PATENT APPLICATION PROCESS

1. Presented by-K.V.S.Susmitha
(M.Pharmacy-Regulatory Affairs)

2. Contents
• Introduction
• What can be patented?
• Scope of patent protection
• Conditions of patentability
• Non-patentable inventions
• Procedure to apply for patent.
• Fees Details

3. 1. Introduction
Patents are the rights that are restricted to the person, group, or area concerned.
These rights are granted by the government to the applicant for his unseen inventions
of any of the industrial products or process provided that they are new, non-obvious,
useful.
Patent grant certificate is a written agreement between an inventor/applicant and
the government that gives the holder the territorial rights in the country.

4. 2. What can be Patented?
Trade related aspects of intellectual property rights (TRIPS) specifies that patents can be granted for
any kind of inventions ,whether products or processes, provided that is invention.
 New (or ‘novel’): The invention is not disclosed to the public in any way, until the filing of patent
application.
(If the invention is disclosed to public by oral or written procedure, then it is not patentable).
 Inventive step: The invention should be technical advancement, when compared to the existing
knowledge and should have an economic benefit or both.
 Utility: The invention must have an useful purpose (Industrial application).

5. 3. Advantages and scope of protection
1. Patents helps in allowing the patent owner to exclude others from making use of, or producing the
claimed invention for (Generally 20 years),especially in a commercial matter.
2. Patent rights are territorial; i.e they are granted by national authorities with the application in the
national jurisdiction only.
3. In India, the term of every patent is 20 years from the date of filing of the patent application,
irrespective weather it is filed with provision or complete specification .

6. 4. Conditions of patentability
Patentable inventions
The TRIPS Agreement of the world trade organization laid down certain basic common features for
granting patents, that are novelty, inventive step and utility.
1. Novelty(New)
2. Inventive step(Non-obvious)
3. Capable of industrial/useful application(Utility)

7. 5. Non- Patentable invention
To be patentable the invention must fulfil the conditions of novelty , inventive step and utility with
certain exceptions available to the member states within their territories. The list of inventions that
are not patentable are given in the section 3 and 4 of the Patent act 1970.

8. 1. Section 3(a): Inventions which are frivolous (not having any serious value) or which claim
anything obviously contrary to a well established natural law.
2. Section 3 (b) : An invention , the primary or intended use or commercial exploitation if
which could be contrary to public order or morality or which could cause serious
prejudice to human ,animal or plant life or health or to the environment.
Ex: Hacking a social account of individual.
3. Section 3(c): The mere discovery of a scientific principle or the formation of abstract
theory or discovery of any living thing or non living substance occurring in nature.
Ex: Known substance with unknown properties can not be patented, but if the substance
can be used in some particular preparation, then the substance is patentable.

9. 4. Section 3 (d): The mere discovery of a new form of a known substance which does not result in the
enhancement of the known efficacy of that substance to the mere discovery of any new property or
mere new use for a known substance or of the mere use of a known process , machine or apparatus
unless such known process results in a new products or employs at least one new reactant.
Ex: New form of the known substance (Levo or Dextro form) which does not improve the efficacy of the
substance
5. Section 3 (e): A substance obtained by a mere admixture resulting only in the aggregation of the
properties of the components there of or a process for producing such substances.
6. Section 3 (f): The mere arrangement or rearrangement of duplication of known devices each
functioning independently of one another in known away.

10. 7. Section 3 (g): A method of testing-This section was earlier covered under non patentable inventions but
after the amendment, this is now patentable .Hence a method of testing can now be patented.
8. Section 3 (h):A method of agriculture or horticulture
9. Section 3 (i): Any process for the medicinal, surgical, curative, prophylactic ,diagnostic ,therapeutic or
other treatment of human beings or any process for a similar treatment of animals to render them free of
diseases or to increase their economic value or that of their products.
Joos v. Commisioner of patents, it was held that if any substance, that is applied on the skin is
patentable.
10. Section 3 (j):Plants and animals in whole or any part there of other than micro-organisms but including
seeds, varieties and species and essentially biological processes for production or propagation of plants
and animals.
Ex: Microorganisms other than those available in nature are patentable.
11. Section 3 (k):A mathematical or business method or a computer program per se or algorithms

11. 12. Section 3 (l): A literary ,dramatic musical or artistic work or any other aesthetic creation whatsoever
including cinematographic works and television productions
13. Section 3 (m):A mere scheme or rule or method of performing mental act or method of playing
game.
14. Section 3 (n):A presentation of information (video, audio)
15. Section 3 (o): Topography of integrated circuits
16. Section 3 (p): An invention which effect, is traditional knowledge or which is an aggregation or
duplication of known properties of traditionally known component or components.
Ex: Antiseptic properties of turmeric for wound healing, Pesticidal and insecticidal properties of
neem.
17. Section 4: section 4 of the patent act prohibits patenting of the inventions that fall under section
20(I) of the atomic energy act,1962, on the grounds of national security in public interest.

