Process of Patenting

Module 3 – Part 3
Process of Patenting – Major Steps
Prior Art Search
• To ensure that his invention is ‘novel‘ – Check Public Domain
• Patent documents and Non-Patent Literature (NPL), scientific
journals/reports/magazines
• 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.
• 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 in two
categories i.e. Patents Databases and NPL.
 Non-Patent Literature (NPL)
• Scholarly publications: Handbooks, Textbooks, Withdrawn Patents,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.
• Industry/trade publications: Industry reviews and public disclosures (Social
media, YouTube, Books, Magazines, Datasheets, Blueprints, etc.).
• Others: Newspapers, Websites, Technology blogs, Researchers‘ websites, etc.
Although, 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 inhouse NPL databases to make patents examination more
effective.
Choice of Application to be Filed
Provisional patent application is preferred for the following reasons:
• It is cheaper, takes less time, and involves fewer formalities.
• 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.
• 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.
Patent Application Forms
• Form 1 & Form 2 - application for the grant of patent
• Form 1 – General in nature
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.)
• Form 2 – Technical Information
Whether to file the provisional application or complete the application.
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.
Jurisdiction of Filing Patent Application

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. In
the case of joint applications, all the applicants are
bestowed with equal rights and consideration
Publication
• Patent application – kept secret for 18 months in the Patent Office
after filing.
• After the expiry of 18 months – the application is published in the
Official Journal of Patent Office
• To inform the public about the invention.
• Mandatory step.
Pre-grant Opposition
• 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.
• Depending on the outcome of the case, the patent application may be
rejected or recommended for the next step, i.e. patent examination.
• Although the patent application is kept secret for 18 months, but under
special circumstances, this period can be reduced when the
patentee/applicant plans to sell or license the patent or seek an investor).
• For this, the applicant has to fill a Form-9 and submit it to the Controller
General
Examination
• Critical step
• All the important criteria (novel, inventive step, etc.) are scrutinized
• 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.
• Not examined automatically after clearing the publication stage.
• 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.
Grant of a Patent
• 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. 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.
Flowchart for the process of filing a patent application.
Validity of Patent Protection
• generally 20 years - from the date of filing of the application.
• patent should be renewed annually.
• Non-payment of Patent Renewal Fee might result in the cancellation
of the patent.
• 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.
 Post-grant Opposition
• Can be challenged within one year from the date of publication of the grant
• Can be challenged either via a Patent Office or in 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:
• 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.
• The invention claimed was publicly known/used before the priority date.
• The invention claimed is obvious and does not involve an inventive step.
• The subject of the claim is not patentable as per Chapter II of the Patent Act, 1970.
• The details/specifications of the invention do not sufficiently and clearly describe the
invention.
 Commercialization of a Patent
• The patent owner may grant permission to an
individual/organization/industry to make, use, and sell his patented
invention, for the following reasons
• The patent owner has a decent job e.g. university professor and has no desire or
aptitude to exploit the patent on his own.
• The patent owner may not have the necessary manufacturing facilities.
• The manufacturing facility is not able to meet the market demand.
• The patent owner wishes to concentrate on one geographic market; for other
geographical markets, he may choose to license the patent rights.
• Patentee is required to furnish information (Form-27), on an annual
basis relating to the commercialization/selling of the patent – called
as ‘Working/Licensing of the Patent‘
• Exclusive Licence - patent is sold to only one individual/organization
for a fixed time period
• Non-Exclusive Licence - patentee can sell his patent rights to as many
individuals/parties as he likes
• If the patentee is not able to commercialize his patent within three
years from the date of the grant of a patent, any person may submit
an application to the Controller of Patents for grant of Compulsory
Licensing (of the patent), subject to the fulfilment of following
conditions:
• Reasonable requirements of the public concerning the patented invention
have not been satisfied.
• The patented invention is not available to the public at a reasonable price.
Need for a Patent Attorney/Agent
• Applicants can prepare their patent applications and file them
without assistance from a patent attorney.
