What is Patent?
Patent is an exclusive right granted by the patent
office to an applicant in respect of a new product or process that passes
three criterion of patentability namely Novelty, Inventive Step and Industrial applicability.
Who can apply ?
An Applicant is
eligible to apply for patents. Applicant can be an individual person or a legal entity and/or both.
Presently, the applicant has been classified in three types namely an individual, a small entity and
other than small entity. Accordingly, the filing and prosecution fees vary based on the type of applicant.
The patent application needs to have at least one Applicant while applying for the patent. However, there is
no limitation on number of Applicants. It may include ‘n’ number of applicants.
Where to apply ?
Application for Patent needs to be filed with the Patent Office
thereby deciding appropriate jurisdiction. The territorial jurisdiction of a patent office
is decided based on the place of residence, domicile or business of the applicant
(first mentioned applicant in the case of joint applicants), place from where the invention
actually originated. An address for service in India is essential in case where the Applicant
has no place of business or domicile in India (Foreign applicants).
Applicant and Inventor
Applicant is someone who applies for the invention
and in the name of whom the patent is granted. Inventor is someone who conceives/contributes
the invention but never owns the invention. Applicant can be a natural person and/or a legal entity.
Inventor is always a natural person. A natural person can be an applicant and inventor both, but a legal
entity can only be an Applicant and can never be an inventor.
What can be protected under Patents ?
Mere abstract ideas can never get a patent. However, idea may be protected
under patents when it transforms into a physically existing product or a process that passes all three
criterion of patentability namely Novelty, Inventive step and Industrial applicability.
Novelty, Inventive step and Industrial applicability
Novelty is the criteria that ascertains that the invention is not in public domain before
the date of filing of the patent application without being anticipated by the prior art. Inventive step is the
criteria that ascertains that the invention is having technical advancement over
the prior art without being just combination of known things in the prior art. Industrial applicability is the
criterion that ascertains that the invention is capable of being made or used on industrial scale.
These criterions can be judged through prior art search
Prior art search
The prior art search is generally done before filing a patent application.
It is not mandatory, but always advisable to conduct the prior art search before filing the patent application.
The prior art search presents a worldwide patent-non patent literature scenario in comparison to Novelty,
Non-obviousness and Industrial applicability aspects of the invention for evaluating its patentability in future.
There are various types of searches such as Novelty Search, Infringement Analysis, Validity analysis,
Invalidity search, Freedom-To- Operate search that are conducted in this regard.
Term of a patent
Patent is a cluster of exclusive rights that is granted to Applicant for a limited period.
However, the period as per Indian Patents Act is 20 years from the date of filing of the patent application.
After grant, the patent has to be renewed every year by paying some annuity fees. Time required from filing
till registration: There is no specific min. time to receive patent is mentioned in the patents act.
However, Applicant may opt for Publication and Examination procedures that can be expedited in India by
filing appropriate forms. This enables the examination procedure to start substantially earlier than
routine patent application process flow.
General procedure from filing till grant of a patent application
The patent application can be filed as a provisional patent application or a complete patent
application. The provisional patent application is preferred when the invention is under conceptual state without
being achieved the presentable form. The complete specification needs to be filed within 12 months from the date
of filing of provisional patent application in such case. Alternatively, the applicant can directly file the
complete specification. The patent application can also be filed via e-filing portal provided on the official
website of the patent office. After filing, the applicant receives an official receipt from the patent office
that contains an application number and filing date.
The patent application gets published on official gazette of the patent office
after 18 months from date of filing. However, the process of publication can be expedited by filing
appropriate form and paying appropriate fees.
Request for examination
It is mandatory to make request for examination to the patent office within
48 months from date of filing thereby filing appropriate form and paying appropriate fees. The patent
application may get abandoned if request for examination is not filed in due course of time.
Once we will file the request for examination, your patent application will follow the below-mentioned path
Examination of patent application
The patent application is taken up for examination preferably in six months from date
of making request for examination. Controller assigns an Examiner in said period.
The examiner examines and issues First Examination Report (FER) that is communicated to applicant.
Reply to FER
After receipt of FER, one has to reply to FER within 12 months from date of receipt of FER.
After receipt of reply to FER, Examiner may issue a hearing notice wherein Examiner calls
for a hearing in the patent office. In hearing, one has to defend against arguments raised by examiner about
patentability of the application. After hearing, the examiner reverts with his decision as GRANT or REJECTION.
International patent Application Filing Arrangements
World Intellectual Property Organization (WIPO) provides a facility named PCT that facilitate
prosecution of an International patent application by claiming a priority of an Indian patent application.
The PCT system mainly has two phases namely an International phase and a national phase.
The international phase facilitates filing and publication of the international application under PCT.
The national phase facilitates the application to be independently prosecuted for grant in each country
that is signatory to the PCT. It is to be understood here that PCT is a International filing system and
not a granting system and there is nothing like an international patent
Significance of hiring a patent agent for patent drafting, filing and prosecution
It is observed during examination of the patent applications that more than 60 % patent applications are rejected
as they fail to meet the patent drafting requirements. The patent specification specifically needs to be drafted
in a proper format as prescribed by the Patents. The skill of claim drafting is earned by patent agent through
experience and practice. The patent agents are well aware of the patent drafting norms and accordingly they can
draft the patent application in most appropriate manner as needed by the patent office. Also the claims need to
be drafted in a specific legal language per the claim drafting norms. The patent agents can smartly draft the
patent application with claims to give broadest possible protection to the client’s invention.