CONDONEMENT OF DELAY IN LEAVING AND SERVING DOCUMENTS TO THE PATENT OFFICE.

Patent Rules 6 of the Patent Act 1970 is about “Leaving and Serving Documents”.

Rule 6 (6) is most relevant to the Pandemic due to COVID.

According to the public notice issued by the office of CGPDTM dated the 22nd May 2020, the delay in transmitting or resubmitting documents to the Patent Office may be condoned by way of petition to the controller. Such Petition is to be submitted within one month of the ceased deadline.

The petition is without fees and can be filed through E-filing mode or Physical filing on Form 30.

Rule 6 (6) Says,

“(6) Without prejudice to sub-rule (5) and notwithstanding anything contained in sub-rule (2) of rule 138, the Controller may condone the delay in transmitting or resubmitting a document to the patent office or performing any act by a party, if a petition for such condonation of delay is made by the party to the Controller along with a statement regarding the circumstances of the fact and evidence in support of the statement, to the satisfaction of the Controller, that the delay was due to war, revolution, civil disorder, strike, natural calamity, a general unavailability of electronic communication services or other like reason in the locality where the party resides or has place of business, and that such situation was of such severity that it disrupted the normal communication in that area and that the relevant action was taken as soon as reasonably possible not later than one month from the date when such situation had ceased to exist: Provided that the delay condoned by the Controller shall not exceed the period for which the national emergency was in force, or six months from the expiry of the prescribed period, whichever is earlier”

PATENT COOPERATION TREATY

Patent Cooperation Treaty (PCT) is an International legal agreement that enables the applicant to apply in 153 countries through a single application referred to as International application or PCT.  It is recognized by all member states of PCT for the purposes of examination and for enforcement of any granted patents in each country that is a member of PCT.

A Basic or Provisional application is filed with patent office of the country. The date on which this application is filed is called Priority Date. A PCT application has to be filed within 12 months from the priority date.

The PCT procedure consists of two main phases:

First phase is International phase.

Second phase is National phase.

International phase begins with the filing of PCT application to the Receiving office or WIPO (World Intellectual Property Organization). The second phase begins with the international application entering into any number of countries to be evaluated under the patent laws in force in each particular country where you want a patent. Thus, there is said to be an international phase and a national phase to the PCT process.

The international phase has 5 stages of which the first 3 is mandatory and the last two are optional.

Stage 1: Application Filing with Receiving Office (RO)

Stage 2: International Search Authoriry (ISA) conducts a search to eliminate similar patents and prepare a report called International Search Report (ISR). They also provide a report containing Written Opinion (WO) on patentability of the invention.

Stage 3: The patent application along with ISR and WO report is published on Patentscope (WIPO) for public view.

Stage 4: Establishment of Supplementary international search.

Stage 5: International Preliminary Examination (optional). Applicant files a demand with International Preliminary Examination Authority (IPEA). This report analyses the general patentability of the invention. This report is communicated to the RO.

National Phase: Within 22/30/31 months from the priority date, the applicant has to file the National Phase PCT application for the grant of patent. The application is prosecuted according to the law of respective country.

Following Flow chart elucidates PCT Process and Important timelines ;

For further queries feel free to contact us by phone or E-mail. (Ph. 9600189905, contact@sailaipr.com)

Download Patent Cooperation Treaty Chart Here.

Chennai Patent Registration for Computer Related Inventions

Chennai Patent Registration for Computer Related Inventions

consist of inventions which involve the use of computers, computer networks or other programmable equipment and include inventions which require computer programme or programmes for operating.

Not all types of software-related innovation can enjoy patent protection. To be eligible for patent protection, an invention must meet several criteria. Thus, mere economic theories, methods of doing business, mathematical methods or computer programs as such are not patentable “inventions”.

As per the Guidelines for Examination of Computer- Related Inventions by the office of the Controller General of Patents, Designs, and Trademarks, the computer Related Inventions are defined as those that involve:

  • The use of computers
  • Computer networks
  • Other programmable apparatus
  • Inventions with one or more features that are realized wholly or partially by means of a computer programme

Software Patent Registration is Allowed in Chennai, Bangalore, Hyderabad and across India?

Software by itself is not patentable in India. However, software can be patented if it is part of an invention that is both inventive and capable of industrial use.

The computer-related invention guidelines issued in 2016 may discourage software companies from investing in India as a major chunk of their patent portfolios are unpatentable in the country. In the long run, with no patent protection for these portfolios, a surge in software piracy may also result.

Requirement of getting software patent registration

In order to obtain a patent in India, an invention must fulfill four criteria:

  1. Novelty – “new invention” means any invention or technology which has not been anticipated by publication in any document or used in the country or elsewhere in the world before the date of filing of patent application with complete specification, i.e. the subject matter is not in public domain or does not form part of the state of the art.
  2. Industrial Applicability is capable of being made or used in the industry.
  3. Inventive Step means a feature of an invention that involves technical advancement as compared to existing knowledge or having economic significance or both and that makes the invention non obvious to a person skilled in the art.
  4. Patentability exclusion for software or computer program: – Mathematical business method computer programme per se or algorithms.

