Section 17 Indian Patents Act 1970

Section 17 of the Indian Patents Act 1970 is about Power of Controller to make orders respecting dating of application. It is under CHAPTER IV of the Act. CHAPTER IV is titled PUBLICATION AND EXAMINATION OF APPLICATIONS.

Power of Controller to make orders respecting dating of application

(1) Subject to the provisions of section 9, at any time after the filing of an application and [before the grant of the patent] under this Act, the Controller may, at the request of the applicant made in the prescribed manner, direct that the application shall be post-dated to such date as may be specified in the request, and proceed with the application accordingly:

Provided that no application shall be post-dated under this sub-section to a date later than six months from the date on which it was actually made or would, but for the provisions of this sub-section, be deemed to have been made.

[(2) Where an application or specification (including drawings) or any other documents is required to to be amended under section 15, the application or specification or other document shall, if the Controller so directs, be deemed to have been made on the date on which the requirement is complied with or where the application or specification or other document is returned to the applicant, on the date on which it is refiled after complying with the requirement.]

See also:

Section 16 Indian Patents Act 1970 (Power of Controller to make orders respecting division of application.)

Section 16 Indian Patents Act 1970

Section 16 of the Indian Patents Act 1970 is about Power of Controller to make orders respecting division of application. It is under CHAPTER IV of the Act. CHAPTER IV is titled PUBLICATION AND EXAMINATION OF APPLICATIONS.

Power of Controller to make orders respecting division of application

(1) A person who has made an application for a patent under this Act may, at any time [before the grant of the patent], if he so desires, or with a view to remedy the objection raised by the Controller on the ground that the claims of the complete specification relate to more than one invention, file a further application in respect of an invention disclosed in the provisional or complete specification already filed in respect of the first mentioned application.

(2) The further application under sub-section (1) shall be accompanied by a complete specification, but such complete specification shall not include any matter not in substance disclosed in the complete specification filed in pursuance of the first mentioned application.

(3) The Controller may require such amendment of the complete specification filed in pursuance of either the original or the further application as may be necessary to ensure that neither of the said complete specifications includes a claim for any matter claimed in the other.

[Explanation.– For the purposes of this Act, the further application and the complete specification accompanying it shall be deemed to have been filed on the date on which the first mentioned application had been filed, and the further application shall be proceeded with as a substantive application and be examined when the request for examination is filed within the prescribed period.]

See also:

Section 15 Indian Patents Act 1970 (Power of Controller to refuse or require amended applications, etc., in certain cases.)

Section 15 Indian Patents Act 1970

Section 15A of the Indian Patents Act 1970 is about Power of Controller to refuse or require amended applications, etc., in certain cases. It is under CHAPTER IV of the Act. CHAPTER IV is titled PUBLICATION AND EXAMINATION OF APPLICATIONS.

Power of Controller to refuse or require amended applications, etc., in certain cases

Where the Controller is satisfied that the application or any specification or any other document filed in pursuance thereof does not comply with the requirements of this Act or of any rules made thereunder, the Controller may refuse the application or may require the application, specification or the other documents, as the case may be, to be amended to his satisfaction before he proceeds with the application and refuse the application on failure to do so.

See also:

Section 14 Indian Patents Act 1970 (Consideration of report of examiner by Controller.)

Section 14 Indian Patents Act 1970

Section 14 of the Indian Patents Act 1970 is about Consideration of report of examiner by Controller. It is under CHAPTER IV of the Act. CHAPTER IV is titled PUBLICATION AND EXAMINATION OF APPLICATIONS.

Consideration of report of examiner by Controller

Where, in respect of an application for a patent, the report of the examiner received by the Controller is adverse to the applicant or requires any amendment of the application, the specification or other documents to ensure compliance with the provisions of this Act or of the rules made thereunder, the Controller, before proceeding to dispose of the application in accordance with the provisions hereinafter appearing, shall communicate as expeditiously as possible the gist of the objections to the applicant and shall, if so required by the applicant within the prescribed period, give him an opportunity of being heard.]

See also:

Section 13 Indian Patents Act 1970 (Search for anticipation by previous publication and by prior claim.)

Section 13 Indian Patents Act 1970

Section 13 of the Indian Patents Act 1970 is about Search for anticipation by previous publication and by prior claim. It is under CHAPTER IV of the Act. CHAPTER IV is titled PUBLICATION AND EXAMINATION OF APPLICATIONS.

Search for anticipation by previous publication and by prior claim

(1) The examiner to whom an application for a patent is referred under section 12 shall make investigation for the purpose of ascertaining whether the invention so far as claimed in any claim of the complete specification–

(a) has been anticipated by publication before the date of filing of the applicant’s complete specification in any specification filed in pursuance of an application for a patent made in India and dated on or after the 1st day of January, 1912;
(b) is claimed in any claim of any other complete specification published on or after the date of filing of the applicant’s complete specification, being a specification filed in pursuance of an application for a patent made in India and dated before or claiming the priority date earlier than that date.

(2) The examiner shall, in addition, make such investigation for the purpose of ascertaining whether the invention, so far as claimed in any claim of the complete specification, has been anticipated by publication in India or elsewhere in any document other than those mentioned in sub-section (1) before the date of filing of the applicants complete specification.

(3) Where a complete specification is amended under the provisions of this Act before [the grant of a a patent], the amended specification shall be examined and investigated in like manner as the original specification.

(4) The examination and investigations required under section 12 and this section shall not be deemed in any way to warrant the validity of any patent, and no liability shall be incurred by the Central Government or any officer thereof by reason of, or in connection with, any such examination or investigation or any report or other proceedings consequent thereon.

