GUJARAT TECHNOLOGICAL UNIVERSITY Organizes 1 ST Workshop on

GUJARAT TECHNOLOGICAL UNIVERSITY Organizes 1 ST Workshop on PATENT DRAFTING EXERCISE (PDE) On 15 th February 2014, Saturday AT GTU, Chandkheda Campus, Ahmedabad 12/16/2021 Copyright@MAR, 2014 1

Overview of Drafting & Filing of Patent in India 15 th February 2014, Saturday Dr. Manish A. Rachchh 12/16/2021 M. Pharm, Ph. D. Registered Patent Agent (IN/PA-1573) Associate Professor, Centre of Pharmaceutical Sciences, Gujarat Technological University (GTU), Ahmedabad E-mail: manish. rachchh@gtu. edu. in Tel: (M) +91 -9909961894 Copyright@MAR, 2014 2

Presentation Outline 1. Criteria for Patentability 2. Drafting of Patent “An Art & Science” 3. Drafting of Provisional Specification 4. Drafting of Complete Specification 5. Filing of Ordinary Patent Application 6. Filing of Other forms of Patent Application 7. E-filing procedure in India 12/16/2021 Copyright@MAR, 2014 3

1. Criteria of Patentability 12/16/2021 Copyright@MAR, 2014 4

Principle of “ 3 I” Any Invention has to follow the principle of “ 3 I” • 1) Innovativeness (Novelty) • 2) Inventive Step (Non-obviousness) • 3) Industrial Utility (Usefulness) 12/16/2021 Copyright@MAR, 2014 5

v. Invention [U/s 2(1)(j)]. . … It means a new product or process involving an inventive step and capable of industrial application v. Inventive step [U/s 2(1)(ja)]. . … It means a feature of an invention that involves technical advancement 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 12/16/2021 Copyright@MAR, 2014 6

v. New invention [U/s 2(1)(l)]. . … It 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 v. Capable of industrial application [U/s 2(1)(ac)]… In relation to an invention, it means that the invention is capable of being made or used in an industry; 12/16/2021 Copyright@MAR, 2014 7

Non Patentable Subject matter U/Section 3(f) v The mere arrangement or re-arrangement or duplication of known devices each functioning independently of one another in a known way. v. Also we have to look at U/s 3 (a) to 3 (p) and U/s 4 12/16/2021 Copyright@MAR, 2014 8

Explanation: • An improvement on something known before or a combination of different matters already known, should be something more than a mere workshop improvement; and must independently satisfy the test of invention or an 'inventive step'. • To be patentable the improvement or the combination must produce a new result, or a new article or a better or cheaper article than before. • A mere juxtaposition of known devices in which each device functions independently is not considered patentable. 12/16/2021 Copyright@MAR, 2014 9

Examples: Umbrella with fan(388/Bom/73), Bucket fitted with torch, Clock and transistor in a single cabinet. Compact device for measuring the settlement characteristic of buildings and the like civil engineering structure comprising a set of base plates to be fixed at desired parts of the buildings, a water level, a tilt meter and means to measure crack-width developing in structure over a desired interval • These are not patentable subject matter, since they are nothing but mere arrangement and rearrangement of items without having any working interrelationship between them and functioning independently of each 12/16/2021 Copyright@MAR, 2014 10

Do you possess Patentable Invention? Don’t Wait, File the Patent Application “First to File Rule” (Eat it before Melt it) 12/16/2021 Copyright@MAR, 2014 11

2) Drafting of Patent “A Scientific Art” 12/16/2021 Copyright@MAR, 2014 12

Pre-Filing Requirement v Keep following things ready before starting filing procedure: – Title of invention – Brief description of invention – Detailed description of invention – Claims (may OR may not be req’) – Abstract (may OR may not be req’) – Figures (if any) – Name of inventors – Name of applicants – Right of proof of Assignment (if any) 12/16/2021 Copyright@MAR, 2014 13

