UNIT – 5: PATENTS

Patents – objectives and benefits of patent, Concept, features of patent, Inventive step,
Specification, Types of patent application, process E-filing, Examination of patent, Grant of patent,
Revocation, Equitable Assignments, Licenses, Licensing of related patents, patent agents,
Registration of patent agents.

1. Patents – Objectives and Benefits of a Patent

Patent is an official document giving it’s owner sole right to make, use or sell the invention and
preventing others from using it or copying it. It is an invention that is legally protected.
Types of Patent:
 Utility Patent – It is a patent which applies to the creation of a new or improved product or
process.
Example:- Nail cutter, washing machine, process of making steel etc.
 Design Patent – It is a patent which applies to the shape of any material, the shape must be
new and original.Design Patent is given for the aesthetic of material not for utility.
Example:-cut of a dress, shape of an automobile etc.
 Plant Patent – It is a patent which is given to the new variety of plants that are asexually
reproduced. A plant is asexually reproduced if it is reproduced by a method such as cutting
or grafting instead of using seeds.
Example:- A golden color flower created through grafting.

Key Features of a Patent

1. Novelty (Newness)
o The invention must be new.
o It should not have been shown, published, or used anywhere in the world before
applying for the patent.
2. Inventive Step (Non-obviousness)
o The invention must not be something very obvious to experts in that field.
o It should have a creative or unique idea that is not easy to guess from existing
knowledge.
3. Industrial Use (Applicability)
o The invention should be useful in industry, farming, or services.
o It must have a practical purpose and not just be a theory.
 4. Clear Explanation
o The patent application must clearly explain how the invention works.
o It should be detailed enough so that another skilled person can recreate it.
5. Exclusive Rights
o The patent owner gets special rights.
o Others cannot make, use, sell, or copy the invention without permission.

Objectives and Benefits of a Patent

Objectives of a Patent
The main aim of a patent is to protect inventions and support innovation.
1. Encourage New Ideas – Patents motivate people to create new products and technologies.
2. Protect Inventor’s Work – The inventor gets full rights, and others cannot copy or use it
without permission.
3. Support Research – Companies and scientists do more research when they know their
ideas will be safe.
4. Share Knowledge – Patent details are published, so others can learn from it and create new
improvements.
5. Help Economic Growth – New inventions lead to new businesses, jobs, and growth of the
country.

Benefits of a Patent
1. Exclusive Rights – Only the patent owner can use, make, or sell the invention for about 20
years.
2. Business Advantage – A patented product is special in the market and can earn more
money.
3. Earn Income – Patents can be sold or given on license to other companies for profit.
4. Recover Investment – Money spent on research can be gained back by selling the
invention.
5. Encourages Creativity – Inventors try to create more useful and unique things.
6. Social Benefits – Society gets new medicines, machines, and technologies.
7. Legal Protection – If someone copies the invention, the patent owner can take legal action.

Inventive Step (Non-Obviousness)

 The inventive step is one of the core requirements for granting a patent.
  An inventive step means the invention must not be obvious to a person skilled in that
field.
 It should show some creativity or technical advancement compared to existing
knowledge.
Key Points of Inventive Step
1. Not Obvious
o The invention should not be something that an expert can easily guess.
2. Technical Advancement
o It must provide better technology or improvement over existing inventions.
3. Economic Significance
o The invention should have commercial or practical value.
4. Beyond Common Knowledge
o It must not be a simple modification of what already exists.
5. Judged by Experts
o The Patent Office examines inventive step by comparing with prior art (existing
patents, books, publications).
6. Examples
o A new medicine formula → Inventive step.
o Changing color/size of a product → Not an inventive step.

