1. Overview of Drafting & Filing of Patent in India
22nd 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)
15 April 2017
2014

2. Presentation Outline Criteria for Patentability
Drafting of Patent “An Art & Science”
Drafting of Provisional Specification
Drafting of Complete Specification
Filing of Ordinary Patent Application
E-filing procedure in India
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3. 1. Criteria of Patentability
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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)
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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
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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;
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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
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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.
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9. Umbrella with fan(388/Bom/73), Bucket fitted with torch,
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
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10. Do you possess Patentable Invention
Do you possess Patentable Invention? Don’t Wait, File the Patent Application “First to File Rule” (Eat it before Melt it)
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11. 2) Drafting of Patent “A Scientific Art” 15 April 2017
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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)
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13. Types of Patent Application
Ordinary Application (Provisional / Complete)
Convention Application
PCT International Application
PCT National Phase Application
Application for Patent of Addition
Divisional Application
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14. 3. Drafting of Provisional Specification
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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
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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
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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)
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18. Fees for Provisional Application
Form–1
Form- 2
Form-3
Form-26
Nat. Person(s)
1760/-
+ 176/- (>30 pages)
-NA-
No Fee
Small Entity
4400/-
+ 440/- (>30 pages)
Other than small Legal entity
8800/-
+ 880/- (> 30 pages)
+ 880/-(> 30 pages)
NB: 10% fee reduction in each case if doing e-filing
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19. Pros & Cons of Provisional application
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
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20. 4. Drafting of Complete Specification
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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
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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”
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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
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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.
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 ”.
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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]
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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
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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
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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]
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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
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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
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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)
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32. Fees for Complete application
Form\Fees
Nat. Person(s)
Small entity
Other than small entity
Form-1
1,760/-
+ 176/- (>30 pages)
4,400/-
+ 440/-(>30 pages)
8,800/-
+ 880/- (>30 pages)
+ 800/- (>10 claims)
Form-2
-NA-
176/-
(>30 pages)
+ 352/- (>10 claims)
440/-
+ 880/- (>10 claims)
+ 1760/- (>10 claims)
Form-3
No Fee
Form-5
Form-9
2,750/-*
6,875/-*
13,750/-*
Form-18
11,000/-
22,000/-
Form-26
NB: 10% fee reduction in each case if doing e-filing
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33. Renewal Fees for Patent
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34. 5. Filing of Ordinary Patent Application
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35. Cont…
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59. Cont…
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60. 6. E-Filing Procedure in India
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61. - E-filing is a new service provided by the Intellectual
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 20th July 2007
Who can file a patent application on-line?
- Any Individual (Indian national or foreigner)
- Registered Patent Agent
- Proprietor
- Organization
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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
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63. How to do e-filing? Step 1: Acquire Class 3 Digital Signatures
Controller of Certifying Authority (CCA),
Ministry of Information Technology and Communications
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64. Step 2: Do Online Registration
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65. 15 April 2017
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66. Step-3: Login into the System
Cont…
Step-3: Login into the System
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67. Step-4: Download client software
Cont…
Step-4: Download client software
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68. Step-5: Create New Application
Cont…
Step-5: Create New Application
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69. Step-6: Upload digitally signed New Application [.xml]
Cont…
Step-6: Upload digitally signed New Application [.xml]
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70. Step-7: Payment of Fee (EFT/Credit card)
Cont…
Step-7: Payment of Fee (EFT/Credit card)
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71. Step-8: Generate & Print Acknowledgment
Cont…
Step-8: Generate & Print Acknowledgment
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72. 15 April 2017
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73. Take Home Message…
“Innovation is a journey from mind to market, Concept to commercialization.” 3Ps Principle PATENT  PUBLISH  PROSPER
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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-2014.
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.
15 April 2017
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75. Thank You
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