See also:

Section 12 Indian Patents Act 1970 (Examination of application.)

Section 12 Indian Patents Act 1970

Section 12 of the Indian Patents Act 1970 is about Examination of application. It is under CHAPTER IV of the Act. CHAPTER IV is titled PUBLICATION AND EXAMINATION OF APPLICATIONS.

Examination of application

[(1) When a request for examination has been made in respect of an application for a patent in the prescribed manner [under sub-section (1) or sub-section (3) of section 11B, the application and specification and other documents related thereto shall be referred at the earliest by the Controller] to an examiner for making a report to him in respect of the following matters, namely:–
(a) whether the application and the [specification and other documents relating thereto] are in accordance with the requirements of this Act and of any rules made thereunder;
(b) whether there is any lawful ground of objection to the grant of the patent under this Act in pursuance of the application;
(c) the result of investigations made under section 13; and
(d) any other matter which may be prescribed.

(2) The examiner to whom the application and the 3[specification and other documents relating thereto] are referred under sub-section (1) shall ordinarily make the report to the Controller within [such period as may be prescribed].

See also:

Section 11b Indian Patents Act 1970 (Request for examination)

Section 11B Indian Patents Act 1970

Section 11B of the Indian Patents Act 1970 is about Request for examination. It is under CHAPTER IV of the Act. CHAPTER IV is titled PUBLICATION AND EXAMINATION OF APPLICATIONS.

Request for examination

[(1) No application for a patent shall be examined unless the applicant or any other interested person makes a request in the prescribed manner for such examination within the prescribed period.]

(2) Omitted

[(3) In case of an application in respect of a claim for a patent filed under sub-section (2) of section 5 before the 1st day of January, 2005 a request for its examination shall be made in the prescribed manner and within the prescribed period by the applicant or any other interested person.]

(4) In case the applicant or any other interested person does not make a request for examination of the application for a patent within the period as specified under sub-section (1)5*** or sub-section (3), the application shall be treated as withdrawn by the applicant:

[Provided that–
(i) the applicant may, at any time after filing the application but before the grant of a patent, withdraw the application by making a request in the prescribed manner; and
(ii) in a case where secrecy direction has been issued under section 35, the request for examination may be made within the prescribed period from the date of revocation of the secrecy direction.]

See also:

Section 11a Indian Patents Act 1970 (Publication of applications)

Section 11A Indian Patents Act 1970

Section 11A of the Indian Patents Act 1970 is about Publication of applications. It is under CHAPTER IV of the Act. CHAPTER IV is titled PUBLICATION AND EXAMINATION OF APPLICATIONS.

Publication of applications

[(1) Save as otherwise provided, no application for patent shall ordinarily be opened to the public for such period as may be prescribed.

(2) The applicant may, in the prescribed manner, request the Controller to publish his application at any time before the expiry of the period prescribed under sub-section (1) and subject to the provisions of sub-section (3), the Controller shall publish such application as soon as possible.

(3) Every application for a patent shall, on the expiry of the period specified under sub-section (1), be published, except in cases where the application–
(a) in which secrecy direction is imposed under section 35; or
(b) has been abandoned under sub-section (1) of section 9; or
(c) has been withdrawn three months prior to the period specified under sub-section (1)].

(4) In case a secrecy direction has been given in respect of an application under section 35, then, it shall be published after the expiry of the period 4[prescribed under sub-section (1)] or when the secrecy direction has ceased to operate, whichever is later.

(5) The publication of every application under this section shall include the particulars of the date of application, number of application, name and address of the applicant identifying the application and an abstract.

(6) Upon publication of an application for a patent under this section–
(a) the depository institution shall make the biological material mentioned in the specification available to the public;
(b) the patent office may, on payment of such fee as may be prescribed, make the specification and drawings, if any, of such application available to the public.

[(7) On and from the date of publication of the application for patent and until the date of grant of a patent in respect of such application, the applicant shall have the like privileges and rights as if a patent for the invention had been granted on the date of publication of the application:

Provided that the applicant shall not be entitled to institute any proceedings for infringement until the patent has been granted:

Provided further that the rights of a patentee in respect of applications made under sub-section (2) of section 5 before the 1st day of January, 2005 shall accrue from the date of grant of the patent:

Provided also that after a patent is granted in respect of applications made under sub-section (2) of section 5, the patent-holder shall only be entitled to receive reasonable royalty from such enterprises which have made significant investment and were producing and marketing the concerned product prior to the 1st day of January, 2005 and which continue to manufacture the product covered by the patent on the date of grant of the patent and no infringement proceedings shall be instituted against such enterprises.]

See also:

Section 11 Indian Patents Act 1970 (Priority dates of claims of a complete specification.)

Section 11 Indian Patents Act 1970

Section 11 of the Indian Patents Act 1970 is about Priority dates of claims of a complete specification. It is under CHAPTER III of the Act. CHAPTER III is titled APPLICATIONS FOR PATENTS.

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 sub-section (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 in sub-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), 1[(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 specification 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, 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.

See also:

Section 10 Indian Patents Act 1970 (Contents of specifications)

Section 10 Indian Patents Act 1970

Section 10 of the Indian Patents Act 1970 is about Contents of specifications. It is under CHAPTER III of the Act. CHAPTER III is titled APPLICATIONS FOR PATENTS.

Contents of specifications

(1) Every specification, whether provisional or 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 1[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 3[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 for patent in India or if 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) Incase 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 inventorship 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.

See also:

Section 9 Indian Patents Act 1970 (Provisional and complete specifications.)