1. A brief presentation on patent law.
Patent filing procedure in India
Dr. S. Madhuri Paradesi,
Assoc. Professor, Dept of Law
Sri Padmavati Mahila Visvavidyalayam
(Women's University)

2. INTELLECTUAL PROPERTY RIGHTS

4. property
Tangible
property
Intangible property
Movable
property
Immovable
property
Intellectual
property
Intellectual capital
Human
Realtional
Structural
Cognitive
Conative
Affective

5. property
• common man refers property
to tangible
• Objects
• Eg: car, land , gold etc…
• But car is not a property.
• House is not a property.
• Property means The
entitlements which he/she is
having and these entitlements
are given by law.
• Simply Bundle of rights
protected by the legal system.

6. Real property Intellectual property
Can be protected by mere
posession
• It has taken 5000 years to
develop this concept and
understanding real property.
rights
rights
, Corresponding duty not to infringe legal rights of that
person.
Intellectual property
Can’t be protected by mere posession
• It’s a recent phenomenon
• In olden days one used to
express his wealth by no:of
acres of land he owned /he
holds
• But today the richness of
particular individual is intangible
• Eg: movies, video games etc...
Group of
people

7. • It has been developed by GOI
• knowledge repository of traditional knowledge -
ancient knowledge -ancient civilization
• medicinal plants and formulations used in indian
system of medicines
• objective : TKDL helps in preventing the wrongful
patenting of our traditional knowledge.
TKDL (TRADITIONAL KNOWLEDGE DIGITAL LIBRARY)

8. History of IPR
• Issue granted by us patent office
• On turmeric
• University of mississipi
• Implying that it was a new invention.
• But we Indians are using haldi since
times for its healing properties.
• Finally india won
• Then came a thought of introducing
TKDL

9. • WTO
• TRIPS
• Several legislations has been
passed for the protection of the
intellectual property rights
• These included
• Trade mark act, 1999
• Geographical indications act
• Designs act,2000
• Protection of palnt varieties and
farmers rights act, 2001.
• Copy right amendment act,
2012.
• Bio diversity act .
LEGISLATONS FOR PROTECTION OF IPR

10. INTELLECTUAL PROPERTY TYPES
industrial property
copyrights and related
rights
eg:( films )
protection of plant
varieties
traditional knowledge
patents
Trade marks
Industrial
design
Semiconducto
rLayout
design
Geographical
indications
Trade secrets
----product--- process -----utility
----service mark---collectie marks----certificate marks (eg:-Amul)
-----eg:- Dove shampoo design.
-----eg:- Tirupathi laddu
-----unique way (mc donalds, dominos pizza, KFC

11. Patent
Well, I have created a new thing
Now firstly what comes to mind is
How to protect my creation ?
Though i’ve heard of patent what it is exactly?
What is a patent ?
Whether I’ve any patent?
How to identify a potential patent
How to file a patent?
If you are thinking about all of these this is the best platform to learn

13. Patent definition and introduction
• Patent
• Granted by whom?
• To whom?
• For what?
• When right is conferred?
• On what condition
• Patent is an exclusive right.
• By the sovereign of the state.
• To the owner of the invention.
• To make sale, use and manufacture.
• Upon the complete disclosure of invention.
• Provided the invention satisfies certain
criteria stipulated by law for a limited
period.

14. Facts :patent is a repository of vital
information
almost as of now there are 100
million patents are there.
• Patent
• Rights – inventions.
• To prevent un authorised use of an invention.
• Within a particular territory.
• Limited time.
• Restricted by earlier patents(eg:- mobile) to use
technology onre has take permission of others although
patent is granted I am dependent on earlier patent.
• Negative right (as it is excluding others ).
In India rights will be granted by
the Indian patent office.
Territorial rights -(limited to india).
Before drafting a patent - go trough
search report if negative then one
can file a patent.
Life of a patent is of 20 years (after
20 years it will expire)
Why limit?
Considering the welfare of the
society.

15.  How a single patent can provide competitive advantage to build an organization?
 An inventor is very passionate about his domain invents with a very unique technique.
 But unaware of importance of his invention in IP point of view.
 No potential ip identification and publication of the invention & if that invention is released in
the public domain trough news paper / trough any other medium.
 There comes to an end.
 generally the rule is that if the invention comes into public domain we cannot patent it.
 Whaere as in usa there exists first to file rule i.e; if the invention goes into the public domain
within 1 year it has to be filed.

16. Patentability criteria
How to identify whether one’s invention is patentable?
Patent searching
and analytics
Patent drafting
and prosecution Litigation
Area where patent
analysts dig out - related
patents - from huge no:of
patent documents –
analyse it - based on the
objective of the activity.
Area- patent attorney /agent
draft the patent document &
take care of prosecution.
Here lawyers helps
the patent owners to
get their rights / to
enforce their rights.

