Introduction to Intellectual Property Rights

• What is IP?

IP is Intellectual Property - It is basically intangible property that is created at the

mind of the humans before being converted to material forms. Property here is the
human thought process and the protection accorded to such thought process. E.g.:
idea, business method, invention etc.

• What are IP rights?

As the name indicates Intellectual Property Rights are exclusive rights over the
creations of the mind. A creator can have exclusive rights over his creation for a
certain period of time depending upon the type of Intellectual Property.

• Why protect IP rights?

Protection of IP rights is done in order to have monopoly over their inventions and
creations and thus possess exclusive rights over their invention for a certain period
of time depending upon the type of Intellectual Property.

• Types of Intellectual Property

a. Patents: Patent is a grant given by the Government to an inventor for having

made an invention. Once granted, a patent gives the inventor the right to exclude
others from making, using, selling, importing or offering for sale the invention for
the duration of the patent term.

b. Trademarks: Trademark is a unique symbol that is used in marketing the

business products by a person who owns the symbol. The trademark owner will
have monopoly over the usage of that symbol
Examples: Brands, Logos, Service marks, Trade name etc.

c. Design Patents: These are patents for industrial designs. It deals with the
protection of a unique design, shape, or ornamental surface of an object. In India
they are called only as Designs and are regulated by the Designs Act and
administered by the Designs Office located at Kolkata
d. Plant Patents: According to the US Law plant patents are issued when a
person has invented or discovered and has asexually reproduced a new variety of
plant that is distinct. The plant should be other than a tuber propagated plant or a
plant found in an uncultivated state

e. Copyrights: Copyrights are a form of IP rights given to an author, artist,

composer, or programmer to exclude others from either copying or publishing
literary, dramatic, musical, artistic, or software works.
 f. Geographical indications: It is a name or sign used on certain products or
which corresponds to a specific geographical location or origin. The use of a
geographical indication is that it may act as a certification that the product
possesses certain qualities, or enjoys a certain reputation, due to its geographical
origin.

g. Internet Domain Names and Disputes: A domain name is the address of a

web site which is intended to be easily identifiable and remembered, such as
tmpsearchers.com. Sometimes they are used as trademarks or business identifiers
also thus attracting customers to the websites. The reasons for domain name
disputes may be several. One of them is that when your domain name is similar or
confusing when compared to some other domain name.

h. Trade Secrets: Any information that is not generally known, that will give a
business advantage, or is commercially useful. Sometimes it is considered and
referred to as confidential information. It may be a formula, process, design, device
etc.

i. Unfair Competition: The law of Unfair Competition helps in dealing with the
economic injury caused to the business because of a wrongful business practice. It
may be in relation to any distinctive design, slogan, shape, business lay out etc.
1. What is a Patent?
Patent is a grant given by the Government to an Inventor for having made an
Invention. Once issued, the Patent gives the inventor the right to exclude others from
making, using, selling, importing or offering for sale the invention for the duration of the
Patent Term usually 20 years from the date of filing the patent application.
Inventor is the person who made the Invention
Only a natural person or persons can be inventors.

They may be employees of a company working on a project and invent something.

Depending on the Employment contract, they may or may not have rights to the Patent.
But still the applicant (Company or Employer) for the patent must disclose who is/are the
inventors to the Patent Office.
2. What is an Invention?
Invention is any new

• Process
• machine
• article
• composition of matter or
• Any new improvement of any of the above four.

Patent Office is the Government Office that receives the patent application, processes it
and grants the Patent.

Patent Application is the formal set of papers describing the invention and can be filed
with the patent office by the applicant for grant of Patent for the Invention.
 Who can be the Applicant?

Under US Law any one can be the applicant for Patent. However if they are not the
inventor of the invention, the applicant must disclose who is the inventor in the
application. This typically applies to employers who have the right to file the patent
application while the employees use the facilities and funds of the employer to invent.
The applicant for patent is also called Assignee

Can there be more than one Applicant?

Yes. One or more persons can join together and file an application as Joint applicants.

Why do I need a Patent?

Once a Patent is granted you are the owner of the invention for which patent is issued
and can prevent others from making, using, selling, exporting, or trading in or
importing the invention in to the country where you received the patent unless
you license them to do so or assign a patent to the person who is so doing.

This is a preventive right enabling you to prevent others from doing something
with your invention.
You can also make, use, sell and trade in your invention and can even license or
assign your rights in the patent.
You have a financial incentive to get a Patent by getting exclusive rights, and the
rights to assign the patent or license the patent for a fee. You get a monopoly that
you can use to make money,

The rights conferred are limited to the term of the Patent granted.

The term of the patent is 20 years from the date of filing the Non Provisional Patent
application

What is Assignment of Patent?

When you sell your rights in the patent to another person, it is called Assignment. It is like
selling your property to another person. Then you lose all rights in that property.. Though
you lose all rights, you can earn a substantial amount of money here and there are
companies that trade in patents like this.

What is licensing the Patent?

When you lease your property to another person, you own the property, has the right to
terminate the lease agreement and has the right to take the lease rentals. Licensing is
basically like a lease. This can be an exclusive license by which you agree to allow only
one person to have the license or it can be a non exclusive license by which you can
license any number of persons to make, use, sell your invention. The Choice is yours. You
get an annual fee called Royalty which will be paid to you till the term of the patent or the
term of the licensing agreement comes to an end.

Types of Patent Applications

There are two main types of Patent Applications

Provisional Patent Applications

Non-Provisional Patent Application is the Regular Patent Application filed to get a

Patent for the invention.
A Provisional Patent Application is not available for Design Patents.

The other two types of Patent Applications are PCT Patent Application and
Convention Patent Application. We will see what these are later.

1. When should I file my Patent Application?

When you know that you have a Patentable Invention, you can file a Patent
Application.

• What is a Patentable Invention?

• What are not inventions?

This is the most important concept and the core concept of Patent Law.