• However, given the complexity of patent documents, it is advisable to
seek legal assistance from a patent attorney/agent when drafting a
patent application.
• Furthermore, the legislation of many countries requires that an
applicant, whose ordinary residence or principal place of business is
outside the country, be represented by an attorney or agent qualified
in the country (which usually means an agent or attorney who resides
and practices in that country).
Can a Worldwide Patent be Obtained
• There is no such term as ‘Universal Patent‘ or ‘World Patent‘ or ‘International Patent‘ as the
patent rights are territorial.
• Must be filed with a Patent Office of the country in which one wishes to seek patent
protection.
• Unfortunately, this option becomes laborious, cumbersome, time consuming and expensive
if one wishes to file a patent application in many countries.
• To ease out this issue, many Regional Offices have been established which receive patent
applications on behalf of a group of nations e.g. European Patent Office and African Regional
Intellectual Property Organization.
• A single application is sufficient to cover many nations that are members of a particular
regional office/organization.
• However, if one wishes to seek patent protection in several countries worldwide, it is
preferred to file an international patent under the Patent Cooperation Treaty (PCT).
• The only condition is that the applicant‘s country should be a member of PCT. India, along
with over 190 nations, is a member of PCT.
Do I Need First to File a Patent in India
• Indian residents are required to file the patent application first in India.
• Subsequently, they may file for patent protection in other countries.
• Prior approval is needed from the Patent Office, can be waived off under the
following circumstances:
• The applicant is not an Indian resident.
• If 6 weeks have expired since the patent application was filed in India by an Indian resident.
• If two or more inventors are working on an invention in a foreign country and one of the
inventors is an Indian resident.
• The invention does not have a potential market in India and hence does not wish to file the
patent in India. In such a scenario, the Indian resident has to seek Foreign Filing Permission
(FFP) from an Indian Patent Office.
• In case of international collaboration, if one part of the invention originated in India and the
inventor is an Indian resident, he has to seek permission to file the patent outside India.
• If the invention is related to defense or atomic energy or utility model, the inventor/s needs
to seek permission from the Indian Patent Office because inventions related to these
domains are not the subject matter of patentability in India.
Patent Related Forms (over 30 patent-related
forms)
Fee Structure
Types of Patent Applications
• Provisional Application
• Ordinary Application
• PCT Application
• Divisional Application
• Patent of Addition Application
• Convention Application
Commonly Used Terms in Patenting
National Bodies Dealing with Patent
Affairs
• There are many departments/organizations/bodies dealing with
various aspects of patents,
• Indian Patent Office (IPO)
• Department for Promotion for Industry and Internal Trade (DPIIT)
• Technology Information, Forecasting and Assessment Council (TIFAC)
• National Research Development Corporation (NRDC).
Utility Models
• In many cases, a new invention involves an incremental improvement
over the existing products, but this technical improvement is not
sufficient enough to pass the stringent criterion of ‘Novelty‘ and ‘Non-
obviousness‘ set aside for the grant of a patent.
• Such small innovations can still be legally protected in some countries
and termed as ‘Utility Models’ or ‘Petty Patents’ or ‘Innovation Patents’.
• In this case, the criterion of ‘Novelty‘ and ‘Non-obviousness‘ are diluted
or relinquished.
• But the requirement of industrial application or utility is the same as that
for patents.
• Helpful tool for Micro, Small and Medium Enterprises (MSME)
• Usually less rigorous and involves minimal cost.
• MSMEs do not have deep pockets to carry out intensive R&D leading to the
grant of patents.
• But their innovations are good enough for improving their
products/processes and bringing more financial rewards.
• Such inventions pass the requirements set aside for Utility Models but not
for patents.
• The life of the Utility Model is less – varies from 7-15 years in different
countries.
• Nearly 80 countries, including France, Germany, Japan, South Korea, China,
Finland, Russian Federation and Spain, provide protection for Utility Models
under their IPR laws.
• India till date does not recognize utility patents.