Patent filing procedure in India

Complete process of Patent Grant in India
From Filing of application to Sealing of grant letter

1. Patent filing procedure in India Kaustav Dey M. Pharm Pharmacognosy ( 1 st Sem) University Institute of Pharmaceutical Sciences Panjab University, Chandigarh

2. contents Document Required for Filing a Patent Essential Parts of a Complete Specification Basic Criteria of Patentability What is Not Patentable ? What is a Patent ? Steps before Process of Patenting Who can file a patent application ? Where to file a patent application ? How to file a patent application? FLOWCHART : General Procedure for obtaining a Patent

3. What is a patent ? It is a statutory right to the inventor or the applicant by the government for his invention which is either a new process or product It is for the limited period of time (20 years) It is granted in lieu of sufficient disclosure to the patent offices

4. Steps before Process of patenting Be curious but do not disclose your invention Keep a bound notebook to prove when you got the idea Develop the idea and produce a model Write why your invention is needed, what the existing products are in the market your new product and what is unique about your product

5. Steps To get a patent grant, the first most step is to file a patent application. Who can file a patent application? Where to file a patent application? How to file a patent application?

6. Who can file a patent application ? The application can be filed either alone or jointly: By any person claiming to be true and first inventor(s) By any person being the assignee of person claiming to be true and first inventor(s) ( proof of assignment has to be submitted along with the application ) By the legal representative of any deceased person or assignee

7. Where to file ? The appropriate office of the patent office shall be the head office of the patent office or the branch office as the case may be within whose territorial limits … Residence of applicant or Domicile; or His the place of business; or The place where the invention actually originated. If the applicant has no business or domicile in India, the address for service in India is given by such applicant Patent Office Branch, Chennai Patent Office Branch Mumbai Patent Office Branch, New Delhi Patent Office, Head office Kolkata

8. How to file a patent application? Physical filing at the patent office Electronic Filing Documents can be filed in the patent office through online( e-filing) at www.ipindiaonline.gov.in/online Or through post

9. Flowchart : GENERAL PROCEDURE FOR OBTAINING A PATENT

10. Filing application So, the first step is applicant will create a document that may be a provisional specification or it may be a complete specification. This may be drafted by the patent attorney or agent or the applicant himself. He or she will file this specification in the respective patent office as per the jurisdiction. There are two types of specification – one is a complete specification and the other is a Provisional specification. Here also applicant himself or herself can visit the patent office and file the patent application. The other way is he or she may take the help of a patent agent or patent attorney and they can do the work on behalf of the applicant. The other one is on behalf of the applicant someone else can just submit the documents in the patent office with all the requisite forms and documents. You have to file the patent application in the jurisdiction of your residential address or location of your company which comes under the patent office.

11. Filing application So, it is not necessary that the applicant or inventor himself has to visit the office. T he service can be done by somebody else and you can just file or submit the application. T he document with all the forms duly signed and the cheque or DD with the required fees has to be submitted. We know in India there are four patent offices and every patent office has some jurisdiction. So, if anyone is filing the application physically kindly visit the patent office as per the jurisdiction. T he other way that is an online filing in IP INDIA website where there is a section named - comprehensive e filing . Here anyone can file a patent in the online form given that they have a digital signature. It is mandatory that you should have a digital signature then only it is possible for you to file the patent application online. S o, in this way, it can be either be physical filing or it may be an online filing.

12. Document required for filing a patent 1. Covering letter- indicating the list of documents; 2. Application for Grant of Patent in Form 1 [section 7, 54 & 135 and Rule 20(1)] in duplicate; 3. Complete/Provisional specification in Form 2 in duplicate [Section 10; Rule 13] 4. Statement and Undertaking in Form 3 [Section 8; Rule 12]; 5. Power of Attorney in Form 26 (in original) (Rule 3.3 (a) (ii)); (if filed through attorney) 6. Declaration of Inventor-ship in Form 5 (only in case of an Indian Application; (Rule 4.17); 7.Request for examination: F18 8. Requisite Statutory fees (cheque / DD)

