Patent is a legal right AND is not crediting the applicant as the first to invent. Many times people work on the same subject and come to the same conclusion at around the same time. They might not know the existence of one another. But only one succeeds in getting the patent.

One does not need a patent to commercialise an invention if the said invention is not already protected by a patent by some one else. But in the event the inventor chooses not to patent his invention, he forfeits his legal right to stop others from working the said invention without his permission.

Patent is what is written in the patent document and protected by law. “Know-how” refers to the larger body of embodied and disembodied knowledge one requires to produce an article. Part of the “know-how” could be patented matter and in areas like drugs and pharmaceuticals patent license may be sufficient to exploit a patent but for most other areas in engineering additional information is required to bring an invention to market place.

The inventor is given the exclusive right to prevent others from making, using and selling the patented invention, for a fixed period of time in return for the inventor disclosing the details of the invention to the public. The duration of patent exclusivity varies from country to country, in India it is 20 years from the date of application. However under all patent systems, once this period has expired, people are free to use the invention as they wish.

The right conferred by a patent is a right to exclude others from making, using or selling the patented invention during the term of the patent. It is important to understand that a patent does not necessarily give the patent owner the right to make, use or sell the invention himself. The owner of a patent for an improved method of producing a chemical compound would not be free to sell the compound made using the patented method if the compound is itself patented by someone else. The drug may be patented but one needs approval of authorities to market it.

Patents are granted under national laws and therefore, the rights are also national in scope. Thus, a United States patent can be asserted only against infringing conduct in the United States. In most countries these rights are enforceable by civil rather than criminal proceedings. The country that grants the patent does not also guarantee the validity of the patent granted. For securing legal rights in different countries, separate applications have to be filed in each of the desired countries according to the law and procedure of the country concerned. If a company has got a patent for a product X in India but not applied for patent in United States, then U.S.A may not grant a patent on X to any other company in US but the company that owns the patent in India will be helpless if someone copies it in US. It will not be able to take the offender to court either in India or in US.

Every patent application contains “Claims” and legal rights pertain to these “claims”. When manufacturer of Gillette razor claim that their product is patented, they mean that some claims related to their razor were granted patent and their legal rights are restricted to those claims only.

The word patent is used in two senses. One is the documentthat is called patent or letters patent. The other is the contentor the protection that a patent confers. Let us deal with the first sense of the word `patent'. If a person makes what he thinks is an invention, he asks the Government by filling an application with the Patent Office to recognise that he is the owner of the patent. Not all inventions are, of course, patentable. The inventions, which are patentable in a country, are specified in the patent legislation of the country concerned. Even though national laws govern patentability, most countries have adopted similar requirements. In general, to be patentable, an invention must be novel, useful and non-obvious. In India and all most all other countries, the first to apply gets the patent, provided he meets the requirements but in USA the first-to-invent gets the patent.

Criteria for securing a patent for invention in India under the Patent Act of 1970:

• It must be novel
• It must involve an inventive step
• It must be capable of industrial application
• It must not belong to one of the categories of excluded subject matter

"new invention" means any invention or technology which has not been anticipated by publication in any document or used in the country or elsewhere in the world before the date of filing of patent application with complete specification, i.e. the subject matter has not fallen in public domain or that it does not form part of the state of the art; (amendment 2005).

The invention should not be publicly known anywhere in the world prior to the date of filing of the application for patent. What is publicly known prior to the date of filing of the application for patent is called `prior art' in the sense it forms part of the state of the art. How to establish a prior art? Patents applications, publications and other printed data are all used to establish the prior art. Any matter (whether a product or process, information about either or anything else) which has at any time been made available to the public by written or oral description, by use, or in any other way forms prior art.

The invention must also be non­obvious. This prevents someone from taking advantage of the patent system and obtaining protection for something that is a mere extension or trivial variation of what is known. The word `obvious' implies that something, which is plain or something which perfectly evident to a person thinking on the subject. In other words the term obviously mean that which does not go beyond the normal process of technology but merely follows plainly or logically from the prior art, i.e. something, which does not involve the exercise of any skill or ability beyond that to be expected of the person skilled in the art. The inventive step is different from novelty. Novelty exists if there is any difference between the invention and prior-art. The effort made in achieving these differences is inventive step.