Patentability exclusion for software or computer program explains specifically subject matter which is novel/new product or process, with an inventive step and capable of industrial application qualify for patent if it falls under Section 3(k) of the Indian Patents Act, 1970. Nevertheless, not all computer- related invention falls under Section 3(k) or that computer- related inventions which are outside the scope of Section 3(k) are patentable in India. For instance, if the main essence/contribution/ function of the proposed invention lies solely in the computer program, the invention is not patentable as per Section 3(k) of the Patents Act, 1970. Conversely, if the main essence/contribution/function of the proposed invention lies in the computer program as well as hardware, the invention does not fall under Section 3(k) and shall be judged on other criteria of patentability.

Why not Software Patent?

The patents for software per se are not allowed in India so as to allow the software programmers or coders to access the open source software. In a developing country like India, in case if the software is patented, it restricts the programmers or coders from accessing the patented programs. Accordingly, Section 3 (k)does not allow patents related to software without any hardware applicability. It is important to note that Section 3(k)does not intend to fully ban the software patents in India. It only explains that computer programs per se are not patentable. The phrase computer programs per se’ has not been defined and it has therefore been the source of some ambiguity. To this end, the Government passed some Guidelines that help to define the extent or rather the manner in which software inventions are patentable.

Contact us now for Patent Registration

Patent Registration in Chennai

+91 96001 89905,

+91 90711 04025,

+91 44 48 631316

Patent Registration in Hyderabad

+91 96001 89905,

+91 90711 04025

Patent Registration in Bangalore

+91 88612 45682,

+91 73585 23180

Patent Registration in India

+91 96001 89905

COMPUTER RELATED INVENTIONS

Computer Related Inventions consists of inventions which involve the use of computers, computer networks or other programmable equipment and include inventions which require computer programme or programmes for operating.

Not all types of software-related innovation can enjoy patent protection. To be eligible for patent protection, an invention must meet several criteria. Thus, mere economic theories, methods of doing business, mathematical methods or computer programs as such are not patentable “inventions”.

computer-related-invention-in-india

As per the Guidelines for Examination of Computer-Related Inventions by the office of the Controller General of Patents, Designs, and Trademarks, the computer Related Inventions are defined as those that involve:

  • The use of computers
  • Computer networks
  • Other programmable apparatus
  • Inventions with one or more features that are realized wholly or partially by means of a computer programme

Software Patents Are Allowed in India?

Software by itself is not patentable in India. However, software can be patented if it is part of an invention that is both inventive and capable of industrial use.

The 2016 computer-related invention guidelines appear to disregard the decision of the Delhi High Court in Ericsson, as well as the intention of the joint parliamentary committee in endorsing the amendment to Section 3(k) in the Patent Act. The new guidelines may discourage software companies from investing in India, since a major chunk of their patent portfolios could be unpatentable in the country. In the long run, with no patent protection for these portfolios, a surge in software piracy may also result. Although it is being appealed, the Delhi High Court decision in Ericsson was seen as a positive step for the patenting of computer-related inventions. However, the final computer-related invention guidelines appear to have undone the court’s decision. Despite this, the fate of computer-related patents is arguably not sealed and may yet be clarified by the courts.

Requirement of getting software patent

In order to obtain a patent in India, an invention must fulfill four criteria:

Industrial Applicability means capable of being made or used in an industry.

Inventive Step means a feature of an invention that involves technical advancement 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.

Novelty – “new invention” means any invention or technology which has not been anticipated by publication in any document or used in the country or elsewhere in the world before the date of filing of patent application with complete specification, i.e. the subject matter has not fallen in public domain or that it does not form part of the state of the art.

Patentability exclusion for software or computer program:- Mathematical business method computer programme per se or algorithms.Patentability exclusion for software or computer program explains specifically subject matter which is novel/new product or process, with an inventive step and capable of industrial application qualify for patent if it falls under Section 3(k) of the Indian Patents Act, 1970. Nevertheless, not all computer-related invention falls under Section 3(k) or that computer-related inventions which are outside the scope of Section 3(k) are patentable in India. For instance, if the main essence/contribution/ function of the proposed invention lies solely in the computer program, the invention is not patentable as per Section 3(k) of the Patents Act, 1970. Conversely, if the main essence/contribution/function of the proposed invention lies in the computer program as well as hardware, the invention does not fall under Section 3(k) and shall be judged on other criteria of patentability.

Why not Software Patent?

The patents for software per se are not allowed in India so as to allow the software programmers or coders to access the open source software. In a developing country like India, in case if the software is patented, it restricts the programmers or coders from accessing the patented programs. Accordingly, Section 3 (k) does not allow patents related to software without any hardware applicability. It is important to note that Section 3(k) does not intend to fully ban the software patents in India. It only explains that computer programs per se are not patentable. The phrase computer programs per se’ has not been defined and it has therefore been the source of some ambiguity. To this end, the Government passed some Guidelines that help to define the extent or rather the manner in which software inventions are patentable.