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RM4151 RESEARCH METHODOLOGY AND IPR

N.Vinodh, Department of Management Studies
UNIT V
PATENTS
Patents – objectives and benefits of patent, Concept, features of patent, Inventive step, Specification, Types of
patent application, process E-filling, Examination of patent, Grant of patent, Revocation, Equitable
Assignments, Licenses, Licensing of related patents, patent agents, Registration of patent agents

What do you mean by patent?

A patent is an exclusive right granted for an invention. In other words, a patent is an exclusive right to a
product or a process that generally provides a new way of doing something, or offers a new technical solution
to a problem

What is a patent?
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.
Benefits of Patents

A patent gives you the right to stop others from copying, manufacturing, selling or importing your
invention without your permission. See protecting intellectual property. You get protection for a pre-
determined period, allowing you to keep competitors at bay. You can then use your invention yourself.

Objectives of the global patent system

The core objective of the patent law is to promote the progress of Science and useful arts. It can be listed
as: To encourage inventor: If a person puts efforts and resources in invention something that can be patented,
he should have a provision that stops others from copying his work without his permission.
The global patent system should:
i. Be coherent and balanced:
a. offering a fair level of protection to inventors/applicants from all backgrounds
b. providing a fair balance between the rights of inventors/applicants and third parties
ii. Provide legal certainty to inventors/applicants and third parties alike
iii. Promote high quality patents by ensuring that patent protection is provided only to inventions that
are new, involve an inventive step and are capable of industrial application
iv. Support economic growth:
a. enabling global patent rights to be acquired in an efficient manner
b. promoting consistent results in multiple jurisdictions
c. promoting innovation and competition
Principles and commentary
The following principles and commentary have been prepared by the Chair, taking account of the objectives
outlined above and the views of sub-group members. The principles are intended to encompass the views of
all members of the sub-group, whilst recognising that differing views remain on how the principles should
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best be implemented. The associated commentary takes account of these differing views, reflecting the
various outcomes under consideration in respect of each principle, together with an indication of the level of
support within the sub-group for each proposed solution.
1. Non-prejudicial disclosures / grace period
i. Inventors/applicants whose inventions have been disclosed prior to filing a patent application
should, in certain circumstances, be given an opportunity to patent their invention
ii. Such circumstances should include breach of confidence or theft of information
iii. Any system which allows an invention to be patented after disclosure should take account of and
balance the needs of:
a. inventors/applicants, regardless of their level of IP expertise
b. third parties (including those who could claim prior user rights)
c. those whose primary focus is dissemination of knowledge and information
iv. Any system which allows an invention to be patented after disclosure should:
a. provide a high level of legal certainty for applicants and third parties
b. encourage early filing
c. encourage research and development
d. be applicable according to globally harmonised principles and rules so as to promote
consistent results in multiple jurisdictions

Circumstances in which applicants should have the opportunity to patent a disclosed invention
While there is consensus that applicants should be given an opportunity to patent their invention where it
has been disclosed due to breach of confidence or theft of information, there is no consensus on whether
applicants should be given an opportunity to patent their invention where they have disclosed it themselves.
There was more support, though not unanimity, for the opportunity to patent an invention which had been
inadvertently disclosed Footnote2 .

Other characteristics of a potential grace period

Notwithstanding that there is no consensus on the introduction of a grace period covering disclosures by the
applicant, there is agreement that, if such a system were to be introduced:
 It should be simple, with the same rules applying to all applicants and all types of disclosure deriving
from the applicant, regardless of the intention or characteristics of the applicant.
 Encouraging transparency of the fact that the grace period has been invoked, for example through
some form of declaration requirement, would increase legal certainty but place a burden on the
applicant, and therefore further work should be conducted to explore how these factors could best be
balanced.
 The duration of the grace period should be harmonised, and calculated from the priority date.
Regarding a declaration requirement, some believe that the increased legal certainty this would bring would
not warrant the increased burden on the applicant. Others believe that an applicant who benefits from the
grace period should bear some of the risk of using it, and therefore should be required to declare the graced
disclosures of which they are aware. Some of those in favour of mandatory declaration believe that failure to
declare a disclosure should result in administrative sanctions only, rather than loss of the benefit of the grace
period for that disclosure.
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There is no consensus on the optimal duration of the grace period, some believing the principles are best
supported by duration of 6 months, others 12 months. However, there is agreement that, whatever the
duration, it should itself be harmonized and should be calculated from the priority date in all jurisdictions.

Rights of third parties

The sub-group noted that the rights of third parties may have a significant effect on the way in which any
grace period is used. All systems envisage certain circumstances in which the disclosure of third party
inventions prior to the date of filing could affect the patentability of an application relying on a graced
disclosure. To this extent the system incentivizes early filing.

Some members believe that it should be possible for prior user rights to arise where use of an invention in
good faith is based on information derived from the applicant which has been disclosed to the public through
a pre-filing disclosure during the grace period – to provide legal certainty to third parties and provide
additional incentives for applicants to file early. Others believe that prior user rights should be a limited
defence to patent infringement, and should not arise where knowledge of the invention has been derived
from the applicant.
The sub-group members were open to further thought as to the possible interplay between third party rights
and the grace period. Some felt that if it proved possible to reach agreement on the right balance between the
interests of applicants and third parties, setting appropriate incentives to filing first, prior to disclosing the
invention, and providing adequate protection for third parties, then the specific duration of the grace period
might be less important, though it should still be harmonized.

2. Publication of applications
i. The global publication regime should be formulated to provide a clear time limit by which
information about a potentially patented invention will be made public
ii. The timing of publication should provide for prompt dissemination of knowledge from all pending
patent applications wherever filed
iii. Pending patent applications should be published promptly after the expiry of a globally agreed
timeframe
iv. The globally agreed timeframe should balance the interests of inventors/applicants and those of
third parties:
a. inventors/applicants should be provided sufficient time to determine the likelihood of
obtaining meaningful protection for their invention, and should they wish, to withdraw their
application so as to retain the possibility of protecting their invention as a trade secret
b. third parties should be provided with legal certainty regarding patent rights which are
pending, so as to prevent duplication of R&D efforts and loss of investments
v. Patent office9s should be able to delay or suppress publication of a pending application in exceptional
circumstances
vi. Inventors/applicants should be able to request publication of an application prior to the globally
agreed timeframe if they wish, as long as the requirements for publication under the applicable law
are met
o There is consensus that:
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 18 months from priority date is an appropriate timeframe to meet the principles

outlined in paragraphs (iii) and (iv).
 Patent office9s should be able to delay publication of a pending application beyond
18 months, or suppress publication of information within an application, in the
following exceptional circumstances:
 if publication would be prejudicial to public order, morality, or national
security
 if the application contains offensive or disparaging material
 if a court order specifies that an application should not be published
The sub-group is open to considering any additional exceptional reasons which can be justified.