2. What is an Invention?

An invention is any

• New (called Novelty Test);

• Useful (called Utility Test);
• Process or Product (A product may be a machine or an article of manufacture or
composition of matter)
• Not Obvious to a person of ordinary skill in the art at the time the invention was
made or it must involve an inventive step; and
• Capable of industrial application

3. What is the meaning of Any in the definition of Invention?

• Any means in the context of the definition for invention anything that is new and
useful, made by man under the sun.
• However there are five categories of subjects that are entitled to make an
invention get a patent.
• These are called the Statutory Classes in US Law. See 35 USC 101

These are Any

1. Process;
2. Machine;
3. (Article of) Manufacture;
4. Composition of matter or
5. Any New use of a Process or a Business method ( both these are covered
under the definition of Process)
 6. Any new and useful Improvement of any of the above 1 to 5

Statutory Classes - Product and Process Patents

• Patents issued for items no's 2 to 4 above are called Product Patents as they are
issued for a product.
• Patents issued for a method of manufacture or methods of use are called Process
Patents as they are issued for a process or method.

4. New or Novelty

• This requirement is also called the Novelty Test for patentability of an invention.
• In Indian Patent Act, this is called as "New Invention" and is covered in Section 2(l)
of the Indian Patent Act.
• In US, it is covered by 35 USC 102. Title 35 of the United States Code and Section
102 or US Patent Act Section 102.
• According to Section 2(l) of the Indian Patent Act

"New Invention" means

any invention or technology

which has not been anticipated by publication in any document or used in

the country or elsewhere in the world

before the date of filing of patent application with complete specification,

i.e., the subject matter has not fallen in public domain or that it does not
form part of the state of the art.
Difference between India Law and US Law on Novelty

US Patent Law substantially differs from the rest of the world on Novelty requirements
and is stated in 35 USC 102. We will discuss this later in the lesson on Patentability. For
now remember that it is different from the rest of the world.

5. Usefulness or Utility Test

This is called the Utility Test for patentability of an invention.

The invention made should be useful to humans.

In many countries Utility is regarded as utility of a commercial scale and they prefer the
term capable of industrial application. India uses this term.

6. Unobvious Requirement

The Requirement of Non Obviousness is mentioned in US Law in 35 USC 103. In India

some elements of Section 3 of the Patent Act deals with Non obviousness Requirement.
This is apart from Section 2(ja) of the Indian Patent Act
We will discuss this in detail in Lesson on unobviousness as this is an important subject.

7. Inventive Step

Indian Patent Act Section 2(ja) defines an inventive step as follows:

Inventive Step means a feature of an invention that involves technical advance as

compared to the existing knowledge or having economic significance or both and that
makes the invention not obvious to a person skilled in the art.

This is the same as the unobvious requirement of US Law

US Law describes the person skilled in the art as Person of Ordinary Skill in the Art POSA

8. Person of Ordinary Skill in the Art (POSA)

POSA is a hypothetical person who is visualized to know the basic principles in the subject
matter of the invention for which patent is sought. POSA is not an expert but knows the
subject. POSA is used to check whether an invention when it is made will be obvious to a
POSA if he were to study the prior art documents cited by the Patent Examiner. If the
invention is deemed obvious to a POSA, patent will be denied; if not patent will be issued.
More on this will be covered in later lessons.

9. Capable of Industrial Application

Indian Patent Act Section 2(ac) defines the term Capable of Industrial Application as
follows:

The term capable of industrial application in relation to an invention means that the
invention is capable of being used in an industry

10. PCT Rules for Patentability

PCT is Patent Co-operation Treaty and is a common treaty on providing reciprocal rights
to citizens of one member country of PCT, in the other member countries.

PCT Rules require that to be patentable an invention must meet three requirements

• Novelty
• Inventive Step - Non obviousness
• Industrial Application - Basically utility but at an industrial scale

Exercises:
Study the following Sections of US Law

• 35 USC 100
• 35 USC 101
• 35 USC 102
• 35 USC 103
• 35 USC 112
• 37 CFR 75
Indian Patent Act Section 2

We will now see that to get a patent issued two things are needed.

One an invention is needed

Two the invention must fall within the statutory classes.

Apart from these two requirements two other important requirements must be met.

Novelty and the other is Non-obviousness.

Let us study Novelty in this lesson.

Today will be a tough day for you. But it is very important that you learn this lesson very
carefully. Forgive me for taking you through a tough path. I have trained nearly 20 people
now and I find that once you are taken to the application of law there is little time or
interest to learn the basics. And many remain weak on basics, which in turn is the reason
for the inability to draft patent applications. Again I'm taking you through the tough road
so you will benefit in the long term. Please follow my instructions.

I'm going to send the next lesson only after two days as this lesson involves a lot of study
of about 20 pages for you. I'm going to introduce you to 35 USC 102 and we will discuss
section 102 again tomorrow after you have studied the Indian concept of Novelty.

Novelty essentially means New, something that was not known earlier or not published
earlier or not used earlier. Essentially in legal language, your invention was not
anticipated by prior art. Then it is Novel and not otherwise.

United States Law on Novelty is stated in 35 USC 102. It differs significantly from the
concept of Novelty practiced all over the world because it tends to and is clearly to
intended to protect and promote American interests. I'm giving the text of the statute
below for your ready reference.