Specification of Patents
 Specification means the written document submitted with a patent application.
 It explains the invention in detail so that others can understand and reproduce it.
Types of Specification
1. Provisional Specification
o Filed when the invention is not fully ready.
o Helps in getting an early filing date.
o Must be followed by a Complete Specification within 12 months.
2. Complete Specification
o Gives the full details of the invention.
o Must include claims, drawings, and clear description.
o Required for the actual grant of patent.
Key Elements of a Patent Specification:

1. Title: A brief title of the invention.

2. Background: A description of the existing technology or problems that the invention
addresses.
3. Detailed Description: A detailed explanation of how the invention works, how it is made,
and its applications.
 4. Claims: The claims define the legal scope of the patent protection and detail the invention's
novelty.
5. Drawings (if necessary): Diagrams or illustrations that explain the invention more clearly.
6. Abstract: A concise summary of the invention, usually under 150 words.

2. Types of Patent Applications

 Provisional Application
 Filed when invention is not fully ready.
 Secures an early filing date.
 Must file complete application within 12 months.
 Complete (Ordinary) Application
 Filed when invention is fully developed.
 Contains full details of the invention.
 Grants full legal rights.
 Convention Application
 Filed if inventor has already filed in a foreign country.
 Must be filed in another country within 12 months.
 Based on the Paris Convention.
 PCT Application (Patent Cooperation Treaty)
 A single international application for many countries.
 Saves time and cost.
 Final approval given by each country’s patent office.
 Divisional Application
 Filed when one application has more than one invention.
 Divided into separate applications.
 Ensures each invention gets protection.
 Patent of Addition
 Filed for improvement or modification of an existing patent.
 Linked to the main patent.
 Ends when the original patent expires.
Final List (Short Form for Revision):
 Provisional Application → Temporary, early filing, 12 months to complete.
  Complete Application → Full details, full rights.
 Convention Application → Foreign filing, 12 months, Paris Convention.
 PCT Application → One application, many countries, saves time.
 Divisional Application → Split when more than one invention.
 Patent of Addition → For improvements, linked to main patent.

Type of Application Key Features Example

- Filed when invention is not fully ready. -
A researcher files early for a
1. Provisional Secures early filing date (first come, first
new machine design still under
Application right). - Valid for 12 months, then must
testing.
file complete application.
2. Complete - Filed when invention is fully developed. Filing for a new mobile phone
(Ordinary) - Contains full details and claims. - Gives model after all features are
Application full legal protection. ready.
- Filed in another country within 12
An inventor first files in the
3. Convention months of first filing. - Based on Paris
USA, then files in India within
Application Convention. - Same priority date as
12 months.
original filing.
4. PCT Application - One application valid for many countries. A pharma company files one
(Patent Cooperation - Saves time and cost. - Each country’s PCT application to protect a
Treaty) patent office still examines separately. new medicine in 50 countries.
- Filed when main application has more A main application covers both
5. Divisional than one invention. - Splits into separate a solar panel and a battery
Application applications. - Keeps same filing date as system → divided into two
parent application. separate patents.
A person has a patent for a
- Filed for improvement or modification of
6. Patent of washing machine and later
an existing patent. - Linked to the main
Addition patents an improved spin
patent. - Expires with the original patent.
system.

