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Patents, Part-II
ANINDYA ROY CHOWDHURY
RESEARCH OFFICER
CENTRE FOR IPR, ANDHRA UNIVERSITY
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Patentability criteria

1. Novelty

2. Inventive Step/ Non-obviousness

3. Utility/ Usefulness/ Capable of industrial application

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How the novelty is destroyed

1. If you have published it before filing date of application

2. If you have written a blog on it

3. If you have told other people and they also develop the same invention
and file a patent application before you
4. If someone somewhere in the world has already published it or filed a
patent application or got a patent or wrote about it before your filing date
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How the novelty is still not lost

Your novelty will be secured if you file a patent application within 12 months
of doing the following

12 months window time!!

1. You have published
2. You gave an oral/poster presentation in a conference
3. You displayed your invention in a Govt-organized exhibition
4. You worked it out in the public for trial
 Non patentable subject matters in India (Section 3 and 4)
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i) medicinal, surgical, curative, prophylactic
a) contrary to well established natural laws
diagnostic, therapeutic process
b) contrary to public order or morality/ causes
j) plants and animals, other than micro
serious prejudice to human, animal or plant life or
organisms, but including seeds, varieties and
health or environment
species and essentially biological processes for
c) mere discovery of a scientific principle/
production or propagation of plants and
formulation of an abstract theory/ discovery of
animals
any living thing or non-living substance occurring
k) a mathematical or business method or a
in nature
computer program per se or algorithms;
d) evergreening
l) a literary, dramatic, musical or artistic work
e) mere admixture of components
m) performing mental act or method of
f) mere arrangement or re-arrangement or
playing game
duplication of known devices
n) a presentation of information;
h) a method of agriculture or horticulture
o) topography of integrated circuits;
Section 4: invention relating to atomic energy
p) traditional knowledge
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Wrap up

 Patents Act, 1970

 Patentability criteria: Novelty, Inventive Step, Industrial applicability
 Subject matter does not fall under Section 3 or 4.

 Written description requirement and Best Mode

 Screening of
FILING 6 wks
Defense and
Atomic Energy
Early publication
permissible
18 months
Applications
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48 months from
Publication priority date
Pre Grant
Opposition
Request for substantive examination

6 months
Initiation of
Proceeding Issuance of First Examination Report
PATENT PROCESS
Hearing Response submitted
IN INDIA
1 month Further Examination Report Not less than 6 months

Decision
Hearing
GRANTED

Refused

Grant Notified GRANTED Refused

One year from

GRANTED notification
Post grant
opposition
Appeal Revoked
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Total Time to get a Patent

Normal Fast
 Filing (1.1.2021)  Filing (1.1.2021)
 Publication  Early publication
request (1.1.2021)
(after1.7.2023)
 Publication (31.1.2021)
 RFE(1.1.2025)  RFE (1.1.21)
 F.E.R. (1.08.2025)  F.E.R. (1.3.21)
 Compliance Of  Compliance Of
Objections (1.5.21)
Objections (1.02.2026)
 In Order Of Grant
 Grant Of Patent (1.6.21)
(1.03.2026)  Total time=5 months
 Total time=63 months
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Types of Patent Applications

• Provisional
• Complete • Convention application
Depending on the way you filed first • PCT application
• Ordinary application
Depending on the route through which you filed
• Patent of Addition
• Divisional application
Depending on the situation
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Provisional and complete specification

Provisional Specification

• Application can be filed earliest as provisional

• To establish PRIORITY DATE /establish early ownership

Complete Specification

• To be filed within 12 months of filing of Provisional Application

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PS and CS exercise

 You have filed one provisional specification today on 7th November 2022

 By when you have to file complete specification?

i. 7th November 2024
ii. 7th May 2023
iii. 7th December 2022
iv. 7th November 2023
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Patent of addition

 A patent of addition can be filed for improvement or modification of the

invention described in the main application which is currently under prosecution
or has been granted

 Can be filed before the expiry of the main patent

 Will expire when the main patent expires

 No renewal fee needed

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Divisional application

 One application for one invention

 Can be filed only during the pendency of the main application
 More than one divisional applications can be filed
 Term is same as that of parent application.
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Exercise

 You filed a patent application last year which is granted on 2nd

December 2021.
By when you can file patent of addition
And
Divisional application?
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Convention application

 Any country that is a member of PARIS Convention

 If you have filed an application in country A, you can file it in
country B within 12 months.
 Novelty will be checked based on the first filing date, priority date

