Applying Patent in India

APPLYING PATENT IN INDIA

ABHISHEK SYAL

February, 2016NITTTR, CHANDIGARH

ABHISHEK SYAL

About me■ MBA from MIT Sloan, B.E. (Hons.) BITS,

Pilani ■ Market Intelligence at EMC Corp., Research

at BHEL Corp. R&D

■ Co-inventor to 4 patent pending tech

■ Founded and led my own social venture, ARISE– Differentiated offering: self-learning

for disabled for over 300+ children; proprietary methodology

Agenda■Part – I: Patent Basics

■Part – II: Applying Patent in India: Things to Know

■Part – III: Drafting a Patent Application

■Part – IV: Important References

PATENTPART - I

Patent ■Broadly defined, patents are the rights granted to the

inventor about ownership and usage protections on their human intellectual creative products. – Product patents– Process patents

■Patent system exist in most economies over the world. Traditionally, they have helped establish new businesses.

■Other patents include design patents, semiconductor chip layout patents, etc.

The Patents Act of 1970

■ The Patents Act, 1970, last amended 2005– ‘An invention means a new product or process

involving an inventive step and capable of industrial application’. S. 2(1) (j))

– ‘New Invention’ is defined as 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 the 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.

Patent Rights

■ Exclusive right– Granted by a country– Owner of invention can make, use, manufacture and market

exclusively– Territorial – Limited period of time – Use or exploitation may be affected by other laws– Treated as a property – gifted, inherited, assigned, sold or

licensed– Revocable

Patentability Test

■An invention must satisfy the following three conditions of:– Novelty: invention not disclosed publicly in prior art in

any language in any country– Inventiveness: proposed invention is not obvious to a

person skilled in the art– Usefulness: utility or application

■A simple invention can be a patent; a complex step may not be a patent.

TRIPS and India■Agreement on Trade Related Aspects of Intellectual

Property Rights (TRIPS) is a part of establishing the World Trade Organization (WTO). (came into force 1st January 1995)

■Obligations include:– Patents across industries such as genetic varieties of

food crops– Minimum 20 years term of the patent– Reversal of burden of proof in process patent –

defendant to prove his innocence with the validity of a process patent; helpful if you are being sued

APPLYING A PATENTPART - II

The Patenting Process

Patent Offices and JurisdictionOffice Address Territorial Jurisdiction

Mumbai Intellectual Property Office, Boudhik Sampada Bhawan, Near Antop Hill Post Office, S.M.Road,Antop Hill, MumbaiI – 400 037.Phone : 24137701, 24141026, 24150381, 24148165, 24171457FAX : 24130387EMAIL: mumbai-patent@nic.in

The States of Maharashtra, Gujarat, Madhya Pradesh, Goa and Chhattisgarh and the Union Territories of Daman and Diu & Dadra and Nagar Haveli

Chennai Intellectual Property Office, Intellectual Property Office Building, G.S.T. Road, Guindy, Chennai-600032,Phone: 044-22502081-84FAX: 044-22502066,Email: chennai-patent@nic.in

The States of Andhra Pradesh, Karnataka, Kerala, Tamil Nadu and the Union Territories of Pondicherry and Lakshadweep

New Delhi Intellectual Property Office, Intellectual Property Office Building, Plot No. 32, Sector 14, Dwarka, New Delhi-110075,Phone : 011-28034304, 28034305 28034306FAX:011- 28034301,02Email: delhi-patent@nic.in

The States of Haryana, Himachal Pradesh, Jammu and Kashmir, Punjab, Rajasthan, Uttar Pradesh, Uttaranchal, Delhi and the Union Territory of Chandigarh.

Kolkata Intellectual Property Office, Intellectual Property Office Building, CP-2 Sector V, Salt Lake City, Kolkata-700091,Phone : 23671945, 1946, 1987,FAX-033-2367-1988,Email:- kolkata-patent@nic.in

Rest of Inida

Patent Grant Procedure

Source: WIPO (url)

Important Forms

■Form 1 – Details and declarations■Form 2 – Provisional/Complete Specification■Form 3 – Statement and Undertaking under Sec 8

(Patents filed outside India / PCT Application)■Form 5 – Declaration as to Inventorship■Form 19 – Request for Examination of Application

for Patent

Important Information

■ Fees Details: http://ipindia.nic.in/ipr/patent/patent_FormsFees/Fees.pdf

■ Forms: http://ipindia.nic.in/ipr/patent/patent_FormsFees/index.htm

■ International applications must select a PCT International Application and file the patent applications in individual countries before the international filing date. – This helps you to keep the same priority date up to 31

months delay from date of filing in India.– Must be filed in quadrupled

DRAFTING A PATENT APPLICATION

PART - III

Types of Patent Application

■Provisional and Complete■Provisional

– Permanent and independent scientific cum legal document

– No amendment allowed– No patent is granted on the basis of provisional– Has to be followed by complete within 12

months

Complete Specification Application■ Necessary to submit to obtain a patent■ Has the following:

– Title– Field of invention– Prior art– Complete description– Experiment results– Drawings and figures– Claims– Inventor

Recommended Strategies■File a provisional application and then submit a

complete specification if the testing is in progress of your invention.

■A provisional application is used to establish the priority date – the date of filing a patent. – The earlier the better because India follows the

first to file system.

■A provisional application can be used to establish ownership of an invention.

Recommended Strategies

■Give drawbacks of the known invention practices in the prior art. – This helps in establishing your novelty and

non-obviousness. ■Refer to important patents in prior art on which

your work is based.■Don’t give technical detailed drawing. Give a

simple block diagram with simple labeling highlighting your novelty / invention.

Recommended Strategies■ Claims are the most important part as it relates to the claims of

invention defining your scope of invention. – Choose the broadest possible without infringing on the prior

art.■ Claims must be worded properly and must be related to the

inventive step only.■ Include all the people in Inventor who have contributed

intellectually. – To aid this process, always keep factual, clear and accurate

record of daily work in a diary or a log book. Such entries should be signed both by the scientists and the project manager.

■ Make sure to sign up or find the patent office journal regularly.

IMPORTANT REFERENCES

PART - IV

Important References and Websites■MANUAL OF PATENT OFFICE PRACTICE AND PROCEDURE (

url) ■Patent Office – Prosecution Procedures By R. Bhattacharya,

Asst. Controller of Patents & Designs, Mumbai Patent Office, Mumbai (url)

■Controller General of Patents Designs and Trademarks (url) ■Indian Patent Database (url)■Patent Search - ipindiaonline.gov.in (url)

THANKSabhishek.syal@sloan.mit.edu