Patent Prosecution of Patent Registration in India
Patent Prosecution of Patent Registration
Introduction : Patent prosecution is a process of writing and filing a patents application and pursuing protection for the patent application with the patent office. This describes the interaction between applicants and their representatives and a patent, or an application for a patent.
Filling an application for a patent
An application for a patent must be filed in Form-1 accompanied by either a Provisional or Complete Specification, with the prescribed fee as given in First Schedule at an appropriate office. In case of a Convention Application, a provisional specification cannot be filed. For an application for patents containing up to thirty pages for specification and up to 10 claims normal fee shall be applicable. An additional fee is charged if the specification exceeds 30 pages or more than 10 claims are claimed.
The specification or disclosure is the written description of an invention, containing full scientific details of the invention and claims related to the patent rights. Thus, this techno-legal document forms a crucial part of the patent application. An applicant must fully disclosure various features constituting the invention. The specification may be filed either as a provisional or as a complete specification. The Specification(provisional or complete) is to be submitted in Form-2 accompanied with the patents application in Firm-1 and other documents, in duplicate, along with the prescribed fee as given in the first schedule.
The first page of the Form-2 shall include
- Title of the invention
- Name, address and nationality of each of the applicant for the patent; and
- Preamble to the description.
The provisional specification and complete specification both are permanent and separate documents and remain in the file. When an invention has attained a stage wherein it can be disclosed on paper, but has not attained the final stage, applicant may prepare a disclosure of the invention in the form of a written document and submit it to patents office as a provisional specification the patent office accords a filing date and application number to the application which secures a priority date for the application over any other application which is likely to be filed in respect of the same invention being developed presently. After 12 months from the filing of provisional application, a complete specification must be filed else the application along with patent specification is deemed to be abandoned. According to Section 17 the applicant has an option to post-date the provisional specification before the expiry of twelve months from the date of filing, after this period this request will not be considered. Once abandoned for reasons aforementioned, for any other application such as divisional application etc. If an applicant filed two provisional specifications which are related to each other or if one is a modification of the other, the applicant may file one complete specification covering both the provisional applications. Such a complete specification shall have to be filed within twelve months from the date of filing of the first provisional application.
The provisional specification must contain the title and description of the invention and shall start with a preamble. The following specification describes the invention. The purpose of filing a provisional specification is to claim a priority date hence there is no need to add claims. From the second page the description starts with the field of invention and containing the background of the invention, object of the invention and statement of the invention. The provisional specification should include as much information as the applicant has at the time of filing.
The complete specification is filed within 12 months from the date of filing the provisional specification. It is a techno-legal document which completely describes the invention and discloses the best method of performing the invention. It should be drafted with utmost care without any ambiguity since it is an extremely important document in the patent proceedings.
Every complete specification shall-
- Completely and specifically describe the invention and its applications or uses and the process by which it is performed.
- End with a claim or set of claims defining the scope of the invention for which the protection is claimed.
- Make reference to deposit of the biological material in the international depository authority, if applicable; and
- Be accompanied by an abstract.
The complete specification must include,
- Field of invention
- Background of invention or prior Act
- Object of invention
- Summary of invention
- Brief description of accompanying drawings
- Detailed description of invention with reference to drawings or examples
- Best method
Title of the invention
The title shall disclose the specific features of the invention and should be sufficiently indicative of the subject matter of the invention. It shall be brief, free from fancy expressions or ambiguity and as precise and definite as possible, it should not exceed fifteen words and it need not go into the details of the invention itself. The following or not acceptable in the title: Inventor’s name, the word ‘patents’, words in other languages, the abbreviation “etc.”, fancy words example “Wash well Soap”, “Universal Rest Easy Patent Chair” according to Manual of Patent practice and procedures.
Field of invention
It should be expressed with a general statement of the invention so as to explain the subject matter to which the invention related briefly with example “The invention is related to a device”.
Background of invention or prior Act
This part should specify the status of the technology in the field of invention with respect to advancements in the field, patents and pending patent applications in the specific art. When it is found that the invention is mere an improvement on pre-existing product or process, a short statement of the closed prior art known to the applicant shall also be given. The description should fully and particularly describe the invention, by making it clear from such a closest prior Art.
Objects of the invention
Objects of the invention clearly refer to the technical problems related to the existing technology and the way of solving those problems, it should be able to distinguish between the claimed invention and the prior art. The motive of this part is to clear the prerequisite of the invention. In accordance with the guidelines provided in the manual of Patents practice and procedures, the solution sought by the invention should be clearly brought out as objects of inventions with statements like “it has already been proposed” followed by the objects which the inventions has in view example “The principal object of this invention is…”, “Another object of the invention is ….”, “A further object of the invention is….” Etc.,
Summary of the invention
The purpose of this part is to mention different features of the invention. A summary of invention is followed by the detailed description of the invention and the method of performing it. It should forward the distinguishing novel features of the invention for which protection is desired.
Detailed description of invention
In complete specification detailed description of an invention contains enough detail in order to provide a complete picture of the invention. The described details of invention should be adequate for a person skilled in the art to perform the invention. It may include examples or drawings or both for elaborating and determining the nature of the invention. It must reduce the efforts or practices of the invention without further experimentation. Reference to drawings should be specific and preferably in the following form: “This invention is illustrated in the accompanying drawings”, throughout which, like reference numerals indicate corresponding parts in the various figures. In order to complete the patents specification Indian Patent System offers a provision for submission of a biological deposit. Such biological material shall be submitted to the International Depository Authority under the Budapest Treaty, on or before the date of filing the patent application. Within three months from the date of filing, reference to such biological material shall be made in the specification providing all the available features of the material required for the correct identification including the name, address of the depository institution and the date and number of deposit of the material at the institution along with the source and geographical origin of the biological material mentioned in the specification. In the case of Biotechnology related inventions, related numbers of the sequence listing shall be mentioned at appropriate place in the specification. Sequence listing should also be given in the electronic form. However, the fees with respect to corresponding number of pages should be paid. Access to the material is available in the depository institution only after the date of the application of patents in India.
In complete specification, drawings assist in understanding the invention. It should be prepared neatly and clearly on imperishable paper sheet. Drawings shall be on standard A4 size sheets with a clear margin of at least 4 cm on the top and left hand and 3 cm at the bottom and right hand of every sheet. Drawings shall show the inventions clearly and no need to mark the dimensions on the drawings. Drawings shall show the inventions clearly and no need to mark the dimensions on the drawings. Drawings or sketches, requiring a special illustration of the invention, shall be on separate sheets and shall not be self-explanatory.
It provides brief technical information related to an invention. It shall begin with the title of the invention. It shall be concise summary of the matter contained in the specification which clearly indicates the technical field to which the invention relates, technical problem to which the invention relates and the solution to the problem through the invention and applications of the invention. It should not be more than one hundred and fifty words.
The complete specification must also explain the best method of performing the invention known to the applicant, including that, which he may have obtained during the period of provisional protection prior to the date of filing the complete specification.
Claims define the scope of legal protection in case a patent is granted for an invention. Hence, claims are the most critical part of a Patent application. In a complete specification the claims come after the detailed description. Since, claim define the boundaries of rights, it is advised that they should be drafted in a way that it covers all the aspects of the protection being desired and should simultaneously be able to distinguish the prior art from the claimed invention.
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