3. Process of E-Filing a Patent

E-Filing a Patent
E-Filing of a patent means filing a patent application online through the official patent office
portal instead of submitting physical documents.
Process of E-Filing a Patent
1. Registration on E-Filing Portal
 Visit the official Indian Patent Office (IPO) e-filing portal.
 Create a user ID and password.
 Digital Signature Certificate (DSC) is required for authentication.
2. Prepare Patent Documents
 Draft the patent application as per the Patent Act.
 Important documents include:
o Form-1: Application for grant of patent.
o Form-2: Provisional or complete specification.
o Form-3: Statement and undertaking regarding foreign applications.
o Form-5: Declaration of inventorship.
o Form-26: Authorization of patent agent (if filed through an agent).
o Drawings and diagrams (if required).
o Abstract of the invention.
3. Draft Specification
 Specification should be clear and complete.
 Must include:
o Title of invention
o Abstract (summary)
o Background of invention
o Detailed description
o Claims (define scope of protection)
o Drawings/diagrams (if any).
4. Login and Select Application Type
 Log in to the e-filing portal with ID and password.
 Choose the type of application:
o Provisional Application
o Complete Application
o Convention Application
o PCT Application, etc.
5. Upload Documents
 Upload all required documents in PDF format.
 Each form and attachment must be digitally signed.
 The system checks for errors before submission.
6. Payment of Fees
 Pay the prescribed fee online through net banking, debit card, credit card, or challan.
 Fee amount depends on applicant type: individual, startup, small entity, or large
company.
 Extra fee may apply for additional pages, claims, or drawings.
7. Submission of Application
 Once documents are uploaded and fees paid, click Submit.
 The system generates:
o Patent Application Number
o Electronic Acknowledgement Receipt
8. Tracking and Further Process
 The application can be tracked online using the patent number.
 The inventor can check the status of:
o Publication
o Examination request
o Objections (if any)
o Grant of patent
9. Advantages of E-Filing
 Fast and convenient (file anytime, anywhere).
 Reduces paperwork.
 Saves time and cost.
 Provides instant acknowledgement and tracking facility.
 More secure due to digital signatures.

4. Examination of Patent

 Examination of a patent means the Patent Office carefully checks the application to
decide whether the invention can get a patent or not.
 Once the patent application is filed, it undergoes a formal examination process to assess
 whether the invention meets the criteria for patentability.

Steps in Examination Process

1. Request for Examination (RFE)
o A patent is not examined automatically.
o The inventor (or any interested person) must file a request (Form-18).
o This request must be made within 48 months from filing.
2. Allotment to Examiner
o The application is sent to a Patent Examiner.
o The examiner studies the invention in detail.
3. Checking Formalities
o Examiner first checks if all forms, documents, fees, and signatures are correct.
o If anything is missing, the application is sent back for correction.
4. Search for Prior Art
o Examiner searches in patent databases, journals, books, and online sources.
o This is to check if a similar invention already exists.
5. Checking Conditions of Patentability
Examiner verifies if the invention has:
o Novelty (it must be new).
o Inventive Step (not obvious to experts).
o Industrial Use (should be useful in industry, services, or agriculture).
o Clarity (must be clearly described).
o No illegal subject (cannot be against public order, morality, or natural laws).
6. First Examination Report (FER)
o Examiner issues a report (FER) with findings and objections.
o Example: “The invention is not clear” or “similar patent already exists.”
7. Reply by Applicant
o Inventor must reply to the FER within 6 months (extendable by 3 months).
o They can:
 Give clarifications.
 Modify claims.
 Provide extra documents.
8. Hearing (if required)
 o If objections are still not solved, the Controller arranges a hearing.
o The inventor or patent agent explains the invention.
9. Grant of Patent
o If everything is clear, the Controller grants the patent.
o The patent is then published in the Patent Journal.
10. Refusal of Patent
 If requirements are not met, the application is refused.
 Reasons are given in writing.
Importance of Examination
 Ensures that only genuine inventions get a patent.
 Prevents granting of patents for already known ideas.
 Maintains quality and credibility of patents.
 Helps society by allowing only useful inventions to be protected.

5. Grant of Patent

 Grant of Patent means the Patent Office officially approves the invention after
examination and gives the inventor exclusive rights to use and protect it for a fixed time.
 If the application passes the examination, the patent is granted. The grant gives the
inventor exclusive rights to the invention for a specified period, typically 20 years from the
filing date.

Steps in Grant of Patent

1. Filing of Application
o Inventor files a patent application (Provisional or Complete) with all details.
2. Publication of Application
o Application is published in the Patent Journal after 18 months (or earlier if
requested).
o Once published, the invention becomes public knowledge.
3. Request for Examination (RFE)
o Applicant must file Form-18 (RFE) within 48 months of filing.
o Without RFE, the patent will not be examined.
4. Examination by Examiner
o Patent Examiner studies the invention.
 o Checks novelty (newness), inventive step, usefulness, and clarity.
5. Search for Prior Art
o Examiner searches existing patents, journals, books, and websites.
o Makes sure the invention is not already known.
6. First Examination Report (FER)
o Examiner prepares a report with findings and objections.
o Example: Claims not clear, invention not new, or missing details.
7. Reply by Applicant
o Applicant has 6 months (extendable by 3 months) to reply.
o Can modify claims, add explanations, or submit extra documents.
8. Hearing (if needed)
o If objections are not solved, Controller arranges a hearing.
o Applicant or patent agent explains and defends the invention.
9. Decision of Controller
o If objections are cleared → Patent is granted.
o If not → Patent is refused with reasons.
10. Entry in Patent Register
o Once granted, the invention is entered in the official Patent Register.
o A Patent Certificate is issued to the inventor.
11. Publication of Grant
o The grant is published in the Patent Journal.
o This gives public notice that the invention is now protected.
Rights After Grant of Patent
1. Exclusive Rights – Only the inventor can make, use, sell, or distribute the invention.
2. Right to License – Patent can be licensed to others for money (royalty).
3. Right to Sell – Patent can be sold (assigned) to another person or company.
4. Right to Sue – Inventor can take legal action if someone copies the invention.
5. Recognition – Inventor is officially recognized as the creator.

Term of a Patent
 Valid for 20 years from the filing date.
 After 20 years, the invention enters the public domain (anyone can use it freely).
Post-Grant:
  Publication: Once granted, the patent is published in the ofÏcial patent journal, making it
public knowledge.
 Enforcement: The patent holder can enforce their rights by preventing others from using
the patented invention without consent. Legal action can be taken in case of infringement.
 Renewal Fees: Patent holders must pay periodic renewal fees to maintain the validity of
their patents.

6. Revocation
Revocation means cancelling a granted patent by the Patent Office or Court, if it is proved that
the patent was wrongly granted.
Who Can Apply for Revocation?
1. The Central Government.
2. Any interested person (e.g., competitor, affected business).
3. The patentee himself (can surrender his patent).

Grounds (Reasons) for Revocation

1. The invention is not new (already known or published).
2. It has no inventive step (obvious to experts).
3. It is not useful (no industrial application).
4. Patent was obtained by fraud or misrepresentation.
5. Invention is against public order or morality.
6. Invention already patented in India or abroad.
7. Wrong or incomplete disclosure of information.
8. Failure to disclose details of foreign patent applications.
9. Invention not used (not worked in India).
10. Specification is unclear or insufficient.
11. The applicant was not the true inventor.

Authorities Who Can Revoke a Patent

1. High Court – Can revoke in legal proceedings.
2. Intellectual Property Appellate Board (IPAB) – Special body (now merged with High
 Court).
3. Controller of Patents – In case of non-use or surrender.

7. Equitable Assignments
 Equitable Assignment means transfer of some rights in a patent, but not full ownership.
 It gives the assignee (receiver) certain benefits but the original patentee (owner) still
keeps main control.
Key Points
1. Partial Transfer – Only some rights are given (e.g., right to earn royalties).
2. No Full Ownership – The assignee cannot claim as full owner of the patent.
3. Must be in Writing – Agreement should be in written form and signed.
4. Examples of Rights Assigned
o Right to receive a share of income.
o Right to use invention in a particular region.
o Right for a limited period of time.
5. Not Recorded in Register – Equitable assignments are not always recorded in the Patent
Register (unlike legal assignments).
6. Purpose – Helps in sharing profits or benefits without losing ownership.
7. Can be Conditional – Rights may be given only under certain conditions (e.g., only for
medical use).

8.Licences of Patent
Meaning:
 A patent licence is a written agreement where the patent owner (licensor) allows
another person or company (licensee) to use, produce, or sell the patented invention.
 Ownership stays with the patent holder, but certain rights are shared.

