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
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 patent application passes through the following stages:
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:
b. Written Description,
c. Drawings, if necessary and
d. Sample or model if required.
The complete specification shall contain:
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)
Title is generally a word or a phrase indicating the content of the invention.
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.
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.
Claims define the metes and bounds of the invention. They are the most
important elements in a specification.
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
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.
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.
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.
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.
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
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.
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 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)
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 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
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
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