35 U.S.C. 102

Conditions for Patentability - Novelty and Loss of Right to Patent

A person shall be entitled to a patent unless

a. the invention was known or used by others in this country, or patented or

described in a printed publication in this or a foreign country, before the
invention thereof by the applicant for patent, or
b. the invention was patented or described in a printed publication in this or a foreign
country or in public use or on sale in this country,

more than one year prior to the date of the application for patent in the
United States, or
c. he has abandoned the invention, or
 d. the invention was first patented or caused to be patented, or was the subject of an
inventor's certificate, by the applicant or his legal representatives or assigns in a
foreign country prior to the date of the application for patent in this country on an
application for patent or inventor's certificate filed more than twelve months
before the filing of the application in the United States, or
e. the invention was described in - (1) an application for patent, published under
section 122(b), by another filed in the United States before the invention by the
applicant for patent or (2) a patent granted on an application for patent by
another filed in the United States before the invention by the applicant for patent,
except that an international application filed under the treaty defined in section
351(a) shall have the effects for the purposes of this subsection of an application
filed in the United States only if the international application designated the
United States and was published under Article 21(2) of such treaty in the
English language; or

 He did not himself invent the subject matter sought to be patented, or

 (1) during the course of an interference conducted under section 135 or section 291,
another inventor involved therein establishes, to the extent permitted in section 104, that
before such person's invention thereof the invention was made by such other inventor
and not abandoned, suppressed, or concealed, or (2) before such person's invention
thereof, the invention was made in this country by another inventor who had not
abandoned, suppressed, or concealed it. In determining priority of invention under this
subsection, there shall be considered not only the respective dates of conception and
reduction to practice of the invention, but also the reasonable diligence of one who
was first to conceive and last to reduce to practice, from a time prior to conception by
the other.

Read the above section three or four times and you will see that the United States wants
to protect and promote the interest of the citizens of United States and the English
speaking population of the world over the rest of world. Credit should be given to them
really for their patriotism for this was done long before the concept of globalization came
to existence.

Secondly note that the rule is that the first to invent gets the patent. In the rest of the
world it is the first to file the patent application gets the patent.

Thirdly please see that the first to invent has a one year time from the date of
conception and reduction to practice to file the patent application. In other
words even if you are the first person to file the application, if the same invention was
filed by another and he can prove that he was the first to invent subject to the provisions
of 35 USC 102(g) above

This first to invent rule coupled with the one year grace period rule above gives
special advantages to the US citizens in filing and obtaining patents in the United States
which is the largest economy in the world.

The rest of the world follows a different standard of first to file the patent application to
issue patents.
To understand how Novelty is ascertained in India, I would recommend that you
download the Manual of Patent Practice and Procedure 2008 Published by the Patent
Office of India.

This is now a substantially improved document than the earlier version

Take print out pages 21 to 33 of this manual and study the discussion on Novelty. This
will show you how Novelty is understood and interpreted by the Indian Patent Office. It is
fairly simple and straight forward and should not pose any difficulties

In particular study the following sections and have them at your finger tips- Section 2 Sub
section (j), (ja), and (l) and m of the Patent Act of India to understand Novelty.

Patent Act 1970

2(j): Invention means a

New

Product or Process

involving an inventive step and

Capable of Industrial application

(l) "new invention" means

Any invention or technology which has not been anticipated by publication in any
document or used in the country or elsewhere in the world before the date of filing of
patent application with complete specification,

i.e., the subject matter has not fallen in public domain or that it does not form part of the
state of the art;

2(ja): "inventive step" means

A feature of an invention that involves technical advance as compared to the

existing knowledge or

Having economic significance or both

And that makes the invention not obvious to a person skilled in the art;

I believe that the Manual of Patent Practice and Procedure pages 21 to 33 substantially
covers the concept of Novelty and it is adequate for a beginner to read that portion to
understand the concept of Novelty as understood, applied and interpreted in India
 Novelty in India

I'm avoiding the text of the sections which are written in a legal language which is tough
for beginners to understand. Therefore I'm only giving my explanations to these sections
in a plain, simple and easy to understand language.

We need to study Sections 13, 29, 30, 31, 32, 33 and 34 of the Indian Patent Act for this
purpose. You will need to consider these sections when you draft your patent applications
for filing in India to determine the Novelty of the Invention claimed. Today's lesson also
runs to multiple pages. But I have tried to write it in a simply language as far as possible.

We have already seen the import of Section 2 for Novelty. Sections 13 and 29-34 discuss
how it should be practically understood, applied and interpreted in India by the Patent
Examiner and so it is necessary for us to study now. The law related to Patents is stated
in the Patent Act. How this law should be administered is stated in the Patent Rules. Rules
28 to 34 of Patent Rules must also be studied and understood for Novelty.

Section 13

Section 13 of the Patent Act directs the Patent Examiner to ascertain whether the
invention claimed in a patent application has been anticipated by disclosure in a prior
document.

The section talks about four circumstances where the novelty of the invention can be hit.
Section 13 directs the Examiner to ascertain if Novelty of the invention claimed is hit
under any one these four circumstances.

The examiner should find out if the invention is anticipated by

1. Disclosure in a Patent application filed in India before the filing of patent

application under examination

Let me call "Patent application under examination" as your patent to simplify.

2. Disclosure in a patent application filed in India AFTER the filing date of your patent,
but that other patent application claims a priority date earlier than yours
3. Ascertain whether your invention has been anticipated by any prior published
document anywhere before the filing date of your complete specification.
4. If a complete specification is amended, the amended specification shall be again
examined as per the above rules 1 to 3 which is logical.

Anticipated means already disclosed in a prior document.

Examiner means the Patent Examiner who is examining your patent application.

Published means printed on paper or electronically and made available to at least one
member of the public or if within the same organization to those who have not signed a
confidentiality agreement to protect the invention as secret.
Points 1and 3 above are not tough. Point No. 2 talks about a situation where someone
files after you, but claims a priority date earlier than yours by virtue of a connected
application filed prior to your patent. Though slightly confusing it is easy only. Read it
again to understand and if you are confused email me please.

I'm not using the legal language used in the section but I'm only giving you the essence
of the section for you to remember. Also I'm not giving case laws for you here. It is
enough if you learn and remember the basic principles first. After all this is only an
introductory course. If you want to learn more go to the Manual of Patent Practice and
Procedure you downloaded and study pages 21 to 33 and 204 to 210 both inclusive.

If the text of Section 13 is tough, please do not worry about it. I have explained it above.

Basically this section tells you to take a common sense approach. And what is that?

