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PATENT FILING AND DRAFTING PROCEDURE IN INDIA FOR A NEW

PHARMACEUTICAL PRODUCT

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Vol 5, Issue 4, 2018 ISSN 2349-7041

Review Article

PATENT FILING AND DRAFTING PROCEDURE IN INDIA FOR A NEW

PHARMACEUTICAL PRODUCT
VIJAY KUMAR
Domain of Drug Regulatory Affairs, School of Pharmaceutical Sciences, Lovely Professional University, Phagwara-144 001.
Email: Vijayrajput071@gmail.com
ABSTRACT
Background and Aim: A patent is a legal right to grant of Patent to the Patentee for his new idea, method, product, etc. for a limited time period by
the government. The patent law in any country provides safety to the inventor for his discovery. Patent safety means the other person cannot
manufacture and distribute the product without taking prior permission from the patentee. Methods: In this work the Patent law for Patent grant in
India is discussed. The patent law is quite similar in all countries. The difference is mainly in the patent filing procedure. Result: The patent system
is divided into two parts, first is patent filing procedure and the second is the patent grant procedure. The procedure starts with the filing of an
application for the grant of patent. This is followed by the second step which includes the search, publish and examination. If the application fulfills
all the requirement of the patent law, then the patent is granted. Conclusion: In different countries there are different criteria for an invention to be
a patentable, but in all the countries the clause of novelty is there. The clause novelty states that “the invention must be new” if your invention is
already known you cannot get a patent despite being fulfilled criteria, such as industrial application and must be non-obvious.
KEYWORDS: Patent, IPO, ISA.
INTRODUCTION
A patent is a legal right for any discovery, ideas approved for a e) Any method for the surgical, medicinal or other care of human
narrow period of time to the patentee by the government in beings
exchange of his discovery. A patent gives safety to the patentee for f) Presentation of information
his new discovery. The safety is approved for 20 years. Patent safety g) Topography of integrated circuits
means the other person cannot manufacture and distribute the
product without taking permission from the patentee. When the Any “invention falling within subsection (1) of the Atomic Energy
patent time limit expires the production also comes to an end and Act, 1962 (33 of 1962) are not patentable under section 4 of the act
the patentee no longer holds the right to the discovery. Any TYPES OF PATENT APPLICATION
discovery, related to the product and process that is useful for
industrial application and is new can be patented. The patent filing The application for patent can be of following types:
procedures differ from one country to another. [1]
1. Ordinary application
PATENT FILING PROCEDURE IN INDIA 2. International/PCT application
3. Convention application
What is Invention- Section 2 (1) (j) of the Patent Act, 1970 (the Act) 4. Application for addition
defines the invention as “Invention means a new process and 5. Divisional application
product which is non-obvious and useful for industry”. [2]
Ordinary application
What is novelty- Section 2 (1) (1) of the Act defines new inventions
as “new invention means any technology and invention which is not It is also called non-provisional application. This application
available in any country or any published document before the filing contains the claims and the complete specification. It is submitted in
of patent application” is known as a novelty. the patent office without any reference to other application. In the
patent application, name and address of first and true inventor must
What is inventive step –Section 2 (1) (a) of the Act defines be given. [4]
inventive step as “inventive step means a feature of an invention that
involves technical advance as compared to the existing knowledge or The important documents of the patent application are:-
having economic significance or both and that makes the invention
Form 2 “Complete or Provisional specification”
not obvious to a person skilled in the art”.
Form 3 “Statement and undertaking”
What is industrial applicability- Section 2 (1) (AC) of the act
defines industrial applicability as “industrial applicability means that Form 5 “Declaration as to inventor ship”
any method or technology being made which is useful to the
industry.”  Priority document
 Power of attorney
Invention not Patentable- Section 3 of the act mention different
types of invention which will not qualify for a patent even if they International/PCT application
satisfy the requirement of section 2 (1) (j) of the act namely. [3]
PCT application is also known as international application. It was
a) Any invention which is against the natural law introduced in the year 1970. The main purpose of this application is
b) Any invention which produces harmful effect to plant, animal to give safety to the inventor for his idea or discovery in the world.
or human life In PCT, there are 148 countries. Instead of filing several regional or
c) Any discovery related to abstract theory and scientific principle national application the applicant can file a PCT application and
d) A technique of agriculture protects his invention in these 148 countries. [5]

