Government of India

Ministry of Commerce & Industry

Department of Industrial Policy and Promotion

BASICS OF IPR AND PATENT

FILING

RAM JAWAHAR M
Deputy Controller of Patents & Designs
The Patent Office, Chennai
 OUTLINE OF THE PRESENTATION

1. FILING OF PATENT APPLICATION

2. PROCESSING OF PATENT APPLICATION

3. OPPORTUNITIES/CAREER IN PATENT/IPR FIELD

4. SOURCES OF INFORMATION
 TYPES OF PATENT APPLICATIONS

1. ORDINARY APPLICATION (Sec. 9 & 10)

2. CONVENTION APPLICATION (S.135)
3. PCT- NATIONAL PHASE APPLICATION (S.135 & R.20)
4. PATENT OF ADDITION (S.54)
5. DIVISIONAL APPLICATION (S.16)

MA
 WHO CAN FILE (S.6 & 134)

Either alone or jointly:

 By any person claiming to be true and first inventor (s)

 By any person being the assignee of person claiming to
be true and first inventor (s)
 By the legal representative of any deceased person who
can immediately before his death is entitled to make such
application

MA
 FILING REQUIREMENTS

 FORM-1: APPLICATION FORM

 FORM-2: PROVISIONAL OR COMPLETE SPECIFICATION
 FORM-3: STATEMENT OF FOREIGN FILING
 FORM-18: REQUEST FOR EXAMINATION
 FORM-5: DECLARATION AS TO INVENTORSHIP (IF REQ.)
 FORM-9: REQUEST FOR EARLY PUBLICATION (IF REQ.)
 FORM-26: POWER OF ATTORNEY ON STAMP PAPER(IF REQ.)
 PROOF OF RIGHT TO APPLY (PARAGRAPH 9 OF FORM 1)
 CERTIFIED COPY OF CONVENTION APPLICATION, IF REQ.
 OTHER DOCUMENTS IF REQUIRED
 FORM-4: REQUEST FOR EXTENSION OF TIME
 FORM-6: CHANGE IN APPLICANT
 FORM-7: NOTICE OF OPPOSITION (POST GRANT)
 FORM-8: MENTIONING THE NAME OF THE INVENTOR
 FORM-10: AMENDMENT OF PATENT (GRANTED TO DECEASED)
 FORM-13: AMENDMENT OF THE APPLICATION/SPECIFICATION

 FORM-15: RESTORATION OF PATENT

 FORM-22: REGISTRATION OF PATENT AGENT
 FORM-25: PERMISSION FOR MAKING PATENT APPLICATION
OUTSIDE INDIA
 FORM 1 (FOR OFFICE USE ONLY)
THE PATENTS ACT 1970 Application No.:
(39 OF 1970) Filing Date:
& Amount of Fee Paid:
The Patents Rules, 2003 CBR No.:
APPLICATION FOR GRANT OF PATENT Signature:
(See section 7,54 & 135 and rule 20 (1))
1. APPLICANT
Name Nationality Address
2. INVENTOR ( S )
Name Nationality Address
3. TITLE OF THE INVENTION
Telephone No. :
4. ADDRESS FOR CORRESPONDENCE OF APPLICANT / AUTHORIZED PATENT Fax No.
AGENT IN INDIA Mobile No.
E-mail :

