PATENTS

What is an invention?
Who may apply for a patent?
Types of applications.
Minimum documents required for filing in India.
Strategies for cheaper patent prosecution.
Statutory exclusions from patentability.
The patents (Amendment) act, 2005: Salient features.
What are the International arrangements and treaties which India is a party to?
What is the field of invention for a patentable product?
When an infrigement suit can be filed?
What is meant by the reversal of the burden of proof?
What is meant by computer implemented inventions?
What are the provisions to safeguard the public interests?
A new product or a process involving an inventive step and capable of industrial application. Inventive step defined as a feature of an invention that involves technical advance as compared to the existing knowledge and having economic significance or both and that makes the invention not obvious to a person skilled in the art.
Novelty : An invention is considered new if it does not form a part of the prior art. An invention will not be novel, if :
It has been filed in pursuance of application for patent in India.
If it has been published in any document anywhere in the world.
Claimed in any complete specification filed before a subject application but published after the claimed priority date. 
If it is anticipated having regard to the knowledge existing within local community in India or elsewhere.
The definition of inventive step includes economic significance of an invention, apart from the existing criteria.
The objective criteria for judging the inventiveness may be summarized as follows:
Determining the scope and content of the prior art.
Determining the technical result or economic value achieved by the invention.
The differences between the invention and the closest prior art.
Elucidating the problem to be solved.
Ascertaining whether bridging the said differences would be obvious to a person skilled in the art.
An invention is industrially applicable if:
It can be manufactured. 
It can be used in one field of activity.
It can be reproduced.

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Who may apply for a patent?
True and first inventor. 
His or her assignee.
Legal representative of deceased inventor or assignee.
Types of application.
Convention application.
PCT International application, may be filed in English or in Hindi.
Ordinary application.
PCT national phase application.
Application for patent of addition.
Divisional application.
Minimum documents required for filing in India.
Provisional or complete specification and/or drawings in duplicate.
Statement and undertaking regarding foreign filing details.
Declaration as to inventorship: to be filed in case of a convention application, PCT national phase application and a complete specification filed after provisional.
Priority document, if it is a convention application.
Power of attorney, if filed through an agent.
Proof of right , if the application is filed by the assignee, produced in the body of the application or by way of a separate deed of assignment.

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Strategies for cheaper patent prosecution.
The applicant should first carry out an extensive prior art search, and clearly differentiate his invention from the prior art so that the true scope and the actual technical contribution made by the invention can be clearly defined.
Once the boundaries of the invention have been defined, the specification should be drafted succinctly to reflect the true advancement made by the invention to the knowledge within the art. The applicant or his attorney should not try to unnecessarily stretch the scope of the invention beyond a reasonable limit.
The background should precisely bring out the problem associated in the art, and the manner in which the invention solves that problem.
The claims should attempt to focus on the technical features e.g. the constructional features and the process steps rather than effects and functions.
The claims of the invention should preferably not exceed 10. The claims may only refer to the broadest possible ranges for the preferred aspects, embodiments and features of the invention. All the preferred features, aspects and embodiments should be distinctly highlighted in the text under a separate heading and a reference to that heading should be drawn in the omnibus claim. This is the most effective method to reduce the number of claims without foregoing any possible scope of the invention. The number of pages of the description including the drawings and abstract should be kept below 30. For the purpose, necessary details which do not in any way contribute to the sufficiency of description may be avoided.
The applicant should provide the technical arguments himself to counter examiner's objection and should attempt to involve as less attorney time as possible.
The applicant should follow the time limits very carefully and provide instructions well before the due date to avoid the last hour rush and the associated urgency charges. He should attempt to avoid taking extensions as much as possible.
Normally, all the objections raised by the examiner should be fully attended to in the response to the First Examination Report. The prosecution costs increase with the increasing number of the office actions issued.
The applicant may try to fix the professional fee with the attorney for the prosecution.

