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Research methodology and ipr (Anna University)
Studocu is not sponsored or endorsed by any college or university
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UNIT V PATENTS
Patents – objectives and benefits of patent, Concept, features of patent, Inventive step,
Specification, Types of patent application, process E-filling, Examination of patent, Grant of patent,
Revocation, Equitable Assignments, Licences, Licensing of related patents, patent agents,
Registration of patent agents.
5.1 Patents
What is a patent?
A patent is an exclusive right granted for an invention, which is a product or a process that provides, in
general, a new way of doing something, or offers a new technical solution to a problem. To get a patent,
technical information about the invention must be disclosed to the public in a patent application.
A patent is an exclusive right that prevents anyone else from making, using, selling, distributing, importing, or
selling your invention without permission for a set period of time. This timeline can extend up to 20 years,
depending on the type of patent.
However, a patent will be granted only if it satisfies the conditions of patentability. These conditions of
patentability criteria are universal, with slight differences in their way of interpretation.
Novelty:
To obtain a patent for an invention, the inventor must make sure that the invention consists of one or more
new elements that are novel, failing which, the invention will not qualify for patenting.
Non-obviousness:
Along with novelty, the invention is required to be non-obvious. As in, any person possessing skills in the
particular field of the invention must not find the invention to be easy and obvious.
Industrial Application:
The invention of a patent that is capable of producing or being used in the industry is considered an
Industrial application. If the novel and non-obvious inventions have some industrial application, the
invention qualifies to be patented and thereby satisfies the conditions of patentability
5.2 Objectives and benefits of patent
Importance and 9 Major benefits:
1. Exclusive rights
The foremost advantage of obtaining a patent is that it gives exclusive rights to the inventor. In other
words, it keeps the infringers at bay and prevents them from selling, making, or marketing the invention.
Moreover, it also enables the patent owner to tackle such infringers legally.
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2. High return on investments
Having invested a considerable amount of time and money in developing the invention under the umbrella
of exclusive rights, the inventor could bring the invention to the commercial market and thus obtain higher
returns on the investment.
Organizations that dedicate their time and effort to building a strong patent portfolio have a high return on
investments and emerge as market leaders in their domains. One such successful example is IBM
(International Business Machines Corporation), which takes up patenting its innovations quite sincerely.
3. Strong market position
Since the inventor has obtained the exclusive right to the invention, the inventor can exercise this right by
preventing others from commercially using the patented invention, thereby reducing the competition and
thus establishing a place in the commercial market.
4. Sense of ownership
Patents give the inventor the security and confidence to share their invention in public domains. You can
share your invention with the scientific community and investors without any fear of losing ownership of
your invention.
5. Opportunity to License or Sell the Invention:
Sometimes, the inventor might not want to exploit the invention himself. In such cases, the inventor can
sell or license the rights to commercialize it to another enterprise. This would result in bringing royalty and
revenue to the inventor.
6. Patents as assets
Patents are intangible assets that improve the value of an organization. It showcases your expertise in the
domain and your dedication to the invention. This builds confidence among investors, partners, and
consumers in your invention, thus, attracting more funds and revenue for the organization.
7. Source of revenue
Inventors can use patents to establish their businesses. Sometimes, inventors cannot commercialize the
invention on a large scale. In such cases, they can permit any third party to manufacture, sell and market
the product and avail of a licensing fee. Thus patents ensure the inventor earns revenue for their efforts.
8. Benefits to the society
An invention is likely to benefit society as a whole by creating several employment opportunities after its
commercialization. Patents bring down the wall of secrecy on the invention, making it available to the
public. This would enable other researchers to gain access to the invention. Furthermore, it inspires and
encourages further research and development, paving the way for better designs and products.
9. Positive Image for the Enterprise:
Business partners, investors, and shareholders may perceive the patent portfolios as a demonstration.
Particularly the high level of expertise that the subject matter experts provide. This acts as a spectacle of
the organization’s capability. Further, this may be useful for raising funds, finding business partners, and
increasing the company’s market value.
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5.3 Inventive step
A claimed invention is considered to involve an inventive step if, having regard to the prior art, it is
not obvious to a person skilled in the art. (PCT guideline 13.01)
Who is “a person skilled in the art”?
A hypothetical person having ordinary skill in the art, who is aware of common general knowledge in the
art at the relevant date, and has access to everything in the prior art. (PCT guideline 13.11)
What is “obvious”?
The claimed invention is obvious if the person skilled in the art on the relevant date would have been
motivated or prompted to realize the claimed invention by substituting, combining, or modifying one or
more of those items of prior art with a reasonable likelihood of success.(PCT guideline 13.03, 13.09)
