PROCESS OF PATENTING AND DEVELOPMENT

Patents :

A patent is an exclusive right granted for an innovation that generally provides a

new way of doing something or offers a new technical solution to a problem. The
exclusive right legally protects the invention from being copied or reproduced by
others. In return, the invention must be disclosed in an application in a manner
sufficiently clear and complete to enable it to be replicated by a person with an
ordinary level of skill in the relevant field.

Rights Associated with Patents:

As per the Court of Law, a patent owner has the right to decide who may or may
not use the patented invention. In other words, the patent protection provided by
the law states that the invention cannot be commercially made, used, distributed,
imported, or sold by others without the patent owner’s consent. The patent
owner may permit other parties to use the invention on mutually agreed terms.
As a matter of fact, the patent rights are negative rights as the owner is restricting
others from using the patent in any manner without his prior permission. The
patent holder may choose to sue the infringing party to stop illegal use of the
patent and also ask for compensation for the unauthorized use.

In India, the process of granting a patent is a lengthy procedure that may take
anywhere from 3-4 years or more.

The major steps involved in this process are:

1. Prior art search,

2. Choice of Application to be Filed,

3. Patent Application Forms,

4. Jurisdiction of Filing Patent Application,

5. Publication,
6. Pre-grant Opposition,

7. Examination,

8. Grant of a Patent,

9. Validity of Patent Protection,

10. Post-grant Opposition

1. Prior Art Search:

Before an inventor embarks upon the patent filing process, he has to ensure that
his invention is ‘novel’ as per the criterion for the grant of a patent. For this, he
has to check whether or not his invention already exists in the public domain. For
this, he needs to read patent documents and Non-Patent Literature (NPL),
scientific journals/reports/magazines, etc. The information lying in the public
domain in any form, either before the filing of the patent application or the
priority date of the patent application claiming the invention, is termed as Prior
Art. Conducting a prior art search before filing the patent has advantages as it
averts infringement, tracks research and development, and provides access to
detailed information on the invention. The prior art search is carried out on the
parameters such as novelty, patentability, state of the art, infringement, validity,
and freedom to operate.

The commonly used databases for prior art search fall into two categories:

 Patents Databases and

 NPL

Patents’ Databases : ˆ

 Indian Patent Advanced Search System (InPASS- http://ipindiaservices.gov.

in/publicsearch/). ˆ
 Patentscope (WIPO- https://www.wipo.int/patentscope/en/). ˆ
 Espacenet (EU- https://worldwide.espacenet.com/patent/). ˆ
 USPTO (USA- https://www.uspto.gov/). ˆ
 Google Patents Advanced Search (https://patents.google.com/advanced).
 Orbit Intelligence (https://www.questel.com/business-intelligence-
software/ orbit-intelligence/).

Non-Patent Literature (NPL): ˆ

Scholarly publications: Handbooks, Textbooks, Withdrawn Patents,

Encyclopedias, Journals (IEEE, Research Gate, Springer, Wiley Online Library, etc.),
Dissertations, NCBI’s PubMed, Conference Proceedings, Technical Reports, Public
Conferences, etc. ˆ Industry/trade publications: Industry reviews and public
disclosures (Social media, YouTube, Books, Magazines, Datasheets, Blueprints,
etc.). ˆ Others: Newspapers, Websites, Technology blogs, Researchers’ websites,
etc.

Although the majority of NPL data is available freely on the public forum, some of
the journals are paid and can be accessed after paying the subscription. Major
Patent Offices such as the United States Patent and Trademark Office’s (USPTO),
European Patent Office (EPO), Japan Patent Office (JPO), etc. are maintaining in-
house NPL databases to make patents examination more effective.

2.Choice of Application to be Filed –

Once a decision has been made to patent the invention, the next step is, what
kind of application needs to be filed i.e. provisional patent application or
complete (Final) patent application - generally, the provisional patent application
is preferred for the following reasons:

 ˆ It is cheaper, takes less time, and involves fewer formalities. ˆ

 Any improvements made in the invention after the filing of the provisional
application can be included in the final application. In other words, the
provisional application does not require complete specifications of the
inventions. The application can be filed even though some data is yet to be
collected from pending experiments. ˆ
 A provisional application allows you to secure a priority date for the patent
applied.

However, it is mandatory to file the complete patent application within one year
of the filing of the provisional application; otherwise, the application stands
rejected.

3. Patent Application Forms: ˆ

 As per the Patent Act, 1970 (Section 39) and the Patents Rules, 2003 (Rule
7, 54, 135 and subrule (1) of rule 20, the application for the grant of patent
is filed using Form-1 and Form-2. ˆ
 The information sought in Form-1 is general in nature i.e. Title of
Application, Names of Applicant(s) and Inventor(s), Type of Application
(Ordinary, Convention, PCT-NP (PCT- National Phase), Divisional, Patent of
Addition, etc.). ˆ
 Whereas Form-2 seeks technical information and whether to file the
provisional application or complete the application. ˆ
  For ‘Provisional Application’, only ‘Description of the Invention’ and the
‘Abstract’ is to be furnished. Whereas, ‘Complete Application’ requires
‘Description of the Invention’, ‘Abstract’, ‘Claims’ and the manner in which
invention has to be performed.
 The ‘Claims’ of the patent are a very crucial part of the specifications
because they define the actual boundary of the invention. ˆ
 ‘Claims’ specify what is actually claimed by the invention and what is being
sought to be protected. It clearly describes what the patent does and does
not cover. ˆ
 The Claims are usually expressed as a declaration of technical particulars
articulated in legal terms. ˆ
 Claims can be classified into two types
 Independent Claims (stand alone claim) and
 b) Dependent Claims (dependent on independent claim). ˆ
 The Claims must be drafted precisely and carefully in order to seek patent
protection and also to protect the invention against potential infringers.

