Patent Documentation – Patent Registration in Coimbatore

Patent Documentation – Introduction

For filing a patent application in India, a number of documents are required to be submitted within the time prescribed along with the application for a patent Registration in Form 1 and specification in Form 2.

Following are the documents required to be submitted;

• Declaration as to Inventor-ship
• Statement and Undertaking
• The Authorization of a Patent Agent.
• Proof of Right to make an Application.

For filing an international patent application, following documents are required to be submitted along with those specified above;

• Document evidencing a change of name of the applicant if the change occurred after the international filing date and has not been reflected in a notification from the international bureau.
•  Form 6 and/ or Form 13

Declaration as to inventor-ship

Sometime the person who has filed the patent application is not the inventor in that situation the applicant will need to file a declaration along with the patent application.

In the declaration the applicant explains that the name of the person is true and the person named in the application is the first inventor. The declaration form should be filed along with the complete specification or if the applicant has requested for extension of time then the declaration should be submitted before the expiry of 1 month from the date of filing of complete specification. There is no need to file a declaration if the inventor itself has filed the patent application for Patent Registration.

For example if a person is working under a firm and he invented something during the work given to him. If the firm filed a patent application for the invention then the firm will have to file a declaration form also declaring that the person is the first inventor of the invention.

Statement and undertaking regarding foreign filing

Statement and undertaking is required when a patentee who has filed a patent application in Indian Patent Office and want to file an application for the same work in other countries. The patentee will have to submit a statement, which will have all the details that are asked by the Indian Patent Office, like date of filing,, status of application, publication number, country name, etc.

If the patentee has filed an International Patent Application, designating India as the foreign country, then the patentee will have to submit the undertaking statement within the time period of 6 months from the date, on which the application is filed in India. Any information that was asked from the Controller regarding the process of applications in other countries should be even within 6 months from the date of such communication by the Controller.

The patent can be revoked or it can be opposed if the information is not provided in the given time.

Authorization of an agent

If an inventor or a company want to file a patent application through a patent agent then they have to provide authorization to the patent agent who will then act on his behalf in respect of his patent application. For the authorization Form 26 need to be submitted to the Patent Office at the time of filing the patent application.

Proof of right to make an application

If a person or a firm is interested in an invention and ask the inventor to assign them his invention, then if inventor agrees to assign his invention then it can be done by virtue of assignment of his right. Proof of right to apply for the patent can be produced in two ways;

• In the body of the application endorsement in Form 1 or
• Through a separate assignment.

The applicant can file the proof of right either at the time of filing the application or within the 6 month time period from the date priority. In case the inventor is dead and the patent registration application has been made by the legal representative, then the death certificate should be filed as the proof of right to make an application.

Substitution of applicants

After filing a patent application for patent registration, all the rights on the invention can be assigned to some other person or firm by the applicant. This can be done through a written assignment or agreement to some other person or company.

An application on Form 6 needs to be submitted for substituting the applicant in the patent application. The application should include original assignment or agreement. This application can be filed any time before the grant of the patent. The Controller can ask for the proof of title or written agreement of assignors. If the Controller is satisfied then the claimant would, if the patent is granted, be entitled to:

• A patent
• Specific interest in patent
• Undivided share of the patent
• Specific interest in the undivided share of the patent.

Form 6 along with a fee of Rs.2000/- will be required for requesting survivors of the patent application. In case survivor is an individual then the fee to pay is Rs. 500/-.

The following things you have to know before the filing of your patent application. These are

New invention

Any invention is considered as new or novel only if it is never disclosed in the public in any way, anywhere or it does not form a state of art, before the filing of a patent application for patent registration. If the invention is disclosed by a written or oral description or by use or in any other way before the filing date of the patent application it will lose its novelty. “New invention”, under section 2(1) of the Patent Act, 1970 means any invention or technology which has not been anticipated by publication relates. Pre-grant opposition can be filed by ‘any person’ whereas post-grant opposition can be filed only by a ‘person interested’. It may be an organization that has a manufacturing or trading interest in the goods connected with the patented article or which 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.

The word ‘art’ refers to the applied art or technology of manufacture. It is not related to the fine art for which the protection may be sought under copyright law. Any new invention can be granted a patent.

Person interested

As of Section 2(1)(t) “persons interested” is a person engaged in, or in promoting, research in the same field to which the inventions a financial interest in manufacturing such goods or which possesses Patents relating to the same subject. If the opponent is a person interested, he may file a formal post grant opposition. He can file a Notice of Opposition against the grant of Patent in the prescribed format, in duplicate, within twelve months from the date of publication of grant of patent at the appropriate Office. He can even file a request for examination.

International Application

International patent application is an application for patent registration, made in accordance with the Patent Cooperation Treaty. Once the PCT application (also known as International Patent Application) has been filed through PCT, an applicant have a time period of up to 30/31 months in order to decide whether to enter the patent application in national phase depending on the state of invention and favorability of the international search and examination report. An International Preliminary Examining Authority (IPEA) examines the international application. International Application is published automatically after 18 months from the priority date.

Pharmaceutical substance

 As per the provisions of Section 2(a) of the Patent Act, 1970, it means any new entity involving one or more inventive steps. According to Schedule 1 of the Patent Act, 1990;

“Pharmaceutical substance” means a substance (including a mixture or compound of substances) for therapeutic use whose application (or one of whose applications) involves:

• A chemical interaction, or physicochemical interaction, with a human physiological system; or
• Action on an infectious agent or on a toxin or other poison, in a human body, but does not include a substance that is solely for use in in vitro diagnosis or in vitro testing.

Invention

 Invention means a new product or process involving an inventive step and capable of industrial application. An invention is patentable only if it involves one or more inventive step. It involves any product or process that has never been made before. Some inventions can be patented.

Capable of industrial invention:

According to Section 2(D (ac) for an invention to be patentable, an invention must be capable of industrial application. Industrial application in relation to patentability means that the invention is capable of being made or used in an industry.