Procedure for Granting Patent

Introduction
• A patent is granted by a national patent office or by a regional

office that does the work for a number of countries, such as the

European Patent Office and the African Regional Industrial

Property Organization.

• Under such regional systems, an applicant requests protection

for the invention in one or more countries, and each country

decides as to whether to offer patent protection within its

borders.
• The WIPO - administered Patent Cooperation Treaty (PCT) provides

for the filing of a single international patent application which has the

same effect as national applications filed in the designated countries.

• In India, the Controller General of Patents, Designs and Trademarks is

responsible for the administration of the Patents Act, 1970 through the

Patent Offices located at Mumbai, Delhi and Chennai.

• Head quarter : Kolkata

 Patent Information
• Every patent office throughout the world publishes the patent literatures and the
information what one gets from these patent documents is called Patent
Information.
 Patent documents are the main source of patent information.
 Patent information is well classified according to the International Patent
Classification System to enable easy approach and use.
 Patent information can be used for further research as a stepping stone.
 Patent Information plays a pivotal role in technology transfer.
 Patent information is free to be utilized after the term of the patent expires
or when the patent ceases to be in force.
 Forms of storage and retrieval of patent
information
The patent information is available in various media like:
• Traditional printed hard copy form, i.e., paper copies from
Patent Office.
• Micro film (From Patent Information System (PIS), Nagpur).
• On-line availability – Indian Patent Office Website
“www.ipindia.nic.in” where from the public can access the details
about patents and designs, the application forms and details about
the patent procedures and Patent Offices.
• CD ROM – Various types of CD-ROMs provide Patent
Information regularly, which is updated regularly.
• Patent Information throughout the world is available in both
abridged and detailed versions on various websites (E.g.
Uspto.gov.com, etc.) and also in CD-ROM forms.
 Various storage tools facilities available
from the patent office
• The Search Files containing the printed specifications of the earlier granted
patents in hard copy form are classified according to the Indian and
International Patent Classification.
• Abridgements / Abstracts classified according to the International Patent
Classification Systems.
• Extraordinary Gazette of India, Part III, Section 2, exclusively for the Patent
Office, publishes the information regarding the filing and grant of Patent.
• Subject Matter Index (Serial Files) classified according to the Indian
Classification System.
• Name Index List.
 Patentability Search
• Patentability search is a search for invention in hope of not
finding the same invention.
• For this, various data bases (Paid or Unpaid) are to be scanned.
• The patentability search is an universal concept since inventions
cannot be subjected to a boundary constraint.
• But it is to be noted that the patent laws are territorial.
• Computer data base search is quick and relatively inexpensive.
• Data base searches are most useful in searching sophisticated
inventions, which can be described by precise, well-known terms
of art.
• No search will "guarantee" the patentability of any invention.
• The object is to make a reasonable assessment of the prospects
for obtaining worthwhile patent protection.
• Search results are also useful in preparing a patent application.
Precautions to be taken by the Applicants
 Before the grant of patent
• Do not publish the invention before applying for a patent
protection.
• Before you start working on a problem, review the Patent
Literature on the particular field of industry to which the
problem relates so as to save time and money.
• Go through the Patent Search Files so as to get familiar with
the intricacies of patent practices and to draft a good Patent
Specification.
• Decide the question of securing foreign patents before it
is too late to apply for such a patent.
• Prosecute your patent application within the time
limits prescribed at various stages of the application
processing.
• Look upon the objections raised by the Patent Office as
constructive criticisms offered to you, so that the Patent
that might be granted to you could be a valid one.
 After the grant of patent, when you
become a patentee
• Do not fail to pay the Renewal Fee in time.

