Unit V Patent Filing

Indian Patent application filing
and prosecution procedure
Types of Patent
Applications
1
WHO CAN FILE
THE APPLICATION??
2
1. Alone or Jointly
2. True and first Inventor
3. Assignee of True and first
Inventor (company).
4. Legal representative (of
deceased person)
3
Patent Applications
1. Ordinary application
(i) Provisional specification
(ii) Complete specification
2. Convention application- 176 contracting parties
3. PCT - 153 contracting parties
a) PCT International Phase Application
b) PCT National Phase Application
4. Patent of Addition : Improvements / Modifications
5. Divisional Application : Separated from main application
Priority Starts with the date of filing of main application.

4
Term of Divisional/Addition Application: Expires with the main patent
PROVISIONAL
SPECIFICATION
1. Description of invention
2. Description means the Essential features of invention
3. No need of claims or details of performing the invention
5
ADVANTAGES OF PROVISIONAL
SPECIFICATION
Y For invention
• Priority to develop your invention

• Disclose to an interested person to obtain financial
support
• Time to utilize & Commercialize
• If Commercialization not possible AVOID anymore
expenses.
• Modify to commercialize
6
COMPLETE SPECIFICATION
1. Title of the invention

2. Field of invention
3. Use of invention
4. Prior art
5. Draw backs of prior art
6. Comparison between prior art and present invention
7. Aim of the invention
8. Summary of the present invention
9. Brief description of drawings
10. Statement of invention
11. Detailed description of invention
12. Drawings & worked examples
13. CLAIMS 7
OBJECTIVE OF THE CLAIMS
To define clearly & with precision

To define the exact boundary of monopoly claimed in the
invention
Relate to single invention
1. Clear & concise
2. Based on matter disclosed in the specification
Claims
Principal claim / Independent claim – Define essential Novel
features
Subordinate claim / Dependent claims - Define optional features 8
A STRONG PATENT
……..withstand a challenge in the courts

…….invention must be good, must be marketable
……... patent itself must be well written
specification - well written, clear, organized,

invention clearly distinguished from prior art,
extensive list of objective and advantages
claims - well written, wide range of coverage - broad

coverage, and something meaningful to fall back;
claims must be supported in the specification;
claims must be difficult to work around; 9
claims written from different perspectives

Patent Application Details
10
THE DOCUMENTS FOR FILING APPLICATION
FOR PATENT
 Application Form
 Provisional / Complete Specification
 Proof of Right to Apply
 Statement Of Undertaking (Foreign Filing)
 Power of Attorney (If Required)
 Declaration of Inventorship
 Certified copy (If Conventional Application)
 Abstract Of Invention
 Fees
 Drawings If any
11
From filing to grant
What happens to an application at
the IPO
12
One day an inventor files a
patent
• This is the filing date
13
Somebody classifies it
• According to
International &
Indian classifications
• File is assigned to the
concerned directorate
/ classification.
14
It then comes to an examiner..
• Checked for formal &

technical objections
• File is thoroughly read,
analysed
15
Examination
• Novelty search
• Most relevant documents
cited
• Examination report stating,
with arguments, and
citations what may be
wrong with the application.
16
Next step……
• The inventor can either
decide to continue with the
examination
• or withdraw his application
• or can clear his stand by
proving novelty over
citations.
• The claims may be modified
if the inventor wishes it.
17
The inventor replies……
• The inventor then
replies to the
examination report,
• Usually in a written
form
• Although telephone
can also be used
• By interview with
examiner 18
If we agree and all is
ok
• Report is written
• No formal or technical
objections.
• Explaining that patent
application should be
granted.
19
If we disagree
• Get together to discuss the

case and
• If still no agreement drawn
• An oral hearing is held to
which the inventor is
summoned to the office to
put his/her case to the
controller. 20
If we say no – Refusal!!!!
• If we say no the case will be

refused.
• This decision is appealable.
21
If we say yes –the grant
• If the inventor either

modifies the claims
• or Persuades us that our
point of view is in fact wrong
• Then we will accept the

application for grant of
patent at the end of the oral
hearing
22
After acceptance??
Opposition
• Its published in Gazette of India
• A 4-5 month period is open for anybody

to file an opposition to the grant.
• Examine the case, arguments of both the

inventor and the opponent on why it
should be modified or revoked.
23
After Opposition what?
• Appeal
• To the controller
• Oral hearing.
• Revocation / Patent grant
24
And then what?….
• Grant Of Patent
25
DUTIES OF PATENTEE AFTER GRANT
OF PATENT
1. Commercial Working of
Patented Invention
2. Periodical Report To The
Controller of the Commercial
Working of Invention
3. Payment Of Renewal Fees
26
WHAT TO DO WITH PATENT?
• Manufacturing & selling

• Transfer
• Licensing
• Assigning (sell out)
• Cross licensing
• Improve with further R&D
27
Compulsory License
• If the owner of intellectual property (e.g.,

a patent) refuses to work the property in
the country within a certain period of
time (3 yrs in India).
• A third party may apply for a compulsory license.
• Issued by the government without the consent of
the owner.
• Not subject to the same rules that apply
to licenses.
• Herceptin, cancer drug, 2013
28
 Grounds for grant of compulsory license
The expiry of three years from the date of grant
• that the reasonable requirement of the public is not met,
• that the patented invention is not available to the public at

reasonably affordable price,
• that the patented invention is not worked in the territory of

India.
29
INFRINGEMENT
30
WHAT TO DO, IF INFRINGED ????
• Send a Notice that you Own A patent & His

activities Are Infringing
• File a suit Against the Infringer In A
District Court
• Claim the Cost
• Precautionary Measures
Watch the industry & patent data bases
31
Use For Experiment &
Teaching
Any person can make or use a patented

article or process
without consent from Patentee or
without paying royalty
32
“…Creativity and invention
without wealth
creation is not innovation……”
-Jerry Ellis
33

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Unit V Patent Filing

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Indian Patent application filing

and prosecution procedure

Priority Starts with the date of filing of main application.

• Priority to develop your invention

1. Title of the invention

To define clearly & with precision

……..withstand a challenge in the courts

specification - well written, clear, organized,

claims - well written, wide range of coverage - broad

claims written from different perspectives

• Checked for formal &

• Get together to discuss the

• If we say no the case will be

• If the inventor either

• Then we will accept the

• A 4-5 month period is open for anybody

• Examine the case, arguments of both the

• Manufacturing & selling

• If the owner of intellectual property (e.g.,

• that the reasonable requirement of the public is not met,

• that the patented invention is not available to the public at

• that the patented invention is not worked in the territory of

• Send a Notice that you Own A patent & His

Any person can make or use a patented

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