Types of Patent Application I. Ordinary Application (Provisional / Complete) II. Convention Application III. PCT International Application IV. PCT National Phase Application V. Application for Patent of Addition VI. Divisional Application 12/16/2021 Copyright@MAR, 2014 14

3. Drafting of Provisional Specification 12/16/2021 Copyright@MAR, 2014 15

Key Features of Provisional Patent Under section 9 of the act • Application can be filed with provisional specification (without claims) to secure priority (“First to File” rule) • No patent is granted on the basis of a provisional specification • It must be followed by a complete specification within 12 months • Applicant can file more than one provisional application within 12 months of first filing • On request, complete can be termed as provisional, if request within 12 months of filing of complete specification 12/16/2021 Copyright@MAR, 2014 16

Cont… • On request, priority date can be changed from date of provisional to complete, if request before grant of patent • A provisional specification is not a rough draft or a skeleton of the complete specification • It remain permanent and separate document • Provisional application can not be allowed in case of Divisional, Conventional or PCT application designating India 12/16/2021 Copyright@MAR, 2014 17

Filing of Provisional application Form– 1: Application for Grant of Patent Form- 2: Application with Provisional Specification It should include Field of invention Background of the invention Object of the invention Principle of invention General statement of the actual invention Form-3 : Statement and Undertaking regarding foreign filing Form-26: Form of authorization of Patent Agent OR Power of Attorney form on non-judicial stamp paper Proof of Right of Assignment (In favor of applicant by Inventor) 12/16/2021 Copyright@MAR, 2014 18

Fees for Provisional Application Fees Form– 1 Nat. Person 1000/-NA+ 100/- (>30 pages) No Fee Legal entity 4000/+ 400/- (> 30 pages) No Fee 12/16/2021 Form- 2 -NA+ 400/-(> 30 pages) Copyright@MAR, 2014 Form-3 Form-26 19

Pros & Cons of Provisional application v Pros: • Easy to apply as less documents are needed • • • No need of claims and abstract (save time and money) Secure the priority date from the date of its filing 12 month time period is available to complete the research OR to find out some potential licensee to avail financial support • Fees is only either 1, 000/- (Nat. Person) Or 4, 000/- (legal entity) v Cons: • Term of patent will start from the date of its filing • Publication & prosecution of application will start only after filing of complete application 12/16/2021 Copyright@MAR, 2014 20

4. Drafting of Complete Specification 12/16/2021 Copyright@MAR, 2014 21

Embodiments of Complete Specification Under section 9 of the act, submission of complete specification is necessary to obtain a patent. Section 10 provides the content of complete specification [MPPP 5. 6. 1] – – – – 12/16/2021 (a) Title (b) Preamble of the invention (c) Name, address and nationality of the applicant (d) Field of Invention (e) Use of Invention : A brief statement (f) Prior Art (g) Problem to be solved (h) Object of Invention (i) General statement of invention (j) Detailed Description of Invention (k) Best method of working of the invention (l) Statement of claims (m) Signature with date (n) Drawings (o) Abstract Copyright@MAR, 2014 22

Complete Specifications (Rule 13) a) Title: It should be brief, within 15 words, free from fancy expressions, free from ambiguity, give a fair indication of the art or industry to which it relates Eg: “Magic ball for cricket” (X) “Novel ball for cricket” (√ ) b) Preamble: It should be mentioned on Form-2 with other details. . “The following specification particularly describes the invention and the manner in which it is to performed” 12/16/2021 Copyright@MAR, 2014 23

Cont… c) Name, address and nationality: Full name of applicant along with nationality and full address of resident OR business (d &e) Field of the invention and use of Invention: “This invention relates to …………………”… Followed by area of applications along with use of invention (f and g) Prior Art and problem to be solved : This part should indicate experiments going on in the field, patents and pending patent applications in the specific art with short statement of the closest prior art if any 12/16/2021 Copyright@MAR, 2014 24