13. Essential parts of a complete specification Title and Preamble Prior art Drawbacks in prior art Efforts or Solution to Drawbacks Summary Of the Invention Statement of invention Detail description of invention Detail description with reference to drawings Examples Claims

14. publication After 18 months the patent application will be published . I t is automatic process, so based on the date of the application you have filed, it may be a provisional or complete specification. T hat zero time is considered and from that 0 exactly at the end of 18 months your patent application will be published. W hat Exactly is published ? The bibliographic information, abstract, number of claims, number of drawings. This information will be published Where it is it will be published ? I t will be published in the official gazette S o, where you can see this official gazette ?

15. publication So, in the IP INDIA there is a section named Publication if you can click on that Publication then you can visit that gazette. Every Friday in this gadget will be updated or it will be published. Y ou and click on it and then you can just open that PDF and you can go through the gazette. This Publication is automatic and there is no requirement of any fee. Publication is automatic after 18 months however if anyone want to publish the patent earlier then he or she has to give the requisite statutory fees. This may be known as the express way of patent prosecution. For that you can give the requisite fees and form and then your patent publication will be published. T his filing also anyone can do either physically or online. S o, for this express publication request you can do the online filing of that form and You can you pay the fees online and then your patent will be published before 18 months.

16. publication Now again you have to follow the jurisdiction so wherever you have filed the patent then there obviously in that Patent Office only you have to give that request. Now Again, either applicant himself or anyone on behalf of the applicant can file this request by giving the requisite forms & fees to the officer in the Patent Office or any applicant can use an online mode, provided digital signature is available. So, this is the publication step which is the second step.

17. Request for examination Now the next step is Request for examination. Whether this is an automatic process like a publication ? Are you required to give some fees for that ? Yes. You have to give fees for that. It is not automatic. You have to file the request for examination. So here the applicant has to give the request for examination along with the requisite fees. Unless & until this request is received by the Patent Office, the application cannot be considered for the patent examination. So here Please note that normal publication it is automatic, but examination is not automatic. Applicant has to file the request. Here again same rules. The applicant should fill the requisite form & draw that cheque amount of the statutory fees and then file the request for examination. On behalf of applicant, anybody can just visit the Patent Office. They can submit the form. They can give the cheque and they will receive the receipt from the Patent Office. So, this mode also can be opted by the applicant also on behalf of the applicant anyone can deposit the forms and fees.

18. Timeline So, the next question is, is there any timeline for the Filing of this request? Yes, there is a timeline is up to 48 months, So, anyone who has filed a patent application. Then from the priority date, the time for filing the request for examination is 48 months. So that is the timeline. So, 0 you have filed the application & at the end of 18 months publication and then you have a time up to 48 months for filing the examination request. I f that timeline is not followed then the Applicant will lose the patent. So, if somebody forgets to file the request for examination then your patent after 48 months it will go into the public domain. So again, remember it is mandatory to follow the timeline diligently.

19. Timeline So, what is the next step? As per the workload of the Patent Office your patent application will be queued up in the system . Now, your patent application will now have some number and that will be in queue for the examination. In due course it will be allocated to the Examiner. Remember examiner is expert in that field. So, if the patent application is related to pharmaceutical, then your patent application will be allocated to the Examiner who is expert in Pharmaceuticals . If the patent application is related to chemistry, then the patent application will be allocated to the patent examiner who is expert in chemistry. In this way the allocation is being done and the patent application is now under examination. Patent examiner will now do the thorough examination of your patent

20. Basic criteria of patentability

21. Now what exactly does the examiner do? First examiner will check if the patent follows the criteria of patent or not. Now the examiner, will check the patent database, other literature and check if your patent application and the claims you have claimed in a document are really novel which means first time in the world. He will check the Non-obviousness aspect and then the industrial applicability aspect of the patentability. So, he will check all these three criteria for the patentability. He will also check the document in a view of other guidelines. So, what are these other guidelines? There are many such guidelines. Given in next Slide

