organization (ARIPO), accepts regional patent applications, or grants patents, which have the same effect as applications filed, or patents granted, in the member States of that region. Further, any resident or national of a Contracting State of the Patent Cooperation Treaty (PCT) may file an international application under the PCT. A single international patent application has the same effect as national applications filed in each designated Contracting State of the PCT

 Patent offices in India

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            The Patent Office, under the Department of Industrial Policy & Promotion, Ministry of Commerce & Industry, performs the statutory duties in connection with the grant of patents for new inventions and registration of industrial designs. Patent Offices are located at Kolkata (Head Office), Mumbai, Chennai and Delhi to deal with the applications for patents originating within their respective territorial jurisdictions.

Head Office
Controller General of Patents and Designs and Trademarks,
Old CGO Building, 101, M K Road,
Mumbai - 400002 , India
Phone No.: 91-22-201 7368
             : 91-22-203 9050
    Fax   No.: 91-22-205 3372
http://www.patentoffice.nic.in
Regional Patent Offices Address:

List of Forms

Forms and Fees

 The forms can be downloaded from http://ipindia.nic.in/ipr/patent/patents.htm

TNAU and Patenting

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In TNAU , the Centre for Agricultural and Rural Development Studies is responsible for obtaining patent  for the technologies developed in TNAU. At present, six inventions have obtained patent. They are listed below

Patents Obtained by TNAU

• Commercialised

 Commercialization of TNAU - Technologies and Products

            Tamil Nadu Agricultural University has developed many viable agro-technologies and products. Some are already commercialized and some awaiting opportunities. Hence, Directorate of Agribusiness Development is entrusted with the responsibility of commercialization of the TNAU products / technologies developed. Accordingly, through a series of meeting, five technologies have been short-listed initially for commercialization as a first phase. Based on that, approval of the University has been obtained to invite “Expression of Interest” from reputed companies to grant license for the production and marketing of the following TNAU products / technologies. Among them one patented product were also subjected to commercialization.
The highest offers quoted by the firms were approved by the university.

 Important terms and conditions are: 

The license is granted for the production and marketing of certain TNAU products / technologies on NON- EXCLUSIVE basis only.

The TNAU has the right to grant license to other companies for commercial production and marketing of the said technologies for which license is granted under this agreement.

The firm may refer as TNAU technology/product in the packets / containers / sachets etc.

The firm shall be responsible for maintaining the quality of the produce marketed under this agreement.

But TNAU has the full right to check the quality of products / technologies produced and marketed by the company .

All the IPR rights of the technology shall rest with TNAU only.

            At present, MoU has been signed  with private firms for granting license for the production and marketing TNAU products / technologies they are as follows.

 Institute like Rural Innovations Network (RIN) and L-Ramp are recognizing the efforts of rural inventors and are popularizing their technologies. A number of private firms are assisting in patent searches, patent filing and case filing.