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CHAPTER 3 – APPLICATIONS FOR PATENTS

BananaIP Counsels > THE PATENTS ACT > CHAPTER 3 – APPLICATIONS FOR PATENTS

CHAPTER 3 – APPLICATIONS FOR PATENTS

 

6. Persons entitled to apply for patents

 

(1)  Subject to the provisions contained in section 134, an application for a patent for an invention may be made by any of the following persons, that is to say,

 

(a)  by any person claiming to be the true and first inventor of the invention;

 

(b)  by any person being the assignee of the person claiming to be the true and first inventor in respect of the right to make such an application;

 

(c)  by the legal representative of any deceased person who immediately before his death was entitled to make such an application.

 

(2)  An application under sub-section (1) may be made by any of the persons referred to therein either alone or jointly with any other person.

 

7. Form of application.

 

(1)  Every application for a patent shall be for one invention only and shall be made in the prescribed form and filed in the patent office.

 

(1A)  Every international application under the Patent Cooperation Treaty for a patent, as may be filed designating India shall be deemed to be an application under this Act, if a corresponding application has also been filed before the Controller in India.

 

(1B)  The filing date of an application referred to in sub-section (1A) 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.

 

(2)  Where the application is made by virtue of an assignment of the right to apply for a patent for the invention, there shall be furnished with the application, or within such period as may be prescribed after the filing of the application, proof of the right to make the application.

 

(3)  Every application under this section shall state that the applicant is in possession of the invention and shall name the person claiming to be the true and first inventor; and where the person so claiming is not the applicant or one of the applicants, the application shall contain a declaration that the applicant believes the person so named to be the true and first inventor.

 

(4)  Every such application (not being a convention application or an application filed under the Patent Cooperation Treaty designating India) shall be accompanied by a provisional or a complete specification.

 

8. Information and undertaking regarding foreign applications.— 

 

(1)  Where an applicant for a patent under this Act is prosecuting either alone or jointly with any other person an application for a patent in any country outside India in respect of the same or substantially the same invention, or where to his knowledge such an application is being prosecuted by some person through whom he claims or by some person deriving title from him, he shall file along with his application or subsequently within the prescribed period as the Controller may allow—

 

(a)  a statement setting out detailed particulars of such application; and

 

(b)  an undertaking that, up to the date of grant of patent in India, he would keep the Controller informed in writing, from time to time, of detailed particulars as required under clause (a) in respect of every other application relating to the same or substantially the same invention, if any, filed in any country outside India subsequently to the filing of the statement referred to in the aforesaid clause, within the prescribed time.

 

(2)  At any time after an application for patent is filed in India and till the grant of a patent or refusal to grant of a patent made thereon, the Controller may also require the applicant to furnish details, as may be prescribed, relating to the processing of the application in a country outside India, and in that event the applicant shall furnish to the Controller information available to him within such period as may be prescribed.

 

9. Provisional and complete specifications.

 

(1)  Where an application for a patent (not being a convention application or an application filed under the Patent Cooperation Treaty designating India) is accompanied by a provisional specification, a complete specification shall be filed within twelve months from the date of filing of the application, and if the complete specification is not so filed, the application shall be deemed to be abandoned.

 

(2)  Where two or more applications in the name of the same applicant are accompanied by provisional specifications in respect of inventions which are cognate or of which one is a modification of another and the Controller is of opinion that the whole of such inventions are such as to constitute a single invention and may properly be included in one patent, he may allow one complete specification to be filed in respect of all such provisional specifications.

 

Provided that the period of time specified under sub-section (1) shall be reckoned from the date of filing of the earliest provisional specification.

 

(3)  Where an application for a patent (not being a convention application or an application filed under the Patent Cooperation Treaty designating India) in. accompanied by a specification purporting to be a complete specification, the Controller may, if the applicant be requests at any time within twelve months from the date of filing of the application, direct that such specification shall be treated, for the purposes of this Act, as a provisional specification and proceed with the application accordingly.

 

(4)  Where a complete specification has been filed in pursuance of an application for a patent accompanied by a provisional specification or by a specification treated by virtue of a direction under sub-section (3) as a provisional specification, the Controller may, if the applicant so requests at any time before grant of patent, cancel the provisional specification and post-date the application to the date of filing of the complete specification.

 

10. Contents of specifications.—

 

(1)  Every specification, whether provisional of complete, shall describe the invention and shall begin with a title sufficiently indicating the subject-matter to which the invention relates.

 

(2)  Subject to any rules that may be made in this behalf under this Act, drawings may, and shall, if the Controller so requires, be supplied for the purposes of any specification, whether complete or provisional; and any drawings so supplied shall, unless the Controller otherwise directs be deemed to form part of the specification, and references in this Act to a specification shall be construed accordingly.