• Try to work on the Patent, exploiting the invention commercially or

else, grant license to a person, who has well equipped infrastructure
to manufacture the patented product.
• Keep yourself in touch with the industrial progress by referring to the
Patent Office Gazette and other publications. This will be helpful for
keeping you updated with the latest scientific and technological
progress and provide guidance to perform new invention as advance
steps to your earlier inventions.
 How to apply for obtaining Patent

• Any person who is true and first inventor or the person who
has derived title from him is entitled to apply for a patent
being assignable and to protect his invention through Patent
Right.
• The inventor can either be a Natural Person or a Legal Entity.
• The prescribed forms for applying to get a patent are forms 1,
2 and 3, which are available in the Patent Offices and at
various websites.
 Types of Patent Application

• Application for Ordinary Patent is filed under the Patents Act, 1970. Ordinary

patent can be obtained by any person, whether a citizen of India, or not, claiming to be

the true and first inventor or his assignee.

• Application for Patent of Addition is filed for improvement in or modification of an

invention for which a patent has already been applied for. The applicant of the original

patent to which the invention is an addition, can only file a patent of addition.

• Convention Application: Patent grants under section (u/s) 135 in respect of

reciprocatory arrangement for the nationals of countries covered under Paris

Convention.
 Requirements for the Patent
• Problem of invention
• Current report of the problem to be addressed
• Solution to the problem
• Extent of novelty
• Uses or application
• Inventor details
Documents necessary for making an application for patent to the
patent office

• Application in the prescribed form with prescribed fees in

duplicate.
• Provisional or complete specification along with drawings,
if any, in duplicate.
• Abstract of invention in duplicate.
• A statement and undertaking regarding foreign filing under
section 8 of the Act in the prescribed form in duplicate.
• In case provisional specification is filed first or application is a
conventional application, then a declaration as to inventorship in
the prescribed form is to be filed along with the complete
specification.
• In the case of convention application, certified copy of the
specification filed by the applicant in the convention country is
required to be submitted.
• A duly stamped power of attorney in the prescribed form is
required, in case the application is filed through a patent attorney.
Filing
 Contents of provisional specification
• The inventor should disclose general aspects of invention in provisional
specification.
• It is advisable to give all the pertinent information in respect of the
invention.
• Purpose of filing provisional specification is to establish the priority date
of invention.
• Thus, the provisional specification helps the inventor in getting preference
over the person who might have applied for patent at a later date.
• The provisional specifications should not contain claims.
• No amendment that would add any fresh matter to, or extend the scope of
the invention described in the provisional specification is allowable when
complete specification is filed thereafter.
 Normally the complete specification shall
contain the following subject matter
• Title of Invention
• Field of invention
• Background of invention with regard to the drawbacks
associated with the prior art.
• Object of invention
• Summary of invention
• Brief description of the accompanying drawings
• Detailed description of the invention with reference to drawings
• Claim(s)
• Abstract of invention
• Claims should clearly define the scope and the
salient features of the invention. There should
be no ambiguity in respect of the nature of
the invention and the scope of claims.
 Publication of Applications
• All the applications for patents will not be open to the public for 18 months from the

date of filing or date of priority whichever is earlier.

• After 18 months, every application will be published except the applications in which a

secrecy direction is given under section 35, and the same will be notified in the Official

Gazette.

• The publication includes the particulars of date of application, application number,

name and address of the applicant and abstract.

• Upon publication, the specification and drawings are made available to the public by

Patent Office on payment of the prescribed fee and the biological materials mentioned

in the specification will be made available to the public by the depository institutions.
 Request for Examination (RFE)
• No application for a patent will be required to be examined unless the

applicant or any other interested person makes a request in Form 18 within 48

months from the date of filing of the application for patent.

• If an application is filed before 20.05.2011 (Date of commencement of the

Patents [Amendment] Act, 2002), the request shall be made before 20.05.2015

or within 48 months from the date of application, whichever is later.

• If a request is not made within the stipulated time, the application will be

treated as withdrawn by the applicant. Also, the applicant may withdraw the

application made by him before the grant of patent.

 Examination and First Examination
Report (FER)
• All the applications filed at the appropriate office shall be first subjected to
formal screening and then to substantive Technical examination by the
examiner [when a request in Form 18 is made].