17. Patent analytics process
Analysis may be presented in
Eg;-venn diagrams, technological trends, citation tree etc…
Raw data Patent analysts
Busines
s R&D
Informati
on
 Creative thinking and
problem solving
 Prevent duplication of
research
 R&D business
strategy
 Technology trends
 Prevent in
infringement litigation
 Bridge the technology
gap

18. • Criteria for an invention to be capable of patenting
• (legal requirements).
•
• novelty
• Non
obviousnes
s
• Industrial appilictaion
• An invention shall not
be considered new if it
forms part of a a prior
art.
• An invention involves an
inventive step if having regard
to the prior art, it is not obvious
to a aperson skilled in art at the
time of filing date or priority
date of appilication claiming the
invention.
•
• An invention that can be produced
and used in any industry shall be
industrially applicable .

19. What cannot be patented ?
• Frivolous
• For eg:- a medicine to make a human immortal or
a perpetual motion machine.
• An abstract theory or mathematical formula
• Eg:- the equation of relativity; newtons laws of
motion
• Anything available in nature
• Eg:- human genes
• Anything that goes against the laws of nature
public interest or morality
• Eg;-a deveice to assist burglars
• etc…….

20.  Novelty and non obviousness criteria is judge din the light of
the prior art.
 Prior art of a a patent application is publicly available
information in any form before the filing date of the patent
application. Prior art can be of two types.
 Patent prior art
 This includes all patent literature (patent applications, granted
patents and expired or discarded patents) published anywhere
in the world.
 Unpublished applications, which are not publicly available are
not considered prior art.
 Non patent prior art
 This includes any publicly available information, including
technical journals, websites, products, conferences etc..
 The information may exist inh freely available sources or in
commercial data bases.

21. Parts of the patent document
 Title
 Field of the invention
 Background
 Object of the invention
 Summary of the invention
 Drawings
 detailed description
 Claims
 Abstract
 Rules /guidelines
 Title: description of the invention
 As heading on first page of the
specification .
 500 charecters in length.

23.  Field of invention :-broad description of the area of the tech into which the patent falls
 Background of the invention : set forth the background of invention in 2 parts
 1. Field of the invention
 2. Description of the related art
 Object of the invention : aim of the invention highlights the technical problems associated with
the existing technology
 Summary of the invention : directed towards the invention and how it solves the problems
previously existent in the art.
 Drawings –venn diagrams, graphs, citataion trees a/c to the objective of the invention
 Detailed description : disclose the best method of performing invention (requires key aspects
not to be kept secret)
 Claims: define legal scope ,
 Must protect atleast an embodiment , claims must define technicalities and non commercial
advantages
 abstract : describe the invention in terms with the broadest claim
 150 words

24. Terminologies and codes used in patent document
Codes of an application.
Country code is the universal 2 letter.
Eg:- EP – Europe
CN – China.
US – United states etc..
WO – PCT international publication published by WIPO.
Document code :- A, B in order of application
Application
Granted patent
However codes may differ from country to country
For eg:- CN C – CN means Chinese patent system and C means granted patent
here.
These codes are applied a/c to widely accepted WIO standards
INID numbers (uniform in all patents).

25. Patent data base
1.Free
2.Paid
Check: www.ipindia.nic.in
We will get information about IP related
things here
Go to comprehensive e filing
Public search
Patent search/patent e-register/
application status
Published /granted
Think of any key words & search we will
get data bases .

27. • Wipo data base (Patent scope)
• Every year millions of new patents re published around the world
• Searching all these documents is complex .
• considering this
• As Spanish developer creates a revolutionary mobile user interface and wants to patent it in the
USA but he is weak in English
• An Australia engineer wants to check the prior art in china but he cant read Chinese
• Here in order to solve this
• They use patent scope developed by WIPO
• Patent scope finds patents and published patents in over 50 countries
• It accurately translate them into 18 languages using AI
• It makes chemical search easy and available online for free

29. categories of applicants
• Natural person
• Start up
• Small entity
• Large entities
JURISDICTION FOR FILING
patent office Territorial jurisdiction
Mumbai Maharastra, Gujarat, MP &goa
Daman diu, Dadra and Nagar haveli
Chennai AP, kerala, Tamilnadu& karnataka
pondicherry, Laccadive, Minicoy &
Andaman nicobar islands
New delhi Delhi, Harayana, Himachal pradesh, J&K Punjab, Rajasthan, UP
Chandigarh
Kolkata The rest of india

31. Patent types(USA)
We have none of
these in india
there are two types of patent in india
1. Product
2. Process
Types of patent applications filing in India
1. Ordinary.
2. Divisional.
3. Conventional.
4. International.
5. National phase.
6. Cognate.
7. Patent of addition.

