A patent is a statutory privilege granted by the Government to an inventor, and to other persons deriving their rights from the inventor (Eg: Assignee) for a fixed period of years, to exclude other persons from manufacturing, using or selling a patented product, or from utilizing a patented method or process. At the expiration of the period of the patent, the patented invention is available to the general public or can be said it falls into the public domain.
Prosecuting an Indian Patent Application
An application for a patent in the prescribed form along with the prescribed fee has to be filed in the appropriate patent office. Examiners of patents scrutinize the application accompanied by a specification so that it satisfies the requirements. After examination, the Patent Office will raise objections and once the applicant convinces the Controller Of Patents will put the specification in the Official Gazette and on its acceptance without any controversy, a patent shall be granted.
A patent grant gives the patentee the exclusive right to make or use the patented article or use the patented process by preventing all others from making or using the patented article or using the patented process. The patentee can assign, grant licenses or deal for consideration.
With the growing awareness of importance and benefits of getting a patent on one’s own innovation there has been upsurge on number of patent application being filed at the Indian Patent Office.
The following article is an effort to bring out common misconceptions faced by the Indian patent applicant regarding the filing and prosecuting of Indian Patent application .
Common Myths on Indian Patent Filing
All inventions which are novel , has inventive step and has industrial application are liable to get patented under Indian Patent Act , 1970.
Provisional specification is a rough draft or skeleton of complete specification.The complete specification which follows provisional specification can replace the latter .
A complete specification can not be filed directly. It is mandatory to file a Provisional Specification before filing complete specification .
An application accompanying a provisional specification is deemed to be abandoned if no complete specification is filed within twelve months from the date of filing of the provisional specification. However, the Indian Patent applicant has an option to post-date the provisional specification . Such request for post-dating can be made any time after 12 months from the date of application.
An Indian Patent applicant cannot withdraw his patent application once the complete specification has been filed .
An Indian Patent applicant can file a non – publication request so as not to bring his patent application in to public domain.
An Indian patent applicant can keep his invention secret with himself and the controller.
Request for examination can only be filed by the patent applicant and not by anybody else.
For filing request for examination , a Patent applicant has to wait for his patent application to get published and only after that he can file a request for examination .
Claims are deemed to be a part of complete specification and cannot be filed along with the provisional specification .
If the patent applicant forgets to file any claim he/she can always amend his patent application or granted patent to include those claims.
Detailed description of invention requires sufficient detail of invention in question , but it does not require to describe nature of improvements/ or modification effected with respect to prior art .
Inventor’s name can be included in the title of specification as inventor has done all the research and hard work so it is permissible to include his name in the title.
A model or sample of invention can not be submitted as a part of complete specification .
The invention disclosed in complete specification can be commercialized only after the grant of patent.
An opposition can be filed by anybody who is interested to oppose the patent application/ granted patent.
In case of any infringement which has occurred in between the period of publication and grant of patent , damages of the infringement cannot be claimed by the patentee.
After the grant of patent , the patent office will help in commercialization of patent i.e it will help in finding the potential licensees / or users for the patent.
An Indian Patent applicant is free to file an application abroad .Indian Patent office is not concerned with the information on foreign filing of same or substantially invention.
Patent office helps to select the patent attorney/ agent to make patent search ,to prepare & prosecute the patent application .
With the advent of increase in patent filing by big companies like Nokia , Samsung etc it is now well accepted that IP Rights is an asset for the company . Google’s planned $ 125 billion acquisition of Motorola Mobility Holdings , payment of $4.5 billion for 6,000 patents of bankrupt Nortel Networks by firms including Apple , Research In Motion Ltd and Ericsson’s paid $4.5 billion for 6,000 patents of bankrupt Nortel Networks underlined the value of Intellectual Property in the fast changing telecoms world where established players are seeking to keep out newer rivals.
Hence, to get a patent granted by the Indian Patent Office as expeditiously as possible it is important file an Indian Patent application in accordance with the Indian Patent Act .
Part 2 – of the article will bring out the sections & explanations to clarify above myths on Indian Patent filing , so stay tuned !