• As the novelty, inventive step and industrial application are the criteria for
the Grant of Patent, these aspects are thoroughly studied by the Examiner.

• Further, the examiner will conduct a search for novelty, using the data-
bases available at the patent office after the subject matter of invention is
classified according to Indian and International classification, and also
various other sources.
• The technical and legal defects observed by the Examiner are submitted to
the Controller of Patents in the form of objections for his approval.

• A statement of objections known as the “First Examination Report” will

be issued to the Applicant by the patent office. The applicant shall rectify
all the legal and technical defects and put the application in order for
acceptance within a period of 6 months, which cannot be extended.
However, first reply to the First Examination Report shall be made within 4
months.
Acceptance and Notification of Complete Specification
• The Controller of Patent shall accept the complete specification and
inform the acceptance of complete specification to the applicant.

• Further, the acceptance of complete specification will be notified in

the Gazette of India, Part III, section 2 which is published weekly, on
every Saturday.
 Opposition to the Grant of Patent
• Any person interested can oppose the grant of patent within a
period of four months, extendable by another month.
• The desire to oppose the grant should be put in an appropriate
form with appropriate fee.
• An opponent shall file a Notice of Opposition giving details of the
grounds on which he wishes to oppose the Grant of Patent.
• The notice of opposition should be followed by full written
statement explaining the various ground of opposition.

• The opposition to the Grant of Patent coming before the controller

is a bi-party proceedings wherein, the Controller, being a quasi-
judicial authority, will decide the case based on the written
statement and evidence placed by the opponent and, also the reply
statement and evidence filed subsequently by the Applicant
 Grant of Patent
• If the application is not opposed or the opposition is decided in favour of
the applicant or is not refused otherwise, then the patent is granted and
sealed upon request made by the applicant in the prescribed manner
along with fees on payment of Sealing Fee within 6 months from the date
of advertisement of acceptance of complete specification.

• The period is extendable by three months.

• Patent rights will accrue to the applicant only when the patent is sealed
and the rights are granted to him.
• The patentee gets the right to sue any third party for infringement of
patent rights only after the patent is granted to him.
• However, the patentee can claim damages from the date on which
complete specification was notified in the Gazette.
 Renewal Fee
• In order to keep the patent in force, Renewal Fee is to be paid in the
Patent Office annually.
• Date of payment of renewal fees is counted from the Date of Patent.
• Grace period of six months is available on payment of extension fee.

• The first renewal fee is payable for third year of patent’s life and must be
paid before the end of second year.
• If the patent has not been issued within that period, Renewal Fee may be
accumulated and paid immediately after the patent is sealed or within 3
months of its Recordal in the Register of Patents and or within the
extended period not later than 9 months from the date of recording.
Term of Patent
• The term of every patent granted after 20.05.2003 and the
term of every patent not expired and not ceased to have
effect on 20.05.2003 will be 20 years from the date of filling of
the application for the patent.
Rights of Patentee
• Where the patent is for a product, the exclusive right to prevent third
parties, who do not have his consent, from the act of making, using,
offering for sale, selling or importing for those purposes that product in
India;

• Where the patent is for a process, the exclusive right to prevent third
parties, who do not have his consent, from the act of using that process
and from the act of using, offering for sale, selling or importing for those
purposes the product obtained directly by that process in India.
Working of Patent
• The purpose of grant of patent in India is that the invention should be
exploited by way of manufacturing the patented product in India.