"inventive step" means a feature of an invention that involves technical advance as compared to the existing knowledge or having economic significance or both and that makes the invention not obvious to a person skilled in the art;(amendment 2005);

An inventive step is considered to be present if, having regard to the state of art, the invention is not obvious to a person skilled in the art. The state of art is the same broad conception that operates in assessing novelty save that no account is taken of prior specifications subsequently published. The EPO Appeal Board explained that: "...the notional ‘skilled person in the art’ is not to be assumed to seek to perform a particular act without some concrete technical reason; he must, rather, be assumed to act not out of idle curiosity but with some specific technical purpose in mind”.

There can be no patent:

1. for the analogous use of a thing or process or as it is sometimes put, for the mere new use of an old thing. For instance it was held un-patentable to coat boot eyelets with celluloid when this was already done to hooks and studs.
2. for the mere application of a known principle to a use or subject matter admittedly within its scope. Thus there was no invention in applying a basic principle of electrical amplification to `bone ­ conducting hearing aids’, even though this had not previously been suggested in the considerable period since the principles' first formulation.
merely for verifying previous prediction. Where it was already known that polyesters for electrical insulation could be made from reagents that were members of a chemical series, it was not inventive to demonstrate that satisfactory results ensured from substituting other members of the same series.
iii) Industrial application

It is a prerequisite to patentability that the invention be capable of some practical application. This emphasizes the importance the patent system puts on usefulness.

iv) Inventions not patentable

In some countries, laws excludes certain specific kinds of inventions from being patented, for example, inventions relating to nuclear transformation. In India, sections 3 and 4 of the patents act (1970) as amended in 2005, specify the categories of inventions which are not patentable. They are :

1. Frivolous or claims anything obvious contrary to well established natural laws , (example ­herbal petrol as claimed by Ramar Pillai),
2. An invention the primary or intended use or commercial exploitation of which could be contrary to law or morality or which causes serious prejudice to human, animal or plant life or health or to the environment (sleeping pills for children, drugs etc), Discovery/ abstract theory or discovery of any living thing or non-living substance occurring in nature,
3. the mere discovery of a new form of a known substance which does not result in the enhancement of the known efficacy of that substance or the mere discovery of any new property or new use for a known substance or of the mere use of a known process, machine or apparatus unless such known process results in a new product or employs at least one new reactant.

(Explanation.—For the purposes of this clause, salts, esters, ethers, polymorphs, metabolites, pure form, particle size, isomers, mixtures of isomers, complexes, combinations and other derivatives of known substance shall be considered to be the same substance, unless they differ significantly in properties with regard to efficacy;" -amendment 2005).

1. Chemical mixtures/ mixtures,
2. Re­arrangement/ duplication of known devices each functioning independently on another in a known way.( PC ­operated lathe, gear box +motor­ geared motor),
3. A method of agriculture or horticulture( crop rotation, plucking coconuts),
4. Medical/ surgical diagnostic, therapeutic treatment of human being/ animals to make them free of disease/ increase their economic value/ that of their products ( surgery, spraying of pesticides etc),
5. Plants and animals other than micro-organisms in whole or any part thereof including seeds, varieties and species and essentially biological processes for production or propagation of plants and animals,
6. A mathematical or business method or a computer program or algorithms,
7. A literary, dramatic, musical or artistic work or any other aesthetic creation whatsoever including cinematographic works and television productions,
8. A mere scheme or rule or method of performing mental act or method of playing game,
9. A presentation of information,
10. Topography of integrated circuits,
11. No patents allowed in all the areas relating to atomic energy,
12. Also excluded are schemes, rules or methods of performing mental acts , playing games or doing business; likewise presentation of information.

The application for patent can be submitted by the inventor claiming to be the true and first inventor or the assignee or legal representative of a deceased person who otherwise was entitled to make the application. The application can be submitted by any of the persons either alone or jointly, in case it is submitted jointly all the named parties will have equal undivided right. The order of their mentioning in the application is not important.

The applicant need not be a citizen of India. The term `person' includes the Govt. The inventor should be a natural person. A firm or a company or Government cannot be named as a true and first inventor. They however can be the applicant for patent if the true and first inventor assigns them the invention.

Each invention requires filing separate application and there can be no invention for generic use. The application should be accompanied by a provisional or complete specification. If it is submitted with provisional specifications then final specifications must be submitted within 12 months from the application date. If the applicant cannot submit complete specifications within the 12 month period, then the patent office will keep the information disclosed in an abandoned state but will not reveal that information to the public. This gives an opportunity to the inventor to submit a fresh application either with provisional or complete specifications provided the invention still retains the novelty. The title of the invention can be indicative but the final specifications must be complete, they must bring out clearly the scope of invention and disclose the best methods of performing the invention.

Priority date shall be the date of filing of that specification in which the matter was first disclosed. This is a very important date and inventors rush to file the application after lab work is completed. If they wait for development of commercial package they will miss the bus, some one else will file the patent application in between. If the inventor is not ready with the complete specifications, he can submit provisional specifications and that will be accepted for the purpose of deciding the priority date. The provisional specification discloses only the nature of the invention and not its essential features. It need not contain the statement of claims defining the scope of legal protection to be secured.

In the case of CONVENTION APPLICATION, the application can be filed within 12 months of his filing the basic application in the convention country. However the priority date will be not the date of his filing application in India but the date he has filed his basic application in the convention country. India has agreement with few commonwealth countries for such arrangement and all those countries are called convention countries and the application is called convention application. With India signing of Paris Convention and PCT, the number of convention countries have increased.

The documents required for an application for patent are :

• the appropriate application form
• the document ,called specification, disclosing the invention
• drawing if any ,in support of the invention disclosed
• the prescribed fees.

The examiner in the patent office would check the application for the compliance with the relevant provisions of the act. He would examine the novelty aspect whether it is forming part of the state of the art, search for anticipation by previous publication, search for anticipation by prior claim. He would also check the publication before filing complete specs and publication after filing complete specs. If there is reference in the publication before the filing complete specs then he would check the date of priority. Novelty, inventive step, industrial application, not belonging to excluded matter will all be checked. As a result of examination, he may refuse to proceed with the approval or direct the applicant to amend the complete specs to exclude those claims forming prior art. He can direct the applicant to refer to other specs as insertion of note for public notice.

Pre-grant oppositionThe patent scope and specifications along with the name of inventors and applicant will be published in patent office newsletter. The public can then convey their objections to the patent authorities. The objections can be:

1. that the applicant for the patent or the person under or through whom he claims, wrongfully obtained the invention or any part thereof from him or from a person under or through whom he claims;
2. that the invention so far as claimed in any claim of the complete specification has been published before the priority date of the claim;
3. that the invention so far as claimed in any claim of the complete specification is claimed in a claim of a complete specification published on or after the priority date of the applicant's claim and filed in pursuance of an application for a patent in India, being a claim of which the priority date is earlier than that of the applicant's claim;
4. that the invention so far as claimed in any claim of the complete specification was publicly known or publicly used in India before the priority date of that claim. Explanation —For the purposes of this clause, an invention relating to a process for which a patent is claimed shall be deemed to have been publicly known or publicly used in India before the priority date of the claim if a product made by that process had already been imported into India before that date except where such importation has been for the purpose of reasonable trial or experiment only;
5. that the invention so far as claimed in any claim of the complete specification is obvious and clearly does not involve any inventive step, having regard to the matter published as mentioned in clause (b) or having regard to what was used in India before the priority date of the applicant's claim;
6. that the subject of any claim of the complete specification is not an invention within the meaning of this Act, or is not patentable under this Act;
7. that the complete specification does not sufficiently and clearly describe the invention or the method by which it is to be performed;
8. that the applicant has failed to disclose to the Controller the information required by section 8 or has furnished the information which in any material particular was false to his knowledge;
9. that in the case of convention application, the application was not made within twelve months from the date of the first application for protection for the invention made in a convention country by the applicant or a person from whom he derives title;
10. that the complete specification does not disclose or wrongly mentions the source or geographical origin of biological material used for the invention;
11. that the invention so far as claimed in any claim of the complete specification is anticipated having regard to the knowledge, oral or otherwise, available within any local or indigenous community in India or elsewhere, -(amendment 2005).

Public can raise objections before the grant of patent or at any time after the grant of patent but before the expiry of a period of one year from the date of publication of grant of a patent. Where any such notice of opposition is duly given, the Controller shall notify the patentee. On receipt of such notice of opposition, the Controller shall, by order in writing, constitute a Board to be known as the Opposition Board consisting of such officers as he may determine and refer such notice of opposition along with the documents to that Board for examination and submission of its recommendations to the Controller.

If the applicant successfully goes through steps 1 to 3, then his acceptance of complete specification will be published in a gazetted notification. The claims of complete specifications, so crucial to the whole patenting process, must comply with four criteria.

1. They must define the protected matter, the scope of legal protection being sought.
2. They must be clear and concise.
3. They must be supported by the description, the best method of carrying out the invention.
4. They must be related to one innovation.

From this acceptance the applicant shall have privileges to work his patent, but he cannot institute any proceedings for infringement.

If there are no objections, the patent will be sealed and registered in the patent office.
Important dates

The three important dates are:

Priority date : Priority date shall be the date of filing of that specification in which the matter was first disclosed.

Where a complete specification based on a previously filed application in India has been filed within twelve months from the date of that application and the claim is fairly based on the matter disclosed in the previously filed application, the priority date of that claim shall be the date of the previously filed application in which the matter was first disclosed. – (amendment 2005)";

Date of patent: Date of patent shall be the date when complete specifications was filed. Legal rights accrue to the applicant on the grant of a patent with effect from the date patent.

Filing date of international patent: The filing date of an application referred and its complete specification processed by the patent office as designated office or elected office shall be the international filing date accorded under the Patent Cooperation Treaty." – (amendment 2005);

India signed the Patent Cooperation Treaty of June 19, 1970(PCT) and has become 98th member of PCT with effect from 7-12-1998. The fundamental objective of PCT is to simplify and render more economical the process of obtaining patent protection in several countries. The PCT allows an inventor to file a patent application in his home country, which seeks patent protection in several PCT member countries thereby avoiding the need to file applications in each individual country in which protection is sought. All nationals or residents of India are thereby entitled to file an international patent application with the Indian patent office, Calcutta, which will act as a PCT’s receiving office. This international patent application has the effect of a national patent application in those PCT contracting states which the patentee `designates’ in his application. The granting of a patent remains the responsibility of the national or regional offices. In other words only the application is valid across the nations subject to fulfillment of certain conditions but still there is nothing like an international patent. The PCT expressly states that each member state is free to apply, when determining the patentability of an invention, the criteria of its national law in respect of prior art and other conditions of patentability not constituting requirements as to the form and contents of applications. In other words an inventor can file a international patent application in India( patent office, calcutta) and obtain patent protection in all the countries `designated’ in the application, provided the invention is entitled to patentability under laws of such countries. 

1. Lower costs 

Instead of preparing and submitting separate patent applications in several countries, patentees in India now can prepare and submit one single international patent appication that too in India. In this single application the applicant can mention which countries he would like to cover. Only condition is that these selected countries must be from among those 98 PCT signatory countries. Such identified countries are called `designated states’ in the international patent application. A single set of fees is required to be paid for filing international patent application with the Indian patent office acting as PCT receiving office. The fees cover the filing, searching and publication of the international patent application and are payable in Indian currency. The national fees for those `designated states’ is payable much latter. Generally national fees like the european Patent Office are lower for international patent aplications than they would be if they are filed as separate national applications. For applicants like Indians there is a reduction of 75% of certain fees, including the international fee( basic fee and designation fees) as our per capita income is lower than 3,000 US dollars.

The date of priority in the international patent application can be the date of filing. In case the applicant already filed for an patent in one of the convention countries as per Paris Convention then he has the right to claim that earlier date as the date of priority for this international patent application. An application may contain a `priority claim’; that is, a declaration claiming the priority of an earlier application filed in any country which is a member of the Paris Convention. However to claim such earlier date as date of priority, the international patent application has to be submitted within 12 months after the filing of that earlier patent application. Indian applicants who have filed for an national patent can thus claim that earlier date as date of priority for the new international application provided the international application is filed within 12 months from the date of national patent filing date. The effect of the priority claim is that any patent application filed within one year after the date of priority claim (priority date0 will not be invalidated by any acts committed in the interval such as the publication or exploitation of the invention or an application filed by another person. Similar facility is available to others also; ex: an american MNC which has filed for a patent in US 11 months back, can now file an international patent application designating India as one of the country and in the event India grants patent to this MNC as per its rules, the date of priority will be the date the MNC filed his application in US some 11 months back. This facility is available to all nationals of Paris convention and PCT brings in additional benefits explained below.

The indian applicant gets a total of 30 months time to complete his payment of fees to different nations. When an international patent application has been filed, all national procedures in the designated states are delayed until the end of 20th month from the priority date. No designated office shall process or examine an international application prior to the expiry of 20 months from the date of priority. The patent amendment rules provide that the Patent office in Calcutta shall not, before the expiration of 21 months from the priority date, where the applicant has not, before the expiration of 19 months from the priority date, elected India for the use of the results of international preliminary examination. If, international preliminary examination is requested before the end of the 19th month from the priority date, then national procedures in the designated states are delayed until the end of the 30th month from that date, If the applicant has elected India within the 19 month time period, then the international application will be processed only after the expiry of 31 months from the priority date. This additional time can be used for evaluating the chances of obtaining patents and of exploiting the invention commercially in the various designated countries. What aids the evaluation are the international search report and international preliminary examination report. PCt stipulates the minimum time period before which an application cannot be processed, it does not however specify the overall time within which it must be processed.

Every international patent application is subjected to an `international search’ by an International Searching Authority. The patent office at Calcutta must transmit the application to the United International Bureau for the Protection of Intellectual Property of the World Intellectual Property Organisation (WIPO) as well as the competent international serach authority , which shall conduct an international serach aimed at discovering relevant prior art. International search is a high quality search of the patent documents and other technical literature in those languages in which the most patent applications are filed.( English, French and German, and in certain cases Chinese, Japanese, Russian and Spanish). The high quality of search is assured by the international standards prescribed in the PCT for the documentation to be consulted and by the qualified staff and effective search methods of the international searching authority which are experienced patent offices that have been specially appointed to carry out international searches. At present national offices of Australia, Austria, China, Japan, Russia, Spain, Sweden, USA and European patent office, are recognised as international search authorities. For a given international patent application, there can be one or more competent international searching authorities.

The results of the international search are set out in an ` international search report’ which is made available to the applicant by the fourth or fifth month( or by tenth month if no priority is claimed) after the international patent application is filed. This search report contains no comments on the value of the claimed inventions but lists citations of prior art relevant to the claims made in the international patent application. It also gives an indication of the possible relevance of novelty and inventive step(non-obviousness). The advantage of this search report is that it helps the applicant to evaluate the chances of obtaining patents in the designated countries. A search report which is favourable, that is, in which the citations of prior art would appear not to prevent the grant of a patent, assists the applicant in the later prosecution of his application in those countries in which he wishes to have protection. If the search report is unfavourable , the applicant gets the opportunity to amend the claims in the international patent application or withdraw the application before it is published. Also the international application along with international search report shall be communicated to each designated office, that is the national office acting for each contracting state designated in the international application as a country in which it seeks patent protection.

Under PCT, the applicants have an option to have an international preliminary examination of his application. It will be carried out on payment of a fee for the purpose of the patent granting procedure in any of those PCT contracting states, which recognise the international preliminary examination procedure. This preliminary examination is made on the basis of the international accepted criteria of patentability( novelty, inventive step and industrial applicability). It is carried out by an International Preliminary Examination Authority, having qualifications similar to those of international searching authorities. The list is the same except Spain is not included in this list.

The results of international preliminary examination are set out in an international preliminary examination report, which is provided to the applicant. This report consists of a preliminary and non-binding opinion on the compliance with the international criteria for each of the claims, which have been searched. This report provides the applicant even a stronger basis on which to evaluate his chances of obtaining patent grant. If report is favourable, it provides a stronger basis to deal with national patent offices when prosecuting application before them.

However, it should be noted that the decision on the granting of a patent remains the task of each of the national or regional patent office designated in the international patent application. The international preliminary examination is authoritative but is not binding on those offices.