1. You must conduct a Prior Art Search before you file your Patent Application.
2. Ascertain that the invention is Novel before your file your application.

Section 13(4) makes a disclaimer protecting the Government of India and its officers but
that is not relevant to understand Novelty.

Section 29 of the Patent Act

Section 29 of the act provides for an exceptional situation to protect your invention.

A. You disclose your invention to one person and that person deceives you, desires to
prevent you from obtaining patent and publishes the invention before your file your
patent application. This is not a normal situation but an exceptional situation.

Under that exceptional situation, section 29 provides that, if you can prove three things
the prior publication will not be deemed to be anticipation of your invention and you can
still get a patent for your invention.

The Three things to be proved are:

1. That the other person who made the publication obtained the invention from you
or your agents.
2. That he published without your knowledge and consent
3. That on knowing of the publication without wasting time, you filed the patent
application as soon as practically possible.
4. This protection will not be available to you, if your invention was commercially
worked in India before you filed your patent application.

Exception to Rule 4 above:

If the "commercially worked" or sale happened before the priority date of your invention
and it was done only for "reasonable trial" and was done with your knowledge and
consent then the protection is still available.

So simply what this section tells us is this.

 1. Do not disclose your invention to third parties before you file your provisional
patent application at least. Avoid Troubles.
2. Do not sell your invention even for reasonable trial purposes before you file your
patent application.
Avoid trouble and avoid these exceptional situations. But this is still relevant to Novelty
assuming you made a mistake.
You can read the text of the Section 29.
Don't get frightened by the legalese used in section 29 but the principle is as stated
above.

Section 30
Section 30 is to the effect that there is
No Anticipation by previous communication to Government or
To any person (authorized by the government) to investigate the invention.

Section 31

Anticipation by Public display etc

An invention shall not be deemed to have been anticipated by reason only of :

a. the display of the invention with the consent of the inventor, at an industrial
exhibition to which the provisions of this section have been extended by the
Central Government by notification in the Official Gazette
b. the publication of any description of the invention in consequence of the display or
use of the invention at such exhibition as aforesaid
c. the use of the invention, after it has been displayed or used at any such exhibition
as aforesaid and during the period of the exhibition, by any person without the
consent of the inventor
d. the description of the invention in a paper read by the inventor before a learned
society or published with his consent in the transactions of such a society.

IF

The application for the patent is made by the inventor not later than twelve months after
the opening of the exhibition or the reading or publication of the paper.

Caution:

Do not do any one of these things. File your provisional patent application first. Avoid
Troubles. This section is intended to protect and give you a 12 month time limit assuming
you made a mistake of disclosure already. Avoid this practice as far as possible.

Section 32 Anticipation by public working

An invention claimed in a complete specification shall not be deemed to have been
anticipated
by reason only that, at any time within one year before the priority date of the relevant
claim,
the invention was publicly worked in India.

a. by the patentee or applicant or

 b. by any other person with the consent of the patentee

Provided the working was effected

1. for the purpose of reasonable trial only and

2. if it was reasonably necessary that the working for that purpose should be effected
in public.

Caution: No reasonable Trial please. A provisional application is cheaper to file and avoid
costly litigation by filing a provisional application. These provisions must be treated as
exceptions and exceptional safeguards available after you made a mistake and must not
be resorted to as a normal practice.

Section 33

Section 33 bars a conclusion of anticipation by use and publication after you have filed
your provisional application.

This section applies under the following situation.

1. You file a provisional application

2. After obtaining the filing date of provisional application you start using the
invention or publish it.
3. You then file the complete specification

Then not withstanding anything contained in this act the Controller shall not refuse to
grant the patent (or the patent shall not be revoked or invalidated) for the sole reason
that any matter described in the provisional specification was used or published in India
or elsewhere at any time after the date of that application.

Caution

Be careful about this section. This is not as simple it looks like as we shall see when we
discuss the pros and cons of filing a provisional application and the mistakes that can
happen with filing a provisional application.

Section 34

No anticipation is deemed if circumstances are only as described in Sections 29, 30, 31

and 32.

Rules 28 to 32 deal with the procedure to be followed in the prosecution of patent

applications where anticipation is taken as a ground of objection by the office. With the
exception of Rule 28 others are not difficult and Rule 28 also is to the effect that within a
month of the receipt of the objections from the patent office, by citing earlier
specification of a earlier patent you must respond and ask for a personal hearing. Or ask
for further time to respond. These are basically procedural aspects that we can see in
advanced classes later.

Section 3
 The following are not inventions according to Section 3:
1. Inventions which are frivolous - meaning insignificant and naturally obvious in
comparison with known prior art
2. Inventions which claim anything contrary to law of the country or morality or injurious
to public health;
3. The formulation of an abstract theory or the mere discovery of a scientific principle;
4. A new use of a known product or Process;

Exception:

However the new use of a known method is patentable if that new use of known process
uses a new reagent or results in a new product.

5. A substance obtained by mere admixture which results only in the aggregates of the
properties of the components

6. Any arrangement or re-arrangement or duplication of known devices, each

functioning independently in their own way.

7. Any method or process of testing the process of manufacture for rendering the
machines, apparatus or equipment efficient for improvement of the existing machine

8. A method of agriculture or horticulture.

9. Any process of medical, surgical, diagnostic, therapeutic, or any other treatment

of human beings or of animals to render them free of disease or to increase the economic
value of their products

10. Plants and Animals in whole or any parts other than micro organisms. Seeds,
Varieties and species, and essentially biological processes for production or
propagation of plants and animals.

11. A Mathematical or Business Method or a Computer Program per se or algorithms.

12. A literary, dramatic, musical or artistic work or any other aesthetic creation
including cinematographic works and television productions.

13. A mere scheme, rule or method of performing mental act or method of playing
games.

14. A presentation of Information. 15. Topography of integrated circuits.

16. Any invention which is a traditional knowledge or any aggregates or duplicates of

traditionally known properties of known component or components.