5. PRIORITY PARTICULARS OF THE APPLICATION (S) FILED IN CONVENTION COUNTRY

Country Application Number Filing Date Name of the Applicant Title of the Invention
6. PARTICULARS FOR FILING PATENT COOPERATION TREATY (PCT) NATIONAL PHASE
9. DECLARATIONS :
(i) Declaration by the Inventor (s)
We, the above named inventor(s) are the true & first inventor(s) for this invention and declare that the applicant(s) herein is our assignee.
(a) Date
(b) Signature (s)
(c) Name(s)
(ii) Declaration by the applicant (s) in the convention country
I/We, the applicant(s) in the convention country declare that the applicant(s) herein is our assignee
(a) Date
(b) Signature (s) N.A.
(c) Name(s) of the signatory MA
(iii) Declaration by the applicant (s): Form-1 Contd...
I/We, the applicant(s) hereby declare(s) that:
o We are in possession of the above – mentioned invention.
o The provisional/complete specification relating to the invention is filed with this application.
o The invention as disclosed in the specification uses the biological material from India and the necessary permission from the competent authority shall
be submitted by me/us before the grant of patent to me/us.
o There is no lawful ground of objection to the grant of the Patent to me/us.
o I am/We are the assignee or legal representative of true & first inventors.
o The application or each of the applications, particulars of which are given in Para – 5 was first application in convention country/countries in respect of
my/our invention.
o I/We claim the priority from the above mentioned application(s) filed in convention country/countries and state that no application for protection in
respect of the invention had been made in a convention country before that date by me/us or by any person from which I/We derive the title.
o My/our application in India is based on international application under Patent Cooperation Treaty (PCT) as mentioned in Para – 6.
o The application is divided out of my/our application particulars of which are given in Para – 7 and pray that this application may be treated as deemed
to have been filed on ____________ under sec. 16 of the Act.
o The said invention is an improvement in or modification of the invention particulars of which are given in Para – 8
10. Following are the attachments with the application:
(a) Complete specification.
(b) Complete specification (in conformation with the international application) / as amended before the International Preliminary Examination Authority
(IPEA), as applicable (2 copies ). No. of pages No. of claims
(c) Drawings (in conformation with the international application) / as amended before the International Preliminary Examination Authority (IPEA), as
applicable (2 copies). No. of sheets
(a)Priority documents
(b)Translation of priority document / specification/ International Search Report
(c)Statement and undertaking on Form 3
(d)Power of Authority
(e)Declaration of inventorship on Form 5
(f)Sequence listing in electronic form (floppy disc)
(g)………………………………
Fee Rs. ………………………in Cash/Cheque/Bank Draft bearing no. ………………..
Date ………. On ……….. Bank.
I/We hereby declare that to the best of my/our knowledge, information and belief the fact and matters stated herein are correct and I/We request that a
patent may be granted to me/us for the said invention.
Dated this day of September 2005.
Signature :-
Name :
 FORM 2
THE PATENTS ACT, 1970
(39 of 1970)
PROVISIONAL / COMPLETE SPECIFICATION
(See section 10 and rule 13)

1. TITLE OF THE INVENTION

2. APPLICANT(S)
(a)NAME
(b)NATIONALITY
(c)ADDRESS

3. PREAMBLE TO THE DESCRITION

PROVISIONAL COMPLETE
The following specification describes invention The following specification particularly describes the invention and the manner in
which it is to be performed

4. DESCRIPTION (Description shall start from next page)

5. CLAIMS (not applicable for provisional specification. Claims should start with the preamble – “I/We claim” on separate page)

6. DATE AND SIGNATURE ( to be given on the last page of specification)

7. ABSTRACT OF THE INVENTION (to be given along with complete specification on the separate page)
 PATENT SPECIFICATION [FORM 2]

 1. PROVISIONAL SPECIFICATION

 2. COMPLETE SPECIFICATION
 1. PROVISIONAL SPECIFICATION

 It should describe the nature of invention & contain the

description of essential features of the invention.

 No need to include claims & details of the manner in which it

to be performed
 ADVANTAGES OF PROVISIONAL SPECIFICATION
 PRIORITY FOR INVENTION
 NO RISK OF LOOSING PRIORITY
 LIBERTY TO DEVELOP
 DISCLOSE TO INTERESTED PERSON TO OBTAIN FINANCIAL SUPPORT
 VIRTUALLY EXTEND THE TERM
 UTILIZE FOR EXPLORING COMMERCIAL FEASIBILITY
 AVOID INCURRING FURTHER EXPENSES, IF NO COMMERCIAL POSSIBILITY
 2. COMPLETE SPECIFICATION

 TITLE OF INVENTION
 FIELD OF INVENTION
 BACKGROUND OF INVENTION (PRIOR ART)
 ADVANTAGES AND/OR USES OF THE INVENTION
 OBJECT OF INVENTION
 STATEMENT OF INVENTION
 DETAILED DESCRIPTION WITH DRAWINGS/EXAMPLES, IF ANY
 CLAIMS
 ABSTRACT
 COMPLETE SPECIFICATION [S.10]