Innoriginal International Journal of Sciences | Volume 5 | Issue 4 | July-Aug 2018 | 13-16

 Innoriginal International Journal of Sciences | Volume 5 | Issue 4 | July-Aug 2018 | 13-16

In PCT national phase application the applicant must attach a TYPES OF PATENT SPECIFICATION
complete specification which includes title, drawing, abstract
description and claims. 31 months’ time period is fixed for entering There are two types of specifications
into the national phase from the priority date. PCT national phase 1. Provisional Specification :section 9 of the act
application can be examined any time before this time limit.
2. Complete specification: section 9 of the act
Indian Patent Office (IPO) as Receiving Office
Provisional Specification
 The receiving office sends the search copy of the applicant to
the International Searching Authorities (ISA). This is filed when the applicant feels that his discovery/idea has
 An applicant can file an international application in a language reached the stage that it can be disclosed in the form of a written
other than the language which is accepted by the ISA for report. In this case provisional application is submitted to the patent
carrying a search. office and it helps to preserve the priority date of the application.
 A dialect acknowledgment by the ISA After receiving the provisional specification, the patent office gives
 Publication Language an application number to the patent application. [11]
 A dialect acknowledged by the receiving office under rule 12.1
(a), unless the global application is documented in a published Complete Specification
language.
It is very important document in a patent application for the grant of
 The office is competent only if the international search has
patent, the applicant must submit it within 12 months from the date
been carried out by Swedish patent office or by Austrian patent
of filing of provisional application. In this application, applicant gives
and registration offices. [6]
a complete description of his invention. The submission of complete
IPO as International Searching Authorities specification period can be extended by 3 months.

 ISA notifies the applicant that the search copy has been Content of specification section 10 of the act
received in form PCT/ISA/202 and sends a copy of the
1. Title: The title of the patent should describe the subject matter
notification to the international bureau (IB).
in the patent application.
 The Language accepted for international search is English.
The other important points are: 2. Field of Invention: The field of invention is a general wide
 The topics indicated in subsection (i) to (vi) of PCT Rule 39.1 statement telling about the technology of the invention.
are not searched.
 There is no need to submit the separate power of attorney. 3. Background: The background is used to describe the
 ISA must create the international search report (ISR) and statement of the technology, the known prior art, the
written opinion within 3 months from the date of receipt of the disadvantage/needs that are being overcome before the
search copy. invention described in the patent. The background identifies
the key feature of the invention that were lacking in the prior
Convention application section 135 of the act art. [12]
According to the act, convention application is defined as the 4. Summary: The inventions are represented in a summarized
application filed by the applicant in one or more convention form in this section. The information in this section is related to
countries. After filing the application in convention country the the step taken to solve the problem which was discussed in the
applicant again files the same application at the patent office of India background of invention. This section also describes the
within 12 months. [7] advantage of the invention.
Application for addition section 54 of the act 5. Description: It starts with the background of previous
invention and also includes information about the present
The application is filed by the applicant in the IPO if any invention like process and products or its parts. It must be
improvement or modification is made to the invention. The time written in detail as per the rules of the act.
period is the same for granting the patent and it is not extended. [8]
6. Claims: Claims must be clear and brief.
Divisional application section 16(1) of the act
 It must describe the technical features of the invention.
This application is used when the applicant claims more than one  Important features of the invention must be stated in the
invention and law does not allow multiple patent in one invention. independent claims.
The applicant sends a request application to the patent office before
 Use Arabic numerals for numbering the claims.
the grant of patent and divides the application in two parts. [9]
 Only one independent claim should be present in the same
Following this approach, it is not mandatory for the applicant to category of the application
submit the complete specification in the first part of application. In
7. Abstract: It is short summary of invention and its uses. It
the second part of application the applicant must submit the
should preferably be written in 150 words and should consist
complete specification within the specified time period. If the
of following.
applicant does not submit the complete specification in a given time
period then the application is rejected by the IPO.  Invention description
Person entitled to apply for patents section 6 of the act  Description of the important component and their work

