Patents and Design Act, 1970 (2) PDF / PPT

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Patents and Design Act, 1970

• A brief discussion on intellectual property rights (IPRs), which
includes industrial properties such as Patents, Trademarks,
Industrial designs, Geographical Indications, Trade secrets and
• Types of patents and procedure for filing of patents with
reference to drugs and pharmaceuticals in India 2
Intended Learning Outcomes

At the end of this lecture, the student will be able to:

•Explain the steps involved in filing of a patent

•Describe the details to be included in the specifications of

patent 3
Stages from filing to grant of a
patent 4
Filing of a patent
• For filing of a patent – understand the requirements of
• All the criteria must be fulfilled
• Missing any one of the criterion may make the patent
non- workable
• To ensure compliance, a thorough literature search
needs to be carried out using various patent databases
• When satisfied, a drafted patent application is to be
submitted to the patent offices concerned 5

P.I.S. Nagpur

Head Office

Branch DELHI


Filing of a patent
• An application consists of 5 forms

• Form 1, Form 2, Form3, Form 5 and Form


• Form 1, Form 2, Form3, Form 5 are to

submitted in duplicate along with the

prescribed fee to the patent office

• Form 18 is to be submitted 18 months

after the date of submission of patent

application 7
Filing of a patent

Form 1- details about

– applicant

– inventor

– title of invention

– particulars related to Patent Cooperation treaty (PCT)

-declaration by inventor 8
Filing of a patent

Form 2- is the “heart of patent application”

– detailed description of invention- with drawings and

examples 9
1. Title
2. Technical field
3. Abstract
4. Background and prior act
5. Claims
6. Current problems/drawbacks/gap
7. Detailed description
8. Drawings
9. Experiments/trials/examples (including tabular column, if
10. Solutions to problem/improvement
11. Summary of invention 10
Form 3- Filing of a patent
– statement and undertaking by the applicant
– disclose information regarding corresponding applications
filed in other countries.
– Form 3 (u/s 8): information regarding corresponding
applications at the time of filing the Indian application or
within 6 months from the date of filing the application in India.
– Keep the Controller of Patents informed of every other
application filed outside India subsequent to the filing of the
Indian application
-Furnish details regarding the prosecution of corresponding
applications in other countries, if the Controller so requires 11
Filing of a patent

Form 5-

– declaration of the inventor claiming for


– Fees: 1000 for individuals/ 4000 for

corporates and organizations 12
Form 4-
PURPOSE: For request for extension of time to:
1. pay renewal fees [u/s 53(2), 142(4) & rule 80(1A)];
2. to file Form 5 [rule 13(6)]
3. Application for review of decisions or setting aside of orders
of the Controller [rule 130]
• FEES: 300/1200 – per month of time

• To be filled in with all the details and requisite fees and
executed and filed in hard copy before the CoP in the IPO of
appropriate jurisdiction. 13
Form 13- CHANGES

PURPOSE: On application for amendment of application for
patent/CS/other related documents u/s 57.
FEES: before grant: 500/1,000
after grant: 1,000/4,000
for change of name/address/nationality/address for
service: 200/800.
To be filed in with all the details and requisite fees and executed
and filed in hard copy before the CoP in the IPO of
appropriate jurisdiction. 14
Filing of Patent Application
➢ On submission of the application form, a receipt bearing
the application number and date of filing will be issued by
the patent office
➢ In case sufficient information relating to the work is not
availabe, a Provisional Patent application may be filed in
the same format along with the fees
➢ After generating data- a complete application may be filed
➢ Provisional Specification
– To establish PRIORITY DATE / establish early ownership
– To pre-empt others
➢ Complete Specification
– To be filed within 12 months of filing of Provisional
Filing of Patent Application
➢ After filing the patent , publication and the process of
examination will start
➢ The application will be sent to an expert in the particular
field of invention
➢ The expert verifies the claim of the application and gives
his/her opinion in writing to the patent office
➢ Any clarifications raised by the expert needs to be justified
by the applicant
➢ If the replies are satisfactory, patent will be granted
➢ The patent will be valid for 20 years
➢ Normally it takes 2-3 years to get a patent in India
Renewal Fee
• To be paid within 3+6 months from date of recording in the
• No fee for 1st and 2nd year
• Renewal fee, on yearly basis, is required to be paid for 3rd to
20th for keeping the patent in force
• Delay upto six months from due date permissible on payment
of fee for extension of time
• Patent lapses if renewal fee is not paid within the prescribed
period 17
Patent of
• An inventor who makes an improvement in the invention
that was not disclosed in the original patent is entitled to file
Patent of Addition
• This is applicable only after the grant of the main patent 18

• Application is kept secret for a period of 18 months from the
date of filing
• In 19th month, the application is published in the official
journal – this journal is made available on the website weekly
• Applicant has an option to get his application published
before 18 months also
• In that case, application is published within one month of the
request 19
Form 18- Request for Examination (RFE)

• The application shall be taken up for examination only when

a request for the examination has been filed using Form 18.
• The request can be made by either the applicant or by any
other interested person.
• (RFE) can be filed by either the applicant or by interested
person within a period of 48 months from the date of
priority or date of filing, whichever is earlier.
• The application is deemed to have been withdrawn on the
non-submission of request for examination within the
prescribed period
• Fee: 2500 for individuals/ 10,000 for corporates and
organizations 20

• Application is sent to an Examiner within 1 month from the
date of request for examination
• Examiner undertakes examination w.r.t.
– whether the claimed invention is not prohibited for grant of
– whether the invention meets the criteria of patentability 21
• A period of 1 to 3 months is available to Examiner to submit

the report to the Controller

• 1 month’s time available to Controller to vet the Examiner’s


• First Examination Report (FER) containing gist of the

objections is issued within 6 months from the date of filing of

request 22
Response from the Applicant

• 12 months’ time, from the date of issue of FER, is available to
the applicant to meet the objections

• If objections are met, grant of patent is approved by the
Controller – within a period of 1 month 23
Pre-grant Opposition

• After publication, an opposition can be filed within a period of
6 months

• Opportunity of hearing the opponent is also available 24
Examination of Pre-grant Opposition

• Opposition (documents) is sent to the applicant


• A period of 3 months is
allowed for receipt of response 25
Consideration of
Pre-grant Opposition
• After examining the opposition and the submissions made
during the hearing, Controller may
– Either reject the opposition and grant the patent
– Or accept the opposition and modify/reject the patent
• This is to be done within a period of 1 month from the date of
completion of opposition proceedings 26
Grant of a Patent

• A certificate of patent is issued within 7 days

• Grant of patent is published in the official journal 27 28 29
International Patents

• PCT permits easy exchange of technical information between
various countries
• If an inventor does not wish for filing a patent in multiple
countries and is interested in filing in only 1 or 2 countries, he
can do so by filing the patent individually 30
International Patents
• Patents are valid only in the country where they are filed and
not anywhere else
• So it can be freely copied by others in various parts of the
world without any binding or permission from the original
• To avoid this, an international patent application should be
• Inventor can make use of PCT (Patent cooperation Treaty) to
protect the patent rights in multiple countries
• PCT introduced the concept of single international application
for an invention that is valid in PCT member countries(146
members) 31
1. The patent is filed at the earliest as provisional

2. Provisional Specification is given to
– To establish PRIORITY DATE / establish early ownership
– To pre-empt others
3. Complete Specification is to be filed within 12 months of
filing of Provisional Application
4. The steps involved are Filing of patent applictaion, formality
check, request for examination, examination, Issue of first
examination report, pre grant oppposition, examination of 32
pre grant opposition and grant of patent
Thank You