 FULLY AND PARTICULARLY DESCRIBE THE

INVENTION

 DISCLOSE THE BEST METHOD

 IF BIOLOGICAL MATERIAL :
- Deposit in IDA under The BUDAPEST TREATY

- Disclose the source and geographical origin

[If India then get permission from NBA]

 END WITH ONE OR MORE CLAIMS

 FORM 3
THE PATENT ACT, 1970
( 39 OF 1970 )
&
The Patents Rules, 2003
STATEMENT AND UNDERTAKING UNDER SECTION 8
( See section 8, rule 12 )
We hereby declare
(i) that /We who have made this application No. Dated alone, made for the same/substantially same invention, application(s)
for patent in the other countries, the particulars of which are given below :
Name of the country Date of Application Application No. Status of the Date of publication Date of grant
application
Not Applicable

(iii) that the rights in the application(s) have been assigned to us and that We undertake that upto the date of grant of the patent, by the
Controller. We would keep him informed in writing the details regarding corresponding applications for patents filed outside India within three
months from the date of filing of such application.
Dated this day of September 2005
For Signature

To,
The Controller of Patent
The Patent Office, Mumbai
 FORM 5
THE PATENT ACT, 1970
( 39 OF 1970 )
&
The Patents Rules, 2003
DECLARATION AS TO INVENTORSHIP
[See section 10(6) and rule 13(6)]
1. NAME OF APPLICANT (S)

hereby declare that the true and first inventor(s) of the invention disclosed in the complete specification filed in pursuance of my
/ our application numbered filed on are
2. INVENTOR (S)
a.Name:
b.Address:
c.C. Nationality:
Dated this
Signature :-

3. DECLARATION TO BE GIVEN WHEN THE APPLICATION IN INDIA IS FILED BY THE APPLICANT (S) IN THE
CONVENTION COUNTRY:-
Dated this 19th day of April 2005.
Signature :-

To,
The Controller of Patent
The Patent Office, at Mumbai
 JURISDICTION FOR FILING (RULE 4)

Patent Office Territorial Jurisdiction

Mumbai -Maharashtra, Gujarat, Madhya Pradesh & Goa.
-Daman & Diu, Dadra & Nagar Haveli

Chennai -Andhra Pradesh, Kerala, Tamil Nadu &

Karnataka.
-Pondicherry, Laccadive, Minicoy and Aminidivi
Islands.

New Delhi -Delhi, Haryana, Himachal Pradesh,

Jammu & Kashmir, Punjab, Rajasthan &
Uttar Pradesh
-Chandigarh
Kolkata The Rest of India.
2. PROCESSING OF PATENT APPLICATION
PATENT APPLICATION PROCESSING

FILING OF PATENT APPLICATION

EARLY
1. PUBLICATION
18 MONTH

3. PRE GRANT OPPOSITION

2. EXAMINATION

GRANT/REFUSE OF PATENT
& PUBLICATION

3. POST GRANT OPPOSITION

 PATENT OFFICE INTERNAL STRUCTURE

PATENT OFFICE

RECS RMID GPM E&G

1. Chemistry & 2. Biotech, 3. Electrical, 4. Mechanical,

Allied Sciences Biochem, Electronics & Engineering &
Microbiology & Related Subjects Other Subjects
Allied Subjects

RECS- Receipt, EDP, Classification & Screening Section

RMID- Record Management and Information Dissemination Section
GPM - General Patent Matters section
E & G- Examination and Grant Section
 1. PUBLICATION (S. 11A)
 SCREENING OF APPLICATIONS
• SUBJECT
• IPC
• SECRECY RELATED (S.35)

A. EARLY PUBLICATION (IF F-9)

B. 18 MONTH PUBLICATION

 OFFICIAL JOURNAL OF THE PATENT OFFICE

 EVERY FRIDAY
 www.ipindia.nic.in
 2. EXAMINATION

 REQUEST FOR EXAMINATION (S.11B)

