What is a patent?

A patent is rights providing the inventor and/or the applicant with the right to prevent others from exploiting the invention mentioned in the patent. The monopoly is granted for maximum 20 years by the state in return for a full disclosure of the invention.

Did you know that?

Without a patent the inventor or the applicant would not be able to prevent others from copying the invention. Ignorance that you are infringing someone else patents is no defense.

For society, the value of the patent bargain is that it encourages the investment and the application of the skills necessary to generate and disseminate new technologies, processes and products.

Patents are concerned with the functional and technical aspects of products, processes, and uses. To qualify for patent protection:

A Patent is an exclusive right granted to a person who has invented a new and useful article or an improvement of an existing article or a new process of making an article. The exclusive right is to manufacture the new process of making an article invented or manufacture an article according to invented process for a limited period. During the term of the patent the owner of the patent, i.e. the patentee can prevent any other person from using the patented invention. After the expiry of the duration of the patent anybody can make use of the invention. The invention then becomes part of the public domain.

What are the requirements for obtaining a patent?

The basic requirement to confirm whether it is patentable the Invention must be a new product or process involving inventive step and capable of industrial application. Not all inventions are patentable. For an invention to be patentable, it must be new, useful and non-obvious. Invention means a new product or process involving inventive step and capable of industrial application. Inventive step is defined as a feature of an invention that involves technical advance as compared to the existing knowledge or having economic significance or both and that makes the invention not obvious to the person skilled in the art. The national laws of a number of countries prescribe limitations on the patentability of inventions. As for example, the Indian law declares that Inventions which are frivolous or which claim anything obviously contrary to well established natural laws as not patentable. Inventions, the commercial exploitation of which could be contrary to public order or morality or which cause serious prejudice to human, animal or plant life or health or to the environment are also declared as non-patentable. Similarly there are several other specific categories of inventions, which are declared as non-patentable in India.

How to obtain a patent in India?

Applying for a patent application in India

An application for Patent must be made in the format prescribed by the Patents Act and the Patent Rules. All applications must be accompanied by a patent specification clearly describing the invention claimed. The following documents must accompany the application:

The patent application passes through the following stages:

A. Filing
B. Publication
C. Examination
D. Opposition
E. Grant

A. Filing

1. Application:
An application for a patent can be filed by the true and first inventor. It can also be filed by the assignee or legal representative of the inventor. If an application is filed by the assignee, proof of assignment has to be submitted along with the application. The applicant can be national of any country.

2. Form of Application:

Every application shall be accompanied by a provisional or complete specification. Provisional applications are generally filed at a stage where some experimentation is required to perfect the invention.

Filing of a provisional specification allows the applicant to get an early application date.

A Provisional Specification shall contain:

a. Title,
b. Written Description,
c. Drawings, if necessary and
d. Sample or model if required.

The complete specification shall contain:

a. Title,
b. Abstract,
c. Written Description,
d. Drawings (where necessary),
e. Sample or Model (if required by the examiner),
f. Enablement and Best Mode,
g. Claims and
h. Deposit (Microorganisms)

a. Title
Title is generally a word or a phrase indicating the content of the invention.

b. Abstract
It is a short paragraph describing the invention in a precise manner.

c. Written Description
This is an important part of the specification. It contains the complete and elaborate description of the invention.Written Description generally starts with a background of the invention. The written description explains the invention clearly and comprehensively, with the help of examples, drawings and models, where and when required.

d. Drawings
The written description might be supplemented with drawings, where and when required. The drawings should be clearly labeled.

e. Samples or Models
On initiative of the inventor or when required by the patent examiner samples or models might be submitted to the patent office. Such samples or models will provide a better understanding of the invention.

f. Enablement and Best Mode
The applicant has to enable his invention in order to allow a person with ordinary skill in the art to make and work the invention. He should not only enable, the applicant should also describe the best mode of carrying out the invention.

g. Claims
Claims define the metes and bounds of the invention. They are the most important elements in a specification.

h. Deposit
If an invention involves microorganisms, which cannot be described by writing, a sample of the microorganism has to be deposited at an internationally recognized depository.

There is an internationally recognized depository at Chandigarh A provisional specification cannot be filed if an application has been filed in a foreign country (Convention country) before the Indian filing and if the application is a PCT application. A complete specification has to be filed within twelve months (extendable to fifteen months) of filing the provisional specification. Each specification should contain only one invention. If there is more than one invention in a specification, separate applications have to be filed for each invention.