Types of Patent Licences

1. Voluntary Licence
o Given freely by the patent owner.
 o Example: A company gives permission to another firm to manufacture its drug.
2. Compulsory Licence
o Ordered by the Government for public benefit.
o Granted if invention is not available at a reasonable price or not manufactured in
the country.
o Example: Compulsory licences for life-saving medicines.
3. Exclusive Licence
o Only one licensee gets rights.
o Even the owner cannot use the patent (unless agreed).
4. Non-exclusive Licence
o Many people can use the same invention.
o Owner still keeps the right to use.
5. Territorial Licence
o Rights are limited to a specific country or region.
6. Time-bound Licence
o Rights are given only for a particular period.
7. Cross Licence
o Two patent owners allow each other to use their patents.
o Useful when inventions depend on each other.
8. Sub-licence
o A licensee may give rights to another party (with permission).

Advantages of Licensing
 Patent owner earns royalty income.
 Helps inventions reach the market faster.
 Encourages collaboration between companies.
 Useful for international business expansion.
 Supports technology transfer to developing countries.
 Reduces patent disputes by legal agreements.

Licensing of Related Patents

 Some products or processes depend on multiple patents.
 To make/use such products, licences for all related patents must be given together.
 This is called Licensing of Related Patents.
Key Points
1. Connected Patents
o A single product may need rights from many patents.
o Example: A smartphone → needs patents for touch screen, battery, camera,
wireless technology, and software.
2. Bundle Licence (Package Licensing)
o Licences for related patents are given as one package deal.
3. Patent Pooling
o When multiple patent owners combine their patents and license them together.
o Helps reduce royalty stacking (paying too many fees).
4. Avoids Legal Problems
o If related patents are not licensed together, companies may face infringement
cases.
5. Encourages Joint Innovation
o Different patent owners work together to bring complex products to market.
6. Widely Used in High-Tech Fields
o Common in electronics, automobiles, biotechnology, pharmaceuticals.
7. Saves Time & Money
o One combined agreement instead of multiple deals.

Advantages of Licensing Related Patents

 Easy access to all technologies needed.
 Reduces cost of negotiation and legal battles.
 Ensures product development without delays.
 Encourages innovation in industries where many patents overlap.

9.Patent Agents, and Registration of Patent Agents

Patent Agents
  A Patent Agent is a person who is legally allowed to help inventors in preparing, filing,
and managing patents.
 They act as guides for inventors during the entire patent process.
 Without proper drafting and filing, an invention may get rejected — that’s why patent
agents are important.

Roles / Functions of Patent Agents

1. Drafting Applications – Write the patent specification clearly with claims.
2. Filing Patents – File applications in the Patent Office (online or offline).
3. Reply to Office Actions – Answer any objections raised by the Patent Office.
4. Representation – Represent clients before the Controller of Patents.
5. Advisory Role – Advise inventors about patentability, laws, and rights.
6. Search and Analysis – Check if the invention is new by doing a patent search.
7. Maintaining Patents – Help pay renewal fees to keep patents alive.
8. Acting for Foreigners – Help foreign inventors file patents in India.
9. International Filing – Guide inventors for PCT (Patent Cooperation Treaty)
applications.
10. Legal Protection – Help clients avoid infringement issues.

Eligibility to Become a Patent Agent (India)

1. Must be an Indian citizen.
2. Must be 21 years old or above.
3. Must have a science, engineering, or technology degree (B.Sc, B.Tech, B.Pharm, etc.).
4. Must pass the Patent Agent Examination (conducted by Indian Patent Office).
o Written exam = Patent Act + Drafting of specifications.
o Viva (oral) exam = Questions about patent procedures.

Registration of Patent Agents

 Registration means entering the person’s name in the Register of Patent Agents, kept by
the Controller of Patents.
 Only registered agents can officially act as patent agents.

Steps for Registration

1. Application – Candidate applies to Controller with forms & fees.
 2. Verification – Authorities check age, degree, and citizenship.
3. Patent Agent Exam – Written + Viva test must be cleared.
4. Registration in Register – Name is added to the Patent Agents Register.
5. Certificate – A registration certificate is issued.
6. ID Number – Every registered agent gets a unique number.
7. Fees Payment – Renewal fees must be paid regularly to continue practice.
8. Removal – If an agent breaks rules or acts dishonestly, their name can be removed.