3. Conflicting applications
i. The grant of multiple patents for the same invention in the same jurisdiction should be prevented
ii. The patent system should allow for the protection of incremental inventions while ensuring that
patent rights are not unjustifiably extended
iii. Any system which allows incremental inventions to be patented should:
a. balance the interests of inventors to protect incremental improvements on their own
inventions with the interests of third parties to operate in the same field
b. promote innovation and competition
 There is consensus that:
 Rules which govern conflicting applications should permit the patenting of
incremental innovations, where this supports principle (iii).
 Harmonised treatment of conflicting applications would be beneficial.
 Further work should be conducted to compare various alternative
approaches, bearing in mind the effects on innovation and competition.
 There may be benefits to a harmonised system in which PCT applications
apply as secret prior art upon international publication in any language.
 Applications prosecuted directly through the national/regional route
should apply as secret prior art only in those jurisdictions where they are or
have been pending.

While there is agreement that rules which govern conflicting applications should support the principles
outlined above, there is no consensus on how this should be achieved. In particular, there are differing views
on what combination of features would best promote innovation and balance third party interests.

Some believe that innovation and competition are best supported by favouring the original applicant in
respect of incremental inventions, by preventing their own earlier-filed applications (<secret prior art=) being
cited against them (<anti-self-collision=). However, among those members of the sub-group who consider that
the original applicant should be favoured in this way, there are differing views as to the extent to which their
secret prior art should count against other applicants – in particular whether it should count for the purposes
of <enlarged novelty= or novelty and inventive step.
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Other members of the sub-group believe that innovation and competition are best supported by providing
equal access to the protection of incremental inventions for all applicants. They believe that this can be
achieved by having no anti-self-collision, with secret prior art counting for novelty only against all applicants.

It is recognized that there could also be merit in considering new solutions which as yet do not exist – for
example a system where secret prior art is applied for novelty and inventive step, and anti-self-collision
applies for inventive step only.

The sub-group therefore agreed to carry out further work on these options.
The sub-group could see the logic underlying all of the present approaches regarding applications filed under
the Patent Cooperation Treaty (PCT) – whether they should be applicable as secret prior art once they have
been published in any language, once they have been published in an official language of the jurisdiction in
which they are to be considered, or once they have entered the national/regional phase of the jurisdiction in
which they are to be considered. The sub-group did not reach a definitive position on this issue. However, as
patent systems become increasingly internationalized the sub-group could see there may be benefits to a
harmonized system in which PCT applications apply as secret prior art once they have been published in any
language. This would provide consistent legal certainty across different jurisdictions and respect the purpose
of the PCT to give international applications the effect of a national filing in all designated member states. The
sub-group agreed that this merited further discussion.

4. Prior user rights

i. A third party who has started using an invention in good faith prior to the filing of a patent
application for that invention by another party should have a right to continue to use that invention
ii. The circumstances under which prior user rights arise, including the extent to which they rely on
actual use having taken place, should balance the interests of third parties to protect their
investments with the interests of the inventor/applicant
o There is consensus that:
 Prior user rights should not arise through mere possession or knowledge of an
invention by a third party.
 Prior user rights should be limited to the territory in which the activity giving rise to
prior user rights has taken place.

There is a degree of convergence, but not unanimity, that prior user rights should arise where a third party
has, in good faith, made effective and serious preparations to use an invention. Those who hold this view
believe that the process of innovation can be long and complex and it is arbitrary to use actual use of the
invention as the threshold when substantial investments may have begun far before then. Those members
believe, therefore, that it is fair, efficient and in the public interest that these investments should be protected
whether or not actual use has taken place.
Others believe that prior user rights should arise only where actual use of the invention has taken place,
noting that this is a clear test which avoids uncertainty regarding whether preparations are substantial
enough, and ensures that prior user rights exist as a limited defence to infringement.
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As far as the critical date is concerned, it was noted that in most, but not all, jurisdictions, prior user rights can
arise up until the priority date of the invention. The sub-group recognised the benefits of harmonising the
point in time by which prior user rights could arise.
As noted in section 1, some believe that it should be possible for prior user rights to arise where use of an
invention by a third party in good faith is based on knowledge derived from a graced disclosure by the
inventor/applicant. Others believe that prior user rights should be a limited defence to patent infringement,
and should not arise where the information is derived from the inventor/applicant.

5. Prior art
i. Patents should only be granted for contributions that place in the hands of the public information
that had not been previously known
ii. The scope of prior art should be properly defined to ensure that the subject matter for which
exclusive rights are granted truly represents a contribution to, and not an encroachment on, the
public domain
iii. Subject to agreed exceptions, prior art should consist of all information that has been made available
to the public anywhere in the world before the earliest effective filing date of the claimed invention
o There is consensus that the principles outlined above underpin the patent system, and are
therefore important for understanding how the principles in this document as a whole
should operate.

Advantages of patents
 A patent gives you the right to stop others from copying, manufacturing, selling or importing your
invention without your permission. See protecting intellectual property.
 You get protection for a pre-determined period, allowing you to keep competitors at bay.
 You can then use your invention yourself.
 Alternatively, you can license your patent for others to use it or you can sell it. This can provide an
important source of revenue for your business. Indeed, some businesses exist solely to collect the
royalties from a patent they have licensed - perhaps in combination with a registered design and
trade mark. See how to license a patent.