12. 5. Procedure to apply for a patent
Types of patent application
1. Ordinary patent application: It is made under the provisions of Indian patent act (accompanied with
provisional or complete specification).
2. Patent of additional Application: Improvement or modification of an invention for which already
patent exists.
3. Conventional Application: Foreign applicants (listed in conventional countries) can apply for patent in
India.
4. PCT International Application: Single patent application can be filed in multiple countries in the world
at a time.
5. PCT National Phase Application: After the international phase, the application enters the national
phase.
6. Divisional Application: The patent application which are derived from another patent application which
contain more than one invention. Applicant may cleave the main patent into more than one divisional
application.

13. Who can apply (applying a patent):
In Accordance with the Indian Patents act, 1970 and the amendments thereafter ,the applicant of a patent
application can belong to any of the following categories , the categorization below is primarily done with
the intention to charge different application fee depending upon the category to which applicant belongs
i. A natural person
ii. Person other than natural persons either alone or jointly with a natural person -Small entity
iii. Person other than natural persons either alone or jointly with a natural person -Others expect small
entity
iv. Start-ups as defined under the notifications.
How to apply?
The Indian patent office allows for the patent application to be filed through two modes , such as
I. Hard copy application format
II. Online e-filing application format

14. Where to apply
The patent application has to be submitted or applied according to the territorial jurisdictions .
On the basis of the location ,one has to look for appropriate office or whatsoever office is covered
for his region.
Office Territorial Jurisdiction
Mumbai
The States of Maharashtra, Gujarat, MadhyaPradesh, Goa and Chhattisgarh and the Union Territories of
Daman and Diu & Dadra and Nagar Haveli
Chennai
The States of Andhra Pradesh, Karnataka, Kerala, Tamil Nadu and the Union Territories of Pondicherry and
Lakshadweep
New Delhi
The States of Haryana, Himachal Pradesh, Jammu and Kashmir, Punjab, Rajasthan, Uttar Pradesh,
Uttaranchal, Delhi and the Union Territory of Chandigarh.
Kolkata The rest of India.

15. Process of grant of a patent
The process of grant of a patent requires a certain set of steps to be followed as per the manual of
patent office practice and procedure as drafted and published by the office of controller general of
patents ,Designs and trademarks. The steps are as discussed under.
Step 1: Filing of patent application
The first and foremost step is to file an application for the grant of patent comprising of the following
forms
I. Form 1: Application for grant of patent
II. Form 2: Provisional or complete specification.
III. Form 3 : Statement and undertaking
IV. Form 5: Declaration as to inventorship
V. Form 26: Power of attorney in Original
VI. Certified true copies of Priority document
VII. Certified copy of convention application.

16. In case of form 2 is being submitted along with the provisional specification ,then it should briefly describe
the invention and should carry a brief description of the main important features of the invention .In case of
form 2 is being submitted along with the complete specification or the complete specification is being
submitted at a later stage ,it should necessary comprise of
1. Title
2. Field &background of invention
3. Use of invention
4. Prior art in the said field and the drawbacks in it
5. Comparison of the prior art and present invention
6. Abstract summary of the present invention
7. Statement of invention

17. Step2: Publication
The patent application is kept silent until 18 months, in the 19th month, the patent is published in the
official website .
If one wants the patent to be published before 18 months, he can file a request for early publication
under form-9 of rule 24 A.
Step3:Request for examination
•The applicant gets 48 months time period to file an application for examination. If the application for
examination is not submitted, it gets automatically abandoned.
• If application is submitted for examination, then the application is sent to examiner for the scrutiny of
the invention.
Step4: Issue of first examiner report (FER):
•The first examination report is issued after 30-90 days from examiner to controller.
•The controller takes another 30days for examining the report.
•The FER is now issued to the applicant with list of obligations, with in 180 days from the date of
application.

18. Step 5 : Response to the first examiner report.
Upon receipt of the FER, the applicant should respond within 12 months of time to the controller.
If the response is not appropriate, the grant is refused.
Step 6: Grant of patent
If the response to the FER is satisfied for the controller, then controller grants the patent under section 43.
Step 7: Maintenance and renewal of patent
The patent is granted for a period of 20 years from the date of application, upon expiration of 2 years
from the date of application , its needs to be renewed.
If not renewed, the patent is lapsed.

19. 7. Fees details: