ypes of Patent

In this module, we explore different types of patents, particularly in the Indian Patent
System, which recognizes Product Patents and Process Patents. Unlike the USA, India
does not have a Utility Patent system. For Plant and Design Patents, India has separate
laws:

 Protection of Plant Varieties and Farmers' Rights Act

 Industrial Designs Act

Types of Patents

1. Ordinary Patent

o A regular patent filed by an applicant.

o Can be Provisional (without claim, when work is ongoing) or Complete (with

full details).

o Provisional Patent secures priority while the invention is being developed.

2. Divisional Patent

o If an application contains more than one invention, it must be divided into

separate patents.

o The priority date remains the date of the original filing.

3. Conventional Patent

o Under the Paris Convention, applicants can file a patent in another member
country within 12 months of the first filing.

o Helps secure priority in multiple jurisdictions.

4. International Patent (PCT Application)

o Governed by WIPO’s Patent Cooperation Treaty (PCT).

o Provides a 30-31 month timeline for filing in multiple countries.

o More flexibility compared to the 12-month window in the conventional

system.

5. National Phase Patent

o After filing a PCT application, applicants must file in individual country

patent offices within 30-31 months.

o Strict deadlines apply—missing them results in loss of priority.

 6. Cognate Patent

o Allows multiple provisional patents to be filed as new developments arise.

o All provisionals can later be merged into a single complete application.

o The priority date remains the earliest filed provisional patent.

7. Patent of Addition

o Filed when an improvement is made on an already granted parent patent.

o No separate priority date—inherits the parent patent’s priority.

What Can Be Patented?

A patent can be granted for:

 Process or Method

 Machine or Apparatus

 Article of Manufacture

 Composition of Matter

 Chemical Compounds

 Physical Mixtures

 Improvements of the Above

This concludes the session. The next module will cover Patent Filing Procedures.
Patent Filing Procedure in India

1. Filing of Patent Application

 The applicant drafts either:

o A Provisional Specification (temporary protection) or

o A Complete Specification (full disclosure).

 Filing can be done by:

o The applicant themselves.

o A patent agent/attorney.

o Any authorized person on behalf of the applicant.

 Modes of Filing:

o Physical Filing: Submit documents to the respective jurisdictional patent

office (India has four patent offices).

o Online Filing: Through the IP India website (requires a digital signature).

2. Publication of Patent Application

 Automatic Publication: 18 months from the filing date.

 Early Publication: Can be requested with a statutory fee.

 Published in the Official Gazette (every Friday) on the IP India website.

3. Examination of Patent Application

 Not Automatic: Applicant must request examination within 48 months from the
priority date.

 Modes of Filing Request:

o Physical filing (jurisdictional patent office).

o Online filing (digital signature required).

 Patent Examination Process:

o Examiner checks novelty, non-obviousness, and industrial applicability.

o Ensures compliance with Section 3 & Section 4 of the Indian Patent Act.

o Examines for prior public use, clerical errors, and standard formatting.

o Verifies drawings and required documentation.

  First Examination Report (FER):

o Sent via email or postal service.

o Applicant must respond within 6 months.

4. Hearing Process (If Required)

 If examiner’s queries are not fully resolved:

o A hearing is scheduled.

o Can be attended physically or via video conferencing.

 Possible outcomes:

1. Patent granted.

2. Patent rejected (due to issues like lack of novelty or industrial applicability).

3. Partial acceptance (some claims are rejected, requiring amendments).

5. Opposition Process

 Pre-Grant Opposition: Filed before patent is granted by anyone who believes it

shouldn’t be granted.

 Post-Grant Opposition: Filed within 1 year after grant by a skilled person in the
relevant field.

 If opposition is upheld, the patent may be denied.

6. Patent Grant & Rights

 Takes approximately 5 years to get a patent.

 Expedited processing (Express route) may grant patents in 2 years.

 Patent rights are enforceable only after grant.

Patent Timelines - India and PCT

Jurisdiction in Patent Filing (India)

 India has four patent offices: Delhi, Kolkata, Mumbai, and Chennai.