17. Any Inventions related to Atomic Energy are not Patentable.

WHAT ARE THE INVENTIONS THAT ARE NOT PATENTABLE IN USA?

1. The claimed inventions as a whole must be useful and accomplish a practical
application. i.e., it must produce a "Useful, Concrete and Tangible result" otherwise
the inventions cannot be patented.

2. If the invention is not more than any idea or a concept or is simply a starting point
for future research, then such inventions are not patentable.

3. Business method is patentable in United States of America provided it produces a

concrete and tangible result as explained in point number 1 in this para.

4. Computer Software is patentable in United States of America based on the

concrete and tangible results.

5. However literary works including music compositions, legal documents and compilation
of data are not patentable.

6. Unlike the Indian law on patents, US law does not clearly explain as to what are not
inventions. Everything under the sun made by man or woman is patentable in the United
States if it falls within the statutory classes set forth in 35 USC 101 and produces a
concrete and tangible and useful result.

How to evaluate whether an invention is Novel and how to beat an objection

that the invention lacks Novelty

When you file your patent application, it goes to an officer called Patent Examiner. His
duty is to check the patent application and verify that it meets with the subject matter
requirement, Novelty requirement and is non obvious and meets the utility requirements;
in other words he will have to check whether your invention is patentable and has to
certify so to the Controller of Patents. Only then patent will be issued.

There are rules for rejecting a patent application on the ground of lack of Novelty. They
are as follows:

Rules for Novelty Rejection:

1. Your invention should have been disclosed prior to its filing in a printed publication
2. Your invention should have been sold prior to your patent application filing date.
3. Your invention should have been disclosed to anyone who has not signed a
confidentiality and non disclosure agreement prior to the date of filing of your
patent application.

Defenses for Novelty Rejection

1. Single prior art reference should be used to reject the application on the basis
of Novelty.
 2. If the examiner wants to combine documents only those documents that have
been cited in a prior art document as parent documents can be combined.
Combining more than two different documents is permissible only in the case of
non obviousness or inventive step rejections and not in the case of Novelty.
3. If you create any physical difference or any difference in the method that is
different from the single prior art reference, then you satisfy the Novelty
requirement. You must do this before filing by conducting a prior art search of
patent and non patent literature
4. If your method contains different steps or your apparatus contains less
components than the single prior art document, Novelty will be established.
5. Similarly if your method contains lesser steps to reach the same result Novelty will
be established.
6. The new use of a known method using a new reagent or resulting in a new Product
is Novel.

We have two more tests on Patentability of an invention. These are

1. Novelty

2. Inventive step or Non obviousness - Basically this is anticipation by combination of

two or more documents, and
3. Utility or Industrial Application - whether the invention is really useful and can be
worked in an industry.

However before going in to the other two abstract concepts of patentability I want to get you more
interested in the subject. And so we will be looking at how to draft a Provisional Patent Application
first.

Patent Applications are basically of four types.

1. Provisional Patent Application - filed to obtain priority date.

2. Non Provisional Patent Application or Complete Specification (must be filed

within 12 months of filing of the provisional patent application)

3. PCT Patent application - (Must be filed within 12 months of filing the

provisional patent application). Same as a complete specification it is filed under PCT
and has different rules and forms. Has two stages called PCT International stage and PCT
National Stage. We will discuss this later. For the time being remember that this should
be filed within 12 months of the priority date.

4. Convention Application: This is dealt with below.

Manual of Patent Practice and Procedure however classes patent applications differently
in to six types which is as follows:

1. Ordinary Application: Application made by Indian nationals directly to the Patent

Office. It includes both provisional and non-provisional application (complete
specification).

2. Convention Application: India has entered into bilateral treaties with a number of
countries for granting equal protection to patent rights to citizens of India just as given to
their own citizens. These are called Convention countries. Application from these countries
is Convention Applications. A convention application must be filed within 12 months from
the priority date.

3. PCT International Application: It is an application filed under Patent Co-

operation Treaty (PCT). It must be filed within 12 months of the priority date.

4. PCT National Phase Application: Application for entry into India or National
phase of PCT application after publications. It must be filed within 31 months from
priority date.

5. Application for Patent of Addition: Incase the applicant comes across a

situation where he finds that he has an invention which is a slight modification of
the invention for which he has already applied, a patent of addition can be filed
since the invention does not involve a substantial inventive step.

Patent of Addition will be granted only when the date of filing of application was
the same or later than the date of filing of the non-provisional application
(complete specification) in respect of the main invention.

6. Divisional Application: I'm discussing this in the next page. But remember that
this is the sixth type of the patent application recognized by the Patent office.
 Section 16 of the Patent Office provides for this. Requirements are same as for a
complete specification.

You can have only one patent for one invention. If you file two patent applications for
the same invention, it is called as double patenting and you will have to withdraw one
application.

Similarly you cannot have two inventions in one patent application. If you file two
inventions in a single patent application you will be asked to elect one of those inventions
for further prosecution and cancel the claims for the second invention. This procedure is
called the Election/Restriction Requirement. Basically you elect and you are
restricted to a single invention in one patent application.

The Law provides for a Divisional Patent Application

Requirements and conditions for a Divisional Application are provided in Section 16 of the
Patent Act.

A Divisional Application is one which is divided out of an earlier patent

application. Let us call it the original application.

Divisional application can be filed only if and after the patent office objects to the
presence of more than one inventive concept in the original patent application

Divisional Application should be filed before the grant of the patent for the
original application i.e., the application out of which the divisional application was
divided. So you have to file the divisional application during the time the original
application is pending.

Divisional application cannot include any new matter not disclosed in the
original patent application. Patent office will ask you to amend the specification if
you introduce new matter not disclosed in the original application.

You get the same filing date as the original patent application.
 Since the patent office only examines claims, it is enough if you make only
amendments to the claims while filing a divisional patent application retaining all
other things disclosed in the earlier original application.

You have to state in the application that this is a divisional application and has been
divided out of the earlier original application as per office directions. See Form 1 for
details.

The concept of Divisional Patent Application is the same in India and US. It is covered
under Section 16 of the Indian Patent Act. Though I write a lot on this, this is required
only when an Election / Restriction requirement is imposed and is basically a complete
specification in itself.

You now have two inventions and two patent applications. Ok.

This helps to secure one invention=one patent rule.

There are also two other types of Patent applications in US Law which are stated as
Patents of Addition in India
Continuation Patent Applications: Incase if you want to file additional claims to your
invention disclosed in your earlier filed application that has not been issued or
abandoned, then you can do that by filing for a Continuation Patent Application. You can
make use of the same specification which you drafted for your earlier application. The
Continuation Patent Application and the parent application (patent application) filed
initially should have at least one common inventor.
Inventors also opt for a Continuation Patent Application when some claims drafted for the
patent application have been accepted and some have been rejected.
Continuation in Part Patent Applications (CIP): This is application in which the
additional matter can be added that has not been disclosed in the parent application.
There must be at least one common inventor in the CIP and its parent application.
Provisional Patent Application
We have not checked the prior art and are yet to conduct the prior art search.
Yet we want to protect the idea for we are 100 per cent confident that no such invention
was ever conceived by any one.
No problem with that notion. We will verify it later.
Just file the Provisional Patent Applications. It is cheap and it is easy to file.
Why should I file my provisional application without conducting a prior art
search?

Official fees in India are only Rs.1000/- for a provisional patent application if you file as an
individual to secure an initial filing date. No other expenses are required. I believe
anybody who has done research and wants to file an invention can afford it. You do not
lose much by filing a provisional application.
A competent prior art search could cost you anywhere between INR. 25,000 to 200,000/-.
Prior art search is the most expensive part in the decision to file a patent application. A
patent search or prior art search is not easy. If anyone tells you otherwise, take it from
me that they are not going to deliver a professional job.
Patent Drafting is not at all difficult once you have done the prior art search and
understand the core concept of the invention and have mastered the rules of patent
drafting and have done extensive practice exercises.
Now let us look at the Requirements of Filing a Provisional Patent Application in India
Sections 9 and 10 of the Patents Act provide for the Provisional Specification and its
form. A complete specification is basically a refined provisional specification with claims
and other mandatory forms. So check sections 9 and 10. Also please carefully study
Rules 4 to 16 of the Patents Rules for understanding the requirement of Size, form
etc of a Patent Application.

Requirements of Filing a Provisional Patent Application in India

a) A Provisional Patent application is filed to obtain a priority date.

b) Within 12 months of filing the provisional application the non-provisional

specification or complete specification must be filed to acquire the priority date of
the filling date of the provisional application.
c) The provisional patent will not be examined on its merits and will expire at the
end of 12 months.
What is a filing date?
The date on which you file your patent application is the date of filing of that patent
application irrespective of the type of application.
The filing date of the provisional application, or if you elect to file the non-
provisional specification without filing a provisional application, then the filing date of the
non- provisional application will become the priority date.
 What is the use of priority date?

The priority date ensures that your application disclosing the invention will become
prior art to other patent application filed after your priority date. If the inventions are
identical patent will be given only to the person who has the earliest priority date.
CONTENTS OF PROVISIONAL APPLICATION
The provisional application is cheap and easy to prepare but it has its own drawbacks.
With that warning, let us look at the contents of a Provisional application.
Provisional Application has to be filed in Form 2 as is the complete specification.
The specification whether it is provisional or complete should start on a separate sheet. It
must contain the following elements.
1. Title of the Invention
2. Field of the Invention
3. Background of the Invention
4. Summary of the Invention
5. Description of Drawings
6. Detailed Description of the invention with Respect to the Drawings. Here
the various embodiments (meaning various types or models of your invention), the
way to make it, the method of using it as known to you and the preferred mode of
operating your invention must be stated. While no format of provisional application
is required it must meet the requirements for a complete specification as far as the
disclosure of the invention is concerned. Please note that the disclosure of the
invention must meet the three requirements for the description of a
patent application.
6.1 Written Description
6.2 Enablement
6.3 Disclosure of Best Mode and if there are more than one best mode or
preferred embodiments all of them must be disclosed. I will tell you more on
this later.
6.4 The description should not suppress any information regarding the invention
6.5 The description in the provisional application should provide sufficient
antecedent support for the claims that you are going to make in the complete
specification or Non Provisional application. Failure do so would make you lose
the priority date.
 7. Drawings as required to explain the invention disclosed must be included. Every
physical feature that you intend to claim in the complete specification
must be supported in the drawings for the provisional application.
8. Claims are not required to be included in the provisional application. But it
is best to include at least one very, very narrow claim of the invention. Do not
include a broad claim. Claims should start on a separate sheet
9. Similarly Abstract of the disclosure is not required. But there is no bar in
filing an abstract. Abstract should be on a separate sheet.
10.Fees of the Provisional application must be paid. The Fee Schedule is given in First
Schedule to the Patent Rules. See Entry 1
11.Following Forms to be included (if you are filing on your own)
a) Form 1
b) Form 2 (The description should be in Form 2)
c) Form 3
d) Fee to be paid in favor of Controller of Patents and payable at the
place of office where you are filing the application or payable by
cash or at par check or demand draft.
The rules for drafting a provisional application in US and India are same and the law is the
same. The wording may be different in the legislations.
When you complete this course you would be able to draft a provisional application
yourself but I leave it to you if you need the supervision and guidance of a Patent
Attorney or Patent Agent.
What are the advantages of filing a provisional patent application?
1. It is easy to draft; no proper format is required.
2. You must give the title and the description of the invention along with a suitable
drawing as necessary. One drawing is adequate to meet the needs of filing but
ensure that as many drawings as needed are filed to show all the physical features
you are going to claim later in the complete specification.
3. Claims need not be included in a provisional patent application though it is
advisable to include at least one independent claim.
4. The provisional application enables you to obtain the priority date.
5. It is not expensive in comparison with Non-provisional application.
6. If you know how to draft a technical literature article, that article itself can be filed
as the disclosure of the invention in the provisional patent application before the
article is published.
 7. You can file your provisional application and improve your invention within a period
of twelve months.
8. If you file your provisional application, you have 12 months to convince potential
investors to finance your non-provisional application.
9. A Provisional patent application is not examined on its merits.
10.The only purpose served by filing the provisional application is to obtain the
priority date.

