PATENT ACT

An application for a patent may be made by the actual inventor of the invention, or an assignee of the right to make an application or a legal representative of either. It is the person who first applies for a patent who is entitled to the grant. A prior inventor of the invention who applies subsequently will not get the patent as against the first applicant. A person who has merely communicated an idea to another, who actually gave practical shape to the idea and developed the invention, cannot claim to be the first and true inventor. A mere financial partner, a firm or a Corporation cannot be the sole applicant claiming to be the inventor. But they can apply as assignee of the right to apply.

The right to apply for a patent is assignable. Though an oral assignment is not precluded, for establishing title to apply ar assignment in writing is preferable. An application to which the actual inventor is not a party is void and the irregularity cannot be cured by amendment. The right to apply, on the death of the owner of the right, devolves to his legal representative.

Whether in a particular case the invention made by the employee should belong to the employer depends upon the contractual relations, express or implied, between the employ and employee. In the absence of special contract, the invention of a servant even though made in the employer’s time, and with the employer’s materials, and at the expense of the employer, does not become the property of the employer. Inventions made by employees specifically employed for research and development may in general belong to the employer. An employee’s obligation to the employer arising from service agreement in respect of patent rights can be enforced by an action for breach of service agreement. An employer can bring an action for an order that the patent should be assigned to him.

An application for a patent in the prescribed form along with the prescribed fee should be filed in the appropriate office of the patent office. The application should be accompanied by a provisional or complete specification. A provisional specification need describe the invention only briefly and need not contain the claims. Where the application is accompanied by a provisional specification, a complete specification should be filed Within twelve months from the date of filing the application. If this is not done, the application will be deemed to be abandoned. The complete specification should fully and particularly describe the invention and the method by which it is to be carried out. It should disclose the best method of performing the invention known to the applicant and end with a claim or claims defining the scope of the invention for which protection is claimed. The complete specification shall be accompanied by an abstract to provide technical information on the invention.The claims should relate to a single invention or to a group of inventions. They should be clear and succinct and should be fairly based on the matter disclosed in the specification. The specification should be accompanied by drawings where appropriate and necessary.

The specification should relate to a single invention

An application for a patent will not be open to public for a period of eighteen month from the date of filing or date of priority which is earlier. Thereafter the application will be published. After the publication of the application within the prescribed period a request for examination of application should be made . by the applicant or interested person failing which the application will be treated as withdrawn.

The application is examined by examiners of patents to see whether it complies with the requirements of the Act and the Rules, whether there is any lawful ground of objection to the grant of the patent, and whether the invention has already been published or claimed by any other person. The examiner makes a search in the publications available in the Patent Office and specifications of prior applications and Patents to see whether the same invention has already been published or claimed or is the subject-matter of existing or expired patents.

After examination of the application, the Patent Office will communicate to the applicant, the objections, if any, to the grant of a patent. The objections, generally relate to the drafting of the specification and claims, anticipation of any of the claims in prior publication of any specification or claims, or documents. In many cases these objections can be overcome by suitably amending the description of the invention and the claims and in some cases by insertion of a reference to the prior specification number. If the objections are not satisfactorily met the Controller of Patents, after giving an opportunity of hearing to the applicant will refuse the application.

Where the applicant has satisfactorily removed the official objections the Controller will accept the complete specification and advertise it in the Official Gazette. From the date of acceptance to the date of grant of the patent the applicant will get the benefits of the grant except that he will not be entitled to institute infringement proceedings until the patent is granted.

Any person interested may give notice of opposition within three months from the date of publication in the Official Gazette. The Controller will forward a copy of the notice of opposition to the applicant who may file a reply statement within one month from the date of receipt of the copy. Thereafter the parties may file their evidence in support of their respective cases and the matter will be heard and decided.

Where the application is accepted either without opposition or after opposition, a patent will be granted if a request for scaling is made by the applicant.

An inventor, if he so desires, may make a request for mentioning his name in the patent. The Controller, if satisfied, will cause his name to be mentioned as inventor in the patent granted, in the complete specification and in the register of patents. The mention of the inventor’s name in the patent will not confer, or derogate from, any rights under the patent.