Duties of Registered Patent Agents

1. File patent applications on behalf of inventors.
2. Handle correspondence with the Patent Office.
3. Pay government fees for patents.
4. Maintain confidentiality of client inventions.
5. Give legal advice about patent rights.
6. Help inventors in foreign patent filing.
7. Ensure all rules of Patent Act, 1970 are followed.
8. Maintain professional ethics.

Importance of Patent Agents

 Experts in Law + Technology → Can handle both legal and technical matters.
 Saves Time → They know the procedure well.
 Better Chances of Grant → Good drafting increases chances of approval.
 Protects Inventors → Prevents mistakes that could cause rejection.
 Global Support → Helps in filing abroad through treaties.

SIDE HEADINGS
 Patents – Objectives and Benefits of a Patent
o Objectives of a Patent
  Encourage New Ideas
 Protect Inventor’s Work
 Support Research
 Share Knowledge
 Help Economic Growth
o Benefits of a Patent
 Exclusive Rights
 Business Advantage
 Earn Income
 Recover Investment
 Encourages Creativity
 Social Benefits
 Legal Protection
 Types of Patent
o Utility Patent
o Design Patent
o Plant Patent
 Key Features of a Patent
o Novelty (Newness)
o Inventive Step (Non-obviousness)
o Industrial Use (Applicability)
o Clear Explanation
o Exclusive Rights
 Inventive Step (Non-Obviousness)
o Key Points of Inventive Step
 Not Obvious
 Technical Advancement
 Economic Significance
 Beyond Common Knowledge
 Judged by Experts
o Examples
 Specification of Patents
o Types of Specification
 Provisional Specification
  Complete Specification
o Key Elements of a Patent Specification
 Title
 Background
 Detailed Description
 Claims
 Drawings (if necessary)
 Abstract
 Types of Patent Applications
o Provisional Application
o Complete (Ordinary) Application
o Convention Application
o PCT Application (Patent Cooperation Treaty)
o Divisional Application
o Patent of Addition
o (Each has examples and key features explained)
 Process of E-Filing a Patent
o Registration on E-Filing Portal
o Prepare Patent Documents
o Draft Specification
o Login and Select Application Type
o Upload Documents
o Payment of Fees
o Submission of Application
o Tracking and Further Process
o Advantages of E-Filing
 Examination of Patent
o Steps in Examination Process
 Request for Examination (RFE)
 Allotment to Examiner
 Checking Formalities
 Search for Prior Art
 Checking Conditions of Patentability
  First Examination Report (FER)
 Reply by Applicant
 Hearing (if required)
 Grant of Patent
 Refusal of Patent
o Importance of Examination
 Grant of Patent
o Steps in Grant of Patent
 Filing of Application
 Publication of Application
 Request for Examination (RFE)
 Examination by Examiner
 Search for Prior Art
 First Examination Report (FER)
 Reply by Applicant
 Hearing (if needed)
 Decision of Controller
 Entry in Patent Register
 Publication of Grant
o Rights After Grant of Patent
o Term of a Patent
o Post-Grant
 Publication
 Enforcement
 Renewal Fees
 Revocation
o Who Can Apply for Revocation?
o Grounds (Reasons) for Revocation
o Authorities Who Can Revoke a Patent
 Equitable Assignments
o Key Points
o Examples of Rights Assigned
 Licences of Patent
o Types of Patent Licences
  Voluntary Licence
 Compulsory Licence
 Exclusive Licence
 Non-exclusive Licence
 Territorial Licence
 Time-bound Licence
 Cross Licence
 Sub-licence
o Advantages of Licensing
 Licensing of Related Patents
o Key Points
o Advantages of Licensing Related Patents
 Patent Agents
o Roles / Functions of Patent Agents
o Eligibility to Become a Patent Agent (India)
 Registration of Patent Agents
o Steps for Registration
o Duties of Registered Patent Agents
o Importance of Patent Agents