Filing in various countries

FIRST FILING
Within 12 months of PARIS convention

Provides for the

right of priority
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PARIS convention countries
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Timelines to remember

 File complete specification within 12 months from filing provisional

 Publication of patent application 18 months from date of filing/priority
 Request for examination 48 months from date of filing/priority
 Publication of grant of patent after patent has been granted
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Terminologies to remember

 Prior art: all information that has been made available to the public in any
form before a given date
 State of the art: stage of technological development at any particular time
 Novelty: being new, original
 Inventive step: non-obvious
 Priority date: date of first filing of patent application
 Provisional specification: when you are not fully ready with your data
 Complete specification: when you are ready with your data
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Patent Offices in India

Kolkata Delhi

Mumbai Chennai
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Indian patent Office website

[Link]
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Patent application through different routes

 Ordinary application- Directly filed at Indian Patent Office

 Convention application (PARIS convention)- Filing in Country B within 12 months

of filing in country A, where A and B are both convention countries

 PCT/International application- Filing at WIPO (IB) or Receiving offices (RO)

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Convention route

 File at Country A today.

 File at Country B within 12 months from today.
 Your date of priority is today’s date.
 The Novelty of your application will be checked based on your priority
date.
 Any application for the same invention filed by third party after your priority
date will be rejected.
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PARIS convention countries: 178
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PCT (Patent Cooperation Treaty) Route

 Called international application

 Provides single window for filing in multiple countries

 Does not mean one application gives worldwide right

 You get more time to choose which country you want to file
 You get 30/31 months to file in another PCT contracting country after filing
the international application

National Phase
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PCT contracting states: 154 countries
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Convention or PCT?

 If you want to secure patent protection in only a few countries, go with

Convention Application.
 If you want to protect your invention in very less time, go for Convention
Application.
 Non-PCT member countries: Argentina, Pakistan, Taiwan, Kuwait, Jordan,
Saudi Arabia, Ethiopia
 PCT provides a platform where with a single application, applicant can file
his/her application in all PCT member countries.
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How to file PCT application?

 Can you file international application under Patent Cooperation Treaty

(PCT) in India?
Yes!! It is possible to file an international application known as PCT
application in India in the Patent Offices located at Kolkata, Delhi, Mumbai or
Chennai.
All these offices act as Receiving Office (RO) for International application.
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Permission Required

Written permission is required from patent office if you

want to file outside India
Permission is not required if:
➢application has been filed in India 6 weeks before
foreign filing
➢ no secrecy directions have been issued

Wait for 6 weeks before filing abroad!!

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Content of a patent application

 Title of the invention

 Background of the invention
 Summary of the invention
 Explanation of the drawings
 Description of the invention
 Claims
 Abstract
 Sequence listing, if any
 INID code: Internationally agreed Numbers for the Identification of
(bibliographic) Data
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Claims

 Define the legal protection boundary of your

invention
 Define the monopoly to be conferred by the patent
 At the time of infringement proceedings, only
claims will be interpreted
 Written in a single sentence
 Can be independent and dependent claim
 Product or process claim
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Claims
• Claim is a statement of
technical facts expressed in
legal terms defining the
scope of the invention
sought to be protected.

• Whatever is not claimed,

remains unclaimed.
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US Patent
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PCT
application
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Patent classifications

 A patent classification is a system for examiners of patent offices or other people to

categorize (code) the patent documents according to the technical features of their
content.
 International Patent Classification (IPC) [Link]
 Cooperative Patent Classification (CPC)
[Link]
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Free Patent Databases

 Indian Patent Office database: ipIndia [Link]

 European Patent Office database: Espacenet [Link]

 US Patent Office database: [Link]

 WIPO database: Patentscope [Link]

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Paid Patent Databases

 Derwent World Patents Index [Link]

patent-index-dwpi/
 PatBase [Link]
 Patseer [Link]
 Patsnap [Link]
 Patent Inspiration [Link]
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Patent infringement

 Patent infringement with respect to a patented invention without the prior

permission from the patent holder is a prohibited act.
 Whenever there is a case where monopoly rights of the patentee are
violated, the rights of the patentee are secured by the Act through
judicial intervention.
 The patentee has to institute a suit for infringement (Can be done after
patent is granted).
 Damages can be claimed from the date of publication of patent
application.
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Oppositions

 Two types
1. Pre-grant, anyone can file
2. Post-grant, Only interested parties can file
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Wrap up: Patents

 Patentability criteria
 Non patentable inventions in India
 Types of patent applications
 Patent filing routes
 Patent databases
 Content of patent application
 Patent infringement
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Thank you!!