Procedure To File Patent Application In India

Intellectual Property means the legal rights granted to a person which result from intellectual activity in the industrial, scientific, literary and artistic fields. These include (i) Patents, (ii) Copyrights, (iii) Trademark, (iv) Industrial designs (v) Layout designs of integrated circuits, (vi) Geographical indications, (vii) Registration of plant varieties and (viii) Trade secrets.

Patent is an exclusive right given by Government to an inventor for a limited period of time, for protecting against illegal use of invention. The duration of patent in 20 years and is counted from the Priority Date i.e. the date of filing patent application.

For an invention to be patent-able, 3 criteria must be satisfied:

1. Novelty-The invention should not have any prior art. Any material published, presented or in public use globally will constitute prior art. Any invention which is published before filing patent application becomes part of prior art and thus cannot be novel. Annual reports, thesis, journals, periodicals etc are published materials. If student wants to obtain patent from the work carried out in his/ her dissertation, he/she must file patent first before submitting thesis. Alternately, thesis is written in a way that inventiveness is not disclosed.
2. Non-obviousness-The invention should not be obvious to the person skill in art. A skilled person has reasonable knowledge in the subject of invention.

III. Commercial value-The invention must have industrial application.

A patent application is filed only when applicant is satisfied from all the three criteria. There are two broad types of patent applications. First one is Provisional Patent Application while the other one is Complete Specification Application.

Contents of Patent Application:

A patent application should contain:

1. Application for grant of patent Form-1
2. Provi/complete specification in Form-2.
3. Statement and undertaking in Form-3, which is filed either along with the application or within 6 months from the date of application.
4. Declaration as to inventor ship in Form 5 for Applications accompanying a Complete Specification or a Convention Application or a PCT Application designating India.
5. Power of authority in Form-26, if filed through a Patent Agent.
6. Priority document is required in case of Convention Application (under Paris Convention) or PCT National Phase Application. The priority document may be filed along with the application or before the expiry of eighteen months from the date of priority, so as to enable publication of the application.
7. Every application shall bear the Signature of the applicant or authorized person / Patent Agent along with name and date. The drawing sheets should bear the signature of an applicant or his agent in 172 the right hand bottom corner. On every sheet, name of applicant is written on top-left hand corner while total number of drawing sheets and sheet number are written on top-right corner.
8. In case of a biological material obtained from India, the applicant is required to take the permission from the National Biodiversity Authority before the grant of the patent. The Application form shall also indicate clearly the source of geographical origin of any biological material used in the Specification, wherever applicable.

Form 1: This form contains information about the applicant, inventor and the title of invention, the particulars of same patent filed in convention country or through PCT. It also has columns for patent of addition in case an inventor makes an improvement in invention specified in original patent application and divisional patent, in case a patent application contains more than one invention and the applicant wish to file a separate application for econd invention.

Form 2: Form 2 contains Provisional/ Complete Specification. The Specification is a techno-legal document containing full scientific details of the invention and claims to the patent rights. The first page of the Form 2 shall contain: a) Title of the invention; b) Name, address and nationality of each of the applicants for the Patent; c) Preamble the description.

Provisional Specification: When the applicant finds that his invention has reached a stage wherein it can be disclosed on paper, but has not attained the final stage, a written description may be submitted to Patent Office as a Provisional Specification. A Provisional Specification secures a priority date. Immediately on receiving the Provisional Specification the Patent office accords a filing date and application number to the Application. A complete specification is to be filed within twelve months from the date of filing of the provisional specification.

A Provisional Specification shall contain the title and description of the invention and shall start with a preamble ‘The following Specification describes the invention.’ Claims may not be included in the Provisional Specification as the purpose of filing a Provisional Specification is to claim a priority date. The description starts from the second page starting with the field of invention and containing the background of the invention, object of the invention and statement of the invention.

Complete Specification: Every complete specification shall fully and particularly describe the invention and discloses the best method of performing the invention which is known to the applicant for which he is entitled to claim protection and end with a claim or set of claims defining the scope of the invention for which the protection is claimed and is to be accompanied by an abstract. A complete specification shall contain the title, description, drawings, abstract and claims.

Title: The subject matter of the invention and shall disclose the specific features of the invention.