Disadvantages of patents
 Your patent application means making certain technical information about your invention publicly
available. It might be that keeping your invention secret may keep competitors at bay more
effectively.
 Applying for a patent can be a very time-consuming and lengthy process (typically three to four
years) - markets may change or technology may overtake your invention by the time you get a
patent.
 Cost - it will cost you money whether you are successful or not - the application, searches for existing
patents and a patent attorney's fees can all contribute to a reasonable outlay. The potential for
making a profit should outweigh the time, effort and money it takes to get and maintain a patent. Not
all patents have financial value.
 You'll need to remember to pay your annual fee or your patent will lapse.
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 You'll need to be prepared to defend your patent. Taking action against an infringer can be very
expensive. On the other hand, a patent can act as a deterrent, making defense unnecessary. Read
more about patent protection and enforcement.

What are the features of patent rights?

In other words, a patent provides its owner a 'right to exclude' others but not a 'right or freedom to use=
the patented invention. So, a patent gives its owner only an exclusive right to prevent or stop others, from
making, using, offering for sale, selling or importing a product or process.

Patent applications: the three criteria

Patent applications must satisfy the following three criteria:
 Novelty
This means that your invention must not have been made public – not even by yourself – before the
date of the application.
 Inventive step
This means that your product or process must be an inventive solution. It cannot be a solution that
would be obvious to a manufacturer. Take the example of a different attachment method. Instead of
welding the tubes of a swing together, they might be screwed together. This may well be a new
method of making swings. But for someone involved in making them, it is too obvious a solution to be
called an inventive step.
 Industrial applicability
This criterion implies that it must be possible to actually manufacture the new invention. In other
words, you can apply for a patent on a new kind of playing card that is easier to hold than existing
cards. But you can9t obtain a patent for an idea for a new card game.

What Is the Inventive Step?

The inventive step is used to find out if the patent is in fact for a new item or just an obvious improvement on
an existing item. Inventive steps make sure patents aren't awarded to existing inventions that the "inventor"
just improved upon. These patents could allow someone to make money off of an item just because they
tweaked it. This patent could also allow them to sue companies that improve their own processes just
because they made small changes as well.
The applicant must prove that the improvement isn't obvious to people within the industry and that there are
actually improvements that come with patenting the idea.
One of the key words when talking about the inventive step is "obvious." Many people also refer to the
inventive step as the "non-obviousness clause." The EPO defines this as going beyond the expectations of
technology, instead of just following the next natural step.

For the most part, the term "inventive step" is used by our counterparts in Europe; however, it is
synonymous with the term "non-obviousness" that Americans use today.
For example of an inventive step, it's a fairly common fact in the gardening community that plants need water
and vitamins to grow. An inventive step would be mixing the two in a product, because it's easy to assume
that gardeners have been doing that for decades.
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Another term that is often used for the inventive step is novelty. In Future Science, Dr. Jonathan Atkinson and
Dr. Rachel Jones define novelty as an idea that a patent should not be available to the public before it was
filed. This includes:
 Discussing it at a conference or exhibition.
 Selling it or giving it away.
 Promoting the event in marketing materials.
By filing for a patent before it hits the market, the owner is able to prove that it was his idea, and that no one
else has had the thought.

Why is the Inventive Step Rule Important?

The inventive step rule lets companies continue coming up with new ideas without worrying about running
into a patent law. Instead of stopping natural progress (and creating a monopoly for the company that has the
idea first), this clause allows companies to continue updating their systems to save money and resources.
In a paper presented at the Fordham Conference, John Richards explains that 'obvious' is Latin for 'upon the
road,' or the next steps that companies or inventors would take in the process. Technology is an important
example of this. Over the past several years, new technology has followed a pattern where it becomes lighter,
cheaper, and smaller. Look at the first cell phone and how far it has improved to become the phones we use
today. Patenting a model that is slightly lighter or smaller than a competitor (like an iPhone that's made of
plastic or a lighter metal) would be an inventive step that follows an obvious progression – not an invention.

Reasons to Consider Not Using the Inventive Step

One of the biggest challenges faced in patent law and novelty is the subjective nature of the tests. It's hard to
prove something is just an inventive step, so today's rules follow interviews and personal opinions.
The United States patent office uses the Teaching-Suggestion-Motivation (TSM) test to determine non-
obviousness. Some say it's too controversial to use, but it proves that there must be some teaching or
suggestion involved to form an idea. It is also referred to as a way to prevent hindsight bias.
Most legal teams compare the new idea with the existing item through interviews. They find people who are
familiar with the industry and ask them about the differences between the two items. Some critics say this
process is biased because of the person's background, education, and experience. This means the criteria
changes from industry to industry, and also changes from person to person.

Reasons to Consider Using the Inventive Step

Even though some people might think the current rules are unfair, there are important reasons for keeping
the inventive step rules on the books. The Omics Group says the inventive step rules follow the original goals
of the patent system. Their main goal is to encourage people to come up with new ideas that they can protect
and make money from. Trying to buy old ideas or making minor tweaks focuses on the money part of the
patent office, not the invention part.

There are also people who are trying to improve the current rules and how lawyers prove them.

The European Journal of Law and Technology listed one study in which more than 200 students reviewed two
products to see if it was an inventive step or actual invention. Based on this data, the patent judges had more
information and opinions about whether something was obvious.
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Currently, in the United States, determining obviousness requires three steps:

 Evaluating the scope and content of the art.
 Determining the differences between the original art and the new invention.
 Resolving the skill level within the art.

This provides a concrete way to determine obviousness that can be applied across most cases.
These steps are also known as Graham factors, based on the case Graham et al. v. John Deere Co. of Kansas City
et al. They also consider three additional factors in the products:
 Commercial success
 Long-felt but unsolved needs
 Failure of others

This helps create a big picture view of how the product will affect society if it is patented.

Examples of the Inventive Step

According to the World Intellectual Propery Organization, inventive step rules have been around since the
15th century, but they became common in the 19th century. As patents become more advanced, the inventive
step rules are used more often – especially in the tech field where software companies are making tools that
common people aren't familiar with.
What is the difference between an inventive step and a non-obvious rule? It all depends on where you
live. Simplicable says that most American legal systems use the term "inventive step," while most European
systems use the term "non-obviousness." While this article has used both terms, it's important to stick to the
one within your region to prevent confusion.
The inventive step clause will mostly be used in cases of patent challenges between two companies. One side
will argue that the invention is new, while the other side says it was an inventive step that its clients came up
with on their own. This shows the value of the non-obviousness rules even when a patent is approved.
The nature of the inventive step means companies have a chance to win their patents when they face the
judge. However, if your company is not sure how to develop a case to prove the difference between the two,
consider posting a job to hire a lawyer through UpCounsel who has experience in facing patent challenges and
these non-obvious clauses. You can receive multiple free custom quotes from the top 5% of lawyers with an
average of 14 years of experience.