3. Priority Date
Priority date is the date of first filing allotted by the patent office to an application. If a provisional application is followed by a complete application, the priority date shall be date of filing of the provisional application. If an Indian application is filed after a foreign or PCT application, the priority date shall be the date of filing of the foreign or PCT application. If an application is divided into two applications, the priority date shall be date of filing of the parent application.

Priority date is the date of reference used by the patent office to determine the newness of the invention. If the claimed invention is part of public knowledge before the priority date, it will not be eligible for a patent. Under US Law, priority date is pushed back to the date of conception for determining novelty and Non-obviousness.

4. Place of Filing

A Patent application can be filed at any of the four patent offices in India. Patent Offices are located at Kolkata, New Delhi, Chennai and Mumbai.

5. Documents to be submitted at the time of filing.
The following documents have to be submitted at the time of filing a patent application:
a. Form 1 - Application for the grant of patent.
b. Form 2 - Provisional or Complete Specification.
c. Form 3 - Statement and undertaking by the applicant.
d. Form 5 - Declaration as to inventorship.

Priority document documents and Power of Attorney can be filed after filing of application but whithin in specific time period.


B. PUBLICATION

A patent application will be published on expiry of eighteen months after the priority date. It can be published earlier, if such a request is made by the applicant. The application will not be published if directions are given for secrecy, until the term of those directions expire. It will also not be published if the application is withdrawn three months before publication date. On publication, specification including drawings and deposits shall be open for public inspection. The rights of the patentee start from the date of publication but they cannot be enforced until after patent grant.

C. EXAMINATION

1. Request for Examination
The process of examination starts with a request for examination. The request has to be made within 36 months from the date of priority or filing. However, if secrecy directions have been given for the application, the request can be made six months after the directions are revoked or thirty six months from the date of priority or filing, if that date is later.

2. Examination
On receiving the request, the controller shall direct the patent application to the Examiner for examination. To start with, the examiner makes a formal examination by verifying the propriety and correctness of all documents filed with the application. Later, he verifies the patentability of the application. The patentability analysis includes all patentability requirements. After confirming that the application falls within the scope of patentable subject matter, the examiner conducts a prior art search to check if there is prior art, which anticipates the invention claimed. Prior art search for anticipation includes search for anticipation by publication, filing of complete specification, etc. He then verifies the existence of inventive step, Industrial application, and Enablement and Best mode. The examiner will give the examination report within 1 month from the date of reference by controller and that term shall not exceed three months. If the examination report is adverse, the controller sends a notice to the applicant and gives him an opportunity to correct and if necessary an opportunity of hearing. The Controller might ask the applicant to amend the application in order to proceed further. If the applicant does not make such changes, the application might be rejected. The Controller has the power to divide the application, post date the application, substitute applicants and reject the application. An order of division will be given if the application contains more than one invention and if it is required to file separate applications for each invention. The application might be post dated to a period of six months if requested by the applicant. Substitution of inventors is generally done if the inventor has been wrongfully mentioned or if a joint inventor has not been mentioned in the application. The controller has the power to reject the application, if the applicant does not we shall comply the reply of best objection at our end. with his requirements.

D. OPPOSITION
1. Pre-grant Opposition
Any person can file an opposition for grant of patent after the application has been published. Opposition may be filed on any of the following grounds:
a. Non compliance of patentability requirements.
b. Nondisclosure or Wrongful disclosure of genetic resources or traditional knowledge.


2. Post-grant Opposition
Any person can file an opposition within a period of twelve months after the grant of a patent. It can be filed based on the following grounds:
a. Wrongful obtainment of the invention by the inventor.
b. Publication of the claimed invention before the priority date.
c. Sale or Import of the invention before the priority date.
d. Public use or display of the invention.
e. The invention doesn’t satisfy the patentability requirements.
f. Disclosure of false information to patent office.
g. Application for the invention is not filed within twelve months from the date of convention application.
h. Nondisclosure or wrongful disclosure of the biological source.
i. Invention is anticipated by traditional knowledge.


3. Process of Opposition
On receiving a notice of opposition, the controller notifies the patentee. He then constitutes an Opposition board to deal with the opposition. The Opposition board decides the issues after giving reasonable opportunity of hearing to both the parties. The Opposition board might invalidate the patent, require amendments or maintain the status quo. If amendments are required, they have to be made within the prescribed period in order to maintain the patent.