Description: The description should preferably begin with a general statement of the invention e.g. “This invention relates to”. Description of an invention is required to be furnished in sufficient detail so as to give a complete picture of the invention and follows the Summary of invention. The nature of improvements or modifications effected with respect to the prior art should be clearly and efficiently described. The details of invention described should enable a person skilled in the art to reproduce the invention into practice without further experimentation. Any biological material described in the specification must be submitted with the International Depository Authority under the Budapest Treaty or the International Depository Authority in India, Microbial Type Culture Collection and Gene Bank (MTCC) – Chandigarh. Sequence listing should also be given in electronic form and the fees with respect to the corresponding number of pages should be paid.

Abstract: The abstract shall contain a concise summary of the matter contained in the specification. The summary shall indicate clearly the technical field to which the invention belongs, technical problem to which the invention relates and the solution to the problem through the invention and principal use or uses of the invention. The abstract may not contain more than one hundred and fifty words.

Claims: A claim is a statement of technical facts expressed in legal terms defining the scope of the invention sought to be protected. In a complete specification the description is followed by claims. No exclusivity is obtained for any matter described in the Complete Specification unless it is claimed in the claims. What is not claimed in the ‘claims’ stands disclaimed, and is open to public use, even if the matter is disclosed in the description.

Scope of claims: Claims must not be too broad to embrace more than what the applicant has in fact invented. A Claim which is too broad may encroach upon the subject matter which is in public domain or belongs to others. However, a claim may not be too narrow also because such a Claim would not be sufficiently effective against potential infringement. A good drafting may begin with broad claims and develops towards claims that are narrower in scope. The “statement of Claims” may be preceded by the prescribed preamble, “I / We Claim” as the case may be. Each claim should be in a single sentence and should be clearly worded.

The first claim is always an independent claim also known as ‘Principal Claim’ and should clearly define the essential novel features of the most preferred embodiment of the process/product that constitutes the invention. It is advisable to limit the number of claims, as well as the number of independent claims in a single application so that the claims are all of cognate character and are linked so as to form a single inventive concept. A dependent claim derives antecedence from an independent claim and reads into it the features of the independent claim and may contain additional non-essential features and even the minute aspects and optional features.

Examples: “A wrapper as claimed in Claim 1, wherein a narrow area of the tear tape, spaced from each edge of the tear-tape, is united to a narrow area of the wrapper defined on each side by a line of perforations which are covered by the outer portions of the tear-tape, the perforations facilitating tearing of the wrapper to remove the portion bounded to the tear-tape.”

Fee: Fee payable under the Act may either be paid in cash or through electronic means or may be sent by bank draft or cheque payable to the Controller of Patents and drawn on a scheduled bank at the place where the appropriate office is situated. If the draft or cheque is sent by post, the fee shall be deemed to have been paid on the date on which the draft or cheque would have reached the Controller.

Publication & Examination: Application is published after 18 months of submission of patent application in journal of patent office and can be requested for early publication (form 9) by paying fee (Rs 2750/- for individual, Rs 6,875/- for small entity and Rs. 13750 for others except small entity) and early publication can occur within 3-4 months. The patent application is not examined by examiners of patents (in patent office) unless it is published. After publication, request for examination along with fee is submitted (form 18). Examiners may send examination report to applicant and report has to be appropriately responded back within 12 months.

Maintenance of patent: After grant, a patent is maintained by paying renewal fee every year. If renewal fee is not paid, the patent will cease to remain in force and invention becomes open to public.

Fee structure for physical filing: Ten percent additional fees shall be paid in case of physical filing of patent application as compared to e-filing. As given in Patent Amendment, 2014, small entity refers to:

• An enterprise where the investment in plant and machinery does not exceed Ten crore Indian Rupees (in case of an enterprise engaged in the manufacture or production of goods).

An enterprise where the investment in equipment does not exceed Five Crore Indian Rupees (in case of an enterprise engaged in providing or rendering of services).

Y.S. Rajput1, Rajan Sharma2 and Dhiraj Kumar Nanda2
1. Animal Biochemistry Division, 2. Dairy Chemistry Division
ICAR-National Dairy Research Institute, Karnal