Procedure for filing an application for patent

Procedure for filing an application for patent

1. Procedure for Filing an Application for Patent

2. Introduction Patent is a form of intellectual property rights, similar to Copyright, Trademark and Design. Patent gives exclusive rights to an inventor over the use of inventions for a specific period of time. In India, patents are governed by the Patents Act, 1970.

3. Who may apply for a patent? Section 6 of the Act provides for the persons entitled to make an application for a patent: First and true inventor of invention Assignee of the inventor A legal representative of a deceased person who was entitled to such patent before his death.

4. Different types of applications under The Patents Act, 1970 Convention Application: According to Section 135 of the Act , a convention application is an application made under the Act within 12 months from the date on which the application for a patent in respect of an invention in a convention country (also called ‘basic application’). The application is filed in terms of an international treaty such as the Patent Cooperation Treaty (PCT) designating India. International Application: International application is an application that is filed in accordance with the Patent Cooperation Treaty. Such applications provide patent protection in a large number of countries through a single application instead of filing a number of regional applications.

5. Divisional Application: Section 16 of the Act deals with the division of an application . It is made either on the request of the applicant or on the demand of the Controller if he feels that the contents of complete specification relate to more than one invention. In such case, the applicant may file further application in respect of the invention mentioned in the provisional or complete specification, as the case may be, along with the already mentioned application. Application for patent of addition: Section 54 of the Act states that when an applicant has made an application for patent of an improvement or modification of an invention described in complete specification filed and the applicant has either applied for the patent of that invention or is the patentee of the invention, then he may be granted a patent for that improvement or modification as the patent of addition.

6. Form of Application for a Patent Ordinary Application According to Section 7 of the Act , the application for a patent shall be filed in the Patent office in the prescribed form . Every application for a patent shall be accompanied by a provisional or complete specification . Such provisional or complete specification need not be accompanied in case of convention application or an application made under the Patent Cooperation Treaty. Convention Application According to S ection 136 of the act , in case of a convention application, it shall be accompanied by the following: The complete specification; The date and the convention country in which the application was made or in case of two or more applications, the first application was made. A statement purporting that no application has been made before that date in any convention country by the applicant or by any person from whom he derives the title.

7. What Constitutes a Specification? Every specification, whether provisional or complete shall contain the following: A title A detailed description of the invention A model or sample illustrating the invention Use and method to perform the invention Scope of invention Abstract describing the technicalities of invention.

8. Priority Date According to S ection 11 of the Act, the priority date of the claims which are based on the matter disclosed in the complete specification is the date on which such complete specification is furnished. When a complete specification is filed in pursuance of a single application: According to Section 11(2) of the Act when a complete specification is filed in pursuance of a single application and the claim is based on the subject matter disclosed in the provisional specifications filed along with the application, then the priority date is the one on which the relevant specification is filed. When a complete specification is furnished in pursuance of two or more applications: Section 11(3) of the Act provides for the priority date of the claim when a complete specification is furnished in pursuance of two or more applications filed along with the provisional specifications. In such cases, if the claim is based on the subject matter disclosed in one of the specifications, then the priority date shall be the date on which such application which was accompanied by the specification was filed.

9. When complete specification is filed based on a previously filed application: When a complete specification is filed in India based on a previously filed application within twelve months from the date of filing of the application and the claim is based on the subject matter disclosed in the previous application, then the priority date of the claims shall be the date on which the previous application was filed. When a complete specification is filed in pursuance of further application : When a complete specification is filed in pursuance of a further application (or divisional application) as mentioned in sub-section (1) of section 16, and the claim is based on the subject matter disclosed in the provisional or complete specification furnished with the previous application, then the priority date of the claim is the date on which the previous application was filed.

10. Publication of Application Section 11A of the Act provides for the publication of an application for a patent. Ordinarily, no application is made open to the public for a time period specified by the Controller. However, the applicant before the expiry of such term may request the Controller to publish the application. The publication of the application shall include the date of the application, the number of the application, name and address of the applicant and an abstract.

11. Examination of Application According to Section 11B of the Act , the applicant or any other person interested shall make a request for examination of the application in the prescribed manner within the prescribed time period. After the request is made, the Controller by virtue of Section 12 refers the application to an examiner to make a report. If the Controller has objections regarding the application made by the applicant, he shall communicate the same to the applicant. On being satisfied that the application or any other document does not comply with the provisions of the Act, the Controller may refuse the application or require it to be amended to his satisfaction before proceeding further. According to Section 21 of the Act , the applicant has to comply with all the requirements as imposed by the Controller in relation to the application, complete specification or any other documents within the period specified by the Controller, failure of which would result in the abandonment of the application.

12. Anticipation I n order to obtain a patent for an invention, it is important to establish the novelty of the invention. It is important that the invention is original and includes some inventive steps. Anticipation by previous publication: Section 29 of the Act states that the invention shall not be deemed to be anticipated merely because it has been mentioned in any other claim of complete specification in India before 1st January 1912. The invention shall not be deemed to be anticipated if the applicant proves that the priority date of the claim of complete specification is earlier than the priority date of the claim of other complete specification. Anticipation by previous communication to government: An invention shall not be deemed to be anticipated merely because the invention has been communicated to the government or any official of the government for the purpose of being investigated for its use or merit.

13. Anticipation by public display: An invention claimed in the complete specification shall not be deemed to be anticipated by the reason being shown or used with the consent of the true and first inventor at an industrial or other exhibition. It shall also not be deemed to be anticipated by the reason of the publication of its description at such exhibition. Application by use and publication of provisional specification: When a complete specification is filed in pursuance of an application filed along with the provisional application, then the controller cannot refuse or revoke a patent merely because the matter described in provisional specification was used or published in India after the filing of the provisional specification.

14. Opposition to the Patent Section 25 of the Act states that any person may object to the application for patent after it has been published. There are two types of objections: Pre-grant Objection Section 25(1) states that after the publication of the application and before the grant of the patent, any person in writing may represent their opposition against the grant of the patent. These are pre-grant objections which are raised before the grant of the patent. Post-grant Objection Post-grant objections are raised after the grant of the patent to the applicant. These objections are supposed to be raised within one year of the publication of the notice of grant of patent by way of giving notice of opposition to the Controller. The grounds on which such objections can be raised are mentioned in Section 25(2) of the Act .

15. Grant of Patent According to Section 43 of the Act , the patent may be granted to the applicant or in case of joint application, to the joint applicants, as expeditiously as possible if the Controller is satisfied that the application of patent is in order for the grant of the patent and is not in contravention of any provisions of the Act. The patent shall have the seal of the patent office and the date on which the patent was granted shall be recorded in the register. On grant of the patent, a notice of such grant is published and the application and other documents related are made open for public inspection.