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Searching for PCT and national filling:
Schematic for grant and validity of a patent.
Statutory exclusions from patentability:
Frivolous/contrary natural laws.
Contrary order public or morality.
Prejudice to human or animal or plant life or health or environment.
Abstract theory or scientific principle.
Mere new property or new use.
Mere admixture.
Mere arrangement or rearrangement.
Method of agriculture or horticulture.
Process for treatment or prophylaxis of human beings or animals.
Seeds, varieties or species of plants or animals.
Computer program per se.
Mathematical method, business method or algorithm.
Aesthetic creation.
Method of playing games.
Presentation of information.
Topography of integrated circuits.
Traditional knowledge.
Inventions relating to atomic energy.
Schematic illustrating the procedure for the grant of compulsory licenses:
The Patents (Amendment) Act, 2005: Salient features:
Section 3 (d):
Clause (d) of Section 3 has been amended to exclude 'the mere discovery of a new form of a known substance which does not result in the enhancement of the known efficacy of that known substance' from being patentable inventions.

Therefore, salts,  esters, ethers, polymorphs, metabolites, pure form, particle size, isomers, mixture of isomers, complexes, combinations and other derivatives are considered to be the same substance, unless they differ significantly in properties with regard to their efficacy. It follows that the patentability of such derivatives is now a matter of inventive step, rather than that of novelty.