Procedure of evaluating Inventive Step
Considering whether or not the claimed invention would have been obvious to the skilled person
In considering whether there is an inventive step as distinct from novelty, it is permissible to combine the
teachings of two or more prior art references only where such combination would be obvious to the person
skilled in the art.(PCT guideline 13.12)
An invention, as per the Indian Patents Act, is a new product or process, involving an inventive step, and
capable of industrial application. In simple terms, a patent application is patentable only if it has novelty
(newness), inventiveness, and is capable of being made or used in an industry. Once the invention meets
the novelty (or newness) requirement, which is an absolute must, the next challenge is to show
inventiveness in the invention. Section 2(1)(ja) of the Indian Patents Act defines inventive step to be "a
feature of an invention that involves a technical advancement as compared to the existing knowledge or
having economic significance or both, and that makes the invention not obvious to a person skilled in the
art".
Since there are only a handful of cases that have dealt with inventiveness of patent applications, the
Patent Office appears to follow the criteria for assessing inventive step laid down by Supreme Court in
M/s. Bishwanath Prasad Radhey Shyam v. M/s. Hindustan Metal Industries .1 As per the criteria, 'If a
competent craftsman (or engineer as distinguished from a mere artisan), endowed with the common
general knowledge at the specific date of making the patent application (who was faced with the problem
solved by the person making the application, but without the actual knowledge of said patented
application) is able to reach the present invention', the subject matter of said patent application is said to
not have inventiveness. The apex court in the above-mentioned case said that "It is important that in order
to be patentable, an improvement on something known before or a combination of different matters
already known, should be something more than a mere workshop improvement; and must independently
satisfy the test of invention or an 'inventive step'. To be patentable, the improvement or the combination
must produce a new result, or a new article or a better or cheaper article than before. The combination of
old known integers may be so combined that by their working interrelation they produce a new process or
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improved result. Mere collection of more than one integer or things, not involving the exercise of any
inventive faculty, does not qualify for the grant of a patent".
To understand the above statement well, let us examine a hypothetical case. Suppose a person (applicant)
makes a patent application in the field of invention F, having three new features A, B and C. If any person
skilled in art of F, or practicing in the field of F, is motivated with his ordinary skill to combine A, B and C
and reach the present invention, then the subject matter of present patent application is said to lack
inventive step. Simply put, if a patent application only has minor changes to the prior art (or existing
knowledge), then the same would be obvious to a person skilled in the art, which subsequently would
make the invention non-inventive.
However, it is also essential to understand that even if the differentiating feature(s) [features A, B, C from
the above illustration] of the claimed invention is found to be non-obvious to a person skilled in the art, but
the same fails to provide any technical and/or economic advantage over the current state of art, the claimed
invention will still lack an inventive step in India. Therefore, apart from evidencing non-obviousness of the
differentiating feature(s) of the claimed invention to a person skilled in the art, it is equally also important
to indicate the technical and/or economic advantage of those differentiating feature(s) of the invention.
This results in fulfillment of both the criteria provided under the definition of the phrase 'inventive step' (as
mentioned above).
The criteria of technical advancement of patent applications is quite clear, and as has been the norm in
India, during inventive step assessment of patent applications, more often than not the focus remains only
on exhibiting technical advancement of the claimed invention, and not on economic advantages (or
advancements). However, economic advantages, such as reducing the manufacturing cost, reducing the
operational cost, or reducing the maintenance cost, etc. are also essential, especially in cases where the
claimed invention is technically not better than the cited prior art documents. Thus, a technically inferior
solution (compared to the solutions provided by the state of the art) may also pass the inventive step
assessment in India, as long as the solution claimed in the patent application is not obvious to a person
skilled in the art and achieves economic advantages.
5.4 Specification
According to Section 9 of Indian Patent Act 1970, there exist two types of patent specifications,
1. Provisional Patent Specifications
2. Complete Patent Specifications (Non-Provisional according to USPTO)
A provisional patent specification is a preliminary application before filing a usual patent. It explains the
invention in a broad manner but not completely. It is the document which may be filed before a Complete
Specification in the Office of the Controller of Patents pertaining to a prospective patent.
It gets the word “provisional” in its name from being incomplete and a predecessor of a complete
specification which comes later. Also, although it is not mandatory, it is highly recommended as it has a lot
of benefits for the inventor.
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Why should an inventor file a Provisional Patent Specification?
Earlier Patent Filing Date
On filing of the Provisional Patent Specification the inventor is entitled to an earlier filing date. This is key
as it secures the priority date for the applicant. The benefits of this are numerous

The fact that similar inventions which are filed after the filing date of the provisional cannot
become prior art for the applicants invention.

If any dispute regarding the ownership of the invention arises, the Patent Office will accept the
provisional patent’s earlier filing date as the date of filing.
What should an inventor keep in mind while filing a Provisional Patent Specification?
An Applicant should remember the following things
1. It is not a rough draft of the Complete Patent Specification. Whereas it defines the scope of the
invention and it is the Provisional Patent Specification on which the following Complete
Specification and finally the grant of Patent will be based upon.
All the elements of the invention which are born during the 12 months between the Provisional Patent
Specification and Complete Patent Specification filing will not get the earlier priority date. Any
addition/development to the invention after filing PROVISIONAL PATENT SPECIFICATION which is
outside the scope which is set by provisional application will not have the advantage of priority date of
provisional application.
2. The inventor/applicant should keep in mind that this is not the ‘final’ or ‘conclusive’ step
towards securing a patent. It is the initial step in the procedure towards patent registration.
3. It has to be kept in mind that if the time period of twelve months within which the applicant has
to file Complete Patent Specification is not adhered to then the patent application will be
deemed to be ‘abandoned’.
4. Although the confidentiality is maintained after the Provisional Patent Application, complete
and adequate disclosures should be made in the Provisional Patent Application as incomplete
applications will be disadvantageous for the applicant in the future and his scope of securing a
patent may considerably reduce.
5. A rough set of claims should be designed even though they need not be a part of the Provisional
Patent Application. This should be done in order to conceptualize the invention and understand
the implications of the invention completely.
What are the documents required to file a Provisional Patent Specification?
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The following documents must be in proper order for a Provisional Patent Specification
1. Form 1 ( Application for grant of patent), THE PATENTS ACT 1970 (39 of 1970) and THE
PATENTS RULES, 2003.
2. Form 2 (Provisional Specifications), THE PATENTS ACT 1970 (39 of 1970) and THE
PATENTS RULES, 2003.
3. Form 5 ( Declaration of Inventorship) THE PATENTS ACT 1970 (39 of 1970) and THE
PATENTS RULES, 2003.
4.
Form 26 (Power of Attorney). THE PATENTS ACT 1970 (39 of 1970) and THE PATENTS
RULES, 2003. If your patent is filed by a Patent Agent then this form is necessary, otherwise
not.
5.
E-filing fees (Patent Statutory fee) THE PATENTS ACT 1970 (39 of 1970) and THE
PATENTS RULES, 2003 (Electronic Payment).
6.
Form 3 (Corresponding foreign patent application statement and undertakings) THE PATENTS
ACT 1970 (39 of 1970) and THE PATENTS RULES, 2003.
7.
Priority Document ( This is used for convention applications if priority date is claimed).
8. Illustrations/Drawings of the invention.
What are the components of a Provisional Patent Specification?
The two broad divisions are Title and Description of the Patent.
TITLE
The Provisional Patent Specification should begin with the title of the invention. The title should fairly
capture features of the invention and should be short and to the point. It should be under fifteen words. The
inventors’ name, the word “Patent”, the abbreviation “etc.”, words in various languages or any fancy
words should not be used in the title.
An illustration of patent TITLE is given below.

“a steering mechanism incorporating an automatic feed-back circuit…”

“an insecticide consisting X,Y,Z; or”
DESCRIPTION
The description begins with the Preamble and contains the field and object of invention. It begins on a
fresh page after the Title. The Provisional Patent Specification does not need to have “claims”
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PREAMBLE
The description of the invention in a Provisional Patent Specification starts with the Preamble ‘The
following Specification describes the invention’.
FIELD
The technical field to which the invention belongs to should be mentioned in this section. It should be crisp
to the point that it can be easily identified that what is the nature of the invention and classification of its
technology. While mentioning the field it should be kept in mind that it does not ‘limit the scope’ the
invention in any sense.
For example, the term “liquid dispensing machine” should be used in the place of “coffee dispensing
machine” in which case it would limit the scope and eliminate dispensing soda, tea, etc.
OBJECT
The point of having this section is in showing the necessity of the invention. The advantages that the
invention would bring about should be primarily solutions made by the invention.
The statements which can be used in this section include “the principle object of this invention is …”;
“Another object of the invention is …”
What Is A Complete Specification Of Patent?

Complete Specification of Patent is a techno-legal document which particularly and fully describes
the invention and also discloses or reveals the best technique of performing the invention. In the
Patent proceedings, a Complete Specification is an important document; it is advised to the
applicant that Complete Specification is required to be drafted with the highest care and should be
without any ambiguity.

It is compulsory on the part of the applicant to disclose particularly and fully numerous features
establishing the invention. The disclosures of an invention in a Complete Specification should be
such that a person of average knowledge and skill in India should be able to perform the invention
of the applicant based on the descriptions and other required details that are disclosed in the
Complete Specification of a Patent by the applicant.
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What Are The Contents Of The Complete Specification Of Patent?
The essential contents of Complete Specification of Patent are as follows:

A Complete Specification filed by the applicant should particularly and fully describe the invention
of the applicant and the use or operation of the invention and the method by which the invention is
performed;

A Complete Specification should disclose or reveals the best method of performing the invention of
the applicant which is known to the applicant for which he/she is entitled or permitted to claim
protection for the invention;

A Complete Specification is required to end with a claim or set of claims defining or describing the
scope of the new invention for which the protection is claimed by the applicant;

A Complete Specification should also make a reference for the deposit of the biological material
related to the invention in the International Depository Authority, in case it is applicable;

A Complete Specification should disclose the geographical origin and source of the biological
material related to the invention that is specified in the Specification;

A Complete Specification should be accompanied by an abstract;

A Complete Specification should not include any irrelevant or other subject matter, which is not
necessary for the explanation of the invention of the applicant, from the title, claims, description,
and drawings filed by the applicant.

In the case of Complete Specification for a Divisional Application under the Patent Act, 1970, it
should contain a specific reference to the total number of original applications filed by the
applicants from which the Divisional Application of invention is made.

In the case of a Complete Specification for a Patent of Addition under the Patent Act, 1970, it
should contain a specific reference to the total number of main Patent or Application for the grant
of Patent, as the case may be, and a definite statement that invention of the applicant comprises of
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an modification or improvement of the invention claimed in the Complete Specification of the main
Patent granted or applied for the grant.
5.5 Patent Application
A patent application is a plea for the grant of a patent for the invention described and claimed by the
applicant. An application for this purpose generally comprises of a description of the invention, added with
official forms and correspondence relevant to the application. Patent applications are of several types, and
each one of them caters to a unique purpose.
Types of Patent
The types of patent application are:
1.
2.
3.
4.
5.
6.
7.
Provisional Application
Ordinary or Non-Provisional Application
Convention Application
PCT International Application
PCT National Phase Application
Patent of Addition
Divisional Application
The rest of the article covers these types in detail.
Provisional Application
A provisional application, also known as a temporary application, is filed when an invention is under
experimentation and isn’t finalized. Moreover, it is a preliminary application which is filed before the
patent office for claiming priority, as the Indian Patent Office follows the ‘First to File’ system (known
popularly as the First-Come-First-Served-Basis). In technical terms, early filing of an invention will
prevent the occurrence of any other related inventions from being designated as prior art to the inventor’s
application.
To add more, this type of patent application is filed when an invention requires additional time for
development. If an application is supported by a provisional specification, the applicant is necessitated to
file a complete specification within twelve months from the date of filing a provisional application. A
failure in this part would render the application void.
An application for this purpose must include a brief explanation of the invention and must be drafted in a
meticulous manner so as to ensure that the priority rights are secured for the invention.
Ordinary or Non-Provisional Application
This type of application is filed if the applicant doesn’t have any priority to claim or if the application is
not filed in pursuance of any preceding convention application. It must be supported by a complete
specification, the likes of which must depict the invention in detail.
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Complete specification can be filed through:


Direct Filing – wherein complete specification is initially filed with the Indian Patent Office
without filing any corresponding provisional specification.
Subsequent Filing – wherein complete specification is filed subsequent to the filing of the
corresponding provisional specification and claiming priority from the filed provisional
specification.
A complete specification entails the following:
1. Title
2. A preamble to the invention.
3. The technical field of the invention.
4. Background of the invention.
5. Objects of the invention.
6. Statement of the invention.
7. A brief description of the drawings
8. A detailed description of the invention.
9. Claims
10. Abstract
Convention Application
A convention application is filed for claiming a priority date based on the same or substantially similar
application filed in any of the convention countries. To avail a status of convention, an applicant is
required to file an application in the Indian Patent Office within a year from the date of the initial filing of
a similar application in the convention country. To re-iterate in simpler terms, a convention application
entitles the applicant to claim priority in all the convention countries.
PCT International Application
As can be deciphered from its name, a PCT Application is an international application. Though the
application does not provide for the grant of an international patent, it paves the way for a streamlined
patent application process in many countries at one go. It is governed by the Patent Corporation Treaty and
can be validated in up to 142 countries. Filing this application would protect an invention from being
replicated in these designated countries.
Unlike other applications, it renders the application a time-frame of 30-31 months to enter into various
countries from the international filing date or the priority date, thereby affording the applicant with
additional time to access the viability of the invention.
Apart from this, it renders the following other benefits:

The application provides an International Search Report citing prior art, which discloses whether or
not the invention is novel.
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It provides an option for requesting an International Preliminary Examination Report, which is a
report that contains an option on the patentability of the invention.
The aforementioned reports facilitate the applicant to make more informed choices early in the
patent process, as he/she can amend the application to deal with any conflicting material. Also, the
applicant would receive a glimpse of the patentability of the invention before incurring charges for
filing and prosecuting the application in each country.
An applicant from India can file this application at:


The Indian Patent Office (IPO), which acts as the receiving office.
The International Bureau of WIPO, either after availing a foreign filing permit from IPO or after
six weeks and 12 months of filing an application in India.
PCT National Phase Application
It is considered essential for an applicant to file a national phase application in each of the country wherein
protection is sought for. The time-frame for filing the same is scheduled within 31 months from the
priority date or the international filing date, whichever is earlier. The time-limit could be enhanced through
National Laws by each member country.
With respect to the National Phase Application, the title, description, abstract and claims as filed in the
International Application under PCT shall be considered as the Complete Specification. Apart from this,
the regulations applicable for filing and processing an ordinary patent application is also applied here.
Patent of Addition
This application must be filed if the applicant discovers that he has come across an invention which is a
slight modification of the invention which has already been applied for or patented by the applicant. It can
only be filed if the invention doesn’t involve a substantial inventive step.
A patent of addition is only granted after the grant of the parent patent, and hence no separate renewal fee
should be remitted during the term of the main patent. Moreover, it shall be granted for a term equal to that
of the patent for the main invention, and therefore expires along with the main patent. The date of filing
here shall be the date on which the application for patent of addition has been filed.
Divisional Application
An applicant may choose to divide an application and furnish two or more applications if a particular
application claims for more than one invention. The priority date for these applications is similar to that of
the parent application.
5.6 Process of E-Filing
As early as 2007, the provision of e-filing of patents in India had been introduced by the Indian
Patent Office. The purpose was to make the process of patent filing easier and quicker. With the manual
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filing of patents, it was essential to submit all hard copies of each required document to the proper
authority in charge of the process.
It was a tedious, long, winding, and complicated process that took a lot of time. After the facility of efiling was introduced, the process became much faster and is also highly user-friendly.
With the coming into effect of the Patent (Amendment) Rules 2016, it is now compulsory that e-filing be
used for filing patents. Effective 16th May 2016, an additional 10% statutory fee has been imposed by the
Indian Patent office when the patent is being filed in the manual form. Let us look at the benefits and
process of e-filing of patents in India.
The Primary Method For E-Filing A Patent In India
There are various steps involved in the e-filing of a patent application. Yet the process is quick and easy,
and the possibility of incorrect information being entered into the system is low since the person efiling the patent has accurate information. The steps to follow for e-filing are: registering with the portal,
logging in using a user ID and password, uploading the patent application duly signed digitally, getting the
status check done, and finally, the acknowledgement will generate a grant in e-filing.
Process For E-Filing Patent Application In India
E-filing for patents is done based on Patents Rules, 2003 [Schedule 1].
1. Access the platform for online filing of patents.
The URL is https://ipindiaonline.gov.in/epatentfiling/goForLogin/doLogin. Register by using the New
User? Sign Up link. After you complete your registration, a user ID and password will be generated.
1. There is a facility for dual login that Comprehensive Online Patent Filing Services have provided. It
makes it possible for users to log in using either the digital signature or the generated user ID and
password.
2. On logging in to the portal, the user will find a comprehensive list of steps for the applicant to
download the client software for creating and signing the application for Name Search of Patent.
3. Once the digitally signed patent application is submitted, the user must make the required
payment. The amount is auto-calculated.
4. An acknowledgement is generated for the e-filing of the patent.
5. It is possible to check the status of the application.
5.7 Examination of patent:
The normal Requests for Patent Examination can be filed within a period of 48 months from the priority
date (date of first filing of the invention, can be provisional patent or complete patent / non-provisional
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patent) or date of filing of the patent application whichever is earlier. If the patent examination request
is not filed within the specified time limit the patent application shall be treated as withdrawn by the
Indian Patent Office. It is mandatory under Indian Patent Act 1970, to file a request for patent
examination as per the prescribed timeline.
As per the Patent Act 1970, only after submission of such request a formal patent examination process
shall commence.
An express request for examination before expiry of 31 months can be made with respect of the
applications filed under Patent Cooperation Treaty (PCT) known as National Phase applications by
payment of the official fee. There is another provision of expedited examination, in which the patent
applications which requested for expedited examination will be put in a queue separate from the patent
applications for ordinary examination.
Ordinarily, within one month from the date of a request for examination, the Controller is required to refer
the application to an examiner. Further, the examiner is then required to prepare the Examination Report
within one month, but not exceeding three months from the date of reference for such examination by the
Controller. On the other hand, upon a request for an expedited examination, the examiner will be required
to give the Examination Report within one month, but not exceeding two months from the date of
reference for examination by the Controller.
The provision of expedited examination is available for startups and applicants who have included India, in
their PCT application as an International Searching Authority (ISA) or International Preliminary
Examining Authority (IPEA). Therefore, selecting India as ISA can be beneficial to expedite the grant
process.
An early publication request can be made along with prescribed fees if one does want to wait, till the
expiry of 18 months from the date of filing for publishing the patent application.
Generally the patent application is published within a month after request for early publication.
Why do I have to file Request for Examination in India?
The Process of examination starts with filing a request for examination. Unlike publication, this is not an
automatic process. Only after receiving the Request for Examination (RFE) the controller transfers the
patent application to the patent examiner. The request for examination has to be made within 48 months
from the date of priority or filing whichever is earlier.
The patent examiner examines the patent application, and prepares the examination report on the basis of
various patentability criterias like:





Patentable subject matter;
Novelty;
Inventive step;
Industrial application; and
Specification Enablement
Other responsibilities of the patent examiner for examination of a patent application include:

To conduct comprehensive investigation of an application and prepare a report under section 12;
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
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To conduct an inter-office search covering all four patent offices;
To raise objections rather than comment on missing forms.
The Examiner's report will: Be a permanent part of a file's note sheet and non-editable at the
Controller's end; Include a draft summary/gist of objections-this gist editable at Controller's end;
Include any amendments to the complete specification;
Who can file the Request for Examination in India and How?
In India a request for patent examination (RFE) may be filed by:


the patent applicant of the patent application or
by any other interested person
Request of Examination is filed by filling Form 18. The interested person (third party) has to submit
appropriate evidence of his interest in the particular patent application.
Form-18 has to be filed, specifying the details of the patent applicant or other interested person, application
number, title, date of filing and publication date along with the prescribed fees.
It is very significant to follow the patent office timelines. Otherwise it is advisable to file the request for
examination, while filing patent application.
For a national phase application /PCT international application entering India it is advised to file an
express request for patent examination before the expiry of 31 months.
What is First Examination Report under the Patent Act?
Once the patent application is examined, the Patent office issues an examination report to the patent
applicant which is generally known as First Examination Report (FER). The examiner submits this to the
controller. It usually contains prior arts similar to claimed invention. Prior art here means existing
documents before the date of filing, similar to claimed invention. It need not be commercially available. It
is just evidence which proves that the claimed invention is already known
The Applicant should reply the objections (if any) and place the application in order for grant within 12
months from the date of issue of the FER (First Examination Report). In this case too, if the reply to the
examination report is not made within prescribed time limit, which is 12 months, the application is
deemed to be abandoned.
In case, the patent application is found to be in order for grant, the patent is granted, if there is no pre-grant
opposition filed or pending by a third party.
5.8 Grant patent:
Three Stages To Grant patent
Stage 1: Filing of Application
The first stage entails filing an application for a patent in the prescribed format along with the necessary
documents at the IPO. The documents that are required at the IPO include details of the applicant as well
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as details of the invention, including specifications, corresponding applications filed in other countries, and
so on. Once this application is received, the IPO accords a date of filing and an application number to it.
Stage 2: Publication of Application
Once the application has been filed, the IPO publishes it in the official Patent Journal making it available
for public inspection. A patent application is ordinarily published after 18 months from the date of filing,
or date of priority, whichever is earlier. It is also possible to expedite the publication of a patent application
in India by filing a request for an early publication. The request will be considered if the subject matter
disclosed in the patent application is not relevant for defence purposes or atomic energy. The IPO
generally publishes the application within one month of filing such a request.
Upon publication, the patent application along with the complete specification and any other documents
filed alongside, are made available on the IPO website. Certified copies of the documents can be obtained
from the IPO for a fee. Upon publication, any biological material submitted at the International Depository
in connection with the application is also made available to the public.
After publication, the applicant enjoys the privileges and rights of a granted patentee. Although an
applicant can file an infringement suit only after the patent is finally granted, damages can be claimed from
the date of publication of the application in India.
The Indian Patents Act, 1970 (the Act) permits any person to file a pre-grant representation at the IPO
against a published application opposing the grant of a patent. However, in view of recent jurisprudence, it
is recommended that pre-grant representations be filed by persons who are involved in the same field of
technology as the patent application in question.
Stage 3: Examination of Application
Once the application is filed and published, the applicant must file a request for examination along
with the prescribed fee, after which the IPO proceeds to examine the application. A request for
examination can be filed by the applicant or a person interested in the patent application.
A request for examination of a patent application in India may be filed any time within 48 months from the
date of filing or the date of priority, whichever is earlier. In a case where secrecy direction has been issued
under the Act, a request for examination may be made within 48 months from the date of priority or from
the date of filing of the patent application, OR within six months from the date of revocation of the secrecy
direction, whichever is later. A request for examination cannot be filed after the due date. If a request is not
filed within the time limit, the application is irrevocably terminated.
In the case of a national phase application, the application is taken up for examination 31 months after the
priority date. However, a request for express examination may be filed to initiate the examination of such
an application before 31 months along with a request for early publication.
A patent application is examined in order to ensure that it meets all requirements under the Act. Based on
the examination, the Controller issues a First Examination Report (FER).
An applicant must file a response to the FER within six months of the date of issuance of the examination
report. An extension of a maximum period of three months is available for filing such responses, provided
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a request of extension is filed within the six-month period. Failure to submit the response within this time
limit results in the application being abandoned.
If the response or amendment filed by the applicant does not satisfy the requirements laid down by the Act,
the Controller offers the applicant a hearing, if it is requested by the applicant, and decides the case on
merits. The applicant must file its written submissions with any proposed amendments within 15 days from
the date of hearing. This can be extended to one month, by filing a request for extension before the expiry
of the 15-day period.
After hearing the applicant and reviewing the written submissions, the Controller may specify or permit
such amendments as they think fit and grant the patent. The Controller may refuse to grant the patent if any
requirements of the Act are not complied with.
5.9 Revocation of Patents in India
The term “Revocation” means Cancellation of the patent rights acquired to patentee.
The revocation of patent can be applied by making a petition by any person interested or it can be also
applied by the Central Government. In most of the cases revocation are filed on a counter claim
against patent infringement suits in High Court or in IPAB (the Intellectual Property Appellate Board). The
provision for Revocation of patents is mentioned under section 104.
Section 104 of the Patents Act, 1970 states that only IPAB or the High Court can be approached for
revocation as no suit of infringement can be brought before a court inferior to the District Court having
jurisdiction.
Section 64: Grounds for Revocation
Principally, Section 64 contains in-exhaustive grounds that dictate the conditions that warrant the
revocation of patents. These grounds are following:
1. Invention is obvious, lacks an inventive step or utility
2. Invention isn’t new and, has been publicly used or published in India before the priority date or it is
foreseen in light of the knowledge available within any local or native community in India or
elsewhere.
3. Either the party wasn’t entitled to the patent, or the subject isn’t patentable or doesn’t amount to
invention
4. The scope of patent specificationsis incomplete or the specifications have either been already
claimed in a patent that is granted
5. The patent was wrongfully obtained in violation of another party’s rights, such as through incorrect
or false representation, or leave to modify specifications was obtained through fraudulent means
6. The information that has been disclosed under Section 8 is known to be false by the Applicant or he
has been unable to furnish the required details
7. Complete specification omits or erroneously attributes geographical origin or biological matter
used in the invention
8. The invention was either secretly used before the date or claim or the Applicant contravened
secrecy instructions under Section 35
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9. The complete specification neither describes the invention and method sufficiently nor does it
disclose the best method of performing it which was known and entitled protection.
Other provisions for revocation of patents
A revocation petition can be filed undersection 65 if the patent granted relates to atomic energy.
If the Central Government find the facts that a granted patent has been exercising by wrong means and it is
mischievous to the State or prejudicial to the public, the central government has rights in the case to revoke
the concerned patent and such decision is also published in official journal of patents.
Moreover, to prevent the wastage of judicial machinery, it was laid down by the Supreme Court in
the Enercon (India) Ltd and Ors. v. Enercon Gmbh, that post grant opposition proceedings and petitions
or counter-claims of revocation against the same patent, cannot be simultaneously instituted. Frivolous
litigation shouldn’t be encouraged as it is viewed as a tool for cash-rich litigants with dishonest interests.
Revocation of patent under Section 85 of the Patents Act
An application for revocation of patent can be filed after 2 years of grant of compulsory license. The
grounds for revocation of a patent are same which are covered under Section 85 which mainly deal with
following:


reasonable price,
availability in the territory of India, and
requirements of the public not met.
Section 85 reveals provision in the benefit of public. In these cases where the patentee does not take
necessary actions that may help in better distribution of the product to the public and more profound
availability at reasonable prices. Such revocations of patent are really useful to public.
5.10 Assignment
 Assignment
The term ‘assignment of patent’ is not defined in the Indian Patents Act. An assignment is an act by which
the patentee assigns whole or part of the patent rights to the assignee who acquires a right to prevent others
from making, exercising, using, or vending the invention. There are three kinds of assignments. Those are
as follows:
Legal Assignment
An assignment or an agreement to assign for an existing patent is the legal assignment, where an assignee
may enter his name as the patent owner. A patent that is created by the deed can only be assigned through
a deed. A legal assignee entitled as a proprietor of the patent acquires all rights thereof.

Equitable Assignments
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Any agreement that includes a letter in which the patentee agrees to give the certain defined share of a
patent to another person is an equitable assignment of patent. However, in that case, an assignee cannot
have his name entered in the register as a proprietor of the patent. But the assignee can give notice of his
interest in the patent entered in a register.

Mortgages
A mortgage is an agreement where the patent rights are wholly or partly transferred to the assignee in
return for the sum of money. Once an assignor repays the sum to an assignee, the patent rights are restored
to the assignor and patentee. A person in whose favor the mortgage is made must not be entitled to have
his name entered in the register as a proprietor, but he can get his name entered in the register as
the mortgagee
5.11 An Overview of Patent Licensing
Patent Licensing is an agreement made between the Patent holder (licensor) and the company or
person that wants to use and avail benefit from the licensee. It allows the licensee to sell or make the
product, technology, or design in the Patent. Then the Patent creates income for both the licensee and the
licensor through royalties & returns for the duration of the Patent Licensing period.
A Patent owner or holder can give away or transfer their interest in a patent to a third party or
person. The licensor gives away their rights on the invented, patented Intellectual Property for a period of
time over a mutual agreement. In this period, the licensee can extract benefits & have rights on the interest
on the Patent. They may make and use the licensed design and also gain some profits during the licensed
period.
5.12 Licensing of Related Patents
What are the Different Types of Patent Licensing?
Following are the different types of Patent Licensing:
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Exclusive Licensing: This licensing is one in which all the Patent rights is transferred to the
licensee. In this case, the licensee has all the rights as of the Patent holder except for transferring
the Patent to another person. This restriction is because in such a license, even with the transfer of
all other rights, the Patent right over the title still rests with the Patent holder. It is wholly granted to
a particular party and hence cannot be further transferred. In this type of Patent Licensing, the
possibility of the Patent getting infringed is negligible as the Patent rights are less being exploited,
and the licensee has a monopoly over the market.
2.
Non-Exclusive Licensing: This Licensing involves giving license to more than one
company, which means that one licensee may exploit the innovation, but along with them, others
who have been given the license for the same Patent may be entitled to equal exploitation. The
licensor also remains free to exploit the same IP (Intellectual Property).
3.
Sub-Licensing: It's a type of license issued by the licensee to different companies or
organisations to make the products. This license can be said to be granting certain licensed rights
on a product to a third party by the licensee.
4.
Compulsory License: When the Government gives permission to any persons or
organisations to sell, make or use a patented design/product, irrespective of the Patent owner's will,
for the public benefit, it is referred to as a Compulsory License. This license is generally seen
granted in the pharmaceutical products and the products which fulfil the criteria as described
in Section 84 of the Patents Act, 1970.
5.
Cross Licensing: This is a process when there could be an exchange of licenses between
various creators & organisations. This is required when the innovation requires the support of other
products to make its position in the market.
6.
Voluntary Licensing: This license is also applicable for pharmaceutical Patents; Voluntary
Licenses are an act of goodwill towards society. In this case, Patent owners may, at their discretion,
license to other parties, on an exclusive or non-exclusive basis, the right to import, manufacture,
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and/or distribute a pharmaceutical product. Depending on the license terms, the license may act
completely or effectively as an agent of the Patent owner; or the licensee may be free to set the
terms of distribution & sale within a prescribed market or markets, contingent royalty payment.
Either option or arrangements in between would permit considerable price reductions.
Advantages of Patent Licensing
Following are some advantages of Patent Licensing:
1. International Market: It becomes hard for many companies to have a bunch production of a
product separately. Patent Licensing comes to help in overcoming this difficulty as it allows other
companies or organisations to produce the Patent products & thereby help in a huge production.
Patent Licensing can aid in introducing one invention in the international market.
2. Competitive Benefit: If the Patent is licensed to an already established company with a huge
customer base, the Patent product or item will have a bigger market to capture in comparison to
other Patents, giving it a reasonable edge over other Patents.
3. Transfer of Risks: Production & manufacture of design/products have a lot many risks involved.
With Patent Licensing, the Patent holder can transfer such risks involved in the production of
Patent Design or product to the licensee.
4. Limited Period: Because the licensing is done for a limited period, the Patent owner gets back
their exclusive rights over their invention as and when the duration of the license expires.
5.13 Patent Agent
Who Is A Patent Agent?
Chapter XXI of the Patent Act, 1970, along with the Patent Rules, 2003, provides for the
provisions related to Patent Agent. Section 2(n) of the Patent Act, 1970, defines a Patent Agent. The
Section states that a person who is registered under the Patent Act, 1970, is a Patent Agent. The
definition under the Patent Act, 1970, basically defines that who is a Patent Agent, in order to
understand the meaning of Patent Agent term in simple words, the term can be defined as a person who
files the application of Patent. The whole process in the preparation of an application of Patent is taken
care of by the patent Agent. In simple words that the Patent Agent helps in the preparation of the
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documents related to Patent, which includes drafting, filing, and prosecution of the application before the
Controller on behalf of the person who wishes to obtain a Patent.
The Patent Agent is required to be registered for practicing as per Patent Rules, 2003. The Patent Agent is
required to submit an application for Registration as a Patent Agent in Form 22 before the Indian
Patent Office. After the acceptance of the application by the Indian Patent Office, the details of the
registered Patent Agent should be added into the Register of Patent Agent, which is maintained by the
Controller. The Register of Patent Agent should include all the details of the registered Patent Agent,
which consists of the name, address, and other important particulars related to the Patent Agent.
What Qualifications Are Required For Registration As A Patent Agent?
Section 126 of the Patent Act, 1970, provides for the criteria for a person to qualify to get
Registration of Patent Agent. The qualifications required to be registered as Patent Agent are as
follows:

The person should be a citizen of India;

The person should have completed 21 years of age;

The person should have completed a degree in either Engineering, Science, Technology from any
University established under the law for the time being in force in the territory of country India or
should hold such other corresponding qualifications as specified by the Central Government of
India. The final year students can also apply for Registration of Patent Agent as long as the person
applying is able to produce the certificate of the degree with all the marks within 2 months from the
date of announcement of the results of examination for Patent Agent.

The person applying for Registration should have paid the prescribed fees;
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The person has either passed the qualification exam for the purpose or has functioned as an
examiner or has discharged the functions of the Controller as per Section 73 of the Patent Act,
1970[1], or both. The time period required for such qualification should not be less than 10 years,
provided the person applying for Registration should have ceased to hold any such capacity at the
time of making the application of Registration.
5.14 Procedure For Registration Of Patent Agent?
Under the Patent Rules, 2003, Rule 109, Rule 110, and Rule 111 provides for the procedure for
Registration of Patent Agent. The procedure for Registration of Patent Agent is as follows:
Application For Examination

A person shall make a request to the Controller and pay the requisite fee as provided in the First
Schedule, as per which the intention of the person to apply online or offline. After making the
payment, the details of the payment should be provided to the Controller, in order to appear for the
qualifying examination of Patent Agent.

