REQUIREMENTS FOR PATENT LAW AND PRACTICE

REQUIREMENTS OF INDIAN PATENT LAW AND PRACTICE RELATING TO MECHANICAL, ELECTRICAL, AND ELECTRONIC SUBJECT MATTER.

What constitutes an invention has been defined in Section 2 (1) (j) of Indian Patents Act, 1970.According to this definition irrespective of the fact the subject matter is method, machine, apparatus, or article it would be considered an invention as long as it is new, useful and involves an aspect of manufacture.

Further when what is claimed is a process, Indian patent law and practice not only requires the process to result in an end product but also requires the claims to reflect this aspect. Further such end product should be vendible, tangible, determinate and different from the starting materials.

In one of the cases being prosecuted by us, the invention was entitled - "A process of washing clothes” The Patent office raised the objection - Where lies the aspect of Manufacture? What is the end product? How is the end product different from the starting materials? Although, we were able to gain allowance of this application after several rounds of discussions with the Examiner where we convinced him that the end product was the washed clothes (the starting material being the soiled clothes) and that laundering comprised series of manufacturing steps, the Indian Examiners continue to raise objection in similar cases.

Where the subject matter relates to a mechanical/electronic/electrical device, Indian Patent law and practice requires such device to be defined in terms of its features of construction and require the interconnections and interrelationships between the various components clearly brought out in the main claim. Generally Attorneys refer to the various components in the main claim by the expression "means". Also the components are generally defined only in terms of the function they perform in the apparatus.

While Indian Patent office does allow the term "means", it does so only if the "means" are well known means and if any such means (as supported by the foregoing description) is capable of carrying out the stated functions. It has also been observed that in order to bring out the novelty residing in the invention, a “characterized in that “clause is employed in the main claim.

The Indian Patent Office is very particular in this connection and requires all the sub claims not relating to the features disclosed in the post characterized portion of the main claim to be deleted altogether.

Further a characterized clause is permitted only in the main claim and its usage is not allowed in the sub-claims. Unlike the practice being followed in several countries such as the United States of America, Independently worded claims are not allowed in India.

Section 10 (5) of our Act requires the claims to relate to a single invention, be clear and succinct and be fairly based on the matter disclosed in the description.

Independently worded claims are objected thereto as constituting a distinct invention even though the features thereof may be common to the main claim on the ground hat the requirement of succinctness called for in Section 10 (5) has been violated.

REQUIREMENTS AND FORMS FOR FILING PATENT APPLICATIONS IN INDIA

Minimum information and documents for filing a Patent Application in India -

· Name, address and nationality for the Applicants and the Inventors.

· Complete specification including drawings ( if any ).

· Particulars of the priority to be claimed such as the date of filing and the Application number of the basic Application.

Application Form 1 for Ordinary and WTO Applications-

Attached hereto is application form 1 WTO BLACK BOX and ordinary applications. WTO Applications are those relating Drugs and agrochemicals. In case the patent application to be filed in India is a Convention application no form is required to be executed either by the Applicant or the Inventor . We as Patent Attorneys can execute the forms on behalf of the Applicants.

In case of Non-Convention Applications, this form is required to be filled.

Declaration as to Inventorship- Attached hereto is Declaration as to inventorship on Form 5. This is required only in case of Convention Applications. This form too is now no longer required to be executed by the Applicants and we as authorized Attorneys for the Applicants can execute the same.

POWER OF ATTORNEY: We request you to employ the Power of Attorney as engrossed on Stamp paper as this avoids the need of getting it stamped thereby saving a lot of time and expenditure at our end. On your request we shall provide you with a supply of such forms leaving the space blank for name and address of the Inventor (s) / Applicant for further action at your end. As soon as you exhaust the supply of the Power of Attorneys Please let us know.

DETAILED PROCEDURE FOR GETTING A PATENT

Note: If all documents have been filed, depending on the backlog in the Patent Office, the acceptance normally takes place within about 2 to 3 years from the date of filing of the application. Thereafter the publication in the Gazette of India (published every week) takes place after about 6 to 10 months and the Letters Patent document can be expected about 6 months afterwards.

FILING REQUIREMENTS

DETAILS

1. Inventor(s): Full name and address of each inventor.

2. Applicant: Full names, address. Body corporates: business or registered office address.

3. Priority: Country, number, date, status.

DOCUMENTS

1. Power of Attorney: Signed by applicant or duly authorised representative of the applicant. Where a representative signs, full name and capacity must be indicated. (No legislation required)

2. Specification and claims: Three copies in English.

3. Formal drawings: Three sets of formal drawings, the original being on tracing paper/cloth of good quality. The drawings must be of A4 size and have a clear border all around.

4. Abstract of Invention and drawing: Abstract to include not more that 100 words.

5. Priority document: A certified priority document for each priority claimed. If not in English, a certified translation is required

REQUIREMENTS TO APPLY FOR PATENTS

Applications must include:

a. Name and complete address of applicant.

b. Name, nationality and address of inventor.

c. Title of invention.

d. Details of patent applications filed abroad. If not granted, number , date, country and status of the corresponding applications, if applicable.

e. Power of attorney signed by the applicant.

f. Application form duly signed by applicants and inventors.

g. Declaration of priority when necessary.

In addition, the following documents must be attached to the application :

h. Abstract of the invention, specification, set of claims and drawings if appropriate.

i. Certified copy of the priority document. In case priority document is in a language other than English, an English translation thereof also needs to be filed.

FILING OF CONVENTION APPLICATIONS ON AN URGENT BASIS

Where a convention priority (so far over 80 countries beng allowed) is claimed, the information can be telefaxed to us and the application then can be filed immediately. India has recently signed PCT. In due course advantages of the same will also acrue to the applicants.

The required details to be telefaxed are:

1. Full names, address and nationality of applicant/s.

2. Full names, address and nationality of each inventor/s.

3. Title.

4. Full specification, including claims, abstract and drawing sheet.

5. Priority: Number, date, country, status. PCT priority of applications filed from 7th December 1998 can be claimed.

The original specification, claims and drawings then have to be filed within 3 months from the date of filing of the application.

OPPOSITION

If an application is formally in order, it is accepted by the Patent Office. Thereafter abstract and other details are published in the Gazette of India and in case no opposition is received within four months of such advertisement, the patent may be sealed by making an application to said effect

DURATION AND RENEWAL FEES

Patents are granted for 14 years from the date of filing (7 years in case of food and drugs)and renewals are due annually from the beginning of the third year onwards. However, all outstanding renewals can be paid in bulk for the full outstanding period at any time during the life of a patent.

INFRINGEMENT

While a patent application is pending, an alleged "infringer" cannot be taken to Court. This can only be done after the grant of a patent.

PATENT SEARCHES

The Patent Office records include the chronologically numbered abstracts classified according to the international patent classification, and an alphabetical name classification.

Searches can be done for:

·         Novelty searches amongst prior Indian patents.

·         Name searches.

Posted in: INDIAN PATENT SYSYTEM,PATENT IN INDIA