The known parameters which may prove the efficacy of a particular derivative of a pharmaceutical  substance may be :
(a)  EC50
(b)  LC50
(c)  Therapeutic index, depends upon the EC50 and the LC50. The lower the therapeutic index, better is the efficacy of a drug for a desire activity.
Complete after Provisional:
Conversion of complete specification to provisional possible only upto twelve months from the date of filing of the purported complete specification.
No extension available for filing the complete specification, which now has to be filed with in twelve months of filing the provisional application.
Priority Dates:
The priority date of a claim is the date of the filing of the application in which the matter was first disclosed. This is important in cases in which a (complete) specification is filed claiming priority of two or more (provisional) specifications, whereby it is safer to draft claims fairly based on one particular application to get the priority date of that particular application. In case the subject matter of a claim is based on disclosure in two or more prior applications, it is always better to sub-divide the claim in two or more parts, if possible, to get the earliest priority date. (Thornhill claims).
Publication:
Provisional specifications for which no complete specifications have been filed within the specified period of twelve months are not to be published. An application which has been withdrawn three months prior to the stipulated period for publication will also not be published.
Deferred Examination:
Request for examination to be filed after publication of the application, but before the expiry of 36 months from the date of filling, under the newly introduced Deferred Examination System.
Grant:
Time for putting an application in order for grant - 6 months, from the date of issuance of the FER. The specified time limit can be extended only once for a period not exceeding three months, on a request made by the applicant before the expiry of the statutory six-month period.
Right to Sue:
The applicant has like privileges and rights as if a patent for the invention had been granted from the date of publication of the application until the date of the grant, provided that he shall not be entitled to institute any proceedings for infringement until the patent has been granted. The rights of the patentees for application filed before 1st day of January, 2005, relating to pharmaceuticals, will accrue from the date of grant of the patent. The patentee for such a patent shall only be entitled to receive reasonable royalty from such enterprises which have made significant investments and were producing and marketing the concerned product prior to 01.01.2005, 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.
Pre-grant Opposition:
Pre-grant opposition (after the publication but before the grant, with in six months from the date of publication of the application) may be filed on the ground of:
(a) Wrongful obtention;
(b) Prior Publication;
(c) Prior claiming;
(d) Publicly known or used (importation of the direct product of a claimed process included within publicly known or used, except for reasonable trial or experiment only);
(e) Lack of inventive step;
(f) Statutory exclusion;
(g) Insufficient disclosure;
(h) Failure to furnish information required under Section(8);
(i) Convention application not filed within 12 months of the basic application;
(j) No disclosure or wrong mention of the source or geographical origin of the biological material used for the invention; and/or
(k) Anticipated having regard to the knowledge available within any local or indigenous community.
The Controller shall consider such representation only if the request for examination for the subject application has been filed.
Post-grant Opposition:
Belated opposition (before the expiry of one year from the date of publication of grant of a patent). The available grounds are the same as that available for pre-grant oppositions. Opposition Board to be constituted only for belated oppositions.
Grace Period:
The 'grace period' for filling a patent application extended upto twelve months, where:
1. The invention is displayed or published by the applicant in an exhibition notified by the Government;
2. The invention is read in transactions before learned society.
3. The invention is worked publicly for reasonable trial, where the nature of invention is such that it is necessary to do so.
Foreign Filing:
Any application outside India can be filed only six weeks after filing the same invention in India or under a written permission from the Controller, in a prescribed fee and form. The Controller may grant such permission within three months of filing the said request, but generally the permission is granted within seven working days.
Revocation:
A patent may be revoked either by the Appellate Board or by the High Court, provided that revocation on a counter-claim in a suit for infringement of the patent may be done only by the High Court. Therefore, if a suit for infringement is pending, the defendant has the option of seeking revocation of the patent by way of a counter-claim in a High Court or by way of a separate and independent application seeking revocation by the Appellate Board, which may be a cheaper option to the costly litigation in Court. The grounds available for revocation are as follows:
(a) That the invention claimed is a subject of prior grant.
(b) That the patentee was not entitled to the patent.
(c) That the patent was wrongfully obtained by a person other than the person entitled, this ground is available only to a person entitled to apply.
(d) That the invention for which the patent has been granted is not an invention, within the definition of invention provided for in the Act.
(e) That the invention is anticipated with regard to prior art or prior knowledge.
(f) That the invention is obvious over the prior art.
(g) That the claimed invention is not useful i.e. not workable.
(h) Insufficient disclosure.
(i) That the claims are not clearly defined and not sufficiently based on the disclosure.
(j) That the patent was obtained by false suggestion or representation.
(k) That the claimed invention is not patentable invention in that it is statutorily excluded by law from patentability.
(l) Prior art use.
(m) Failure to disclose information regarding foreign application.
(n) Non-compliance with any secrecy direction issued under any provision of the Act.
(o) Leave to amend the specification was obtained by fraud.
(p) That the specification wrongly mentions or does not disclose the geographical origin of any biological material used for the invention.
(q) Anticipation by traditional knowledge.
The Appellate Board has not yet come into force, pending a notification from the Government to such effect.
Compulsory License:
Compulsory license for manufacture and export of patented pharmaceutical products to any country having insufficient or no manufacturing capacity in the pharmaceutical sector in certain exceptional circumstances has been introduced, provided such country has allowed importation of patented pharmaceutical products from India.
International Arrangements and Conventions
India is a member of the World Trade Organization, the Paris Convention and the Patent Cooperation Treaty (PCT).
Field of invention for a patentable invention.
A product patent may be granted in all fields of technology including chemicals, food, drugs and agro-chemicals.
Filing an infringement suit.
The period of limitation for bringing a suit for infringement of a patent is three years from the date of infringement, which three years run from the date of the infringing act and not from the date of the grant of the patent (Section 40 of the Indian Limitations Act). A suit for infringement must be filed in a District Court having jurisdiction to try the suit. Where the defendant counter claims the revocation of the patent, the suit along with the counter claim shall be stand transferred to the High Court.
Reversal of the Burden of Proof.
According to Section 104 (A) of the Act (Article 34 of the TRIPs Agreement), in any suit for infringement of a patent, where the subject matter of the patent is a process for obtaining a new product, the Court may direct the defendant to prove that the process used by him to obtain the product, identical to the product of the patented process, is different from the patented process, provided there is sufficient likelihood that the identical product is made by the patented process and the patentee could not establish through reasonable efforts to determine the actual process used by the alleged infringer, provided also that the patentee first proves that the product in question is identical to the product directly obtained by the patented process.
Computer implemented inventions
A computer program per se is not patentable.
A computer-readable storage medium having a program recorded thereon may be considered to be claim to the software program per se and are not patentable.
A process or a method which is carried out under the control of a program may not be said to be related to a computer program as such, and therefore may be patentable if it can be shown that the process or the method makes a significant contribution to the art.
The inventions relating to the application of software per se may be patentable, when claimed in combination of hardware and software components of a computer, which provides a technical advancement over the prior art.
Provisions to safeguard the public interests
Bolar provision: Any act of making, constructing, using, selling or importing a patented invention solely for use reasonably related to development and submission of information required under a law which regulates the manufacture, construction, use, sale or import shall not be considered as infringement of patent rights.
Parallel import: may be granted to a person duly authorized under the law in order to stabilize the price in India, and the same importation shall not be an infringement of the patentee's rights.