Project Report on IPR

Procedure for filing

Patent Registration under
The Patents Act, 1970

SUBMITTED TO:

Ms. Kritika

Lecturer

SUBMITTED BY:

Shreya Jindal

157/13

B.Com LL.B.(Hons)

10th Semester

Section C

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Table of Contents
Acknowledgment..................................................................................................................................................... 1
The Application........................................................................................................................................................ 3
Ordinary Application...................................................................................................................3
International/PCT Application....................................................................................................4
Convention Application..............................................................................................................5
Application for Addition..............................................................................................................6
Divisional Application.................................................................................................................6
Specification...............................................................................................................................7
Claims.........................................................................................................................................8
Disclosure Requirements............................................................................................................9

Acknowledgment

The making of this project involves efforts of many and I am grateful to all of them.
Firstly I would like to thank our respected teacher Ms. Supreet Gill for all her cooperation
and support. Without her efforts, clarity in the concept of the presented topic would not
have been possible. Next I would like to thank our library staff for their cooperation and
for enabling quick access to the books Also I am grateful to my parents for providing me
with all the facilities and sources for the making of the project.

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The Application

Filing an application is typically the first step towards procuring a patent in India.
Indian practice follows the single inventive concept meaning that one application
should be filed for each invention or inventive concept. A process and product for
manufacturing that product is considered as one invention. However subsequent
methods of using the product are treated as a separate invention.

The true and first inventor1, his or her assignee2 and/or legal representative3 of any
deceased person who immediately before his or her death was entitled to make such
application can make the application for grant of patent for an invention in India. 4 In
the U.S. only individuals are eligible for filing an application, whereas the Courts in
India have confirmed that a firm can apply for a patent as an assignee.5

Ordinary Application
An application for patent without any claim for priority made under any convention
and without reference to any other application is referred to as an ordinary
application. Every ordinary application is required to be filed in duplicate6 in Form –1
7
(Appendix I) with the concerned Patent Office. 8 The territorial jurisdiction of the
Patent Office is based upon whether any of the following falls within the territory of
that Patent Office:

a. Place of residence, domicile or business of the applicant (or of the first

mentioned applicant in case of joint applicants); Place from where the
invention actually originated; or
b. Place from where the invention actually originated; or
1
See Patents Act, 1970 § 2(1) (y) “true and first inventor” does not include either the first importer
of an invention into India, or person to whom an invention is first communicated from outside India.
2
See Patents Act, 1970 (id.) § 2(1) (ab) “assignee” includes an assignee of the assignee and the
legal representative of the deceased assignee and reference to the assignee of any person include
references to the assignee of the legal representative or assignee of that person.
3
See Patents Act, 1970 (id.) § 2 (1) (k) “legal representative” means a person who in law represents
the estate of a deceased person.
4
See Patents Act, 1970 (id.) § 6
5
Shinning Industries v. Shri Krishna Industries, AIR 1975 All. 231
6
See Draft MOPP ( 10)
7
See the Patent Rules, 2003 .
8
There are four patent offices, Mumbai, Delhi, Chennai and Kolkata, which is the Head Office.

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 c. Address for service in India as given in the application when the applicant has
no place of residence, domicile or business in India.9

Every application is required to specify that the applicant is in possession of the

invention and shall also state the name and address of the first and true inventor 10. A
patent application must be accompanied by the following documents.

(a) Provisional or Complete Specification in Form 2 (Appendix II) and

drawings if any11;
(b) Statement and Undertaking regarding foreign filing details in respect of the
same or substantially same invention in Form 312 (Appendix III) ;

(c) Declaration as to inventor ship in Form 5 (Appendix IV) (in case

application is filed with the complete specification)13;

(d) Priority document (in case of convention application)14;

(e) Power of Attorney, if application is made through a patent agent15; and

Proof of right if the application is made by the assignee. 16 Proof of right can be filed
by way of separate assignment deed or by incorporating in the body of the application
by endorsement in Form 1. (See Appendix I) In case the legal representative makes
application, “death certificate” of the deceased would be treated as the proof of right.
The fee for filing the application (Rs. 1000/- for natural person and Rs. 4000/- for
other than natural person) can be paid within one month of filing 17 and the aforesaid
proof of right can be filed within three months of the application. Further, the cost is
also depended on the number of claims, priority dates and the number of pages of the
complete specification.

International/PCT Application
An international application filed in accordance with the Patent Cooperation Treaty
(PCT)18 is known as a PCT International application. A PCT international application

9
See Rule 5 of the Patent Rules, 2003
10
See the Patents Act, 1970 § 7 (3)
11
See Rule 13 &15 of the Patent Rules, 2003
12
See § 8(1) of the Patents Act, 1970 and Rule 12 of the Patent Rules, 2003 (id.)
13
See Rule 13(6) of the Patent Rules, 2003 (id.)
14
See § 138 e Patents Act, 1970 .
15
See Rule 135(1) of the Patent Rules, 2003
16
See Draft MOPP ( 10)
17
See Rule 7 (2) Patent Rules, 2003
18
See § 2(1)(ia) Patents Act, 1970 .

