Applying Patent In India - Tips and Tricks

1. APPLYING PATENT
IN INDIA
ABHISHEK SYAL
February, 2016
NITTTR, CHANDIGARH
ABHISHEK SYAL

2. About me
■ MBA from MIT Sloan, B.E. (Hons.) BITS, Pilani
■ Market Intelligence at EMC Corp., Research at BHEL
Corp. R&D
■ Co-inventor to 4 patent pending tech
■ Founded and led my own social venture, ARISE
– Differentiated offering: self-learning for disabled
for over 300+ children; proprietary methodology

3. Agenda
■ Part – I: Patent Basics
■ Part – II: Applying Patent in India:Things to Know
■ Part – III: Drafting a Patent Application
■ Part – IV: Important References

4. PATENT
PART - I

5. Patent
■ Broadly defined, patents are the rights granted to the
inventor about ownership and usage protections on their
human intellectual creative products.
– Product patents
– Process patents
■ Patent system exist in most economies over the world.
Traditionally, they have helped establish new businesses.
■ Other patents include design patents, semiconductor chip
layout patents, etc.

6. The Patents Act of 1970
■ The Patents Act, 1970, last amended 2005
– ‘An invention means a new product or process involving an
inventive step and capable of industrial application’.S. 2(1) (j))
– ‘New Invention’ is defined as any invention or technology which
has not been anticipated by publication in any document or used
in the country or elsewhere in the world before the date of filing
of the patent application with complete specification, i.e., the
subject matter has not fallen in public domain or that it does not
form part of the state of the art.

7. Patent Rights
■ Exclusive right
– Granted by a country
– Owner of invention can make, use, manufacture and market
exclusively
– Territorial
– Limited period of time
– Use or exploitation may be affected by other laws
– Treated as a property – gifted, inherited, assigned, sold or licensed
– Revocable

8. PatentabilityTest
■ An invention must satisfy the following three conditions of:
– Novelty: invention not disclosed publicly in prior art in any
language in any country
– Inventiveness: proposed invention is not obvious to a person
skilled in the art
– Usefulness: utility or application
■ A simple invention can be a patent; a complex step may not
be a patent.

9. TRIPS and India
■ Agreement onTrade Related Aspects of Intellectual Property
Rights (TRIPS) is a part of establishing theWorldTrade
Organization (WTO). (came into force 1st January 1995)
■ Obligations include:
– Patents across industries such as genetic varieties of food
crops
– Minimum 20 years term of the patent
– Reversal of burden of proof in process patent – defendant to
prove his innocence with the validity of a process patent;
helpful if you are being sued

10. APPLYING A PATENT
PART - II

11. The Patenting Process

12. Patent Offices and Jurisdiction
Office Address Territorial Jurisdiction
Mumbai Intellectual Property Office, Boudhik Sampada
Bhawan, Near Antop Hill Post
Office, S.M.Road,Antop Hill, MumbaiI – 400 037.
Phone : 24137701, 24141026, 24150381,
24148165, 24171457
FAX : 24130387
EMAIL: mumbai-patent@nic.in
The States of Maharashtra,Gujarat, Madhya
Pradesh,Goa and Chhattisgarh and the Union
Territories of Daman and Diu & Dadra and
Nagar Haveli
Chennai Intellectual Property Office, Intellectual
PropertyOffice Building, G.S.T. Road, Guindy,
Chennai-600032,
Phone: 044-22502081-84
FAX: 044-22502066,
Email: chennai-patent@nic.in
The States of Andhra Pradesh, Karnataka,
Kerala,Tamil Nadu and the UnionTerritories of
Pondicherry and Lakshadweep
New Delhi Intellectual Property Office, Intellectual
PropertyOffice Building, Plot No. 32, Sector 14,
Dwarka, New Delhi-110075,
Phone : 011-28034304, 28034305 28034306
FAX:011- 28034301,02
Email: delhi-patent@nic.in
The States of Haryana, Himachal Pradesh,
Jammu and Kashmir, Punjab, Rajasthan, Uttar
Pradesh, Uttaranchal, Delhi and the Union
Territory of Chandigarh.
Kolkata Intellectual Property Office, Intellectual
PropertyOffice Building, CP-2 SectorV, Salt
Lake City, Kolkata-700091,
Phone : 23671945, 1946, 1987,
FAX-033-2367-1988,
Email:- kolkata-patent@nic.in
Rest of Inida

13. Patent Grant Procedure
Source:WIPO (url)

14. Important Forms
■ Form 1 – Details and declarations
■ Form 2 – Provisional/Complete Specification
■ Form 3 – Statement and Undertaking under Sec 8 (Patents
filed outside India / PCT Application)
■ Form 5 – Declaration as to Inventorship
■ Form 19 – Request for Examination of Application for Patent

15. Important Information
■ Fees Details:
http://ipindia.nic.in/ipr/patent/patent_FormsFees/Fees.pdf
■ Forms:
http://ipindia.nic.in/ipr/patent/patent_FormsFees/index.htm
■ International applications must select a PCT International
Application and file the patent applications in individual countries
before the international filing date.
– This helps you to keep the same priority date up to 31 months
delay from date of filing in India.
– Must be filed in quadrupled

16. DRAFTING A PATENT
APPLICATION
PART - III

17. Types of Patent Application
■ Provisional and Complete
■ Provisional
– Permanent and independent scientific cum legal document
– No amendment allowed
– No patent is granted on the basis of provisional
– Has to be followed by complete within 12 months

18. Complete SpecificationApplication
■ Necessary to submit to obtain a patent
■ Has the following:
– Title
– Field of invention
– Prior art
– Complete description
– Experiment results
– Drawings and figures
– Claims
– Inventor

19. Recommended Strategies
■ File a provisional application and then submit a complete
specification if the testing is in progress of your invention.
■ A provisional application is used to establish the priority date
– the date of filing a patent.
– The earlier the better because India follows the first to file
system.
■ A provisional application can be used to establish ownership
of an invention.

20. Recommended Strategies
■ Give drawbacks of the known invention practices in the prior
art.
– This helps in establishing your novelty and non-
obviousness.
■ Refer to important patents in prior art on which your work is
based.
■ Don’t give technical detailed drawing. Give a simple block
diagram with simple labeling highlighting your novelty /
invention.

21. Recommended Strategies
■ Claims are the most important part as it relates to the claims of
invention defining your scope of invention.
– Choose the broadest possible without infringing on the prior art.
■ Claims must be worded properly and must be related to the inventive
step only.
■ Include all the people in Inventor who have contributed intellectually.
– To aid this process, always keep factual, clear and accurate record of
daily work in a diary or a log book.Such entries should be signed
both by the scientists and the project manager.
■ Make sure to sign up or find the patent office journal regularly.

22. IMPORTANT
REFERENCES
PART - IV

23. Important References andWebsites
■ MANUAL OF PATENT OFFICE PRACTICE AND PROCEDURE
(url)
■ Patent Office – Prosecution Procedures By R. Bhattacharya,
Asst. Controller of Patents & Designs, Mumbai Patent Office,
Mumbai (url)
■ Controller General of Patents Designs andTrademarks (url)
■ Indian Patent Database (url)
■ Patent Search - ipindiaonline.gov.in (url)

24. THANKS
abhishek.syal@sloan.mit.edu