In continuation to the first IP101 in the series, here are a few more key terms to understand before delving into the wonderfully complex world of patent law.
Patent
A patent is a form of intellectual property that confers upon its owner a statutory, time-bound right to use, and exclude others from using an invention. This right is granted to the owner in exchange for full disclosure of the invention and its working. In India, the term of a patent is 20 years from the date an application is filed.
The Patents Act and Rules
In India, the Patents Act, 1970 regulates the patent system. It was amended in 1999, 2002, 2005 and 2006 after India signed the TRIPS (Trade-Related Aspects of Intellectual Property Rights) Agreement in 1994. The Patents Rules, 2003 govern the implementation of the Act and are amended regularly. The Rules were most recently amended in 2024.
Essentials of a patent (“NUNS” Test in India, “NUN” Test in other countries)
For an invention to be patentable, it must fulfill the following four criteria:
Novelty;
Utility/Industrial application;
Non-obviousness/Inventive step;
Subject matter should not be excluded under Sections 3 and 4 of the Patents Act, 1970.
Section 3 of the Patents Act, 1970
An invention cannot be patented if it is/involves:
Frivolous or contrary to well-established natural laws.
Harmful to public order, morality, or life.
A discovery of scientific principles or naturally occurring substances.
A new form or use of a known substance that does not show enhanced efficacy.
A substance formed by a simple admixture without new properties.
An arrangement or duplication of known devices without novelty.
An agricultural or horticultural method.
A medical, surgical, or therapeutic treatment method for humans or animals.
A plant, animal, or biological process, but microorganisms can be if they fulfill the NUN test.
A mathematical method, business method, algorithm or software by itself.
An artistic creation, including literary, musical, and dramatic work.
A scheme or method of performing a mental act or a playing game.
A presentation of information.
A topography of integrated circuits.
An invention based on traditional knowledge (TK) or a mere duplication of the TK’s known properties.
Section 4 of the Patents Act, 1970
Inventions related to atomic energy cannot be patented.
Prior art
Prior art refers to any information about an invention that was publicly available before the priority date. If prior art relating to a certain invention is discovered, the invention will not fulfill the novelty criteria.
True and First Inventor (TFI)
The term, as used in the Patents Act, 1970, describes a person who has invented something for the first time. Neither the first importer of the invention into India, the person who first received the invention from outside India nor anyone who did not contribute any technical knowledge or skill to the invention are TFIs.
Who can apply for a patent?
A TFI or the person she assigns it to (assignee) can file a patent application, either alone or jointly with any other person. However, the legal representative of any deceased TFI or assignee can also apply
Patent opposition
The Indian patent application process affords third parties two opportunities to oppose the grant of a patent on certain grounds either before (pre-grant) or after its grant (post-grant). The grounds typically relate to the fulfillment of the NUNS test criteria and are the same for pre-grant and post-grant oppositions. More information on oppositions as a part of the patent application procedure can be found here.
Pre-grant opposition
A pre-grant opposition can be filed by any person in the six-month duration after a patent application has been made public, and before it is granted. This is a defensive measure to double-check the application’s validity. The examiner will decide whether a pre-grant opposition holds merit.
Post-grant opposition
Once a patent has been granted, an “interested party” under Section 2(1)(t) of the Patents Act, 1970 can file a notice with the Controller of a patent office. Such notice must be filed within 12 months from the date of publication of the patent’s grant in the Indian Patent Journal. An opposition board will be constituted to decide whether such post-grant opposition holds merit.
Patent revocation
If a patent’s grant or application is not opposed, or if it successfully evades opposition, it can still potentially be revoked even after the entire application process is complete if any party, including an alleged infringer/infringer, decides to contest its validity.
Fora for patent matters
A patentee (patent holder) can file an infringement suit in a district court or a High Court. However, if the plaintiff (patentee) is faced with a counterclaim of revocation by the defendant (alleged infringer), both the infringement suit and the revocation suit will be clubbed as a single matter and transferred to a High Court with jurisdiction.
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