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Patents Act, 1970 (39 of 1970) Chapter III - Bare Act

StateCentral Government
Year
Section TitleApplications for Patents
Act Info:

(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 (I) may be made by any of the persons referred to therein either alone or jointly with any other person.


Section 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.

1[(1A) Every international application under the Patent Co-operation 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.]

2(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 the3[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)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.]

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1. Inserted by Patents (Amdt.) Act, 2002 dated 25.06.2002 w.e.f 20.05.2003.

2. Inserted by Patents Amendment Act (15 of 2005)

3. Substituted by Patents Amendment Act (15 of 2005)for th e word "owner"

4. Substituted by Patents Amendment Act (15 of 2005)for the word "Every such application (not being a convention application) shall be accompanied by a provisional or a complete specification."


Section 8 - Information and undertaking regarding foreign applications

(1) Wherean applicant for a patent under this Act is prosecuting either alone or jointlywith any other person an application for a patent in any country outside Indiain respect of the same or substantially the same invention, or where to hisknowledge such an application is being prosecuted by some person through whomhe claims or by some person deriving title from him, he shall file along withhis application 1 [or subsequently 2 [within the prescribed period as the Controllermay allow]]

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

(b)an undertaking that, 4 [upto the date of grant of patent in India], he would keep theController informed in writing, from time to time, of 5 [detailed particulars as required under] clause (a) in respect of everyother application relating to the same or substantially the same invention, ifany, filed in any country outside India subsequently to the filing of thestatement referred to in the aforesaid clause, within the prescribed time.

6 [(2) At any time after an applicationfor patent is filed in India and till the grant of a patent or refusal to grantof patent made thereon, the Controller may also require the applicant tofurnish details, as may be prescribed, relating to the processing of theapplication in a country outside India, and in that event the applicant shallfurnish to the Controller information available to him within such period asmay be prescribed.].

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1. Inserted by Patents (Amdt.) Act,2002 dated 25.06.2002 w.e.f 20.05.2003.

2. Substituted by Patents Amendment Act(15 of 2005) for the words "within such period as the Controller may, forgood and sufficient reasons, allow".

3. Substituted by Patents (Amdt.) Act,2002 dated 25.06.2002 w.e.f 20.05.2003. Prior to substitution it read as under:

"a statement setting out the name of the countrywhere the application is being prosecuted, the serial number and date of filingof the application and such other particulars as may be prescribed ; and"

4. Substituted by PatentsAmendment Act (15 of 2005) for the words "upto the date of the acceptance of hiscomplete specification filed in India"

5. Substituted for "details of the nature referred toin" by Patents (Amdt.) Act,2002 dated 25.06.2002 w.e.f 20.05.2003.

6. Substituted by Patents Amendment Act(15 of 2005) for the words : * [At any time after an application for patent isfiled in India and till the grant of patent or refusal to grant of patent is madethereon, the Controller may also require the applicant to furnish details asmay be prescribed relating to the processing of the application in a countryoutside India, and in that event the applicant shall furnish informationavailable to him to the Controller within thirty days from the date of receiptof the communication requiring such furnishing of information or within suchfurther period as the Controller may, for good and sufficient reasons, allow.]

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* Substituted by Patents (Amdt.) Act,2002 dated 25.06.2002 w.e.f 20.05.2003. Prior to substitution it read as under:

"(2) The Controller may also require theapplicant to furnish, as far as may be available to the applicant, detailsrelating to the objections, if any, taken to any such application as isreferred to in sub-section (1) on the ground that the invention is lacking innovelty or patentability, the amendments effected in the specifications, theclaims allowed in respect thereof and such other particulars as he may require."


Section 9 - Provisional and complete specifications

(1)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]:

Provided that the complete specification may be filed at any time after twelve months but within fifteen months from the date aforesaid, if a request to that effect is made to the Controller and the prescribed fee is paid on or before the date on which the complete specification is filed.

(2) Where two or more applications in the name of the same applicant are accompanied by provisional specifications in respect of invenlions 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.

2[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)3[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 specification purporting to be a complete specification, the Controller may, if the applicant so 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 before4[grant of patent], cancel the provisional specification and post-date the application to the date of filing of the complete specification.