A) According to the section 134, application seeking the grant of 8. Drawing: The drawing of a patent specification describes the
patent can be filed by the following person: invention by using chemical or mechanical structures, charts
and detailed relationship of features. The drawing contains
 First the true inventor of the invention references as (numeric and alphabetic) that relate the features
 First and true inventor assignee a person who represent the described in the specification to the features or portion shows
invention on his/her behalf. in the drawing.
 Legal representative of the inventor
FEES FOR FILING
B) Under sub-section (1) of the act the applicant can make a
There are two types of filing that e-filing and physical filing. The fees
patent application either alone or joint with other person. [10]
are based on the type of filing. [13]

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 Innoriginal International Journal of Sciences | Volume 5 | Issue 4 | July-Aug 2018 | 13-16

For e-Filing*:

Table 1: Patent Filing Fees in India

Number On what payable No. For natural person(S) For person other than natural person(S) either alone
of entry of or jointly with natural person(S)
form For small entity For other except small entity
Rupees Rupees Rupees
1. On application for a patent under 1 1600 4000 8000
section 7, 54 or 135 and rule 20(1)
accompanied or complete
specification.
I. For each sheet of I. 160 I. 400 I. 800
specification in addition
30
II. For each claim in II. 320 II. 800 II. 1600
addition to 10
2. On Filing complete specification 2 No fee No fee No fee
after provisional up to 30 pages
having up to 10 claims.
I. For each sheet of I. 160 I. 400 I. 800
specification in addition
to 30
II. for each claim in
addition to 10 II. 320 II. 800 II. 1600
3 On filing a statement and 3 No fee No fee No fee
undertaking under section 8
4 Declaration as to inventor ship 5 No fee No fee No fee
5 On request for examination of 18
application for patent I. 4000 I. 10000 I. 20000
I. Under section 11B and
rule 24(1)
II. under rule 20(4)(ii) II. 5600 II. 14000 II. 28000
10% surcharge on physical filing
FLOW CHART OF FILING APPLICATION IN INDIA

Fig. 1: Patent filing procedure in India

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 Innoriginal International Journal of Sciences | Volume 5 | Issue 4 | July-Aug 2018 | 13-16

PUBLICATION and rejection depends upon the drafting. The patent protection term
in India is 20 years from the priority date. In India there are two
After filing the application form, the applicant is required to publish type of patent which are product and process patent. Patent grant
a journal which contains name, address, abstract, abstract and procedure is the next step after the filing of application, in which
procedure of invention to the patent office. This should be done includes search, publication, examination and opposition.
within 18 months after filing the application form or from the date of
priority, to the patent office. After this procedure the patent CONFLICT OF INTEREST
application is open for public inspection. Before publication it is not
open for public inspection. [14] There is no conflict of interest