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designating India, if filed with the Controller of Patents in India within 31 months
from its international date of filing, is referred as a PCT National Phase application
and is treated as if the application were filed under the Act. 19 The filing date of the
national phase application shall be the international filing date accorded under the
PCT. Every PCT national phase application shall be accompanied by a complete
specification. The title, description, drawings, abstract and claims filed with the
application are treated as the complete specification by the Patent Office. 20 The time
limit prescribed for entering into the national phase is thirty-one months from the
priority date,21 but an application could be examined or processed at any time before
this time limit if an express request to the Patent Office is made. Usually, the Patent
Office commences the processing and examination of the application only after the
thirty-one month period has lapsed. Unlike U.S. and certain other countries, national
phase entry cannot be postponed and the non-compliance of the requirements would
cause the application to be treated as abandoned.22

Convention Application
A convention country is any country which is a signatory or a party to an international
or bi-lateral treaty or convention or arrangement to which India is a signatory or party
whereby privileges granted to their citizens are likewise granted to Indian citizens. 23
In order to claim convention status, an applicant should file the application in the
Indian Patent Office within a period of twelve months from the date of filing a similar
application in the convention country.24 The applicant will not be entitled to any
benefit of provisions as no retrospective effect can be claimed for an application filed
in a country before declaring it as a convention country.25 The convention application
should include:

(a) A complete specification;

(b) Specify the date and the convention country in which the application was
made; and
(c) State that no application for protection in respect of that invention has
been made in a convention country before that date.26

19
See § 7(1A) Patents Act, 1970 (id.)
20
See § 10 (4A) of the Patents Act, 1970 (id.)
21
See Rule 20 (4) (i) of the Patent Rules, 2003 .
22
See Rule 22 of the Patent Rules, 2003 (id.)
23
§ 2 (d) read with § 133 Patents Act, 1970
24
§ 135 Patents Act, 1970
25
Daniel AC Officine Meccaniche SPA v. Controller of Patents and Designs 2000 PTC 219 (DB)
26
The Patent Rules, 2003 Rule 136

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If two or more applications have been made with respect of inventions in more than
one convention country, and the inventions are related to constitute one invention, one
application may be made within a period of twelve months from the date on which the
earlier or earliest of such applications was made. 27 If any of the documents filed are in
a foreign language, the Controller may request the translation of the document
verified by affidavit or otherwise to his satisfaction.28

Application for Addition

A Patent of Addition enables the applicant to apply for an improvement or
modifications made on the invention disclosed in the complete specification. 29 The
improvement must be something more than a mere workshop improvement. 30 The
term for a Patent of Addition shall not exceed the term of a regular patent 31, and shall
not be granted prior to the date of grant of a patent for the main invention. 32 A Patent
of Addition cannot be questioned on the ground that the invention ought to have been
the subject of an independent patent.33 The complete specification for a Patent of
Addition shall include specific reference to the number of the main patent or the
application number of the main patent as the case may be. The applicant for a Patent
of Addition must also make a statement to the effect that the invention comprises an
improvement in or a modification of the invention claimed in the specification of the
main patent granted or applied for.

Divisional Application
A divisional application is an application divided out of parent application. A
divisional application is preferred when the applicant claims more than one invention
and the law does not permit multiple patents in one invention. Applicants, at their own
request, before the grant of patent, divide the application and file two or more
applications as desired for the invention. The main objective of the divisional
application is to meet the official objections raised by the Controller on the question

27
§ 137 (1) Patents Act, 1970
28
See § 138 (2) Patents Act, 1970 (id.)
29
See § 54 (1) Patents Act, 1970 (id.)
30
Biswanath Prasad Radhey Shyam v. Hindusthan Metal Industries, AIR 1982 SC 144
31
§ 55 Patent Act, 1970
32
See § 54 (4) Patents Act, 1970 (id.)
33
See § 56 (1) Patents Act, 1970 (id.)

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of an application disclosing more than one invention. 34 It is not clear as to whether the
applicant may file a divisional from another divisional while maintaining the priority
claim to the original application. The complete specification for a divisional
application should not include any matter not disclosed in the complete specification
of the first application.

Specification
A Specification is should accompany an application for patent. 35 A patent
specification is a technical and legal document susceptible to interpretation by court
of law.36 The main function of a specification is to convey to the public what the
patentee considers to be invention.37 The specification shall be filed in Form 2 38 and
the Act facilitates the filing of provisional specification and awards a time span of
twelve months to file complete specification.39 (See Appendix II for Form 2)

1.6.1 Provisional Specification

The main objective of filing a provision specification is to obtain priority over any
other person who is likely to apply for the same invention developed concurrently in
any other part of the world. 40 A provisional specification shall contain a description of
the invention along with a title and is not replaced by the complete specification but is
regarded as an independent document.41 A complete specification, not being a
convention or PCT application, can be converted into a provisional application within
twelve months from the date of filing of the application by the Controller upon
request of the applicant.

