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Overview of Drafting & Filing of Patent in India 22 nd March 2014, Saturday Dr. Manish A. Rachchh M. Pharm, Ph.D. Registered Patent Agent (IN/PA-1573)

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Presentation on theme: "Overview of Drafting & Filing of Patent in India 22 nd March 2014, Saturday Dr. Manish A. Rachchh M. Pharm, Ph.D. Registered Patent Agent (IN/PA-1573)"— Presentation transcript:

1 Overview of Drafting & Filing of Patent in India 22 nd March 2014, Saturday Dr. Manish A. Rachchh M. Pharm, Ph.D. Registered Patent Agent (IN/PA-1573) Associate Professor, Centre of Pharmaceutical Sciences, Gujarat Technological University (GTU), Ahmedabad Tel: (M) May 2014

2 Presentation Outline 1.Criteria for Patentability 2.Drafting of Patent “An Art & Science” 3.Drafting of Provisional Specification 4.Drafting of Complete Specification 5.Filing of Ordinary Patent Application 6.E-filing procedure in India 9 May 2014

3 1. Criteria of Patentability 9 May 2014

4 Principle of “3I” Any Invention has to follow the principle of “ 3 I ” 1) Innovativeness (Novelty) 2) Inventive Step (Non-obviousness) 3) Industrial Utility (Usefulness) 9 May 20144

5  Invention [U/s 2(1)(j)]..… It means a new product or process involving an inventive step and capable of industrial application  Inventive step [U/s 2(1)(ja)]..… It means a feature of an invention that involves technical advancement as compared to the existing knowledge or having economic significance or both and that makes the invention not obvious to a person skilled in the art 9 May 2014

6  New invention [U/s 2(1)(l)]..… It means any invention or technology which has not been anticipated by.. −publication in any document OR −used in the country OR −elsewhere in the world before the date of filing of patent application with complete specification, i.e., the subject matter has not fallen in public domain or that it does not form part of the state of the art  Capable of industrial application [U/s 2(1)(ac)]… In relation to an invention, it means that the invention is capable of being made or used in an industry; 9 May 2014

7 Non Patentable Subject matter U/Section 3(f)  The mere arrangement or re-arrangement or duplication of known devices each functioning independently of one another in a known way.  Also we have to look at U/s 3 (a) to 3 (p) and U/s 4 9 May 20147

8 Explanation: An improvement on something known before or a combination of different matters already known, should be something more than a mere workshop improvement; and must independently satisfy the test of invention or an 'inventive step'. To be patentable the improvement or the combination must produce a new result, or a new article or a better or cheaper article than before. A mere juxtaposition of known devices in which each device functions independently is not considered patentable. 9 May 2014

9 Examples: ̶ Umbrella with fan(388/Bom/73), ̶ Bucket fitted with torch, ̶ Clock and transistor in a single cabinet. ̶ Compact device for measuring the settlement characteristic of buildings and the like civil engineering structure comprising a set of base plates to be fixed at desired parts of the buildings, a water level, a tilt meter and means to measure crack-width developing in structure over a desired interval These are not patentable subject matter, since they are nothing but mere arrangement and rearrangement of items without having any working interrelationship between them and functioning independently of each 9 May 20149

10 Do you possess Patentable Invention? Don’t Wait, File the Patent Application “First to File Rule” (Eat it before Melt it) 9 May

11 9 May ) Drafting of Patent “A Scientific Art” 11

12 Pre-Filing Requirement  Keep following things ready before starting filing procedure: –Title of invention –Brief description of invention –Detailed description of invention –Claims (may OR may not be req’) –Abstract (may OR may not be req’) –Figures (if any) –Name of inventors –Name of applicants –Right of proof of Assignment (if any) 9 May

13 Types of Patent Application I. Ordinary Application (Provisional / Complete) II. Convention Application III. PCT International Application IV. PCT National Phase Application V. Application for Patent of Addition VI. Divisional Application 9 May

14 3. 3. Drafting of Provisional Specification 9 May 2014

15 Key Features of Provisional Patent Under section 9 of the act Application can be filed with provisional specification (without claims) to secure priority (“First to File” rule) No patent is granted on the basis of a provisional specification It must be followed by a complete specification within 12 months Applicant can file more than one provisional application within 12 months of first filing On request, complete can be termed as provisional, if request within 12 months of filing of complete specification 9 May