Patent/ Types of Applications/ Specification - Reference

A patent is a right granted by the government to inventors in order to exclude others from making, using, offering
for sale, or selling the patented invention in the United States or importing the invention into the U.S. This means
that you get total control over your patented invention and get to decide who, if anyone, can use your invention.

Patents are valid for 20 years from the date you file your application, but patent rights are, in general, only
enforceable from the date your patent is approved by the U.S. Patent and Trademark Office (USPTO).
According to the patent office, an invention is <any new and useful process, machine, manufacture, or composition
of matter, or any new and useful improvement thereof.= For technology product managers, just about any new
product or feature is patentable: hardware, software, business methods, etc. Every new feature and product you
create should be examined for patentability.
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While just about anything can be patented, a few criteria must be met. Specifically, patented inventions must meet
three characteristics: novel, useful and not obvious.

Novel. The novelty requirement is straightforward: Your invention must be new. Inventions that already exist
cannot be patented. This gets a little tricky, because you can patent new uses for existing products. This frequently
happens when a new use is discovered for an old pharmaceutical drug, where new testing shows the drug to
effectively treat a completely unrelated disease. The new use has to be truly new and unrelated to the original use.

Useful. The usefulness requirement is two-fold: That your invention has a useful purpose and that it must actually
perform its intended purpose. A useful purpose can be almost anything: The patent office, for example, issued
Patent No. 6,368,227 to a boy who claimed the invention of swinging side-to-side, claiming the usefulness of joy.
Along with good feelings or whatever other benefit you wish to claim, the invention must also work in order to be
useful. If the patent office thinks your invention might not work, they may ask you to prove that it does.
Patent application number 20,030,114,313 claimed the invention of warp drive, which is <a system whose
propulsion relies on warping space-time as opposed to the ejection of material to provide thrust.= While the
application packed more than400 paragraphs of technical detail, the patent office cast a skeptical eye, and asked
the inventor to provide a working model before the patent application could be examined. (A model, working or
otherwise, was unfortunately not delivered by the inventor.)

Not obvious. The <not obvious= requirement means that an inventive step is required. Your invention has to be
different enough from what is already out there in the field in order to be patentable. This is an area, however,
where the law is not very clear.Patents are regularly granted for surprisingly small improvements in a field.You
should not let your thinking on this requirement prevent you from trying to patent something. If you have an idea
that you think is worth patenting, explain it to your patent agent or attorney, and let them tell you if they think it
meets the <not obvious= requirement.

In addition, you cannot patent the laws of nature, physical phenomena, and abstract ideas. Things like Isaac
Newton9s theory of universal gravitation or Albert Einstein9s theory of general relativity are not patentable.

Three basic kinds of patents are allowed:

1. Utility patents, which cover inventions that function uniquely to produce a useful result.
2. Design patents, which cover the unique, ornamental, or visible shape or surface of an object.
3. Plant patents, which cover asexually reproducing plants.

Types of Patent Application

A patent is a statutory authorization or license which establishes a right or title over an invention for a
particular period. It is primarily meant for the prevention of other businesses or its kind from making, using
or selling an invention of a similar nature. In this article, we look at the different types of patent application in
detail.

Patent Application
A patent application is a plea for the grant of a patent for the invention described and claimed by the
applicant. An application for this purpose generally comprises of a description of the invention, added with
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official forms and correspondence relevant to the application. Patent applications are of several types, and
each one of them caters to a unique purpose.

Types of Patent
The types of patent application are:
1. Provisional Application
2. Ordinary or Non-Provisional Application
3. Convention Application
4. PCT International Application
5. PCT National Phase Application
6. Patent of Addition
7. Divisional Application
The rest of the article covers these types in detail.

Provisional Application
A provisional application, also known as a temporary application, is filed when an invention is under
experimentation and isn9t finalized. Moreover, it is a preliminary application which is filed before the patent
office for claiming priority, as the Indian Patent Office follows the 8First to File9 system (known popularly as
the First-Come-First-Served-Basis). In technical terms, early filing of an invention will prevent the occurrence
of any other related inventions from being designated as prior art to the inventor9s application.
To add more, this type of patent application is filed when an invention requires additional time for
development. If an application is supported by a provisional specification, the applicant is necessitated to file
a complete specification within twelve months from the date of filing a provisional application. A failure in
this part would render the application void.
An application for this purpose must include a brief explanation of the invention and must be drafted in a
meticulous manner so as to ensure that the priority rights are secured for the invention.

Ordinary or Non-Provisional Application

This type of application is filed if the applicant doesn9t have any priority to claim or if the application is not
filed in pursuance of any preceding convention application. It must be supported by a complete specification,
the likes of which must depict the invention in detail.
Complete specification can be filed through:
 Direct Filing – wherein complete specification is initially filed with the Indian Patent Office without
filing any corresponding provisional specification.
 Subsequent Filing – wherein complete specification is filed subsequent to the filing of the
corresponding provisional specification and claiming priority from the filed provisional specification.
A complete specification entails the following:
1. Title
2. A preamble to the invention.
3. The technical field of the invention.
4. Background of the invention.
5. Objects of the invention.
6. Statement of the invention.
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7. A brief description of the drawings

8. A detailed description of the invention.
9. Claims
10. Abstract

Convention Application
A convention application is filed for claiming a priority date based on the same or substantially similar
application filed in any of the convention countries. To avail a status of convention, an applicant is required to
file an application in the Indian Patent Office within a year from the date of the initial filing of a similar
application in the convention country. To re-iterate in simpler terms, a convention application entitles the
applicant to claim priority in all the convention countries.

