Modification in the Patent Practices

In India, the Patents Act, 1970, and the Patents Rules, 2003, have undergone number of changes in last decade or so. The initial changes in the Act and corresponding Rules were mostly with a vision to make the Indian Patent Laws in conformity to the TRIPS guidelines with the allowed extent of exemptions. Later on, one can say that the focus of amendments moved towards making the procedure to apply for and grant of patent more transparent and swift. Now recently, the Office of Controller General of Patents, Designs & Trademarks had recently notified few changes in the Drafting Manual of a patent, India and the purpose of referrals to the changes is to prevent divergence and provide clarity on the implementation of the law.

MAJOR HIGHLIGHTS OF THE MANUAL

Illumination on determination of inventive step:

Before describing anything lets explains the condition to be satisfied by an invention to be patentable. As we know many of us know all the 3 important parts of the invention before letting it be patentable but let start from the basic. In most cases, a patent application is examined by a technical expert to ensure that it meets the substantive criteria for patentability.

The 1st of those criteria is that it has to be Novel (New).

The 2nd of those criteria is that it should have Inventive step and thirdly should be industrially applicable.

One of the most important criteria is that an invention should have Inventive step. Inventive step under the Act is defined as follows:

“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.

• How do we determine Inventive step?

The proposed invention is not obvious to a person skilled in art i.e., skilled in the subject matter of application.

In the determination of the Inventive step, it is not sufficient to draw the conclusion that a claimed invention is obvious merely because individual parts of the claims taken separately are known or might be found to be obvious.

• Let’s redefine it by the help of famous case

In the case of “Biswanath Prasad RadheyShyam vs. Hindustan Metal Industries Ltd.”Hon’ble Supreme Court of India on the inventive step said: “the expression” does not involve any “inventive step” used in section 26(1) (a) of Act. “Obvious” has acquired special significance in the terminology of patent law.

This case can be considered to be the most important case in inventive step jurisdiction in India. Though the case was decided in 1978, the principle laid down in the case is followed even today & have been codified in the Indian Patent Act.

Here, the term “obvious” means that the invention does not go beyond the normal process of technology but merely follow plainly and logical form of the prior art. In other words, how would be defined inventive step is by just asking a question i.e., “Would a non-inventive mind have thought of alleged invention?”, If the answer is “NO”, then the invention is non-obvious.

In case of modification in applicant name:

The death of the patent applicant or Inventor has an impact on the patent application and the patents that they own.Although if there are living co-inventors, they may be able to enter a request by virtue of an agreement which allows them to proceed, without the deceased inventor participating.

Whereas in the cases of Substitution/Addition of the applicant before the grant of the patent, the request has been made by using form-6 to the Controller to allow changes in the applicant name.

Role of controller evolve:

• If the applicant had died before the grant of patent, but the patent was granted in his name, a person in whose name the patent ought to have been granted may make a request to the Controller for substitution. The Controller may amend the patent by substituting the name of the deceased applicant with the name of such claimant. Such a request has to be made in Form-10.
• If the applicant dies after the patent has been granted, any person who becomes entitled to the patent or to a share in the patent, by operation of law, may make a request to Controller for registration of his title. Such a request shall be made in Form-16.
• Wherein, in the case of Dispute between joint applicant regarding the Substitution/Changes in the applicant name. The Controller has given an opportunity of being heard to all the applicant, & Controller will take the decision after hearing the dispute parties as per proceeding under sub-section(5) of section-20.

No need of hardcopy of sequence listing:

• Importance of Sequence listing

Firstly, we should understand the necessity of sequence listing. Generally, most of the Inventions related to biotechnology were involve with the isolation & purification processes, so for applying for the patent application they need the disclosure of Nucleotides and/or an amino acid sequence listing in the patent specification.

• Guidance define for listing

In the application of patent discloses, sequence listing of nucleotides or amino acid sequences shall be filled in computer readable text format along with application form. No hardcopy needs to attach with the application form. The Specification of writing the Sequence number is defined as:

Nucleotides sequence shall be listed with a maximum of 60 bases per line; with a space between each group are 10 bases. The bases of coding part of the Nucleotide sequence shall be listed as triplets (codons). The base of a nucleotide sequence shall be listed in groups of 10 bases, except in the coding parts of the sequence.

• Benefit

To make the practice of patent filling easier, then the sequence listing should be filed in a computer-readable format. By the help of it, Examiner/any other authorized body may easily carry out a sequence search on a database available to the office & freely available by using diverse tools. Any Sequence listing in the electronic document format as specified shall preferably be created by dedicated software such as Patent IN.

Conclusion

This latest notification has been able to tackle most of the issues raised in the past and made exemptions wider. It has simplified the entire process.

1. The clarity on the concept of “non-obviousness” or the presence of the inventive step in a proposed invention which was still under debate among the patent office, courts, and patentees.
2. The Rights of Death applicant were redefined by evolving the role of the Controller.
3. The submission of nucleotide and amino acid sequences in computer-readable text format increases the correctness and presentation of nucleotide and/ or amino acid sequences which is helpful for the public at large to understand. And also Research institutions may have easy and uninterrupted access to the sequences for various purposes such as research, information, etc.

These are some points that highlighting the changes in the latest Draft Manual of Patent Office Practice and Procedure, 2019 as published by the office of Controller General of Patents, Designs, and Trademarks.

Author: Abhishek Sharma , Intern at Khurana & Khurana, Advocates and IP Attorneys. In case of any  queries please contact/write back to us at [email protected].

References:

[2]https://www.wipo.int/edocs/pubdocs/en/wipo_pub_941_2017.pdf [3]https://www.wipo.int/export/sites/www/standards/en/pdf/03-25-01.pdf