22. What is not patentable ? Inventions falling within the scope of Sec. (3) of Patents Act, 1970 Inventions falling within the scope of Sec. (4) of Patents Act, 1970 & Sec. (1) of Sub-sec. 20 of Atomic Energy Act, 1962 For Example : Inventions relating to Compounds of –Uranium, Beryllium, Thorium, Plutonium, Radium, Graphite, Lithium and more as notified by Central Govt. from time to time

23. Section 3 3(a) : frivolous or anything obviously contrary to well established natural laws 3(b): contrary public order or morality serious prejudice to human, animal or plant life or health or to the environment 3(c): the mere discovery of a scientific principle or the formulation of an abstract theory or discovery of any living thing or non-living substances occurring in nature 3(d): the mere discovery of a new form of a known substance which does not result in the enhancement of the known efficacy of that substance 3(e): a substance obtained by a mere admixture resulting only in the aggregation of the properties of the components thereof or a process for producing such substances; 3(h): a method of agriculture or horticulture

24. Section 3 3( i ): any process for the medicinal, surgical, curative, prophylactic, diagnostic, therapeutic or other treatment of animals to render them free of disease or to increase their economic value or that of their products. 3(j): plants & animals in whole or any part thereof other than microorganisms but including seeds, varieties and species and essentially biological processes for the production or propagation of plants and animals; 3(k): a mathematical or business method or a computer programme per se or algorithms 3(m): mere scheme or rule or method of performing mental act or method of playing game 3(l): a literary, dramatic, musical or artistic work or any other aesthetic creation 3(o ):topography of integrated circuits 3(p): an invention which in effect is traditional knowledge or which is an aggregation or duplication of known properties or traditionally known component or components.

25. The other thing examiner will check if the invention is not falling under the section four of the Indian Patent act. Then the next check will be regarding the earlier use of the patented information. So before filing the patent application, if you have published that thing, or if you have done the commercialisation of your invention, if any such report is there, then patent will not be grant . The meaning is that if your product is already in the market and after that you have filed the patent, obviously you will not get the grant for that, because novelty aspect is not followed as the product is already in the public domain. So, what are the next thing examiner will cheque? He or she will cheque them if there are any clerical mistakes. So, if such mistakes are there, that will be noted. N ext he will cheque the drawings that is the drawing sheets. There are rules and regulations and guidelines are there that how the drawings should be there.

26. What is that size and. Size of the font used in the patent document What is the spacing there? How the drawing number should be given? How the name of the applicant should be written? All these guidelines are there so he or she will cheque that drawing sheet he will check whether if you have followed the guidelines while drawing the figures.

27. Request for examination After checking everything thoroughly and then he will create the. First examination report Nowadays everything is online, so you will get email from the Patent Office and if you have asked for the physical communication, then the that first examination report will be dispatched and you will receive it through the Indian Postal Service. So, this is first examination report.

28. Filing response So now in your hand the examination report is there. Now applicant has to go through the first examination report and give the reply to the first examination. Therefore, it is mandatory and it should be given in the six months. There is a standard format in which you can prepare this and then you can give the reply to them that first examination report. H ere applicant himself can draft that reply. Or again he can hire attorney for this drafting. Then you have to send this reply either online or by a physical filing. Now what next is? If Examiner is satisfied by your reply. So, if you have clear whatever the questions are raised, whatever the queries are raised if you have given the information correctly, then examiner will accept the invention. However, if she or he require further clarification or if he is not satisfied with any of the explanation or if he or she want to know more about that particular invention then what the thing he or she can do.