• Every patentee should furnish periodical statement as to the extent to

which the patented invention has been worked on a commercial basis in
India.
• The non-worked patents are classified according to subjects and
advertised in the Gazette of India for the benefit of public / person who is
interested to approach the Controller for License to work such a patent.
Revocation
• When the patent rights are abused, either public or
government can invoke the provisions of the Act for the
revocation of the patent. Further, any person may move the
court to revoke the grant of patent, on any of the grounds
mentioned in the Patent Act for the purpose.
 PCT
• Patent Cooperation Treaty is an arrangement under TRIPS for
international cooperation in the field of patents. It is largely a
treaty for rationalization and cooperation with regard to
filling, searching and examination of patent applications and
dissemination of the technical information contained therein.
Principal Objective of PCT
• PCT simplifies and renders more effective and economical means of applying for
Patent at a time in several countries for patent protection.

Salient Features of PCT

• One single application in one language is filed in a single patent office and it has
the effect of
• filing on the same day in each of the countries, the applicant designates in this
application.
• One formal examination is done by the office of filing.
• The application is subject to an international search, which results in a report
citing the relevant prior art.
• Centralized international publication of international applications with the
related search reports.
• Option for preliminary examination with a report containing an opinion as to
whether the claimed invention meets certain international criteria for
patentability.
 PCT Filing Procedure
• Along with PCT application form, four copies of specification
comprising description, claims and drawings are required to be
filed.
• The transmittal fee is charged for individual / legal entity by the
Patent Office where the application is filled.
• The designation fee is dependent on the number of countries
designated and a maximum of six designations is to be paid for.
• The search fee is dependent on the searching authority chosen.
• Basic fee is charged based on the number of pages of the
document i.e., request form + specification.
• The transmittal, designation, search and basic fee are to be paid
within a month from the filing date.
 Minimum Requirements for Filling PCT Application

• At least one applicant must be either a national or resident of / in India.

• Specification should be in English.
• An indication that it is a PCT international application is required.
• At least one country should be designated.
• Name of the applicant, address and the nationality should be clearly
given.
• Part on the face of it appears to be description should be there.
• Part on the face of it appears to be a claim or claims is needed.
PATENT - Forms and Fees
 Form 01

Application for Grant of Patent

 Form 02

Provisional/Complete Specification
 Form 03
Statement and Undertaking
Under Section 8

Requires applicants to disclose all foreign

application with respect to inventions which
are same or substantially same to the
invention in the Indian application.
 Form 04

Request for Extension of Time

 Form 05

Declaration as to Inventorship
Forms Details
Form 6
Claim or Request Regarding any Change in
Applicant for Patent
Form 7
Notice of Opposition
Form 7 (A)
Representation for Opposition to Grant of
Patent
Form 8
Claim or Request Regarding Mention of
Inventor as Such in a Patent
Form 9
Request for Publication
Form 10
Application for Amendment of Patent
Forms Details
Form 11 Application for Direction of The Controller
Form 12
Request for Grant of Patent Under Section
26(1) and 52(2)
Form 13
Application for Amendment of The Application
for Patent/Complete Specification
Form 14
Notice of Opposition to Amendment /
Restoration / Surrender
Form 15
Application for Restoration of Patent
Forms Details
Form 16
Application for Restoration of Title/Interest
Form 17
Application for Compulsory Licence
Form 18
Request/Express Request for Examination of
Application for Patent
Form 19
Application for Revocation of a Patent for Non
Working
Form 20 Application for Revision of Terms and
Conditions of Licence
Forms Details
Form 21 Request for Termination of Compulsory
Licence
Form 22
Application Registration of Patent Agent
Form 23
Application for The Registration of Name in
The Register of Patent Agents
Form 24
Application for Review/setting Aside Controller
Decision/Order
Form 25 Request for Permission for Making Patent
Application Outside
Forms Details
Form 26 Authorisation of a Patent Agent/or any Person
in a Matter or Proceeding Under The Act
Form 27 Statement Regarding the Working of the
Patented Invention on Commercial Scale in
India
Form 28
To Be Submitted By Small Entity / Startup
Form 28
Request For Expedited Examination of
Application For Patent
Form 30 Request for Withdrawal of the Application for
Patent
 Fees
• Patent Application: Rs. 8,800

• Request for Examination: Rs. 22,000