Patents

Patents
 Learning Outcome
• To develop the understanding about the concept of
Patents and procedure of filling patents
 Patent
Meaning –
A patent is an exclusive right granted for an invention,
which is a product or a process that provides, in general, a
new way of doing something, or offers a new technical
solution to a problem. To get a patent, technical information
about the invention must be disclosed to the public in a
patent application.
 What kind of protection does a patent offer?

• In principle, the patent owner has the exclusive right to prevent or

stop others from commercially exploiting the patented invention.

• In other words, patent protection means that the invention cannot be

commercially made, used, distributed, imported or sold by others
without the patent owner's consent
Is a patent valid in every country?

– Patents are territorial rights.

– In general, the exclusive rights are only
applicable in the country or region in
which a patent has been filed and
granted, in accordance with the law of
that country or region.
How long does a patent last?

• The protection is granted for a limited

period, generally 20 years from the filing
date of the application.
• Basic criteria of patentability The 3 basic
criteria which any invention must meet in
order to deserve a patent:
• Novelty
• Non-obviousness
• Industrial application
• Enabling
• Invention must relates to a
– Process or Product or both
– be new (Novel)
– involves an inventive step
– be Capable of industrial application
– not fall under Section 3 and 4
 NEW” MEANS
• “Invention must not be Published in India
or elsewhere
• In prior public knowledge or prior public
use with in India
• Claimed before in any specification in
India
 Inventive step
A feature of an invention that
– involves technical advance as compared to
the existing knowledge or
– have economic significance or both and
– makes the invention not obvious to a person
skilled in the art
 Industrial application means
• Invention is capable of being made or
used in any kind of industry
 What is not Patentable
– Inventions falling within the scope of Sec. (3) of
Patents Act, 1970.
– Inventions falling within the scope of Sec. (1) of Sub-
sec. 20 of Atomic Energy Act, 1962-
For Example : Inventions relating to Compounds of –
• Uranium, Beryllium, Thorium, Plutonium, Radium, Graphite,Lithium
and more as notified by Central Govt. from time to time
• https://www.youtube.com/watch?
v=HXmsWWZnXdg
Only for reference -
• The appropriate office of the patent office shall be the head office of
the patent office or the branch office as the case may be within
whose territorial limits
– Residence of applicant or Domicile; or
– His the place of business; or
– The place where the invention actually originated. •
• If the applicant has no business or domicile in India, the address for
service in India is given by such applicant
Offices for patent filling
How to file a patent application?
• Documents can be filed in the patent office
– through online( e-filing) or
– www.ipindiaonline.gov.in/online
– through post or
– can be submitted by hand
 Who can file Patent Application
• In India [Section 6 and 134] the application can be filed either alone
or jointly:
– By any person claiming to be true and first inventor(s)
– By any person being the assignee of person claiming to be true
and first inventor(s) ( proof of assignment has to be submitted
along with the application )
– By the legal representative of any deceased person or assignee
 Types of applications
1) Provisional application
2) Ordinary Application
3) Convention Application
4) PCT International Application
5) PCT National Phase Application
6) Patent of addition
7) Divisional Application
 Provisional application

• .A provisional application is an application which can be filed if the

invention is still under experimentation stage
 Ordinary Application

• An application for patent filed in the Patent Office without claiming

any priority either in a convention country or without any reference
to any other earlier application under process in the office. Such
type of application is known an ordinary application
 Convention Application
• An application for patent filed in the Patent Office, claiming a priority
date based on the same or substantially similar application filed in
one or more of the convention countries is known as a convention
application
 PCT International Application
• An Application filed in India as Receiving Office (RO) under Patent
Cooperation Treaty is an international application which can be filed
in more than 150 countries by a single application.
 PCT National Phase Application
• When an international application is made according to PCT
designating India, an applicant can file the national phase
application in India within 31 months from the international filing
date or the priority date, whichever is earlier
 Patent of addition
• When an invention is a slight modification of the earlier invention for
which he has already applied for or has obtained patent, the
applicant can go for patent of addition if the modification in the
invention is new. One of the benefits of filing patent of addition is
that there no need to pay separate renewal fee for the patent of
addition during the term of the main patent and it expires along with
the main patent.
 Divisional Application
When an application claims more than one invention, the applicant on
his own or to meet the official objection on the ground of plurality or
distinct invention may divide the application and file two or more
applications, as the case may be for each of the inventions. This type
of application, divided out of the parent one, is known a Divisional
Application
 Step 1 – Check the Patentability of the
invention by performing a search for similar
technologies
• Before filing a patent application in India or in any other country, the
first step (optional but recommended) in the patent registration
process is to perform a detailed patentability search to determine
the chances of getting a patent. The search should ideally be
performed for both patent and non-patent references.
• The advantage of a search is it provides a good idea of the merit of
the invention and helps in deciding if there are good chances of
ultimately getting a patent granted.
• Hence, a thorough patentability search is always advised but from a
patenting process point of view is totally optional.

