New amendments in patent act

There are many important and policy amendments that are made by The Patents (Amendment) ACT, 2005 and  The  Patents (Amendment) Rules 2005 which come into force from 1st Jan 2005. These changes have been bought to comply with India's obligation to amend its Intellectual property Laws in consonance with International standards, like that of TRIPS, WTO, WIPO.

The major policy changes are as follows:

1. The most far reaching change is the shortening of time of grant of patents. Earlier it used to take min 4-5 years for a patent to be granted. Now with introduction of new rule that allows the applicant to apply for publication of the application.

Earlier the applicant had to apply for examination of the patent application to the controller. This way done for administrative  convenience of the patent office to deal with those patent application where  the application is serious & desirous to get patent. After request for examination the application was published to invite oppositions if any from public.


Now the new procedure for filling and grant of patents is as under.

  • An application for patent is made in form 1 including for Indian and patent application for patent cooperation Treaty route. Earlier there was form 1A for PCT route which has been don away with. The fees is Rs 5000 for legal person, Rs 1500 for individual. For detail regarding Fee If one is filing provisional specification (without claims, drawings, etc) then complete  specification has to be filed within 12 months from date of filing of provisional application. Now no extention of time is allowed.
  • Then the applicant has to make to the controller a request for publication of the application in Form 9 which is optional and the applicant may choose to file for an early application to expedite the patent process with fee of Rs 2500 for natural person and and  Rs 10,000 other tan legal person. Under ordinary and normal circumstances an application is not published within 18 months after date of application or priority date which ever being earlier . But nevertheless an applicant can make request for publication of his application.
  • After the Application is published then two simultaneous and parallel procedures begin. Firstly the publication of application opposition are invited from public. At this  stage any person get make representation before opposition board created under the Act as regards novelty, patentability, industrial application, prior knowledge in prior art etc. This is done with a view that if any applicant files a frivolous patent that the rigorous exercise to be undertaken is saved. And public time in examining that application is saved.
  • After the application is published  then the applicant has to make a request for examination U/S 11 B of The  Patent Act, 1970 in form 1 & with  a fees of Rs 2500 for natural person and Rs 10,000 for other than natural person.
  • Request for examination has to be made within 36 months of date of filing of Patent application or priority date, whichever being earlier.
  • After request for examination is made the controller makes a reference to a patent examination (N o time frame for reference from date of request of examination is being provided). The patent examiner shall furnish a first Examination report in one month. These objections are communicated to patentee or his authorized agent. These objections have to be removed to the satisfaction of the controller within 6 months from the date of communication.
  • Then soon after the objections are removed and the application has been found to be in order for grant of order and application has not been refused by the controller and application is  not in contravention of any provisions of the Act then U/S 43 (1) the patent shall be granted as expeditiously as possible to the application. Then with the seal of the patent office the date on which it is granted and entered in the register of patent.

Another  important change is that patent that is granted by  the controller, if the changes or amendments are substantive then the same shall be advertised by the controller.

2.  Another very important change is in section 3, which specifies what inventions can not be patented. in clause (d) earlier new use for a known substance or process or machine was not eligible for patents. But after amendment if there is new use of the existing substance, process, machine resulting in a new product or having at best one new reactant can be patented now.

3. Similarly the most controversial amendment was deleting the contents of clause (l) which paves way for patenting of product patents in chemicals, bio-technology, food processing, drugs and pharmaceuticals. Earlier only process was allowed to be patented in field of chemicals, drugs, pharmaceuticals etc. Thus any medicine could be prepared by different process without any infringement. But now once product patent regime is in force one can not make the patented product at all.

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