DISADVANTAGES OF FILING A PROVISIONAL PATENT APPLICATION

Although the provisional application should have only a formal description, that
description should also meet the following three tests.

1. It should be a written description detailing how to make and use your invention. The
meaning of a written description is simple. All steps that are necessary to understand
and practice the invention and all information needed should be disclosed in a
detailed way. This is called the Written Description Requirement.
2. It should enable a person skilled in the art to duplicate your experiment and make the
invention without undue experimentation. This is called Enablement Requirement.
3. The provisional application must disclose the best mode of carrying out the invention
(preferred embodiment in patent parlance). If there are more than one way of carrying
out the invention you must disclose all of them to make them prior art. This is called
the Best Mode Requirement.
4. The provisional application will expire at the end of twelve months. No patent will
issue on the basis of a provisional application alone unless a non provisional
application or complete specification is filed within 12 months.
5. In order to claim the priority date of the provisional application you should completely
disclose your invention in the provisional application. In other words, the invention
disclosed in the provisional application and the non-provisional application must be
identical. This is important in pharmaceutical or chemical compositions. If you do not
include one component of composition in the provisional application but include it
later in the non-provisional application the priority date will be the date of filing of the
non-provisional application only, because the properties will change with the addition
of one more component to the composition. Effectively you will loose the main
objective of filing the provisional application i.e., obtaining the priority date.
6. The provisional application should enable the claims in the non provisional application.
7. You must file your non-provisional application within 12 months from the date of filing
the provisional application.
8. You must also file your PCT application or convention patent application
within 12 months of filing the provisional application. These are expensive to
file and mobilizing funds for all the above said points will be a problem within 12
months.
9. The Provisional patent application cannot claim the benefit of an earlier application.
10.The Provisional patent application must name all the inventors of the invention.
11.The description of the provisional patent application cannot be amended to introduce
new information in the description. If you make a mistake you have to file another
provisional application.
12.The provisional application must be filed with the official fee to obtain the priority
date.
13.No patent will be issued on the basis of the provisional patent application unless the
provisional patent application is converted to non-provisional patent application within
12 months.
14.The drawings of the provisional application must enable all the physical features of
the claims in the complete specification.

Things for you to remember are these

1. When you draft a Provisional Patent Application no legalese is required.
2. Just ensure that all the elements of your invention are completely disclosed along with
the various modes of the invention.
3. Use plain and simple English and write short sentences.
4. Proofread and see that the language used conveys the information correctly,
precisely and discusses the invention elaborately.
5. Avoid grammar mistakes in sentence formation. Employment of language and how
you write your claims is very important in drafting patent applications and if you
are not sure of your English ask your friends who have signed a NDA with you to
proof read the application before filing.

Caution
Do not discuss prior art in the provisional application. References to any prior
art known to you should be avoided. There is no requirement that you should
state it in the provisional patent application and avoid discussing it. If you do
not disclosing prior art, it does not mean that you are suppressing material
information and it only shows that you have not done a prior art search and
assuming you did, you could not find any relevant prior art. That is the
conclusion the office will arrive at. If you admit prior art, the office is entitled
to draw a conclusion of obviousness based on your admission of prior art even
in the provisional application. Also if you disclose prior art in the provisional
application you cannot suppress it in the complete specification.

You can also check the following links about Provisional Patent Applications. I
strongly recommend that you do this to learn more about this topic. While
these two links discuss basically US Patent Law on Provisional Applications
remember that there is no difference between India Law and US Law in so far
as Provisional applications are concerned.

We will take one published inventive concept.

Assume an inventor
Assume that the inventor is the applicant
Assume that drawings are not required.
Based on this we will show you how to draft and prepare an application.
It may please be noted that while this type of conversational style of teaching is difficult
to write and easy to read and learn, it is also much easier for you to forget what you have
studied. So I suggest that you study these 11 pages at least 3 or 4 times.
In USPTO it is fairly a simple thing. However you can write focused searches to retrieve
documents of particular interest. There are 31 fields whose field code is given below the
Advanced Search page. The only restriction in the Advanced Search facility is the
limitation, that you can at write a search query exceeding 256 characters. The advantage
is you can use wild card operators and combine multiple fields in one query
Example 1:
The field code for inventor name is IN now let us try to find out Patent Application where
the inventors are named Ramaswami. If the spelling is different like Ramasamy,
Ramasami, Ramaswamy the records will not be returned. Therefore to avoid this problem
you can put IN followed by the different spellings of the name of the inventor.
Alternatively you can also write as IN/ the first four letters of a name followed by a dollar.
However this will also bring in records where only the first four letters are similar though
the names may be different. If you know the exact name of a person including his first
and last name you can try that also by combining the query as in the following.
IN / Ramaswami and IN/ Natarajan
we get 0 results now. A separate search for inventors named either as Ramaswami or as
Natarajan returns the documents which are filed by the inventors with those names.
Normally the following fields are regularly used.
1. Title
2. Abstract
3. Specification
4. Claims
5. International Classification
6. Current US Classification
7. Assignee name
8. Inventor Name and
9. Date range search for Freedom to use/ Freedom to practice/ Freedom to Operate
searches
The use of dollar ($) at the end of search keyword will return all documents containing
the keyword as given followed by any number of letters.

Now, let us look for all documents filed under the International Classification
System A61K. You will run the search like this.