 

(3)  If, in any particular case, the Controller considers that an application should be further supplemented by a model or sample of anything illustrating the invention or alleged to constitute an invention, such model or sample as he may require shall be furnished before the application is found in order for grant of a patent, but such model or sample shall not be deemed to form part of the specification.

 

(4)  Every complete specification shall—

 

(a)  fully and particularly describe the invention and its operation or use and the method by which it is to be performed;

 

(b)  disclose the best method of performing the invention which is known to the applicant and for which he is entitled to claim protection; and

 

(c)  end with a claim or claims defining the scope of the invention for which protection is claimed;

 

(d)  be accompanied by an abstract to provide technical information on the invention: Provided that—

 

(i)  the Controller may amend the abstract for providing better information to third parties; and

 

(ii)  if the applicant mentions a biological material in the specification which may not be described in such a way as to satisfy clauses (a) and (b), and if such material is not available to the public, the application shall be completed by depositing the material to an international depository authority under the Budapest Treaty and by fulfilling the following conditions, namely:—

 

(A)  the deposit of the material shall be made not later than the date of filing the patent application in India and a reference thereof shall be made in the specification within the prescribed period;

 

(B)  all the available characteristics of the material required for it to be correctly identified or indicated are included in the specification including the name, address of the depository institution and the date and number of the deposit of the material at the institution;

 

(C)  access to the material is available in the depository institution only after the date of the application of patent in India or if a priority is claimed after the date of the priority;

 

(D)  disclose the source and geographical origin of the biological material in the specification, when used in an invention.

 

(4A)  In case of an international application designating’ India, the title, description, drawings, abstract and claims filed with the application shall be taken as the complete specification for the purposes of this Act.

 

(5)  The claim or claims of a complete specification shall relate to a single invention, or to a group of inventions linked so as to form a single inventive concept, shall be clear and succinct and shall be fairly based on the matter disclosed in the specification.

 

(6)  A declaration as to the inventor ship of the invention shall, in such cases as may be prescribed, be furnished in the prescribed form with the complete specification or within such period as may be prescribed after the filing of that specification.

 

(7)  Subject to the foregoing provisions of this section, a complete specification filed after a provisional specification may include claims in respect of developments of, or additions to, the invention which was described in the provisional specification, being developments or additions in respect of which the applicant would be entitled under the provisions of section 6 to make a separate application for a patent.

 

11. Priority dates of claims of a complete specification.—

 

(1)  There shall be a priority date for each claim of a complete specification.

 

(2)  Where a complete specification is filed in pursuance of a single application accompanied by—

 

(a)  a provisional specification; or

 

(b)  a specification which is treated by virtue of a direction under subsection (3) of section 9 as a provisional specification,

 

and the claim is fairly based on the matter disclosed in the specification referred to in clause (a) or clause (b), the priority date of that claim shall be the date of the filing of the relevant specification.

 

(3)  Where the complete specification is filed or proceeded with in pursuance of two or more applications accompanied by such specifications as are mentioned insub-section (2) and the claim is fairly based on the matter disclosed—

 

(a)  in one of those specifications, the priority date of that claim shall be the date of the filing of the application accompanied by that specification;

 

(b)  partly in one and partly in another, the priority date of that claim shall be the date of the filing of the application accompanied by the specification of the later date.

 

(3A)  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.

 

(4)  Where the complete specification has been filed in pursuance of a further application made by virtue of sub-section (1) of section 16 and the claim is fairly based on the matter disclosed in any of the earlier specifications, provisional or complete, as the case may be, the priority date of that claim shall be the date of the filing of that specification in which the matter was first disclosed.

 

(5)  Where, under the foregoing provisions of this section, any claim of a complete specification would, but for the provisions of this sub-section, have two or more priority dates, the priority date of that claim shall be the earlier or earliest of those dates.

 

(6)  In any case to which sub-sections (2), (3), (3A), (4) and (5) do not apply, the priority date of a claim shall, subject to the provisions of section 137, be the date of filing of the complete specification.

 

(7)  The reference to the date of the filing of the application or of the complete s pecification in this section shall, in cases where there has been a post-dating under section 9 or section 17 or, as the case may be, an ante-dating under section 16, be a reference to the date as so post-dated or ante-dated.

 

(8)  A claim in a complete specification of a patent shall not be invalid by reason only of—

 

(a)  the publication or use of the invention so far as claimed in that claim on or after the priority date of such claim; or

 

(b)  the grant of another patent which claims the invention, so far as claimed in the first mentioned claim, in a claim of the same or a later priority date.

 

 

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