Obligations Of A Patentee While His/ Her Patent Application Is Pending

Introduction

Every coin has two sides likewise, every right granted has duties imposed simultaneously on the right holder. Patent is a negative right given to its holder to stop any other person from using his/ her invention without prior permission. Therefore, this right confers upon its holder obligations to commercialise the patent, also not to abuse the privilege of monopoly given to its holder and to renew patent time to time, these are conferred on the holder only after the grant of patent. Apart from these obligations there are other obligations which are conferred on the holder when the application is still pending. The following discussion gives a nutshell view of these obligations:

Obligations

1. Duty to disclose:

Sec 8 of the Indian Patents Act, 1970 deals with the duty to disclose of the applicant. Section 8(1) tells that the applicant has the duty to disclose all the information regarding the corresponding foreign applications of same or similar invention filed by him or through him by somebody by him at the time of applying or within six months of applying. He should file a statement of all the detailed particulars regarding the applications as well as an undertaking to disclose all the details of subsequent applications that may be filed at later stages. Section 8(2) confers a duty on the applicant to provide all the information needed by the controller regarding the corresponding foreign applications whenever a request is made by the controller of patents within six months of such request. First part of the duty starts as soon as a person files a patent application where as the second part starts only after a request is made by the controller of the patents.

2. Duty to request for Examination:

Unlike any other IPR registration process Patent registration process does not provide for automatic examination of the application. In this process, according to sec 11(B) of the Patents Act, 1970, the duty is cast on the applicant himself to request the controller of the patents to examine the invention applied for patent. This request to the controller has to be made within 48 hours of the date of priority or the date of filing whichever is earlier.

3. Duty to respond to objections:

The controller after receiving the examination request forwards it to the examiner who examines the invention and gives a First Examination Report (FER). In case there are any objections raised in the FER, it is the duty of the applicant to respond to the objections and comply to the same within 12 months of the issuance of the FER failing which the application would be deemed to be abandoned. Sec 25 of Indian Patents Act, 1970 deals with the oppositions part in a patent application procedure, sec 25(1) and (2) deals with the grounds for the pre or post grant oppositions respectively.

4. Duty to clear all objections:

It is the duty of the applicant to not only respond to the objections raised but also to clear all the objections as well as oppositions raised against his invention. If the controller is still not satisfied he may call for a hearing as well. And it is the duty of the applicant to attend the hearing and clear all the objections as well as oppositions (if any) raised against the invention.

5. Duty to pay statutory fees:

Last but not the least it is the duty of the applicant to pay all the statutory fees required to get a patent in the registration process without fail otherwise, his application will not be dealt with. Sec 142 deals with the provisions related to payment of fees as well as the consequences for non-payment.

After all this process is complied with and the applicant clears all the objections and oppositions raised against his invention, if the controller is satisfied he grants a patent to the invention and publishes it otherwise rejects it.

Author: M. Sai Krupa,  intern at Global Patent Filing. In case of any queries please contact/write back to us at support@globalpatentfiling.com.

References:

[1]http://www.ipo.org/wp-content/uploads/2013/03/Whitepaper-PatentprocurementinIndia.pdf

[2]https://www.lakshmisri.com/Uploads/MediaTypes/Documents/A%20Practical%20Approach%20to%20Fulfilling%20Section%208%20Requirements.pdf

[3]http://patentinindia.com/procedure-patent-registration-india/

[4]http://www.sethassociates.com/procedure-for-grant-of-patent-in-india.html