Cont… h) Object of the Invention: “The principal object of this invention is ……………”, “Another object of this invention is ……………. . ”, “A further object of this invention is …………. ”etc. i) • • Statement of Invention (Summary) : It should be given before detail description It should clearly set forth the distinguishing novel features of the invention Eg: “Accordingly the invention provides an apparatus consisting of ----- which is characterized in that ------”. 12/16/2021 Copyright@MAR, 2014 25

Cont… (j& k) Detailed Description of Invention (with reference to drawings, if any) & Best Mode of working • Includes sufficient detail to give a complete picture of the invention • Give nature of improvements or modifications effected with respect to the prior art • Should fulfill “Best mode” and “Enablement” criteria • Includes examples / drawings or both • Details regarding deposit in case of biological products [Microbial Type Culture Collection and Gene Bank (MTCC) – Chandigarh] 12/16/2021 Copyright@MAR, 2014 26

Cont… L. Statement of Claims • Claims are considered to be the “Heart” of the patent document • Each claim should be clear & in a single sentence • It should be concise, precise and accurately expressed in legal terms defining the scope of the invention • In a good drafting, it begins with broad claims and develops towards claims that are narrower in scope 12/16/2021 Copyright@MAR, 2014 27

Cont… • • • It should frame to protect either a product or process or apparatus or all It should start with preamble, “I or we claim” It should start from the fresh page after full description If there are more than ten claims then additional fee should be paid A claim must be clear, complete and supported by description Any subjective words like “thin”, “strong”, “a major part”, “such as”, “when required” or “any” should be avoided 12/16/2021 Copyright@MAR, 2014 28

Cont… v A claim usually consists of three parts : • Introductory phrase • Body of the claim, and • Link that joins the two segments Eg: “A tool for opening metal containers, the tool comprising a spindle split throughout its length……. ” v • • Structure of Claim includes…. Independent Claim Dependent Claim Omnibus Claim [Structure claim/ picture claim] Markush -Type Claims [To claim new series of chemical compounds] 12/16/2021 Copyright@MAR, 2014 29

Cont… m) Signature with date • Signature with the name (s) of the applicant (s)/ or the authorized registered patent agent be written legibly along with the date n) Drawings • It should be drawn with black Indian indelible ink filed on a standard A 4 size durable paper in duplicate. • Margin of 2. 5 cm on each side • Name of the applicant: On left-hand top corner of the sheet • Sheet number: On right hand top corner of each sheet. (eg. Sheet 1 of 10, 2 of 10……) • Signature of the applicant/agent: On right hand bottom corner of each sheet with Name 12/16/2021 Copyright@MAR, 2014 30

Cont… o) Abstract • It should be brief, preferably within 150 words, start with the “Title of the invention”, given on a separate page after claim (s) • If necessary, the most relevant figure of the drawings OR chemical structure should be included on abstract page • It is an efficient tool for the purposes of Patent searching • Controller may amend the abstract for providing better information to third parties 12/16/2021 Copyright@MAR, 2014 31

Filing of Complete application – Form– 1: Application for Grant of Patent – Form- 2: Application with Complete Specification It should include Title + Field of invention + background of the invention + object of the invention + principle of invention + general statement of the actual invention + Detailed description + Claims + Abstract + Figures – Form-3 : Statement and Undertaking regarding foreign filing – Form-5: Declaration as to Inventorship – Form-9: Request for express publication (before 18 m of priority)* – From-18: Request for examination (within 48 m of priority) – Form-26: Form of authorization of Patent Agent/Patent Attorney OR Power of Attorney form on non-judicial stamp paper – Proof of Right of Assignment (In favor of applicant by Inventor) 12/16/2021 Copyright@MAR, 2014 32

Fees for Complete application FormFees Form-1 Form-2 Form-3 12/16/2021 Nat. Person 1, 000/+ 100/- (>30 pages) + 200/- (>10 claims) -NA+ 100/- (>30 pages) + 200/- (>10 claims) No Fee Legal entity 4, 000/+ 400/- (>30 pages) + 800/- (>10 claims) -NA+ 400/- (>30 pages) + 800/- (>10 claims) No Fee Form-5 No Fee Form-9 2, 500/-* 10, 000/-* Form-18 2, 500/- 10, 000/- Form-26 No Fee Copyright@MAR, 2014 33