• If you are thinking of going international with your patent application,

spending time and money on the search will be well worth every
Rupee.
 Step 2 – Drafting a patent application
(Provisional or Complete)

• Once, you have made up your mind to go forward with the patent
application process, the next step is to prepare an Indian patent
application
• Each patent application has to be mandatorily accompanied by a
patent specification (Form 2). Based on the state of the invention,
you can either file a provisional patent application or a complete
patent application (also known as Non-provisional in some
countries).
• If the invention is still in the development mode and tests are
underway, it is a good idea to quickly file a provisional application to
block the all-important filing date.
• Filing of the provisional application gives you 12 months of time to
test and finalize your invention and file the complete application.
 Foreign filing decision –
Further, if you are interested in protecting your invention in foreign
jurisdictions, the maximum time allowed is 12 months from your first
filing date. Based on the countries you are interested in; you can opt for
filing a convention application in Paris convention members individually
in each of the countries you are interested in protecting your invention.
Alternatively, you can use the Patent Cooperation Treaty (PCT) system
to reserve your right in 140 odd member countries. Both the systems
have their pros and cons and the decision of choosing one over other
changes based on your requirement and will be the basis of another
post.
Step 3 – Filing the patent application in
India

• First filing in India –

Once the patent application is drafted, the next step is to file the
patent application in India and secure the filing date. In case
you are filing a provisional application first, you need to file the
complete application within 12 months from the provisional filing
date.
 Step 3 – Filing the patent application in
India

• Foreign applications entering India –

In another scenario where the patent application was first filed in a
foreign jurisdiction and the patent applicant is interested in filing a
patent application in India under the Paris Convention route or the
PCT route, the time limit to enter India is 12 months and 31 months
respectively.
Step 4 – Publication of patent application

• When is it published? –
– Every patent application which is filed with the Indian
patent office is kept as a secret until the time it is
published in the official patent journal.
• Indian patent office will publish patent applications
ordinarily after 18 months.
• This is an automatic event and you need not make any
request
Step 4 – Publication of patent application
The advantage of publication
• The date of publication is important as your privileges and rights
start from the date of publication, although you can’t enforce your
rights by way of any infringement proceedings until your patent is
granted.
 Step 5 – Examination of the patent
application
• The examination process, unlike publication, doesn’t happen
automatically by way of filing of the Indian patent application. The
applicant has to specifically make a request for examining their
patent application (Form 18).
• Only when a Request for Examination (RFE) is received, will the
application be queued for examination. So, the earlier you make the
RFE request, the earlier you’re a
• If you wish to fast track your patent application even further and
jump the examination queue, you can file a request for expedited
examination (Form 18A) application may be examined by the
examiner.
 Examination process (Objections by examiner
& responding to objections)

• Once, the Request for Examination has been filed, it will eventually
land up on the desk of the examiner from the relevant technology
background for examination. During the examination process, the
examiner will scrutinize the application to ensure that the application
is in accordance with the patent act and rules.
• The examiner also performs a search to understand similar
technologies to ascertain if the invention would satisfy the
patentability criteria.
 Examination process (Objections by examiner
& responding to objections)
• Based on the review of the application, the examiner will issue an
Examination Report to the applicant, stating the grounds for
objections. The first such examination report is called the First
Examination Report (FER).
• Once, the FER is issued, the patent applicant needs to successfully
overcome the objections to receive a patent grant
 Step 6 – Final decision on Grant or
Refuse or Abandone of patent

– (a) all requirements met, patent will be granted immediately with

seal of the Patent Office (Letters Patent) & grant publication
– (b) requirement(s) not met, patent application will abandoned or
– (c) requirement(s) met or not met even after hearing, patent will
be granted or refused, as the case may be..
 Term of Patent
• Term of patent will be 20 years form the
date of filing
 Step 7 – Renewal

• After the patent has been granted, it has to be renewed

every year by paying the renewal fee. A patent in India
can be renewed for a maximum period of 20 years from
the patent filing date.