 The jurisdiction is based on the applicant’s state of residence:

o Delhi Jurisdiction: Haryana, Himachal Pradesh, J&K, Punjab, Rajasthan,

Uttar Pradesh, Uttarakhand, Delhi, Chandigarh.

o Mumbai Jurisdiction: Gujarat, Maharashtra, Goa, Madhya Pradesh,

Chhattisgarh, Daman & Diu, Dadra & Nagar Haveli.

o Chennai Jurisdiction: Andhra Pradesh, Telangana, Karnataka, Kerala, Tamil

Nadu, Pondicherry, Lakshadweep.

o Kolkata Jurisdiction: Rest of India.

 Patent Application Number Structure:

o Example: 201814000007

 2018 → Year of filing

 1 → Delhi Jurisdiction (2 for Mumbai, 3 for Kolkata, 4 for Chennai)

 Last six digits → Serial number

Patent Filing Process & Timeline (India)

1. Provisional Application (T=0):

o Filed to secure priority.

o Specification filed without claims.

o Complete specification must be filed within 12 months.

2. Complete Specification Filing (T=12 months):

o Required for patent grant.

o Recommended to consult a patent expert.

3. Publication (T=18 months):

o Patent details (bibliographic info, abstract, claims, drawings) published in the

Gazette.

o Gazette is updated every Friday.

 4. Examination (Request within 48 months):

o Filing a request for examination determines the queue position.

o Early request speeds up the process.

5. First Examination Report (FER) (~T=54 months, tentative):

o Depends on workload, filing date, and FER reply time.

o If examination request is filed late (e.g., 48th month), FER may come between
84-96 months.

6. Oppositions:

o Pre-grant Opposition: After publication, before grant.

o Post-grant Opposition: Within 1 year after grant.

7. Patent Grant (~4-5 years):

o Can be expedited via express route (early publication request with fee).

Patent Cooperation Treaty (PCT) Timeline

 PCT: A WIPO system for international patent filing.

 Filing options:

o File at local patent office or directly with WIPO (via "PCT Easy" system).

1. PCT Application (T=12 months):

o Must be filed within 12 months of provisional or complete application.

2. International Search Report (ISR) (T=16 months):

o Provides patentability assessment.

o Sent exactly at 16 months.

3. Publication (T=18 months):

o Patent published on WIPO’s Patentscope database.

4. International Preliminary Examination Report (IPER) (T=22 months, optional):

o Paid service for additional examination.

o Allows claim amendments (within scope).

 5. National Phase Entry (T=30-31 months):

o Application must be filed in each desired country.

o Decision to enter depends on ISR and IPER.

Comparison: PCT vs Conventional Patent Application

Feature PCT Conventional

Member Countries 152 177

National Entry Time 30-31 months 12 months

Filing System Single PCT filing, then national phase Direct national filing

ISR (Patentability Check) Yes, in 16 months No

Claim Amendments Allowed (before national entry) Not applicable

Advantages of PCT:

 Longer national entry time.

 ISR provides early patentability insights.

 Claim amendments allowed before national phase filing.

Inventions Not Patentable in India

Introduction

 Section 3 of the Indian Patents Act lists inventions that cannot be patented.

 The section ensures a balance between inventor rights and public welfare.

 Getting a patent in India is more difficult than in the USA because of stricter
restrictions under Section 3.

Categories of Non-Patentable Inventions

1. Frivolous Inventions

o Claims that go against well-established natural laws.

o Example: Perpetual motion machines, or a machine that turns vegetables

into gold.

2. Contrary to Public Order or Morality

o Any invention that promotes crime or harms society.

o Example: Devices for theft, counterfeiting currency, or causing injury.

3. Serious Prejudice to Life or Environment

o Inventions that may harm humans, animals, plants, or the environment.

o Example: A chemical that adulterates food undetectably or pollutes

air/water destructively.

4. Mere Discovery vs. Invention

o Discoveries of natural substances, scientific principles, or abstract theories are

not patentable.

o Example: Discovering a new planet, microorganism, or chemical element

is not an invention.