Renewal Fees for Patent 12/16/2021 Copyright@MAR, 2014 34

5. Filing of Ordinary Patent Application 12/16/2021 Copyright@MAR, 2014 35

Cont… 12/16/2021 Copyright@MAR, 36 2014

Cont… 12/16/2021 Copyright@MAR, 37 2014

Cont… 12/16/2021 Copyright@MAR, 38 2014

Cont… 12/16/2021 Copyright@MAR, 39 2014

Cont… 12/16/2021 Copyright@MAR, 40 2014

Cont… 12/16/2021 Copyright@MAR, 41 2014

Cont… 12/16/2021 Copyright@MAR, 42 2014

Cont… 12/16/2021 Copyright@MAR, 43 2014

Cont… 12/16/2021 Copyright@MAR, 44 2014

Cont… 12/16/2021 Copyright@MAR, 45 2014

Cont… 12/16/2021 Copyright@MAR, 46 2014

Cont… 12/16/2021 Copyright@MAR, 47 2014

Cont… 12/16/2021 Copyright@MAR, 48 2014

Cont… 12/16/2021 Copyright@MAR, 49 2014

Cont… 12/16/2021 Copyright@MAR, 50 2014

Cont… 12/16/2021 Copyright@MAR, 51 2014

Cont… 12/16/2021 Copyright@MAR, 52 2014

Cont… 12/16/2021 Copyright@MAR, 53 2014

Cont… 12/16/2021 Copyright@MAR, 54 2014

Cont… 12/16/2021 Copyright@MAR, 55 2014

Cont… 12/16/2021 Copyright@MAR, 56 2014

Cont… 12/16/2021 Copyright@MAR, 57 2014

Cont… 12/16/2021 Copyright@MAR, 58 2014

Cont… 12/16/2021 Copyright@MAR, 59 2014

Cont… 12/16/2021 Copyright@MAR, 60 2014

6. Filing of Other types of Patent Application 12/16/2021 Copyright@MAR, 2014 61

i) Filing for Convention application q Filing procedure is similar to “Filing with Complete Specification” q All the forms mentioned therein…viz. Form-1, 2, 3, 5, 9, 18, 26 are required q Additionally “Certified copy of priority document” is required q It can be filed within 12 months of priority date in any convention country 12/16/2021 Copyright@MAR, 2014 62

ii) Filing PCT application v Receiving Office (RO): – PTO-Office (Kolkata/ Delhi/Mumbai/Chennai) OR – International Bureau (IB), Geneva, Switzerland v Language of filing: – – RO/IN: English OR Hindi RO/IB : Any language v Documents for Application: i. ii. 12/16/2021 Request form (PCT/RO/101) OR “PCT Easy form” Description Copyright@MAR, 2014 63

Cont. . iii. iv. v. vii. One or more claims Abstract Drawings (if any) Fees (Transmittal + Search + International Filing) Power of attorney (or general power of attorney) form viii. Certified copy of priority document v No. of copies required: Ø 3 sets in case of RO/IN (either in English/Hindi) Ø 1 set in case of RO/IB (in any language) 12/16/2021 Copyright@MAR, 2014 64

Cont… v Competent ISA: – – – Austrian Patent office (AT) Australian Patent Office (AU) European Patent Office (EP)* China Intellectual Property Office (CN) United States of America (US) Swedish Patent Office (SE) v Competent IPEA: q All above. But EP can be selected as IPEA, if ISA selected was either AT, EP or SE. q Same way, US can be selected only if ISA was US 12/16/2021 Copyright@MAR, 2014 65

Facts about PCT application q q After first application File PCT application in 12 months (provisional/complete) PCT gives total 31 months time period (from priority) before entry in any contracting states There is a provision for “Express examination” (using Form-18) for application entered in national phase via PCT (ie before 31 month) Recently, WIPO notified Indian Patent office (IN) as an competent ISA & IPEA. New office is under construction at Delhi in the campus of Delhi PTO (Dwarka area) & will start functioning by mid of next year 12/16/2021 Copyright@MAR, 2014 66