PCT International Application

As can be deciphered from its name, a PCT Application is an international application. Though the application
does not provide for the grant of an international patent, it paves the way for a streamlined patent application
process in many countries at one go. It is governed by the Patent Corporation Treaty and can be validated in
up to 142 countries. Filing this application would protect an invention from being replicated in these
designated countries.
Unlike other applications, it renders the application a time-frame of 30-31 months to enter into various
countries from the international filing date or the priority date, thereby affording the applicant with
additional time to access the viability of the invention.
Apart from this, it renders the following other benefits:
 The application provides an International Search Report citing prior art, which discloses whether or
not the invention is novel.
 It provides an option for requesting an International Preliminary Examination Report, which is a
report that contains an option on the patentability of the invention.
 The aforementioned reports facilitate the applicant to make more informed choices early in the
patent process, as he/she can amend the application to deal with any conflicting material. Also, the
applicant would receive a glimpse of the patentability of the invention before incurring charges for
filing and prosecuting the application in each country.
An applicant from India can file this application at:
 The Indian Patent Office (IPO), which acts as the receiving office.
 The International Bureau of WIPO, either after availing a foreign filing permit from IPO or after six
weeks and 12 months of filing an application in India.

PCT National Phase Application

It is considered essential for an applicant to file a national phase application in each of the country wherein
protection is sought for. The time-frame for filing the same is scheduled within 31 months from the priority
date or the international filing date, whichever is earlier. The time-limit could be enhanced through National
Laws by each member country.
With respect to the National Phase Application, the title, description, abstract and claims as filed in the
International Application under PCT shall be considered as the Complete Specification. Apart from this, the
regulations applicable for filing and processing an ordinary patent application is also applied here.
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Patent of Addition
This application must be filed if the applicant discovers that he has come across an invention which is a slight
modification of the invention which has already been applied for or patented by the applicant. It can only be
filed if the invention doesn9t involve a substantial inventive step.
A patent of addition is only granted after the grant of the parent patent, and hence no separate renewal fee
should be remitted during the term of the main patent. Moreover, it shall be granted for a term equal to that
of the patent for the main invention, and therefore expires along with the main patent. The date of filing here
shall be the date on which the application for patent of addition has been filed.

Divisional Application
An applicant may choose to divide an application and furnish two or more applications if a particular
application claims for more than one invention. The priority date for these applications is similar to that of
the parent application.

What are the five steps to filing a patent?

1. Understand Your Invention.
2. Research Your Invention.
3. Choose the Type of Protection.
4. Draft Your Patent Application.
5. Wait for a Formal Response.

1. Understand Your Invention

The first step in how to get a patent is to understand your invention. What aspect (or aspects) of the invention
makes it new and useful? Suppose you made a custom pair of shears that are useful for cutting thin strips of
fabric. The scissors have a custom-designed handle with different shaped finger loops and an additional set of
pivots that allow the cutter to feel the slightest resistance when cutting through very thin fabric.
Once you identify the aspects that make your invention new and useful then you need to consider the scope.
Are there other ways to make your invention? For example, could you use springs instead of pivots? Could
you change the shape of the finger loops or the materials they are made out of? Find all the possible ways to
make your invention work, even if they're not as good as the preferred way you make your invention.
Next, look at whether or not your invention has a broader application. Is there something special about thin
fabric or could you use the scissors for any type of delicate work? Would the shears be useful for surgery or
other precision applications? If so, would you need to make further modifications? Asking these types of
questions early on will help you search, protect and benefit from the full scope of your invention. It will give
you more strategic options and, most likely, a more valuable patent.

2. Research Your Invention

A patent requires absolute novelty. Part of the rationale of giving inventors exclusive rights to their
inventions is to encourage the inventor to teach the public how to make the invention work. If a reasonably
skilled person could make the invention work from information already available to the public, then what
benefit is there to giving the inventor exclusive rights?
You have to search to find any relevant publication, presentation, sales brochure, patent application or
issued patent that overlaps with your invention or some components of your invention. For example, you may
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find a technical white paper that discusses precision robotic manufacturing. You notice that the robotic arms
have the same kind of pivots as your super sensitive scissors. The reference is considered prior art, even if it
is in a different field.
The United States Patent and Trademark Office (USPTO) requires you to disclose any publication, patent or
other written document that you know to be relevant to your patent. Failure to do so could disqualify your
patent, even after the USPTO issues it.

3. Choose the Type of Protection

Back to the pair of scissors that you made. Let's say you really like them, but they leave a lot to be desired. The
pivots are too loose and you want to spend more time tinkering to get the tension just right. You also want to
try out some new materials for the finger loops. If you want to get a patent on file but leave some room to
tinker, you may want to file a provisional patent application.
A provisional application serves as proof that you are the inventor as of the date you file the patent. You can
then take a year to file the actual patent application (what most people call a patent is actually called a utility
patent). In that year, you can experiment and perfect the prototype that you built. You cannot, however, add
anything new. If your new prototype includes super sensitive pressure sensors that you did not include in the
provisional application then you will need to file a new patent application to get the benefit of the new
sensors.

When considering what patent protection is available to you, do not rule anything out. For example, you may
shape the finger loops on your scissors because they have a real functional improvement in improving
sensitivity to resistance. They may also produce a very distinctive appearance. You could file a design patent
application for the distinct appearance of the finger loops in addition to or in place of a utility patent
application. Generally, a design patent protects the way an article looks, while a utility patent protects the
way an article is used and works. Overlapping patent protection is incredibly important and makes
your intellectual property that much more valuable.

4. Draft Your Patent Application

Drafting a patent application, even a provisional patent application, is tricky. Patent applications have several
parts, each of which can be rejected for technical or formal reasons. If you are going to file it yourself, read the
Manual of Patent Examining Procedure. Make checklists for each portion of your application and triple-check
your work. If you are lucky, a mistake will only cost you time and money. If you are not, you can lose your
filing date or cripple your ability to get an issued patent.
Drafting a patent is a skill that takes experience to develop and a team to execute. At all other steps, there is a
lot of work the inventor can do. But when it comes to drafting the application itself, a professional will be very
helpful.

5. Wait for a Formal Response

Do not expect to hear back from the patent office for a long time, usually a year or longer. When you do hear
back, the examiner may argue that your invention is not novel in light of the prior art, that your invention is
not the kind of thing that you can get a patent for, or that you have failed to fully explain how the invention
works. If this does happen, you might want to seek professional advice to help craft your response.
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In the meantime, while you are waiting for your response, get to work. Unless inventing is purely a hobby,
you are investing your time and money in intellectual property that you think may have commercial value. If
you are looking to license your scissor design to a leading tool company, for example, start talking to them
now-and make sure your patent protects the features they consider most valuable. Because your patent is
pending and your invention is protected, you can discuss whatever you need to seal the deal you want.

Patent Examination Process:

Once a patent application is filed in India and published after 18 months of filing the application, the next step
involves the examination of the patent application. The examination process starts once the applicant files a
request for examination within 48 months from the date of filing of the application or the priority date
whichever is earlier.
During the first examination stage, the examiner prepares the examination report incorporating all the
statutory objections for the given patent application. The examiner performs a patent search in order to
identify the prior arts relevant to the invention. The objections are well communicated and properly defined
so as to be understood by the addressee without seeking further clarification. The First
Examination Report (FER) is generally sent to the applicant along with the application and specification
within six months from the date of publication or from the date of request for examination. The law in place
requires that the objections are supported by correct legal provisions and proper reasoning. The objections
once taken are maintained and are withdrawn only after justifying the proper reason for withdrawal.
The examination report may either be favorable or adverse to the applicant. If the report is favorable, the
applicant has to put the application in order for grant within 12 months from its date. If the report is adverse,
it normally includes formal objections relating to errors in the Forms or Fees and substantive objections
relating to patentability requirements. During the process, the applicant can draft a response by amending
the application in order to overcome the objections raised in the FER. The amendment can be allowed only if
it is by way of disclaimer, correction or explanation. The amendment will not be allowed if the specification as
amended describes matters which are not in substance disclosed or shown in the specification. Alternatively,
the applicant may also request for a hearing within 1 month from the date of receiving the examination
report to explain the reasons for non-acceptance of objections to the examiner.
The examiner can also withdraw the application any time after filing of application and before the grant of
patent by filing a written request and paying the requisite fee.

Patentability: Applying For Patent

As we know that not every invention get patented, Patent is granted to the owner of the Patent when his/her
invention satisfies the conditions for Patentability. Such conditions are as follows:
Novelty
Inventive step or non-obviousness
Industrial Application
Section 3 and Section 4 deals with the list of exceptions that do not fall under the invention and hence are
non-patentable.

Procedure for Grant of Patent

Persons entitled to apply for patents
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—(1) Subject to the arrangements contained in section 134, an application for a patent for an invention might
be made by any of the accompanying persons, in other words,—
(a) By any individual professing to be the valid and first creator of the invention;
(b) By any individual being the assignee of the individual professing to be the valid and first innovator in
regard of the privilege to make such an application;
(c) By the legitimate agent of any deceased individual who is preceding his demise and is qualified to make
such an application.
(2) An application under sub-section (1) might be made by any of the persons alluded to in that either alone
or mutually with some other individual.
Filing of Application- Provisional/Complete: The Patent Application should be filed in form
1 accompanied by either provisional or complete specification in form 2 (If an applicant is not ready with the
complete invention and need some more time for it then filing for the provisional application is
recommended).
Publication of Application: The publication of the application is made after the expiry of 18 months from
the priority date and no fees are required by the inventor. A prior- request for publication can be made (Rule
24A) under section 11A(2) in form 9 (optional step).
Request for Examination(REF): The request for examination to examine the patent application is made
in form 18 (including fee) within 48 months from the filing date by the applicant.
Examination issue of First Examination Report(FER): The controller sends the patent application to the
examiner who checks for patentability as per the patentability criteria and creates the first examination
report (FER).
Any objection raised regarding the patentability requirements during examining the patent application has to
have complied within 12 months.
Grant of Patent: Once the application meets all the requirements of patentability, the patent is granted to the
inventor with the seal form patent office and is notified in the journal from time to time.
Opposition: Section 25 of the Act deals with the opposition to grant of patents and are of two types: Pre
Grant (before the patent is granted) and Post Grant (after 1 year of grant of the patent). The opposition can
be filed by anyone interested in the field of the invention in form 7 with the prescribed fee within 12
months from the date of publication of the patent.
Grounds of Opposition to Patent
Obtained wrongly or fraudulently.
The invention has been already published and known.
Not involved in any of the inventive step.
Not completed within 12 months.
No clear and explicit description of the invention.
Not considered an invention based on the subject matters for the invention.

Types of Patent Application

There are four types of Patent Application namely:

Provisional Application: This application is filed when the inventor is not quite ready with the invention
and needs more time for the development of his invention and also don9t want to lose the priority date. After
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12 months of filing the provisional application, the complete application should be filed otherwise the patent
application will not be considered. The provisional certificate may or may not have claimed.
Complete Application: Filing of the complete application, describes that the invention is complete. The
complete application have claims.

Elements of complete application:

Description of invention
The best method of performing
Claims
Abstract

Convention Application: When an inventor or an applicant files the patent application in Indian Patent
Office claiming for a priority date based on a similar application filed in convention countries, such
applications are convention application.

Patent Cooperation Treaty (PCT) – International Application: A PCT application is an international

application governed by the Patent Cooperation Treaty further administered by the World Intellectual
Property Rights (WIPO).

Divisional Application: When an applicant feels that he has come across an invention which is a slight
modification of the invention for which he has already applied for or has obtained the patent, the applicant
can go for the patent of addition if the invention does not involve a substantial inventive step. There is no
need to pay the separate renewal fee for the patent of addition during the term of the main patent and it
expires along with the main patent.

Patent of Addition: when application made by applicant claims more than one invention, the applicant on
his own files two or more applications, as applicable for each of the inventions. This type of application,
divided out of the parent one, is called a Divisional Application. The priority date for all the divisional
applications will be the same as that claimed by the Parent Application.

Documents Required For Patent Application

o Application for grant of the patent in form 1
o Proof of right to file the application from the inventor.
o Provisional/complete specification in form -2
o Statement and undertaking under section 8 in Form 3
o Declaration as to inventorship
o Power of authority in form 26
o Applicant’s signature and an appropriate date
o If application pertains to a biological material obtained from India, submission of
the permission from the National Biodiversity Authority
o Request for Examination- Form 18
o Requisite Statutory Fees
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Rights of Patentee
Section 48 of the Act deals with the rights of conferring upon the patentee after the grant of the Patent.
Exclusion of the third party to use, sell, or import the patented product without the patentee9s
consent.
Exclusion of the third party from using, selling or importing the patented product (if the subject
matter is the process) without the patentee9s consent.
Infringement and Remedies for patent
Infringement of patent refers to the violation of the rights of the patent holder that is whenever a person
exercises the rights of the patent holder without the patent owner9s consent, he causes infringement.
Types of Patent Infringement:
Direct Infringement – Directly selling, marketing, or using commercially, any product which is
substantially close to the patented product without the consent of the patentee.
Indirect Infringement- Deceitful and accidental patent infringement in any incident is an indirect
infringement.
Contributory infringement- If the person knowingly infringes the rights of the patent holder, it
refers to contributory infringement.
Some acts that would not lead to infringement are as follows.
Government use: As per Section 100 a patented invention can be used by the central government for
its own use and as per section 47, the patented invention can be imported by the government.
Exemption on experiments and research: the use of a patented invention for experiments and
teaching purposes does not come under infringement.
Patented inventions on drugs and medicines can be imported by the government.
Any patented invention on foreign vessel/ aircraft/ vehicle comes to India is not an infringement.

Filing suits for infringement

Section 104 of the Patent Act, 1970 deals with the filing of the suit by the patentee against the infringement.
The patentee can file a suit in a district court or directly in the high court. Suit for patent infringement can be
filed after the grant of patent yet the patentee can also claim for damages committed between the publication
of patent application to the grant of the patent.
The burden of proof is on the patentee after the grant of the patent but if the invention is a process than the
burden to prove for infringement lies on the defendant.
Remedies for patent
Section 108 deals with relief or remedies against the infringement.
Injunction
The injunction is the most common form of Remedy granted in Patent infringement proceedings. The
injunction is the order of the court restricting a person from beginning or continuing a course of action
(infringing in this case) threatening or invading legal rights of a person.

Types of Injunction
There are two types of an injunction-
1. Interim Injunction
2. Permanent Injunction
Interim Injunction restricts the person temporarily from doing act and is granted before the full-fledged trial.
 lOMoARcPSD|16467835

Permanent Injunction, on the other hand, restrains a person from doing a specified act and can be granted
after the full-fledged trial.

Injunctions are preventive, prohibitive or restrictive that is restricting someone from doing a specified act or
mandatory that is, they compel or orders a person to do something.

The plaintiff can obtain interlocutory order in the form of a temporary injunction whenever a case of patent
infringement occurs from the court by proving the following facts:
1. The prima facie case of infringement
2. The balance of convenience in his favour
3. If the injunction is not granted he/she shall suffer irreparable damage.

Damages and account of profit

If the suit is in favour of the plaintiff, the court can award either damages or directs the defendant to render
an account of profits but not both.
Exceptions and Limitations of Patent in India
Types of Exceptions & Limitations

Article 30 of TRIPS (Trade-Related Aspects of Intellectual Property Rights) allows for limited exceptions to
the exclusive rights conferred by a patent.
Exception on Non-Commercial use
The exclusive rights conferred by a patent does not allow the private or commercial activity.
The Government has the power to grant a license, known as Compulsory License (CL) , to a third party to use
the patented invention (when the patentee is not using the invention for profit) so as to restrict the rights of
the patentee for the purpose of preventing the abuse/ misuse of the rights by the property holder and to
prevent the negative effect of such action on the public.
When the patented invention is not commercialized in India or the invention is not available to the public at
reasonable prices or the invention is not manufactured in requisite amount, then the government grant such
license.
Exception on Experimental / Scientific Research

Section 47 of the Act subsection 3 deals with the exception on experimental and scientific use of Patented
invention, the grant of a patent is subject to the condition that any product or process, in respect of which the
patent is granted, may be made or used by any person for the purpose merely of experiment or research
including the imparting of instructions to the students.
This form of exception grants third parties to carry out experiments and scientific processes for teaching
students without infringing the rights of the patent holder.
Exception on Regulatory use or Private use

Section 107A of the Indian Patent (Amendment) Act, 2005 deals with the exception of regulatory and
private use also referred as bolar Provision, this exemption allows the manufacturers of generic drugs to
undertake steps reasonably related to the development and submission of information required for obtaining
 lOMoARcPSD|16467835

marketing approval anywhere in the world in respect of a patented product without the consent of the
patentee.

This provision allows the generic producers to market and manufacture their goods before the expiration of
the term of the patent. Bolar Provision has been upheld as conforming to the TRIPS agreement and is used in
several countries to advance science and technology.
Exception on Foreign Vessels, Aircraft or Land Vehicles

Section 49 the Indian Patents Act deals with the said exception, when the foreign vessels, aircraft, or land
vehicles accidentally or temporarily comes to India, the patent rights are not infringed when the patented
invention is used exclusively for the needs of foreign vessels, aircraft, or land vehicles and other accessories.
Conclusion

Patenting in India has protected the intellectual property of many innovators and has been useful in the
growth of commerce and technology in India. One has to go through a certain process for the grant of Patent.
Grant of Patent confers monopolistic rights upon the Patentee excluding the third party to sell, use,
manufacture or import of the patented product without the consent of the patentee. If someone tries to use,
sell, manufacture or import such patented products leading to the infringement of the rights of the patentee,
the patentee can sue the person.

Can you revoke an assignment?

It can be revoked by an assignor later assigning the same right (the last assignment controls), the death or
incapacity of the assignor, or by the delivery of notification of revocation to the assignee or obligor. Example:
I verbally assign to you my rights to receive payment under a contract.

What is the meaning of equitable assignment?

An assignment which does not fulfil the statutory criteria for a legal assignment. An equitable
assignment may be made in one of two ways: The assignor can inform the assignee that he transfers a right or
rights to him.

Patent revocation means cancellation of the rights granted to a person by the grant of a patent. A patent
can be revoked on petition of any person interested or of the Central Government or on a counter claim in a
suit for infringement of the patent by the High Court.

