© Brain League IP Services Pvt. Ltd. Now BananaIP
Law of Patents and filing process
By
Vikram Pratap Singh Thakur
Brain League IP Services Now BananaIP
Agenda
• Patentability requirements (overview)
• Patent Process in India
• Online patent filing process in India
Patent
• What is a patent?
• Rights Make Use Sell Offer for sale Import
Patentability requirements
• Patentable subject matter
• Utility
• Novelty
• Non-obviousness
• Specification
Patentable Subject Matter
• Inclusion list Product or Process
• Exclusion list Section 3 and 4
Exclusion list• Frivolous inventions and Inventions against
Natural Laws
• Inventions contrary to Public Order or Morality or prejudicial to Life or Environment
• Scientific Principle or Abstract Theory or Discovery
• New Form or New Property or New Use
• Mere Admixture
• Mere Arrangement or Re-arrangement of devices or duplication
Exclusion list cont…
• Method of Agriculture or Horticulture
• Medical Methods
• Plants and Animals
• Mathematical Algorithm and Computer Program
• Copyrightable works and Presentations
• Mental Act and Method of playing a Game
• Integrated Circuits
• Traditional Knowledge
• Atomic Energy (sec 4)
Utility (Industrial applicability)• Capable to be used in the industry
• At least used for one purpose
Novelty
• New
• Not part of prior art
• Single reference
Non-obviousness (Inventive Step)
• Inventive step Technical advance; and/or Economic significance
• Person skilled in the art
• Multiple references combined
Specification
• Description of the invention Enablement Best mode
INVENTIONS
Subject Matter
Usefulness
Novelty
Non-obviousness
Specification
PATENTS
Kalyan’s Patent Filter Model
Illustration• X invents a door knob made of clay and
porcelain, which could be used in very low or high temperatures without deformation and was cheaper than existing knobs. The prior art relating to the knob includes: Door knobs made of metal, which were being
sold and used extensively; and Kitchen utensils made of clay and porcelain.
Indian Patent Procedure
Filing
• Contents of application (provisional or complete)
• Persons entitled to apply
• Place of application
• Types of application
• Priority date
• Documents
Contents of specifications
• Title (P)
• Abstract (P)
• Written Description (P)
• Drawings (where necessary)
• Sample or Model (if required by the examiner)
• Enablement and Best Mode
• Claims
• Deposit (Microorganisms)
Persons entitled to apply
• True and first inventor of the invention
• Assignee
• Legal representative
Place of application
Patent offices
Territorial jurisdiction
Mumbai The states of Gujarat, Maharashtra, Madhya Pradesh, Goa, Chhattisgarh, The Union Territories of Daman and Diu and Dadra and Nagar Haveli.
Delhi The states of Haryana, Himachal Pradesh, Jammu and Kashmir, Punjab, Rajasthan, Uttar Pradesh, Uttranchal, National capital territory of Delhi and the union territory of Chandigarh.
Chennai The states of Andhra Pradesh, Karnataka , Kerala, Tamil Nadu and the union territories of Pondicherry and Lakshadweep.
Kolkata (head office)
Rest of India
Various types of applications in India• Ordinary application
• Convention application
• PCT international application
• PCT National phase application
• Application for Patent of addition
• Divisional Application
Priority Date
• Date of first filing
• Date of foreign filing if foreign application filed earlier
• Date of PCT international application
Documents to be submitted at the time of filing• Form 1Form 1 - Application for the grant of patent.
• Form 2Form 2 - Provisional or Complete Specification.
• Form 3Form 3 - Statement and undertaking by the applicant.
• Form 5Form 5 - Declaration as to inventorship.
• Form 26Form 26 - Authorization of patent agent or any other person. (if filed through an agent)
• Priority document details have to be filed for a Convention application.
• Proof of right if the application is made by the assignee.
• Death Certificate of deceased - Legal Representative.
Publication • Date of publication
• Open for public inspection
• Rights of patentee starts
• Early publication
• Circumstances when publication not done
Publication after 18 months
Examination
• Request for examination
• Formal examination verifying the propriety and correctness of all
documents verifying the patentability
• First Examination Report (FER)
• Amendments
Grant
• Order for grant
• Fees
• Grant
• Publication
• Rights of patentees can be enforced
Publication of granted patents
E – filing in IndiaE – filing in India
Digital signing of an application
Payment
List of filed applications
View status of application
Generate and print acknowledgement
Certified and True copy
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