Fees for PCT application * * ## 6 : Fees for natural person 8 : New Fees applicable from 1. 1. 09 * : 90% fee reduction for Natural person (s) # : 75 % fee reduction for Natural person (s), if EP selected 12/16/2021 Copyright@MAR, 67 2014

ISA/IPEA fees (as on 1. 12. 2008) ISA/IPEA ISA fees IPEA Exam Fees IPEA Handling Fees AT USD 314 EUR 200 EUR 121 AU USD 1302 AUD 550 AUD 196 CN USD 280 CNY 1, 500 CNY 200 USD 2665** USD 2665 EUR 1, 675 ** SEK 5, 000 EUR 121 ** SEK 1, 110 USD 1800 USD 600 USD 171 EP** SE US ** : 75 % fee reduction for Natural person (s), if EP selected 12/16/2021 Copyright@MAR, 68 2014

iii) Filing for PCT National Phase application q q q Filing procedure is similar to “Filing with Complete Specification” All the forms & Fees mentioned therein…viz. Form-1, 2, 3, 5, 9, 18, 26 are required Additionally “Certified copy of priority document” is required It can be filed within 31 months of priority date in any convention country There is a provision for “Express examination” 12/16/2021 Copyright@MAR, 2014 69

7. E-Filing Procedure in India 12/16/2021 Copyright@MAR, 2014 70

v v What is e-Filing? - E-filing is a new service provided by the Intellectual Property Office, India in order to enable customers to apply for a Patent on-line. It was started from 20 th July 2007 Who can file a patent application on-line? - Any Individual (Indian national or foreigner) - Registered Patent Agent - Proprietor - Organization 12/16/2021 Copyright@MAR, 2014 71

What are the benefits of e-Filing? – – – – 12/16/2021 Receive a Patent application number immediately On-line verification to assure error-free filing Speed up the registration process Print the completed application data and receive fee acknowledgement Save the data locally in PC Be able to recall your contact details for subsequent applications Till August 2008, 1000 application were filed via e-filing (appx. 3% of total), but target of IPO is to reach upto 97% in next couple of years Copyright@MAR, 2014 72

How to do e-filing? Step 1: Acquire Class 3 Digital Signatures TCS Code solutions Safe Script 12/16/2021 Copyright@MAR, 73 2014

Step 2: Do Online Registration 12/16/2021 Copyright@MAR, 2014 74

12/16/2021 Copyright@MAR, 75 2014

Cont… Step-3: Login into the System 12/16/2021 Copyright@MAR, 76 2014

Cont… Step-4: Download client software 12/16/2021 Copyright@MAR, 77 2014

Cont… Step-5: Create New Application 12/16/2021 Copyright@MAR, 78 2014

Cont… Step-6: Upload digitally signed New Application [. xml] 12/16/2021 Copyright@MAR, 79 2014

Cont… Step-7: Payment of Fee (EFT/Credit card) 12/16/2021 Copyright@MAR, 80 2014

Cont… Step-8: Generate & Print Acknowledgment 12/16/2021 Copyright@MAR, 81 2014

12/16/2021 Copyright@MAR, 2014 82

Take Home Message… “Innovation is a journey from mind to market, Concept to commercialization. ” 3 Ps Principle PATENT PUBLISH PROSPER 12/16/2021 Copyright@MAR, 2014 83

GTU Vision 2014 • GTU has fix up a goal to file at least 500 Patents from the domains of Engineering and Pharmacy by the end of next academic year June-2014. • So, lets contribute to fulfill our vision to make GTU a world class Research Oriented University. Dr. Akshai K. Aggarwal Honb. Vice-Chancellor, Gujarat Technological University, Ahmedabad. 12/16/2021 Copyright@MAR, 2014 84

Thank You 12/16/2021 Copyright@MAR, 2014 85