4. Jurisdiction of Filing Patent Application ˆ

India has four offices for filing patent applications(Refer the following table). ˆ
The applications can be filed only in one of the offices based on the applicant’s
residence or domicile or place of business or origin of the invention. These are
termed as jurisdictions to file patents.

 For a foreign applicant, the address for service in India or place of business
of his patent agent determines the appropriate Patent Office for filing a
patent application.
 ˆ In the case of joint applications, all the applicants are bestowed with
equal rights and consideration.

5. Publication: ˆ

 Once the patent application has been filed at the Regional Patent Office,
the patent application is kept secret for 18 months in the Patent Office. ˆ
  After the expiry of 18 months (from the date of filing of the application or
the priority claimed date, whichever is earlier), the application is published
in the Official Journal of Patent Office
(http://www.ipindia.nic.in/journalpatents.htm).
 ˆ The purpose of publishing the application is to inform the public about
the invention. The publication of an application is a mandatory step.

6. Pre-grant Opposition: ˆ

 If anybody has an objection to the invention claimed in the patent

application, he can challenge the application by approaching the Controller
of Patents within 6 months from the date of publication. It is termed as
Pre-grant Opposition. ˆ
 Depending on the outcome of the case, the patent application may be
rejected or recommended for the next step, i.e. patent examination.
 Depending on the outcome of the case, the patent application may be
rejected or recommended for the next step, i.e. patent examination. ˆ
 Although the patent application is kept secret for 18 months, under special
circumstances, this period can be reduced when the patentee(A
person/Organization who owns the patent (granted))/applicant plans to
sell or license the patent or seek an investor. ˆ
 For this, the applicant has to fill a Form-9 and submit it to the Controller
General.

7. Examination: ˆ

 Patent examination is a critical step in the process of grant of a patent. All

the important criteria (novel, inventive step, etc.) are scrutinized by the
professionals depending on the content of the invention. ˆ
 Usually, the examiner raises certain queries/doubts which need to be
addressed by the inventors.
 Once the examiner is satisfied with the answers received from the
inventors, the application is recommended for the grant of a patent.
 ˆ It is pertinent to mention that a patent application is not examined
automatically after clearing the publication stage. ˆ
  The applicant or his representative has to make a request for examination
of the patent by filing Form-18A and submitting the same within 48 months
from the date of filing of the application.

8. Grant of a Patent: ˆ

 After fulfilling all the requirements for the grant of a patent, including all
objections/queries raised by the ‘Patent Examiner’ and the public at large,
the patent is granted to the applicant.
 The granted patent is published in the Official Journal of the Patent Office.
ˆ
 This journal is published every Friday and contains information related to
patent applications published under section (u/s) 11A, post-grant
publication, restoration of patent, notifications, list of non-working patents
and public notices issued by the Patent Office.

9.Validity of Patent Protection:

 The patent protection is granted to an applicant for a limited period,

generally 20 years, starting from the date of filing of the application.
 Once a patent is granted for an invention in India, the next vital step is to
ensure that it is renewed annually by paying Patent Renewal Fee as per
Section 53, Rule 80 of the Indian Patents Act, till the expiry of the patent
grant period.
 Non-payment of Patent Renewal Fee might result in the cancellation of the
patent. ˆ
 In some countries, patent protection may be extended beyond 20 years.
 The extension aims to compensate for the time expended on the
administrative approval procedure before products can be put on the
market. ˆ
 The time taken for this procedure means that the patent owner may
sometimes not be able to benefit from his right for a considerable period
after the grant of the patent.

10. Post-grant Opposition :

  Once the patent has been granted by the Patent Office, it still can be
challenged by anyone within one year from the date of publication of the
grant of the patent.
 The granted patent can be challenged either via a Patent Office orin a Court
of Law. These bodies may invalidate or revoke a patent upon a successful
challenge by the interested party on the grounds mentioned below : ˆ
 The applicant for the patent wrongfully obtained the invention or any
part of the invention.
 The invention claimed has been published before the priority date. ˆ
 The invention claimed was publicly known/used before the priority
date. ˆ
 The invention claimed is obvious and does not involve an inventive
step. ˆ
 The subject of the claim is not patentable as per Chapter II of the
Patent Act, 1970. ˆ
 The details/specifications of the invention do not sufficiently and clearly
describe the invention.

Some forms related to patent applications in India include:

 Form 01: Application for Grant of Patent
 Form 02: Provisional/Complete Specification
 Form 03: Statement and Undertaking Under Section 8
 Form 04: Request for Extension of Time
 Form 05: Declaration as to Inventorship
 Form 27: Statement regarding the working of the patented invention on a
commercial scale

 Form 05
Used to declare that the applicant is the true and first inventor of the subject
matter
 Form 27
 Used to submit a statement regarding the working of the patented invention on
a commercial scale

Other types of patent applications

 Patent Cooperation Treaty (PCT): An international agreement for filing patent
applications
 PCT National Phase Application: A request to secure patent protection in specific
countries based on a single international patent application
 Convention application: Used to claim a priority date based on the same or
substantially similar application filed in any of the convention countries
Tips for filing a patent application
 Clearly state your connection to the invention
 Declare that all information provided is genuine and complete
 Identify and acknowledge inventors accurately