Revocation of Patents in India

The term <Revocation= means Cancellation of the patent rights acquired to patentee. The revocation
of patent can be applied by making a petition by any person interested or it can be also applied by the Central
Government. In most of the cases revocation are filed on a counter claim against patent infringement suits in
High Court or in IPAB (the Intellectual Property Appellate Board). The provision for Revocation of patents is
mentioned under section 104.
Section 104 of the Patents Act, 1970 states that only IPAB or the High Court can be approached for
revocation as no suit of infringement can be brought before a court inferior to the District Court having
jurisdiction.
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Section 64: Grounds for Revocation

Principally, Section 64 contains in-exhaustive grounds that dictate the conditions that warrant the revocation
of patents. These grounds are following:
1. Invention is obvious, lacks an inventive step or utility
2. Invention isn9t new and, has been publicly used or published in India before the priority date or it is
foreseen in light of the knowledge available within any local or native community in India or
elsewhere.
3. Either the party wasn9t entitled to the patent, or the subject isn9t patentable or doesn9t amount to
invention
4. The scope of patent specificationsis incomplete or the specifications have either been already
claimed in a patent that is granted
5. The patent was wrongfully obtained in violation of another party9s rights, such as through incorrect
or false representation, or leave to modify specifications was obtained through fraudulent means
6. The information that has been disclosed under Section 8 is known to be false by the Applicant or he
has been unable to furnish the required details
7. Complete specification omits or erroneously attributes geographical origin or biological matter used
in the invention
8. The invention was either secretly used before the date or claim or the Applicant contravened secrecy
instructions under Section 35
9. The complete specification neither describes the invention and method sufficiently nor does it
disclose the best method of performing it which was known and entitled protection.

Other provisions for revocation of patents

A revocation petition can be filed undersection 65 if the patent granted relates to atomic energy.
If the Central Government find the facts that a granted patent has been exercising by wrong means and it is
mischievous to the State or prejudicial to the public, the central government has rights in the case to revoke
the concerned patent and such decision is also published in official journal of patents.
Moreover, to prevent the wastage of judicial machinery, it was laid down by the Supreme Court in
the Enercon (India) Ltd and Ors. v. Enercon Gmbh, that post grant opposition proceedings and petitions or
counter-claims of revocation against the same patent, cannot be simultaneously instituted. Frivolous
litigation shouldn9t be encouraged as it is viewed as a tool for cash-rich litigants with dishonest interests.

Revocation of patent under Section 85 of the Patents Act

An application for revocation of patent can be filed after 2 years of grant of compulsory license. The grounds
for revocation of a patent are same which are covered under Section 85 which mainly deal with following:-
 reasonable price,
 availability in the territory of India, and
 requirements of the public not met.
Section 85 reveals provision in the benefit of public. In these cases where the patentee does not take
necessary actions that may help in better distribution of the product to the public and more profound
availability at reasonable prices. Such revocations of patent are really useful to public.
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Equitable Assignment: Everything You Need to Know

An equitable assignment is one that does not fulfill the statutory criteria for a legal assignment, but is binding
and upheld by the courts in the interest of equability, justice, and fairness.3 min read
1. Equitable Assignment
2. The Doctrine of Equitable Assignment in Wisconsin

An equitable assignment is one that does not fulfill the statutory criteria for a legal assignment, but is binding
and upheld by the courts in the interest of equability, justice, and fairness.

Equitable Assignment
An equitable assignment may not appear to be self-evident by the law's standard, but it presents the assignee
with a title that is protected and recognized in equity. It's based on the essence of a declaration of trust;
specifically, essential fairness and natural justice. As long as there is valuable consideration involved, it does
not matter if a formal agreement is signed. There needs to be some sort of intent displayed from one party to
assign and the other party to receive.
The evaluation of a righteous equitable assignment is completed by determining if a debtor would rationally
pay the debt to another party alleging to be the assignee. Equitable assignments can be created by:
1. The assignor informing the assignee that they transferred a right to them
2. The assignor instructing the other party to release their obligation from the assignee and place it
instead on the assignor
The only part of an agreement that can be assigned is the benefit. Generally speaking, there is no prerequisite
for the written notice to be received or given. The significant characteristic that separates an equitable
assignment from a legal assignment is that most of the time, an equitable assignee may not take action against
a third party. Instead, it must rely on the guidelines governing equitable assignments. In other words, the
equitable assignee must team up with the assignor to take action.

The Doctrine of Equitable Assignment in Wisconsin

In Dow Family LLC v. PHH Mortgage Corp., the Wisconsin Supreme Court issued in favor of the doctrine of
equitable assignment. The case was similar to many other foreclosure cases, except this one came with a
twist. Essentially, Dow Family LLC purchased a property and the property owner insisted the mortgage on
the property had been paid off. However, in actuality, it wasn't.
Prior to the sale, the mortgage on the property was with PHH Mortgage Corp. When PHH went to foreclose on
the mortgage, Dow Family LLC contested it. There was one specific rebuttal that caught the attention of the
Wisconsin Supreme Court. The official mortgage on record was with MERS, an appointee for the original
lender, U.S. Bank.

Dow argued that PHH couldn't foreclose on the property because the true owner was MERS. Essentially, Dow
was stating that the mortgage was never assigned to PHH. Based on this argument, PHH utilized the doctrine
of equitable assignment.
Based on a case from 1859, Croft v. Bunster, the court determined that the security for a note is equitably
assigned when the note is assigned without a need for an independent, written assignment. Additionally, Dow
contended that the statute of frauds prohibits the utilization of the doctrine, mainly because it claimed every
assignment on a property must be formally recorded.
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During the case, Dow argued that the MERS system, which stored the data regarding the mortgage, was
fundamentally flawed. According to the court, the statute of frauds was satisfied because the equitable
assignment was in accordance with the operation of law. Most importantly, the court avoided all
consideration regarding the MERS system, concluding it was not significant in their decision.
The outcome was a major win for lenders, as they were relying on the doctrine specifically for these types of
circumstances.

Most experts agree that this outcome makes sense in the current mortgage-lending environment. This is due
to the fact that it is still quite common for mortgages to be bundled up into mortgage-backed securities and
sold on the secondary market.
Many economists claim that by not requiring mortgages to be recorded each time a transfer is completed, the
loans are more easily marketed to investors. Additionally, debtors know who their current mortgage
company is because the new lender must always notify the current borrower in order to receive payment. It
was determined that recording and documenting the mortgage merely provides a signal to the rest of the
world that the property owner secures a debt.