1.6.2 Complete Specification

The main objective of complete specification is that it should enable a person skilled
in the art to make the invention. The Manual on Patent Procedures, 2005 specifies that
a complete specification should contain:
1. Title
34
See § 16 Patents Act, 1970 (id.)
35
See Draft MOPP (10)
36
See Narayanan (9) at 74
37
ELIZABETH VERKEY, LAW OF PATENTS 242 (5th ed., Eastern Book Company, 2005)
38
The Patent Rules, 2003 .
39
§ 9 Patents Act, 1970
40
See Draft MOPP (10) at 28
41
See Draft MOPP (id.) at 32

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 2. Field of Invention

3. State of art in the field

4. Object of invention

5. Statement of Invention

6. Detailed description of the invention with reference to the drawings

7. Scope and ambit of the invention

8. Claims, and

9. Abstract42

The specification must sufficiently and fairly describe the invention in a manner that
allows one of skill in the art to practice the invention. A specification that fails to do
so may render the patent invalid and may provide grounds for revoking the patent 43
The applicant has a duty to state things clearly and the language used in describing an
invention depends upon the class of persons skilled in the art who may act upon and
reply upon the specification.44

The original filed specification must be complete because the statute prohibits
amending the specification if it would lead to extension of the claims. 45 If an
amendment to the specification is made and admitted, then it is construed as part of
the full specification.46

Claims
If the objective of the specification is to convey to the public what the invention is,
the primary purpose of the claims is to state the extent of monopoly that the patentee
is seeking. A claim is a statement of technical facts expressed in legal terms by
defining the scope of the invention sought to be protected. The specification is usually

42
See Draft MOPP (10) at 33-36
43
The Patents Act, 1970 § 64 (1) (h) Patents Act, 1970
44
Press Metal Corp.Ltd v. Noshir Sarabji, AIR 1983 Bom. 144
45
§ 59 (1) Patents Act, 1970
46
§ 59 (2) (a) Patents Act, 1970 (id.)

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followed by claims which should be succinct and clear and must relate to one
invention.47 What is not claimed in the claims will be regarded as being disclaimed. 48
Though there are no statutory limitations with regard to the number of claims, the
claims in excess of ten are subject to additional fees. 49 The principal claim or the first
claim essentially defines the novel features of the invention whereas the optional
features may be claimed through subsidiary claims. The subsidiary claims may
include independent or dependent claims and each claim is evaluated on its own
merit. 50

Disclosure Requirements

1.8.1 Duty to Disclose

A patent applicant in India has the duty to disclose information regarding
corresponding applications filed in other countries. At the time of filing a patent
application in India, the applicant must file a Form 3 (Appendix III) under Section 8
of the Patents Act, 1970 dealing with the duty of the applicant to disclose the
information.

The Applicant has the following obligations under Section 8:

(1) File Form 3 with 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. This applies to PCT National Phase Applications as well;
(2) Undertake to keep the Controller of Patents informed of every other
application filed outside India subsequent to the filing of the Indian
application; and
(3) At any time during the prosecution of the application in India, if the Controller
of Patents (read Examiner) requires, furnish details regarding the prosecution
of corresponding applications in other countries.
The second and the third obligations are the trickiest and most difficult to comply
with. In the event an applicant to fails to comply with these obligations, it can be a

47
§ 10 (5) Patents Act, 1970
48
See Draft MOPP (12) at 38
49
See FIRST SHEDULE of the Patent Rules, 2003.
50
See Draft MOPP (10) at 38

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ground for opposition under Section 25 (h) of the Patents Act, 1970.

Often Examiners ask applicants to submit the search and examination reports
of corresponding foreign applications. This can become an onerous task if the
applicant has filed patent applications in numerous countries.

1.8.2 Foreign Filing License

A foreign filing license must be obtained from the Patent Controller if an
Indian resident makes or even causes to make a foreign patent application without
filing a corresponding Indian patent application 6 weeks prior to filing the foreign
application51. This provision does not apply to a patent application filed outside India
by a person not resident in India.
The implication of the provisions on foreign filing licenses, which as per the
Indian patents law is referred to as a ‘written permit’, is that when a first filing of a
patent application is effected outside India by an assignee company resident in India
or with inventors resident in India, a foreign filing license must be obtained. The
expressions ‘resident in India’ and ‘makes or causes to be made’ make this provision
extend to applications naming inventors resident in India. In practically terms, the
Patent Office will make a determination of this based on the nationality of the
inventors as well as the permanent residential address of the inventor as shown in the
patent application. An assignee will be considered as resident in India if the applicant
company has a registered office in India or a place of business.
The Controller issues a ‘written permit’ within 3 months from the date of
filing Form 25. (Appendix V). However, in the past the Patent Office has issued the
permit as soon as within 48 hours of making a request.
The liabilities and penalties for not complying with the foreign filing license
include:
(a) Refusing to grant a patent in India for the same invention (the invention in
respect of which a foreign application was made without a foreign filing
license or without filing a corresponding application 6 weeks prior to the filing
of the foreign application)52;

51
§ 39 Patents Act, 1970

52
§ 40 Patents Act, 1970 (id.)

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 (b) Fine53 \;and/or

(c) Imprisonment up to 2 years54

53
§ 118 Patent Act, 1970 (id.)
54
See Patents Act, 1970 (id.)

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