 CONTROLLER REFER TO EXAMINER (S.12)
 PRIOR ART SEARCH (S.13)
• PRIOR CLAIMING
• PRIOR PUBLICATION
 SUBSTANTIVE EXAMINATION
 FIRST EXAMINATION REPORT
 SUBSEQUENT EXAMINATION REPORT IF REQ.
 HEARING IF REQ.
 3. OPPOSITION PROCEEDINGS
A. PREGRANT OPPOSITION
S.25(1):

 UP TO THE GRANT
 BY ANY PERSON
 GROUND (A) TO (K)

PROCEDURE:
 NO SP. FORM REQUIRED
 RULE 55 - FORWARD TO THE APPLICANT
- REPLY WITHIN 3 MONTHS
 HEARING IF REQUESTED
 B. POST GRANT OPPOSITION

S.25(2):
 UP TO 1 YEAR FROM GRANT PUBLICATION
 BY ANY PERSON INTERESTED
 NOTICE ON FORM-7
 GROUNDS- (a) TO (k)
 POST GRANT OPPOSITION CONTD…

PROCEDURE:
S. 25(3)
• NOTICE TO APPLICANT
• CONSTITUTION OF OPPOSITION BOARD (RULE 56)
 3 Members- One Is Chairman
• FILING OF WRITTEN STATEMENT OF OPPOSITION AND EVIDENCE
(RULE 57)
• FILING OF REPLY STATEMENT AND EVIDENCE (RULE 58)- 2
M
• FILING OF REPLY EVIDENCE BY OPPONENT (RULE 59)- 1 M
 POST GRANT OPPOSITION CONTD…

S. 25(4)
 HEARING
- MAINTAIN (ORIGINAL OR AMENDED)
- REVOKE
S.25(5)
 FOR GROUNDS (D) OR (E) – CONTROLLER SHALL NO TAKE
ACCOUNT ANY PERSONAL DOCUMENT OR SECRET TRIAL
OR SECRET USE
S.25(6)
 AMENDMENTS STAND ACCORDINGLY
 TIMELINES
ACTIVITY TIMELINE
1. FILING APPL.with
[Comp.+Req for Early Publ.
CL.10a(2)/S.11A(2);R 24A]
2. PUBLICATION
3.
[S. 11A(1); R. 24]
REQUEST FOR EXAM
18M
1M
[S. 11(B)(1); R 24B(1)(i)]
4. REFERRING TO EXAMINER
Exam.
[ S.12(2)&
& Communication
14; R 24 B(2)(ii)] (FER) 8M
5. MEETING THE REQUIREMENT [MIN.]
BY APPLICANT [S. 21(1); R. 24B(4)(i)&(ii)]
6. THIRD PARTY OPP. BY REPRESENTATION
3M
AND DISPOSAL [S. 25(1); R.55(1)-(6)]
7. GRANT OF PATENT & NOTIFICATION 6M
[Cl.33/S.43(1)&(2)]
27M
12M Normal

1M

PRESUMPTIONS
1. APPLICATION IS FILED WITH COMPL. SPECN. AND EARLY PUBL. REQUEST [F-9].
2. PATENT OFFICE PUBLICATION PROCESS IS COMPUTERISED TO PUBLISH WITHIN 1 MONTH.
3. APPLICANT IS DILIGENT TO FILE F-19 AS WELL AS QUICK REPLY TO FER.
4. EITHER NO OPP. BY REPRESENTATION U/S 25(1) FILED OR IT IS FILED JUST AFTER PUBLICATION.
3. OPPURTUNITIES/CAREER IN
PATENT/IPR FIELD
 PATENT OFFICE
EXAMINER OF PATENTS & DESIGNS

Qualifications

Mainly:
M.Sc in various subjects or equivalent or
B.E/B.Tech in various subjects or equivalent

Examination (conducted by CSIR)

 PATENT AGENTS

S. 126 Qualifications

a) Citizen of India
b) 21 years age
c) Degree in Science/Engineering/Technology
&
Additionally passed the prescribed exam
 4. SOURCES OF INFORMATION

1. www.ipindia.nic.in
2. www.wipo.int
3. www.epo.org
4. www.uspto.gov
THANK YOU
ALL