E. GRANT

If the application satisfies all the requirements of the patent act, the application is said to be in order for grant. An application in order for grant shall be granted expeditiously. A granted patent shall be published in the official gazette and shall be open for public inspection. Every granted patent shall be given the filing date. The patent will be valid throughout India. A granted patent gives the patent holder the exclusive right to make, use, sell, offer for sale and import the product or use the process. However, the government can make use of the patent for its own purposes or for distributing an invention relating to medicine to hospitals and dispensaries. Furthermore, any person can make use of the patent for experiment or education.

EUROPEAN PATENT

European Patent Application

A European patent application procedure allows you to obtain protection in those European countries which are members of the European Patent Organization. European patent applications may be filed at:

• The national patent offices;
• European Patent Office (EPO), at its Munich, The Hague or Berlin branches.

The grant procedure is based on a single application, filed in one of the official languages of the European Patent Office: English, French or German. The EPO will deal with the application in the language chosen and this postpones translation costs until such time as the patent is granted. You must designate the countries in which final patent protection is sought. After examination, the EPO grants a European patent which has the effect of a national patent in each of the countries designated. Once the patent has been granted you can decide to maintain it in force in some or all of the designated states. If the language of the patent is not an official language of the designated State, a translation into the language of that State must be filed, failing which the patent will not be valid in that State. For further information consult the website of the European Patent Office.

In future you will have the possibility to apply for a Community Patent which will apply in all the member states of the European Community.

International Patent Application by Patent Cooperation Treaty (PCT)

The Patent Cooperation Treaty (PCT) is a worldwide agreement to simplify the filing and processing of patent applications. Approximately 133 countries, including most industrial countries, are party to the treaty. Through a single international application you can apply for a patent in all the countries party to the treaty. You must indicate those PCT contracting states in which your international application is to have effect ("designated States"). The effect of the international application in each designated State is the same as if a national patent application had been filed with the national patent office of that State. Where a designated State is party to the European Patent Convention, the applicant may and, in the case of Belgium, Cyprus, France, Greece, Ireland, Italy, Monaco and the Netherlands, must- opt for the effect of a European (rather than a national) patent application.

PCT applications may be submitted to your national patent office and, if there are no national security constraints, to WIPO in Geneva or to the European Patent Office in either The Hague or Munich. For further information consult the website of the World Intellectual Property Organization.

How Parker & Parker help you for your Patent Registration in India and worldwide?

Patent Services:

• Patent Search and Research
• Patent Drafting and Filing in India and Worldwide (According to IPO, USPTO and EPO)
• Patent Prosecution
• Patent Litigation, Opposition and Cancellation.
• Patent Analytics, Consulting & Valuation

Today’s competitive edge everyone has to do something new to be in global market; so invention and innovation is necessity to be in global market. To be in global market and get Success in today’s rapidly changing, competitive, high technology environment requires an integrated global Intellectual Property strategy, with patents as its cornerstone, in order to protect and utilize technological innovations. Parker & Parker Company provides a full range of services to assist clients in developing and implementing strategic Intellectual capital programs based upon the acquisition, utilization, and enforcement of patents which complement their business strategies.

Our patent attorneys & consultants have extensive experience assisting clients in establishing patent acquisition programs tailored to their current and projected needs, and in developing imaginative and effective strategies for the utilization of patents to build value for our clients’ businesses, enhance their competitiveness, and facilitate their freedom of action. We are particularly experienced in obtaining patent protection in key technologies that traditionally have been difficult to protect, such as software, medicine, and biotechnology, and in enforcing patents through licensing programs and litigation to attain business objectives and maintain market position.

Parker & Parker Company represents individuals and businesses in many different technical arenas, including computer hardware, software, electronics, communications, network technology, transaction technology, image storage and processing, semiconductors, chemistry, and biotechnology, as well as the more traditional electrical and mechanical technologies for manufacturing and industry and the relatively less complex technologies for products and services in the retail, entertainment, and consumer industries. We have the experience and expertise to counsel clients on the legal, practical, and business implications associated with the acquisition and utilization of patents.

Our patent attorneys & consultants advise clients on the availability of patent protection and then prosecute appropriate patent applications. Our trial attorneys have extensive experience in patent litigation should our clients be sued, or should they need to protect or assert their patents through litigation.In addition, we have long-established relationships with a worldwide network of foreign associates to assist clients with international issues.

Our goal is to help clients carefully plan for and obtain intellectual property protection to exploit their intellectual property through commercial agreements, and to aggressively prosecute and defend our client’s rights in cases of infringement or misappropriation disputes.

If you require more information, please contact us, we are available any time. Quick Contact