5. Section 3(d) – Pharma & Chemical Industry

o Mere discovery of a new form of a known substance without increased

efficacy is not patentable.

o Example: Replacing a halogen atom in a compound without significant

property change.

o New use of a known substance is not patentable.

  Example: A drug used for Disease X, later found effective for Disease
Y, cannot be patented for Disease Y.

o Prevents "evergreening" – preventing pharma companies from extending

patent monopolies unfairly.

6. Mere Admixtures

o Simple mixtures of substances with no new effects are not patentable.

o Example: Mixing two chemicals without synergistic effect.

7. Mere Arrangement/Re-arrangement of Known Devices

o Example: Combining multiple devices that function independently is not a

new invention.

8. Agricultural & Horticultural Methods

o Breeding techniques and agricultural practices are not patentable.

9. Medical & Surgical Methods

o Methods for treating humans/animals are not patentable, as they are meant
for public welfare.

10. Biological Processes & Traditional Knowledge

 Plants, animals, biological processes, and traditional knowledge are not

patentable.

 Example: Herbal remedies known in Ayurveda.

11. Mathematical Methods, Business Methods, & Algorithms

 Pure software (without hardware), business methods, and mathematical

formulas are not patentable.

12. Creative Works (Copyrighted Works)

 Art, music, literature, films, and television productions are protected under
copyright, not patents.

13. Mental Acts, Games, and Rules

 Methods of playing games, mental processes, and presentation of information are

not patentable.

14. Integrated Circuits & Topography

 Layout designs of circuits are not covered under patents but under a separate law.
 15. Traditional Knowledge Duplication

 Inventions based on traditional knowledge or aggregation of known properties are

not patentable.

Conclusion

 Section 3 is crucial in patent law and ensures patents are granted only for genuine
innovations.

 Many court cases revolve around Section 3 for patents and Section 52 for
copyrights.
Indicators for Patentability – Module 5, Week 5

Introduction

 Patentability relies on three main criteria: novelty, non-obviousness, and industrial

applicability.

 Industrial applicability and novelty are straightforward, but non-obviousness

requires specific indicators to assess the inventive step.

 Guidelines exist to help determine whether an invention meets the inventive step
requirement.

Indicators of Inventive Step

1. Distance

o Measures how different an invention is from prior art.

o Example: In chemical engineering, a new wound-healing composition must

be compared with existing solutions. Differences in preparation, application,
and effectiveness must be justified.

2. Surprising Effect

o If an invention produces an unexpected or surprising result, it supports an

inventive step.

o Example:

 Penicillin discovery by Alexander Fleming (1928).

 Restriction endonuclease (DNA cutting enzymes).

 Sewage cleaning method reducing processing time to just 2 hours.

3. Long Felt Need

o If an invention solves a long-standing problem that others have failed to

address, it indicates non-obviousness.

o Example:

 Electric light bulb: Thomas Edison improved the earlier work of

Joseph Swan by using a better vacuum and more durable filament.

 However, merely using newly available materials in an obvious way

does not qualify as inventive.

4. Failure of Others
 o If previous inventors attempted and failed to solve a problem, then a new
solution is more likely to be considered inventive.

o Example: Hepatitis C virus identification, where numerous research groups

failed for 10 years before a successful technique was found.

5. Complexity of Work

o If an invention requires a high level of technical effort and expertise, it is

less likely to be considered obvious.

o Example: Complex engineering or biochemical advancements.

6. Commercial Success

o If an invention achieves significant market success, it may indicate

inventiveness, but this alone is not conclusive evidence.

7. Cheaper and More Economical Product

o If an invention is cost-effective and simplifies a technological solution, it

can support an inventive step.

8. Prior Art Motivation

o If an invention lacks obvious motivation from prior art, it strengthens the

inventive step argument.

Conclusion

 These indicators help assess non-obviousness and determine whether a patent should
be granted.

 Understanding them improves our ability to evaluate patent examination criteria.