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1 1992

PATENTS ACT, 1992

CHAPTER III

Applications

Right to apply for patent.

15. —Any person may make an application for a patent either alone or jointly with another.

Right to patent.

16. —(1) The right to a patent shall belong to the inventor or his successor in title, but if the inventor is an employee the right to a patent shall be determined in accordance with the law of the state in which the employee is wholly or mainly employed or, if the identity of such state cannot be determined, in accordance with the law of the state in which the employer has his place of business to which the employee is attached.

(2) If two or more persons have made an invention independently of each other, the right to a patent for the invention shall belong to the person whose patent application has the earliest or earlier (as may be appropriate) date of filing, but this provision shall apply only if the earliest or earlier application has been duly published under this Act.

(3) For the purposes of proceedings before the Controller the applicant shall be deemed to be entitled to exercise the right to the patent.

Mention of inventor.

17. —(1) The inventor or joint inventors of an invention shall have a right to be mentioned as such in any specification of a patent granted for the invention and shall also have a right to be so mentioned, if practicable, in any published patent application for the invention.

(2) Unless he has already given the Controller the information hereinafter mentioned, an applicant shall within the prescribed period file with the Controller a statement—

(a) identifying the person or persons whom he believes to be the inventor or inventors, and

(b) where the applicant is not the sole inventor or the applicants are not the joint inventors, indicating the derivation of his or their right to be granted the patent,

and if he fails to do so, the application shall be deemed to be withdrawn.

(3) Where a person has been mentioned as sole or joint inventor in pursuance of this section, any other person who alleges that the former ought not to have been so mentioned may at any time request the Controller to make a finding to that effect; and if the Controller does so, he shall accordingly amend the register and any undistributed copies both of the published patent application and of the specification of the granted patent.

Making of application.

18. —(1) Every application for a patent under this Part shall be filed at the Office in the prescribed manner and be in the prescribed form.

(2) A patent application shall contain—

(a) a request for the grant of a patent;

(b) a specification containing a description of the invention to which the application relates, one or more claims and any drawing referred to in the description or the claim or claims; and

(c) an abstract.

(3) Every application shall be accompanied by the prescribed filing fee unless the Minister prescribes a later date by which such fee may be paid.

Disclosure of invention.

19. —(1) A patent application shall disclose the invention to which it relates in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art.

(2) Without prejudice to the generality of subsection (1), rules may prescribe the circumstances in which an application for a patent for an invention which requires for its performance the use of a micro-organism is to be treated for the purposes of this Act as complying with that subsection and may specify other provisions, in relation to such applications.

Claims.

20. —The claim or claims shall define the matter for which protection is sought, be clear and concise and be supported by the description.

Unity of invention.

21. —(1) A patent application shall relate to one invention only or to a group of inventions so linked as to form a single general inventive concept.

(2) Without prejudice to the generality of subsection (1), rules may provide for treating two or more inventions as being so linked as to form a single general inventive concept for the purpose of this Act.

Abstract.

22. —(1) The abstract shall only serve for use as technical information; it may not be taken into account for any other purpose and in particular it may be used neither for the purpose of interpreting the scope of the protection sought nor for the purpose of applying section 11 (3).

(2) The Controller may determine whether the abstract adequately fulfils its purpose and if, in his opinion, it does not, he may reframe it so that it does.

Date of filing application.

23. —(1) The date of filing of a patent application shall be the earliest date on which the applicant paid the filing fee and filed documents which contain—

(a) an indication that a patent is sought;

(b) information identifying the applicant; and

(c) a description of the invention even though the description does not comply with the requirements of this Act or with any requirements that may be prescribed.

(2) If the Minister prescribes a later date for payment of the filing fee under section 18 (3), the date of filing referred to in subsection (1) shall be the date on which the documents referred to in that subsection are filed.

(3) If any drawing referred to in the application is filed later than the date of filing accorded to the application by virtue of subsection (1), the Controller shall give the applicant an opportunity of requesting, within the prescribed period, that the date on which the drawing was filed shall be treated as being, for the purposes of this Act, the date of filing the application, and—

(a) if the applicant makes any such request, the date of filing the drawing shall be so treated;

(b) if the request is not made, any reference to the drawing in the application shall be deemed to be deleted.

(4) If any drawing referred to in the application has not been filed, the Controller shall invite the applicant to file the drawing within the prescribed period, and—

(a) if the drawing is subsequently filed within the prescribed period, the date on which it is filed shall be treated for the purposes of this Act as the date of filing the application;

(b) if the drawing is not so filed, any reference to the drawing in the application shall be deemed to be deleted.