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1. Substituted by Patents Amendment Act (15 of 2005) for the words: Where an application for a patent (not being a convention application) 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 . Inserted by Patents Amendment Act (15 of 2005)

3. Substituted by Patents Amendment Act (15 of 2005) for the words: Where an application for a patent (not being a convention application) is accompanied by a specification purporting to be a complete specification, the Controller may, if the applicant so requests at any time before the acceptance of the specification, direct that such specification shall be treated for the purposes of this Act as a provisional specification and proceed with the application accordingly.

4 . Substituted by Patents Amendment Act (15 of 2005) for the words: the acceptance of the complete specification


Section 10 - Contents of specifications

(1) Everyspecification, whether provisional of complete, shall describe the inventionand shall begin with a title sufficiently indicating the subject-matter towhich the invention relates.

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

(3) If, inany particular case, the Controller considers that an application should befurther supplemented by a model or sample of anything illustrating theinvention or alleged to constitute an invention, such model or sample as he mayrequire shall be furnished 1 [before the application is found in order forgrant of a patent], but such model or sample shall not be deemed to form partof fhe specification.

(4) Everycomplete specification shall-

(a)fully and particularly describe theinvention and its operation or use and the method by which it is to beperformed;

(b)disclose the best method ofperforming the invention which is known to the applicant and for which he isentitled to claim protection; and

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

2 [(d)be accompanied by an abstract to provide technical information on the invention:

Providedthat-

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

(ii) if the applicant mentions a biological material in thespecification 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, theapplication shall be completed by depositing 3 [the material to an international depositoryauthority under the Budapest Treaty] and by fulfilling the followingconditions, namely :-

(A) 4 [thedeposit of the material shall be made not later than the date of filing thepatent application in India and a reference thereof shall be made in thespecification within the prescribed period];

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

(C) access to the material is available in the depositoryinstitution only after the date of the application for patent in India or if apriority is claimed after the date of the priority;

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

2 [(4A)5 [ Incase of an international application designating India, the title, description,drawings, abstract and claims filed with the application shall be taken as the completespecification for the purposes of this Act]

6 [(5) The claim or claims of a complete specification shall relate to asingle invention, or to a group of inventions linked so as to form a single inventiveconcept, shall be clear and succinct and shall be fairly based on the matterdisclosed in the specification.]

(6) Adeclaration as to the inventorship of the invention shall, in such cases as maybe prescribed, be furnished in the prescribed form with the completespecification or within such period as may be prescribed after the filing ofthat specification.

(7) Subjectto the foregoing provisions of this section, a complete specification filedafter a provisional specification may include claims in respect of developmentsof, or additions to, the invention which was described in the provisionalspecification, being developments or additions in respect of which theapplicant would be entitled under the provisions of section 6 to make aseparate application for a patent.

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1.Substituted by Patents AmendmentAct (15 of 2005) for the words :before the acceptance of the application

2. Inserted by Patents (Amdt.) Act,2002 dated 25.06.2002 w.e.f 20.05.2003.

3. Substituted by Patents Amendment Act(15 of 2005) for the words: the material to an authorised depositoryinstitution as may be notified by the Central Government in the OfficialGazette

4. Substituted by Patents Amendment Act(15 of 2005) for the words: (A) the deposit of the material shall be made notlater than the date of the patent application in India;

5 Substitutedby Patents Amendment Act(15 of 2005) for the words: (4A) Incase of an international application designating India,-

(i) the title, description, drawings, abstracts and claimsfiled with the application shall be taken as the complete specification for thepurposes of this Act; and

(ii) the filing date of the application and its completespecification processed by the patent office as designated office or electedoffice, shall be the international filing date accorded under the PatentCooperation Treaty.

6. Substituted by Patents (Amdt.) Act,2002 dated 25.06.2002 w.e.f 20.05.2003. Prior to substitution it read as under:

"(5) The claim or claims of a completespecification shall relate to a single invention, shall be clear and succinctand shall be fairly based on the matter disclosed in specification and shall,in the case of an invention such as is referred to in section 5, relate to asingle method or process of manufacture."


Section 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 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 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,

1[(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, 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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1. Inserted by Patents Amendment Act (15 of2005).





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