29. Hearing Hearing the process where applicant have to visit the Patent Office and answer the queries and explain the invention in much detail and clarify all the queries raised by the Examiner. So nowadays there is no necessity to visit the Patent Office because you can do this online also. So, through the video conferencing, the hearing will be conducted. So, the other important thing it is not necessary that the same Patent Office where you have filed a patent will issue the hearing. So now as the system is centralised, hearing will be issued by any of the office and hearing may be at any of the four offices. So, for example if you have filed application in Patent Office in Mumbai. And due to the central system, there may be the possibilities that the examiner from Delhi Patent Office will examine your patent and you will get it from the Delhi Patent Office and then you can do the online hearing. So, the system is centralised. So again, here applicant himself or on behalf of him patent attorney Can present himself for hearing, either physically or online. OK, after that, now there can be three situations. Examiner is totally satisfied by your clarifications. You have cleared all the clear queries and he will grant the pattern and proceed for the advertisement accordingly into the gazette . W e have seen that every Friday the gazette is being updated so that will go into the Publication

30. Acceptance & advertisement Second is that you may not able to establish the case and due to any of the result like novelty issue or industrial applicability issue or already commercialisation of that invention. Then the patent will not be granted . The third scenario in between these two extremes is that suppose your patent document is 10 claims. So, the possibility is that you are able to clarify the queries related to, say, three clips and then whatever the remaining seven claims are there, you are not able to clarify the query. In that case what will happen? Examiner will say that these 3 claims are OK, but these seven claims are not OK. So, what will happen here? Only three claims will be accepted, and remaining seven will be rejected. So that is a partial acceptance of the patent. Here you have to then Amend application accordingly. So, you do remove that those seven claims and do those amendments accordingly and resubmit the patent application to the examiner. He will review that if you have done everything correctly and then after that he will accept it. As a partially that amended patent application and now accordingly it will be published in the Official Gazette.

31. opposition In India there are 2 stages where one file an opposition Which are these two stages? Pre grant opposition and a post grant opposition.   Pre-grant opposition It is a stage where the patent is not still granted. But it is a published, so you can imagine you have filed your patent and now it is published. Okay, so after publication, if anyone Feels that this application should not be granted, then that anyone who is feeling that he can file the request to the Patent Office by filing the requisite form.

32. opposition Two things can happen here either the opposition is refused by the authority due to lack of substantial evidence and document followed by acceptance of patent and advertisement in the official gazette or else if the opposition is succeeded with evidence and argument them the patent is refused and you will not get your patent and that is called pre grant opposition.   POST GRANT OPPOSITION Post-Grant opposition is a process where a person skilled in the art can only file this opposition. In a pre-grant opposition - Anyone have the right to file them . So, for example, the person who is skilled in the art. So, suppose invention is in the pharmaceutical domain and the person who is working in that particular specific domain can file the opposition.

33. opposition He can do this by filling the requisite fees and submitting to the patent office . Now, obviously when you are doing this opposition you have to substantiate thing with the evidential documents. So, it is expected that when you say that either you're filing a pre-grant opposition or post grant opposition then you have to provide with strong evidence to support your claims . For Post grant opposition. The timeline is that after Grant, but before one year. So, after Grant only one year is there to file them post grant opposition. Okay so Pre Grant is after publication till the grant. It is a serious stage because you are opposing the given grant as the examiner has done all the process and he is thoroughly examined the document after that somebody is opposing that thing. So, it is a little bit a serious state and therefore you have noted that only person who is skilled in the art have a right to file that post-grant opposition.

34. opposition Now if the opposition is dismissed, then the patent will be granted, if opposition is upheld and it will not be granted. So, depending on the opposition, either it will be granted or it will not be or else it may be partially upheld as some of your claims may be accepted while rest may not be accepted. Here you can do amendment and then it may be valid. At last, there is sealing and issue of patent letter to the applicant It generally takes four to five years. in India. So, this is the whole process of the getting your patent right from that filing application up to the total grant.  

35. references (NPTEL COURSE) Lecture 22: Roadmap for Patent Creation – Patent filing procedure in India by Prof. Gouri Gargate Rajiv Gandhi School of Intellectual Property law, IIT Kharagpur – https://www.youtube.com/watch?v=ClZEIQQjG6g&t=676s Patent Office Procedures - Intellectual Property India – http://ipindia.gov.in/writereaddata/images/pdf/oatent-office-procedures.pdf

36. Thank you