(5) If in the case of an application which has a date of filing by virtue of the foregoing provisions of this section, or is deemed to have a date of filing accorded to it by virtue of section 24 or 81 , one or more claims or the abstract has not been filed within the relevant prescribed period, the application shall be deemed to have been withdrawn at the end of that period.

Divisional application.

24. —A patent application (a “divisional application”) which—

(a) is in respect of subject-matter which does not extend beyond the content of an earlier application as filed, and

(b) complies with the relevant requirements (including procedure and time limits) specified in the rules,

shall be deemed to have been filed on the date of filing of the earlier application and shall have the benefit of any right to priority.

Priority right.

25. —(1) A person who has duly filed in or for the State, or in or for any other state party to the Paris Convention for the Protection of Industrial Property, an application for a patent or for the registration of a utility model or for a utility certificate or for an inventor's certificate, or his successors in title, shall enjoy, for the purpose of filing a subsequent patent application under this Act in respect of the same invention, a right of priority during such period as may be prescribed, subject to compliance with any prescribed conditions and the payment of any prescribed fee.

(2) Every filing that is equivalent to a regular national filing under the national law of the state where it was made (including the State), or under bilateral or multilateral agreements, shall be recognised as giving rise to a right of priority.

(3) In this section “a regular national filing” means any filing that establishes the date on which the application was filed, whatever may be the outcome of the application.

(4) (a) A subsequent application for the same subject-matter as a previous first application and filed in or in respect of the same state (including the State) shall be considered as the first application for the purposes of determining priority if, and only if, at the date of filing the subsequent application, the previous application has been withdrawn, abandoned or refused, without having been open to public inspection and without having left any rights outstanding, and has not served as a basis for claiming right of priority.

(b) Where, pursuant to this subsection, a subsequent application is considered as a first application, the first application may not thereafter serve as a basis for claiming a right of priority.

(5) If the first filing has been made in a state which is not a party to the Paris Convention for the Protection of Industrial Property subsections (1) to (4) shall apply if the Government makes an order to that effect under this subsection consequent upon bilateral or multilateral agreements under which the State grants on the basis of a first filing made in or for that state and subject to conditions equivalent to those laid down in the said convention, a right of priority having equivalent effect.

Claiming priority.

26. —(1) An applicant desiring to take advantage of the priority of a previous application shall file, in the prescribed manner and within the prescribed period, a declaration of priority. Rules made under this Act may require the filing of a copy of the previous application and, if the language of the latter is a foreign language, a translation in English.

(2) Multiple priorities may be claimed in respect of a patent application, notwithstanding the fact that they originated in different states, and, where appropriate, multiple priorities may be claimed for any one claim, and where multiple priorities are claimed, time limits which run from the date of priority shall run from the earliest date of priority.

(3) If one or more priorities are claimed in respeet of a patent application, the right of priority shall cover only those elements of the patent application which are included in the application or applications whose priority is claimed.

(4) If certain elements of the invention for which priority is claimed do not appear among the claims formulated in the previous application, priority may nonetheless be granted if the documents of the previous application as a whole specifically disclosed such elements.

Effect of priority right.

27. —(1) The right of priority shall have the following effect, namely, the date of priority shall be regarded as being the date of filing of the patent application for the purposes of subsections (2) and (3) of section 11 and section 16 (2).

(2) Where a patent application is filed and the priority of a previous application is claimed under section 26 , then, notwithstanding anything contained in this Act, the patent application and any patent granted in pursuance of it shall not be invalidated by reason only of the fact that any subject-matter disclosed in the previous application was made available to the public at any time after the date of filing of the previous application.

Publication of application.

28. —(1) A patent application shall be published in the prescribed manner as soon as practicable after the expiry of the period of eighteen months beginning on the date of filing, or, if priority has been claimed, beginning on the date of priority; provided that at the request of the applicant the application may be published before the expiry of the period aforesaid.

(2) Subject to subsection (3), a patent application shall not be published if, before the termination of the technical preparations for publication, it has been finally refused or withdrawn or has been deemed to have been withdrawn.

(3) A patent application which forms the basis for a divisional application under section 24 shall be published with its divisional application unless it has already been published under subsection (1).

(4) The Controller shall advertise the date of publication of a patent application in the Journal.

(5) The Controller may cause to be omitted from the published patent application—

(a) statements or other matter contrary to public order or morality;

(b) statements disparaging the products or processes of any particular person other than the applicant, or the merits or validity of applications or patents of any such person; provided that mere comparisons with the prior art shall not be considered disparaging per se.