16 Cont… On request, priority date can be changed from date of provisional to complete, if request before grant of patent A provisional specification is not a rough draft or a skeleton of the complete specification It remain permanent and separate document Provisional application can not be allowed in case of Divisional, Conventional or PCT application designating India 9 May

17 Filing of Provisional application Form–1: Application for Grant of Patent Form- 2: Application with Provisional Specification It should include ̶ Field of invention ̶ Background of the invention ̶ Object of the invention ̶ Principle of invention ̶ General statement of the actual invention Form-3 : Statement and Undertaking regarding foreign filing Form-26: Form of authorization of Patent Agent OR Power of Attorney form on non-judicial stamp paper Proof of Right of Assignment (In favor of applicant by Inventor) 9 May

18 Fees for Provisional Application 9 May FeesForm–1Form- 2Form-3Form-26 Nat. Person(s) 1760/ /- (>30 pages) -NA /- (>30 pages) No Fee Small Entity 4400/ /- (>30 pages) -NA /- (>30 pages) No Fee Other than small Legal entity 8800/ /- (> 30 pages) -NA /-(> 30 pages) No Fee NB: 10% fee reduction in each case if doing e-filing

19 Pros & Cons of Provisional application  Pros: Easy to apply as less documents are needed No need of claims and abstract (save time and money) Secure the priority date from the date of its filing 12 month time period is available to complete the research OR to find out some potential licensee to avail financial support Fees is only either 1,760/- (Nat. Person) Or 8,800/- (legal entity)  Cons: Term of patent will start from the date of its filing Publication & prosecution of application will start only after filing of complete application 9 May

20 4. 4. Drafting of Complete Specification 9 May 2014

21 Embodiments of Complete Specification Under section 9 of the act, submission of complete specification is necessary to obtain a patent. Section 10 provides the content of complete specification [MPPP 5.6.1] – (a) Title (b) Preamble of the invention – (c) Name, address and nationality of the applicant (d) Field of Invention – (e) Use of Invention : A brief statement(f) Prior Art – (g) Problem to be solved (h) Object of Invention – (i) General statement of invention (j) Detailed Description of Invention – (k) Best method of working of the invention (l) Statement of claims – (m) Signature with date (n) Drawings – (o) Abstract 9 May

22 Complete Specifications (Rule 13) a) Title: It should be brief, within 15 words, free from fancy expressions, free from ambiguity, give a fair indication of the art or industry to which it relates Eg: “Magic ball for cricket” (X) “Novel ball for cricket” (√ ) b) Preamble: It should be mentioned on Form-2 with other details.. “The following specification particularly describes the invention and the manner in which it is to performed” 9 May

23 Cont… c) Name, address and nationality: Full name of applicant along with nationality and full address of resident OR business (d &e) Field of the invention and use of Invention: “This invention relates to …………………”… Followed by area of applications along with use of invention (f and g) Prior Art and problem to be solved : This part should indicate experiments going on in the field, patents and pending patent applications in the specific art with short statement of the closest prior art if any 9 May

24 Cont… h) Object of the Invention: “The principal object of this invention is ……………”, “Another object of this invention is ……………..”, “A further object of this invention is ………….”etc. i)Statement of Invention (Summary) : It should be given before detail description It should clearly set forth the distinguishing novel features of the invention Eg: “Accordingly the invention provides an apparatus consisting of which is characterized in that ”. 9 May

25 Cont… (j& k) Detailed Description of Invention (with reference to drawings, if any) & Best Mode of working Includes sufficient detail to give a complete picture of the invention Give nature of improvements or modifications effected with respect to the prior art Should fulfill “Best mode” and “Enablement” criteria Includes examples / drawings or both Details regarding deposit in case of biological products [Microbial Type Culture Collection and Gene Bank (MTCC) – Chandigarh] 9 May

26 Cont… L. Statement of Claims Claims are considered to be the “Heart” of the patent document Each claim should be clear & in a single sentence It should be concise, precise and accurately expressed in legal terms defining the scope of the invention In a good drafting, it begins with broad claims and develops towards claims that are narrower in scope 9 May

27 Cont… It should frame to protect either a product or process or apparatus or all It should start with preamble, “I or we claim” It should start from the fresh page after full description If there are more than ten claims then additional fee should be paid A claim must be clear, complete and supported by description Any subjective words like “thin”, “strong”, “a major part”, “such as”, “when required” or “any” should be avoided 9 May

28 Cont…  A claim usually consists of three parts : Introductory phrase Body of the claim, and Link that joins the two segments Eg: “A tool for opening metal containers, the tool comprising a spindle split throughout its length…….”  Structure of Claim includes…. Independent Claim Dependent Claim Omnibus Claim [Structure claim/ picture claim] Markush -Type Claims [To claim new series of chemical compounds] 9 May

