Law of Patents and filing process

By
NUPUR VERMA IBT/06/827
PALAK GUPTA IBT/O6/828
ROHIL AGARWAL IBT/O6/839
SAHANA SHANKAR IBT/O6/840
SHREYA DWIVEDI IBT/O6/844
ANSHIT SOOD IBT/O6/869
 Agenda(Objective)

• Patentability requirements
(overview)
• Patent Process in India
• Online patent filing process
in India
Protection of Ideas or
Inventions

• An idea/know how
• Generally speaking, we would like to
protect inventions that have significant
commercial value.
• This protection is often required to justify
the cost of commercial development.
Protection of Ideas or Inventions

• Private Sector
Patent
Copyright
Trade secret
• Government
Patent
 Patent VS Trade Secret
• Patent
Formal enforceable protection
Process forces disclosure
Disclosure facilitates improvement
• Trade Secret
Not enforceable
No disclosure (must be
maintained as a secret)
 Patents
• Utility Patent
• Plant Utility Patent (sexual
reproduction)
• Plant Patent (vegetative reproduction)
• Plant Variety Protection Certificates
(sexual reproduction)
 Patentable Subject Matter

• Inclusion list
Product or Process

• Exclusion list
 Exclusion list

• Frivolous inventions and Inventions

against Natural Laws
• Inventions contrary to Public Order or
Morality or prejudicial to Life or
Environment
• Scientific Principle or Abstract Theory or
Discovery
• New Form or New Property or New Use
• Mere Admixture
• Mere Arrangement or Re-arrangement of
devices or duplication
 Exclusion list cont…

• Method of Agriculture or Horticulture

• Medical Methods
• Plants and Animals
• Mathematical Algorithm and Computer Program
• Copyrightable works and Presentations
• Mental Act and Method of playing a Game
• Integrated Circuits
• Traditional Knowledge
• Atomic Energy (sec 4)
Utility (Industrial applicability)

• Capable to be used in the industry

• At least used for one purpose
Novelty

• New
• Not part of prior art
• Single reference
 Non-obviousness (Inventive Step)

• Inventive step
 Technical advance; and/or
 Economic significance
• Person skilled in the art
 Kalyan’s Patent Filter
INVENTIONS Model

Subject Matter

Usefulness

Novelty

Non-obviousness

Specification

PATENTS
 Basic Process

• Invention Disclosure
• Patent Review Committee (3-4M)
• Write Patent Application (1yr)
• File Patent Application with Patent and
Trademark Office (PTO)
• Examination by PTO
• Patent Allowed (½ - 1yr)
• Patent Issued (1- 2yrs)
 Invention Disclosure
• Initiated by Scientist in RMIS
• Abstract format
 You can attach additional information
• Approved by RL/LD/CD/AD
• First proof of inventor-ship
• Reviewed by Patent Advisor
• Referred to Patent Review Committee
• Is confidential
 The Invention Disclosure Provides
• Information on the technology
• Commercial potential
• Related publications that may affect
patentability
• Advantages over the state of the art
• Possible inventors
• Possible CRADA involvement
 Patent Review Committee
• Chairperson
• An in-depth reviewer
• A Patent Advisor
• Several members
• Recommendations:
Approve
Defer
Suspend
 Patent Application

• Usually prepared by Patent Advisor,

with assistance of the inventors
• Is a very complex document
• Would like to have complete within 1
year of approval of the Invention
Disclosure
• Filed with the Patent and Trademarks
Office (PTO)
 PTO Process

• Provide Serial Number 2-6

weeks after filing
• Assigned to an Examiner
• Examiners actions
Restriction Requirements
Non-Final Office Action
Final Office Action
Indian Patent Procedure
 Filing

• Contents of application (provisional or

complete)
• Persons entitled to apply
• Place of application
• Types of application
• Priority date
• Documents
 Contents of specifications

• Title (P)
• Abstract (P)
• Written Description (P)
• Drawings (where necessary)
• Sample or Model (if required by the examiner)
• Enablement and Best Mode
• Claims
• Deposit (Microorganisms)
 Persons entitled to apply

• True and first inventor of the

invention
• Assignee
• Legal representative
 Place of application

Patent Territorial jurisdiction

offices
Mumbai The states of Gujarat, Maharashtra, Madhya
Pradesh, Goa, Chhattisgarh, The Union
Territories of Daman and Diu and Dadra and
Nagar Haveli.
Delhi The states of Haryana, Himachal Pradesh,
Jammu and Kashmir, Punjab, Rajasthan, Uttar
Pradesh, Uttranchal, National capital territory of
Delhi and the union territory of Chandigarh.

Chennai The states of Andhra Pradesh, Karnataka ,

Kerala, Tamil Nadu and the union territories of
Pondicherry and Lakshadweep.
Kolkata (head Rest of India
office)
Various types of applications in India

• Ordinary application
• Convention application
• PCT international application
• PCT National phase application
• Application for Patent of addition
• Divisional Application
 Priority Date

• Date of first filing

• Date of foreign filing if foreign application filed
earlier
• Date of PCT international application
 Documents to be submitted at
the time of filing
• Form 1 - Application for the grant of patent.
• Form 2 - Provisional or Complete Specification.
• Form 3 - Statement and undertaking by the applicant.
• Form 5 - Declaration as to inventorship.
• Form 26 - Authorization of patent agent or any other person. (if
filed through an agent)
• Priority document details have to be filed for a Convention
application.
• Proof of right if the application is made by the assignee.
• Death Certificate of deceased - Legal Representative.
Publication

• Date of publication
• Open for public inspection
• Rights of patentee starts
• Early publication
• Circumstances when publication not done
Publication after 18 months
Examination

• Request for examination

• Formal examination
 verifying the propriety and correctness of all
documents
 verifying the patentability

• First Examination Report (FER)

• Amendments
 Grant

• Order for grant

• Fees
• Grant
• Publication
• Rights of patentees can be enforced
Publication of granted patents
E – filing in India
Payment
Certified and True copy
THANK YOU