EXAMINATION REFERENCE

The applicant who has filed for the patent undergoes the procedure 1. The Patents Act, 1970. Retrieved from:
of examination in which all the documents, application forms, claims http://www.ipindia.nic.in/ipr/patent/patents.html./March 2,
forwarded by the applicant are tested. After testing of the reports, a 2018.
First Examination Report is published and sent by the patent office 2. Definitions and interpretation. Retrieved from: http:
to the applicant or his agent stating the objection to which the //www.ipindia.nic.in/ipr/patent/eversion-ActRules/section/
applicant or his agent has to reply within 6 months. In case the PS2.html./March 7, 2018.
applicant fails to reply to the report and an extension of 6 more 3. Invention not Patentable. Retrieved from: http:
month is given to the applicant. [15] //www.ipindia.nic.in/ipr/patent/eversion-ActRules/section/
PS3.html./March 7, 2018.
OPPOSITION TO THE PATENT 4. Type of patent application. Retrieved from: http:
//www.Irswami/page /type-of-patent-application.pdf./March
After the First Examination Report the patent office search for the 8, 2018.
same patent type in their offices to ensure that the patent applied for 5. The International Patent System. Retrieved from: http:
invention is valid there is no other claim or there is no other patent //www.wipo.int/pct/en/-html./March 10, 2018.
holder of that invention already in the past. [16] 6. The PCT Applicant's Guide. Retrieved from: http:
GRANT OF PATENT //www.wipo.int/pct/en/app guide/I.html./March 12, 2018.
7. Convention Applications. Retrieved from: http:
When all the criteria are met the patent is issued to a person for 20 //www.ipindia.nic.in/ipr/patent/eversion-
years. If there is opposition to the patent another can file within a ActRules/section/PS35.html. March 13, 2018.
year of publication of patent. [17] 8. Patents of addition. Retrieved from: http:
//www.ipindia.nic.in/ipr/patent/eversion-
DRAFTING OF A PATENT SPECIFICATION
ActRules/section/PS54.html./ March 14, 2018.
First Step: Information/document required from inventor, 9. Power of Controller to make orders respecting division of
invention disclosure form which should include all information. [18] application. Retrieved from: http: //www.ipindia.nic.in/
ipr/patent/eversion-ActRules/section/ PS16.html./ March 12,
Second Step: Prepare strategy for drafting and figure out the 2018.
relevant method of drafting such problem-solution, Could-would, 10. Divisional applications. Retrieved from: http:
Teaching suggestion motivation etc. //www.ipindia.nic.in/ipr/patent/eversion-
ActRules/section/PS6.html./March 17, 2018.
Third Step: Confirm your understanding with the inventor.
11. Provisional Specification. Retrieved from: http:
Fourth Step: Prepare claims of the specification and confirm the //www.ipindia.nic.in/ ipr/patent/eversion-ActRules/section/
scope and technical disclosure with inventors. PS9.html./ March 19, 2018.
12. Complete Specification. Retrieved from: http:
Fifth Step: Draft the description, abstract, drawing/s of the //www.ipindia.nic.in/ipr/patent/eversion-ActRules/section/
specification. PS10.html./March 22, 2018.
Sixth Step: Share the full petition with the inventor to confirm. 13. Patent Fees. Retrieved from: http:
//www.ipindia.nic.in/fees/html./ April 2, 2018.
Seventh Step: File a patent application based on the drafted patent 14. Patent Publication. Retrieved from: http: //www.ipindia.nic.in
specification. /ipr/patent/eversion-ActRules/section/PS11A.html./ April 6,
2018.
CONCLUSION 15. Examination of application. Retrieved from: http:
The patent law in any country provides safety to the inventor for his //www.ipindia.nic.in/ipr/patent/eversion-
discovery. Patent safety means the other person cannot manufacture ActRules/section/PS12.html./ April 8, 2018
and distribute the product without taking prior permission from the 16. Opposition Proceedings to Grant of Patents. Retrieved from:
patentee. In different countries there are different criteria for an http: //www.ipindia.nic.in/ipr /patent/eversion-ActRules/
invention to be a patentable but in all the countries the clause of section/ PS25.html./April 9, 2018.
novelty is there. The clause novelty states that “the invention must 17. Grant of Patents. Retrieved from: http: //www.ipindia.nic.in/
be new” if your invention is already known you cannot get patent ipr/patent/eversion-ActRules/section/PS43.html/April 12,
despite being fulfilled criteria, such as industrial application and 2018.
must be non-obvious. The patent filing procedure is first step in 18. Patent Specification Drafting in India. Retrieved from: http:
which the applicant drafts the specification which provides complete //www.ipindia.nic.in/ipr/patent/patent agent/paper I-II May
information about the invention. This includes title, drawing, 2013.pdf/April 14, 2018.
description, abstract and claim. The patent application acceptance

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