29 Cont… m) Signature with date Signature with the name (s) of the applicant (s)/ or the authorized registered patent agent be written legibly along with the date n) Drawings It should be drawn with black Indian indelible ink filed on a standard A4 size durable paper in duplicate. Margin of 2.5 cm on each side Name of the applicant: On left-hand top corner of the sheet Sheet number: On right hand top corner of each sheet. (eg. Sheet 1 of 10, 2 of 10……) Signature of the applicant/agent: On right hand bottom corner of each sheet with Name 9 May

30 Cont… o) Abstract It should be brief, preferably within 150 words, start with the “Title of the invention”, given on a separate page after claim (s) If necessary, the most relevant figure of the drawings OR chemical structure should be included on abstract page It is an efficient tool for the purposes of Patent searching Controller may amend the abstract for providing better information to third parties 9 May

31 Filing of Complete application –Form–1: Application for Grant of Patent –Form- 2: Application with Complete Specification It should include Title + Field of invention + background of the invention + object of the invention + principle of invention + general statement of the actual invention + Detailed description + Claims + Abstract + Figures –Form-3 : Statement and Undertaking regarding foreign filing –Form-5: Declaration as to Inventorship –Form-9: Request for express publication (before 18 m of priority)* –From-18: Request for examination (within 48 m of priority) –Form-26: Form of authorization of Patent Agent/Patent Attorney OR Power of Attorney form on non-judicial stamp paper –Proof of Right of Assignment (In favor of applicant by Inventor) 9 May

32 Fees for Complete application 9 May Form\Fees Nat. Person(s) Small entity Other than small entity Form-1 1,760/ /- (>30 pages) 4,400/ /-(>30 pages) 8,800/ /- (>30 pages) + 800/- (>10 claims) Form-2 -NA- 176/- (>30 pages) + 352/- (>10 claims) -NA- 440/- (>30 pages) + 880/- (>10 claims) -NA /- (>30 pages) /- (>10 claims) Form-3No Fee Form-5No Fee Form-92,750/-*6,875/-*13,750/-* Form-184,400/-11,000/-22,000/- Form-26No Fee NB: 10% fee reduction in each case if doing e-filing

33 Renewal Fees for Patent 9 May

34 5. Filing of Ordinary Patent Application 9 May 2014

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60 6. E-Filing Procedure in India 9 May 2014

61  What is e-Filing? - E-filing is a new service provided by the Intellectual Property Office, India in order to enable customers to apply for a Patent on-line. It was started from 20 th July 2007  Who can file a patent application on-line? - Any Individual (Indian national or foreigner) - Registered Patent Agent - Proprietor - Organization 9 May

62 What are the benefits of e-Filing? –Receive a Patent application number immediately –On-line verification to assure error-free filing –Speed up the registration process –Print the completed application data and receive fee acknowledgement –Save the data locally in PC –Be able to recall your contact details for subsequent applications –Till August 2008, 1000 application were filed via e-filing (appx. 3% of total), but target of IPO is to reach upto 97% in next couple of years 9 May

63 63 How to do e-filing? Step 1: Acquire Class 3 Digital Signatures Class 3 Digital Signatures TCS Code solutions Safe Script 9 May 2014

64 Step 2: Do Online Registration 649 May 2014

65 659 May 2014

66 66 Cont… Step-3: Login into the System 9 May 2014

67 67 Cont… Step-4: Download client software 9 May 2014

68 68 Cont… Step-5: Create New Application 9 May 2014

69 69 Cont… Step-6: Upload digitally signed New Application [.xml] 9 May 2014

70 70 Cont… Step-7: Payment of Fee (EFT/Credit card) 9 May 2014

71 71 Cont… Step-8: Generate & Print Acknowledgment 9 May 2014

72 9 May

73 “Innovation is a journey from mind to market, Concept to commercialization.” 3Ps Principle PATENT  PUBLISH  PROSPER 9 May Take Home Message…

74 GTU Vision 2014 GTU has fix up a goal to file at least 500 Patents from the domains of Engineering and Pharmacy by the end of next academic year June So, lets contribute to fulfill our vision to make GTU a world class Research Oriented University. Dr. Akshai K. Aggarwal Honb. Vice-Chancellor, Gujarat Technological University, Ahmedabad. 9 May

75 Thank You 9 May


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