ICL/A61K*

The result will include all the documents which are classified under A61K.
Introduction to International Patent Classification
The Classification Search option enables quick access to the relevant classifications. It
can be very helpful in your search for a specific invention if you know what a particular
classification symbol means
To make the best use of classification in your searches, it is of advantage if you are
familiar with the classification subdivisions. When you are searching for a particular term,
it is often more effective to use a less specific classification symbol
International Patent Classification is used by all Patent Offices. It has a hierarchical
structure and is subdivided into sections, classes, subclasses, groups and subgroups.
Sections in Patent Classification

The highest levels in the hierarchical system are sections, represented by the letters Ato
H.
A-Human necessities

B - Performing operations; Transporting

C - Chemistry; Metallurgy

D - Textiles; Paper

E - Fixed Constructions
F - Mechanical Engineering; Lighting; Heating; Weapons; Blasting engines or Pumps

G - Physics

H - Electricity

Format
IPC has a hierarchical structure:
Sections e.g.: A
Classes e.g.: A47
Subclasses e.g.: A47J
Groups e.g.: A47J37
Subgroups e.g.: A47J37 /06

Writing a Patent Application is not that difficult if you do two things...

1. Give the inventor the basic information that the inventor has to supply for you to
write a patent application. This will go to the extent of explaining to the inventor
that he has to provide information adequate to meet the written description,
enablement and best mode requirements of the patent application. If the inventor
does not understand or does not provide the information first time, talk to him and
make him understand the pitfalls of not providing this information in the patent
application and then he would naturally provide. You must understand that
inventors naturally would try to keep some information to themselves as business
secrets or trade secrets and you need to point out to them the need to provide at
least the information that would meet the patent application requirements.
2. Once the inventor provides the information go through it carefully and try to
understand it and write a draft specification. You may not understand in the first
time and it may be well be necessary to keep talking to the inventor a few times
before you fully grasp the concept and have written the basic structure of the
patent application. Once you do this go back to the inventor and again ask him for
his review of your writing and find out if he agrees with you or not. Remember as a
Patent drafter you will have to write patent applications failing in many subject
matter areas or many domains and you cannot know everything and cannot be
deemed to be a domain expert nor you can become one matching the domain
expertise of the inventor. This is simply not necessary and all that is needed is that
you should have mastered the idea and such mastery should get the approval of
the inventor. If you do not understand what the inventor wants to convey then
drafting a patent application to meet the requirements of the situation is not
possible. So do not feel ashamed to talk to the inventor until you get his approval
for your draft.
3. Once the inventor agrees with you that you have put down everything that he has
instructed you about his concept, review it carefully for compliance with the legal
requirements of Written Description, Enablement and Disclosure of Best Mode.
Check that the other formal requirements of components of a patent application
are complete.
4. Here I would like to give a brief note. A patent application basically is a document
that teaches three things. Firstly a problem faced by humanity, inadequate
solutions in the form of prior art or impracticality of the prior art due to any
number of reasons or defects or deficiencies of the prior art in properly addressing
and solving the problem faced. Naturally you would go on to say that the invention
was intended to solve at least one of the deficiencies of the prior art or solves at
least one of the earlier unsolvable problem. Here you must keep in mind that if you
make too much a disclosure by referring to a very large number of documents then
you can get in to difficulties during the patent examination. Remember that lack of
inventive step is determined by combining several documents and then holding
that the combination of the documents together would have made the invention
obvious to a person of ordinary skill in the art on the date the invention was made
or the on the date of filing the specification. Therefore be judicious in citing earlier
prior art documents to state their deficiencies. It is the right of the patent examiner
and it is in fact a duty of the examiner to combine every document that you cite as
Applicant Admitted Prior Art Reference along with other documents uncovered by
the Patent Examiner to assess whether there is lack of inventive step or whether
the invention was obvious to a person skilled in the art on the date of filing the
patent application. If you do not disclose any document then it may well be
considered by the office as an attempt to suppress facts commonly known and if
you cite too many references you risk all of them being classified as Applicant
Admitted Prior Art. So you need to be very careful here.
5. Another tricky point is written description. By your draft you must ensure that none
in future could question that the invention was in the possession of the inventor or
in the hands of the inventor on the date of filing the patent application. Many
patents have been revoked for not meeting this standard. So double check that
this requirement is fully complied with before the application is submitted to the
patent office.
6. One more objection that has frequently been made is that the Patent specification
does not enable a person skilled in the art to duplicate the invention or practice the
invention without undue experimentation. By providing a lot of data, about
experiments done and results of such experiments you can easily avoid both the
objections to lack of written description or Enablement.
7. While writing your claims first understand what is the requirement of the Inventor.
Most times an inventor would be happy to get a patent. Remember that 98% of the
patents issued are not commercialized. And infringement to patents in the rest of 2
per cent is not very high. Keep this fact in mind while you draft your claims. While
writing a broad claim and getting maximum coverage for your client is ideal, most
times it may not be possible and the client would only be focused on getting a
patent for the purpose of getting adequate funding rather than the patent being
rejected. The instance where an applicant would forgo a patent application for the
refusal of the patent examiner not to allow an overly broad claim and would refuse
to restrict the scope of the claim is very rate. So again talk to the inventor and find
out what are his priorities and then make a calculated decision. However
remember that most patent applications allowed are meet with some office
objections initially and then you have to amend the claims. So if your claims are
overly broad in the initial stage at the time of filing the application also it is fine but
 be sure that what you write is patentable and would not be too broad and would
not read on an existing patent in force. Again do not feel bothered about the
number of claims and try to write simple claims and write dependent claims to
restrict the scope of the independent claims.

If you follow these simple steps. Then drafting a patent application would not be difficult
at all. It is certainly not a cake walk but it is not as if patent drafting is extremely difficult
as it is generally thought to be. Therefore be confident that you can master the art of
How to Write a Patent Application with a few months of practice, persistent and focused
work and some guidance from an experienced Senior Patent Attorney.