The person should make the request in the form of a letter addressing the Controller and should be
submitted at the nearest Patent Office along with all other required documents. The documents such
as citizenship Proof, Age Proof, Character Certificate along with Self-attested copy of Proof of
Degree as per section 126(1)(c) of the Patent Act, 1970, should be provided. Any further details
regarding the request letter is provided on the official website. The fees prescribed for the
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examination should be paid only after the announcement of the examination on the website of the
Office of Controller General of Patents, Ministry of Commerce and Industry of India. The fees
should be paid within the period specified in the announcement on the official website. No
restriction is there regarding the number of times a person can apply for the examination. Hence, it
can be said that the person can apply as many times as he/she wishes.
Particulars Of Examination

The person meeting the qualification provided under Section 126 of the Patent Act, 1970, should
apply for the examination of Patent Agent. The applicant is required to select the center of his/her
suitability to write the examination of Patent Agent. The Patent Agent examination is generally
conducted in 5 cities which are, Delhi, Mumbai, Nagpur, Kolkata, and Chennai. The Indian Patent
Agent examination is held once in each year. The examination shall consist of the following
particulars:
1. A written test should be conducted, which will be considered as the qualifying exam. The written
test should be conducted by the Office of the Controller. The written test should comprise of Paper
I and Paper II for 100 marks each. The Paper I should have both Objective and Descriptive type of
question. The Paper I should be based on the Patent Act and Patent Rules, while Paper-II should be
more practical in nature relating to the drafting, interpretation of specifications of Patent, and other
related descriptive questions. A candidate should score a minimum of 50 marks in each, Paper I
and Paper II, to pass the examination of Patent Agent. The person applying for examination of
Patent Agent should be thorough with the acts, rules, practice, and procedures related to patenting
to qualify for the examination.
2. After the written test, a viva voice should be conducted for 50 marks. The questions in viva voice,
which are generally asked, should be based on the knowledge about the field. The person to qualify
as a Patent Agent he/she should secure an overall 60% aggregate of the total marks.
The result of the examination of Patent Agent is usually announced after two months after the examination.
The results of the examination of Patent Agent are announced on the official website of the Office of
Controller General of Patents.
Registration

The person is required to submit a Form 22 application as provided under the Patent Rules, 2003.
The person should furnish with the application of Registration any other relevant information as
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required by the Controller. After a person has cleared the examination of patent Agent and
furnishing any other relevant and necessary details required by the Controller, the person should
pay the necessary fees to the Controller. After the payment of prescribed fees, the Controller, upon
verifying all the submissions made by the person, should enter the name of the candidate in the
Register of Patent Agents. After entering the name, the Controller should issue a Certificate of
Registration as a Patent Agent to the candidate. The Certificate of Registration of Patent Agent
issued is valid only within the territory of India.
Read our article:Revocation of Patent in India: A Complete Overview
What Are The Requirements Of Register Of Patent Agents?
The Controller is required to maintain a Register of Patent Agents in accordance with Section 125 of
the Patent Act, 1970, read with Rule 108 of the Patent Rules, 2003. The particulars which are to be
contained in the Register of Patent Agents are as follows:

The name of the person registered as Patent Agent;

The Nationality of the person registered as Patent Agent;

The Address of the principal place of business and the addresses of branch offices of the person
registered as Patent Agent;

The qualification and the date of Registration of every registered Patent Agent;

The Details of the Renewal of Registration of Patent Agent and any other particulars which the
Controller considers fit and required to be included in the Register of Patent Agents. The fee should
be paid by the Patent Agent at the end of every financial year to continue with the Registration of
Patent Agent. The date to pay fee for continuation of the Registration of Patent Agent is generally
considered from the date of Registration as a Patent Agent. The Registration of Patent Agent
should be renewed every year after the first Registration. The fees for continuation of Registration
for the next 1 year can also be paid at the time of the first Registration of Patent Agent. On the
official website, a notification should be issued every year to provide the details of the mode for the
payment of the fees and any other details as required. The helpline number in case of any query
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with regard to payment of fees for the continuation of Registration should also be provided on the
official website.

The Specimen of signatures and photographs of the persons registered as Patent Agents;
Furthermore, a copy of the Register of Patent Agents should be maintained in every Branch Office. The
details of the Patent Agents can also be maintained by the Controller in computer diskettes, floppies, or
any other electronic form. The details maintained in computer diskettes, floppies, or in electronic form are
subject to safeguards as may be prescribed in this regard. The details maintained should be accessed only
by the person duly authorized by the Controller, and no entry or modification of any entry or rectification
of any entry in the Register of Patent Agent should be made by any person who is not authorized by the
Controller.
What Is The Role Of Patent Agent After Registration As A Patent Agent?
As per Section 127 and read with Section 129 of the Patent Act, 1970, every Patent Agent whose name is
entered in the Register of Patent Agents is eligible for the following rights:

The person can practice before the Controller for:
1. Obtaining or applying for Patents in India or elsewhere;
2. Preparation of specifications or any other documents required by the Patent Act, 1970, or required
by Patent Law of any other country;
3. Giving guidance other than of technical or scientific nature regarding the validity of Patents or
Patent Infringement;

The person is required to prepare all the documents related to Patent, manage all business and
discharge any other function as prescribed under the provisions of the Patent Act, 1970, in regard
to, any proceeding before the Controller.
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