33. • E-FILING PROCEDURE OF PATENT IN INDIA
• The indian patent office has introduced e-filing of patent services way
back in 2007 in order to ease the process of filing.
• Manual filing required submission of hard copies of all the required
documents to the appropriate authority.
• This proved to be a very complictaed process tht was very time
consuming.
• with the introduction of e-filing, the process became more user
friendly and relatively faster
• Though first introduced in the year 2007 e-filing has been made
compulsory as per patent (amendment) rules 2016.
• Therefore the indian patent office has increased an additional 10%
statutry fees for accepting manual filing for patents with effect from
16th may 2016.
• Today we delve into the process of indian patent e-filing.

37. www.ipindia.nic.in
what do we need before e-filing
1) class 2/3 digital signature.
2) internet exploer only it does not work with google
chrome.
login procedure with digital signature and filing of new
patent application
step-1: www.ipindia.nic.in

42. The comprehensive online
patent filing services has a
dual login facility. this
means that an applicant or
agent can login either
using the user ID and
password or thedigital
signature.

59. • After uploading the digitally signed patent application
hte auto calucalted payment must be made
• The stattus of the application can be checked
• The acknowledgemet will generate after receipt of the
payment.

61. Procedure for patent filing in India( explanation )
 filing application –provisional specification / complete specification
( this may be drafted by patent attorney /agent/himself).
He/she may file the specification in the respective patent office as per the jurisdiction.
 Applicant himself/herself can file in the patent office.
 He/she may take the help of patent agent/ attorney.
 On behalf of applicant others can submit document in the patent office.
 Document must be duly signed and cheque must be attatched with it(statutory fees).
 In india there are 4 patent offices every office has some jurisdiction.
 We can file it physically or trough online (www.ipindia.nic.in) if in c/o online there must be digital
sign of applicant.
 Requisit forms should be given.
 Publication
after 18 months patent will be published either it may(ps/cs).
What exactly is published ?
All bibiliographic information, abstract, no:of claims , no:of drawings.
Where it will be published?
Official gazette.
Where can we see – ip inida site( www.ipindia.nic.in )
Every Friday it will be updated.

62. If one wants to publish it before 18 months.
Statutory fee has to be paid.
Examination:
Request for examination in 48 months(time line) from prior date ( not automatic applicant
has to request).
 Applicant himself/herself can file in the patent office
 He/she may take the help of patent agent/ attorney.
 On behalf of applicant others can submit document in the patent office
 Document must be duly signed and cheque must be attatched with it(statutory fees).
 0(filed) - 18 months(published) - 48 months (for filing examination request)
 If applicant not followed the time lines he/she will lose patent & it will go to public
domain.
 As per work load of patent office the patent will be queued.
 It will be in queue for examination in due course and it will be allocated to the examiner
who is expert in that field.

63. Examiner do check the criteria that has to be followed
1. Novelty
2. Obviousness
3. Industrial application.
 He/she will also check a/c to other guidelines.
 Sec-3 of patent act guidelines.
 Sec-4 of patent act which is related to secrecy directions.
 And of earlier use of patented information (commercialisation).
 Clerical mistakes in the form.
 Drawings.
 All these will be noted.
 And then FER will be created.
FER: First Examination Report.
If wanted physically it will be dispatched trough postal order.
Applicant –should give reply to FER – within 6 months
Specified format will be there and then again have to file it trough
physical /online.

64. If examiner is satisfied with sufficient explanation of queries then examiner will accept the
invention.
If he/she want to know more about particular invention then the next step is hearing ( process
where applicant physically clarify the queries in a detailed manner (can do it in online also ).
As system is centralized FER can be given by any office . It is not necessary that to have it
from where we have filed.
After all there may exist three situations,
1.Patent (examiner-toally satisfied – cleared all queries-granted- proceed for advertisement
accordingly into gazette- go into publication.)
2.Patent  if there is any issue patent will not be granted.
3. Suppose if a patent document is with 10 claims,
Possibility is that if one can clarify 3 claims and are failed to clarify the remaining 7 claims
In this case examiner says that 3 claims will be accepted and remaining are not accepted (7
are not as paer guidelines-they will be rejected.)
This is called partial acceptance of patent.
Here one have to amend accordingly and resubmit patent application to examiner & then
review it & then he will accept it.
Finally it will be published in the official gazette.

65. Opposition system
In India it will be in 2 stages
Pre - grant
• Where patent not granted but published.
• After published –till grant.
• Any one can file the opposition.
• If opposition dismissed patent will be
granted.
• If opposition upheld –no patent granted.
Post grant
• Where the patent is already granted.
• Opposition has to be raised with in 1 year.
• Where persons are skilled in that particular
art can file the opposition.
• After 1 year no opposition.
Remedy : if any infringement occurs one may attract litigation.
One has to notify the person who is infringing.
If repeats /infringes after notifying him the law will comes into picture.