Patent Application

1. Members shall require that an applicant for a patent shall disclose the invention in a manner sufficiently
clear and complete for the invention to be carried out by a person skilled in the art.

• This is a mandatory element.

Section 10(4)(b) of The Patents Act, 1970 Every complete specification shall disclose the best method of
performing the invention which is known to the applicant and for which he is entitled to claim protection.

Section 64 (1) (h) of the Patents Act: Revocation of Patents.

that the complete specification does not sufficiently and fairly describe the invention and the method by which it
is to be performed, that is to say, that the description of the method or the instructions for the working of the
invention as contained in the complete specification are not by themselves sufficient to enable a person in India
possessing average skill in, and average knowledge of, the art to which the invention relates, to work the
invention, or that it does not disclose the best method of performing it which was known to the applicant for the
patent and for which he was entitled to claim protection.
may require the applicant to indicate the best mode for carrying out the invention known to the inventor at
the filing date or, where priority is claimed, at the priority date of the application.

• This is an optional element

what constitutes the best mode of executing the invention depends upon what the inventor knew and considered
to be the best way of executing his invention, at the time of the filing of the patent application or the priority
date. (provisional application)

This information rarely includes the actual know-how for the execution of the invention, since at the time of
filing there is seldom production experience.

• So one has to give only best way of executing his invention in the provisional application and complete
disclosure in the complete specification and that complete specification should be clear and complete to
the person skilled in the art.
• Question: will the idea of ‘person skilled in the art’ differs from country to country?
‘PERSONS SKILLED IN THE ART’ UNDER THE TRIPS AGREEMENT

• The WIPO Intellectual Property Handbook makes various reference to ‘person skilled in the art’ but uses the
phrase ‘person having ordinary skill in the art’.
• So different jurisdictions will have different interpretation regarding the person skilled in the art.

PERSONS SKILLED IN THE ART under European Law:

Windsurfing International v. Tabur Marine (Great Britain), [1985] RPC 59, 73.

1. (a) Identify the notional ‘person skilled in the art’;

(b) Identify the relevant common general knowledge of that person;
2. Identify the inventive concept of the claim in question or if that cannot readily be done, construe it;
3. Identify what, if any differences exist between the matter cited as forming part of the ‘state of art’ and the
inventive concept of the claim as construed;
4. Viewed without any knowledge of the alleged invention as claimed, do those differences constitute steps
which would have been obvious to the person skilled in the art or do they require a degree of invention?

“boring technician who holds a good clarity of his basics, but is not so clever to come up with anything on his
own”
PERSON HAVING ORDINARY SKILL IN THE ART under U.S. Law under European Law:

Environment Designs, Ltd. v. Union Oil Co., 713 F.2d 693, 696 (Fed. Cir. 1983).

a. The educational level of the inventor;

b. Type of problems encountered in the art;
c. Prior art solutions to those problems;
d. Rapidly with which inventions are made;
e. Sophistication of the technology
f. Education level of active workers in the field.

PERSONS SKILLED IN THE ART under Indian Law:

Sankalp Rehabilitation Trust v. Hoffmann–Roche, while defining the person skilled in the art, the Intellectual
Property Appellate Board (of India) (IPAB) stated that such a person has read the prior art and knows how to
proceed in the normal course of research on the basis of what he knows of the state of the art. He does not need
to be guided step-by-step, and can work his way through. He reads the prior art as a whole and allows himself to
be taught by what is contained in it.
Types of Patent Application

a) Ordinary Application

b) Application under Section 54: Patents of addition. –

(1) Subject to the provisions contained in this section, where an application is made for a patent in respect of
any improvement in or modification of an invention described or disclosed in the complete specification filed
therefor (in this Act referred to as the "main invention") and the applicant also applies or has applied for a patent
for that invention or is the patentee in respect thereof, the Controller may, if the applicant so requests, grant
the patent for the improvement or modification as a patent of addition.
(2) Subject to the provisions contained in this section, where an invention, being an improvement in or
modification of another invention, is the subject of an independent patent and the patentee in respect of that
patent is also the patentee in respect of the patent for the main invention, the Controller may, if the patentee so
requests, by order, revoke the patent for the improvement or modification and grant to the patentee a patent of
addition in respect thereof, bearing the same date as the date of the patent so revoked.
Types of Patent Application

c) Application under Section 16. Power of Controller to make orders respecting division of application.

(1) A person who has made an application for a patent under this Act may, at any time  67 [before the grant of the
patent], if he so desires, or with a view to remedy the objection raised by the Controller on the ground that the
claims of the complete specification relate to more than one invention, file a further application in respect of an
invention disclosed in the provisional or complete specification already filed in respect of the first mentioned
application.
(2) The further application under sub-section (1) shall be accompanied by a complete specification, but such
complete specification shall not include any matter not in substance disclosed in the complete specification filed
in pursuance of the first mentioned application

d) Conventional Application under section 133/134

e) National phase application under PCT Under Section 133/134

 APPLICATION AND ESSENTIAL DOCUMENTS

Covering letter- indicating the list of documents;

Application for Grant of Patent in Form 1 [section 7, 54 & 135 and Rule 20(1)] in duplicate

Complete/Provisional specification in Form 2 in duplicate [Section 10; Rule 13]

Statement and Undertaking in Form 3 [Section 8; Rule12]

Power of Attorney in Form 26 (in original) (Rule 3.3 (a) (ii)); (if filed through attorney)

Declaration of Inventor-ship in Form 5 (only in case of an Indian Application; (Rule 4.17)

Request for examination: Form 18

Requisite Statutory fees ( cheque / DD)

Request for publication. This is optional (form 9) if the express publication is required

Form 28 only required to be submitted by a small entity

APPLICATION AND ESSENTIAL DOCUMENTS
TYPE OF NATIONAL CONVENTION PCT APPLICATION DIVISIONAL PATENT OF
DOCUMENT APPLICATION APPLICATION APPLICATION ADDITION
FORM 1: GENERAL YES YES YES YES, reference to YES, reference to
APPLICATION original application original application
to be cited to be cited
FORM 2: YES NO NO NO NO
PROVISIONAL
APPLICATION
FORM 2: YES YES YES YES YES
COMPLETE
APPLICATION
FORM 5: YES YES YES NO YES
DECLARATION OF
INVENTORSHIP
FORM 4: REQUEST
FOR EXTENSION
OF TIME
ASSIGNMENT YES YES YES YES YES
DEED, IF ANY
TYPE OF NATIONAL CONVENTION PCT APPLICATION DIVISIONAL PATENT OF
DOCUMENT APPLICATION APPLICATION APPLICATION ADDITION
PROOF OF NO YES NO NO NO
PRIORITY
ADDRESS FOR YES YES YES NO NO
SERVICE
FORM 3: YES NO NO NO NO
APPLICANT
APPLYING
OUTSIDE INDIA

Order of Recording Application

Rule 11 of Patent Rules 2003: Order of recording applications.—The applications filed in a year shall constitute
a series identified by the year of such filing. In case of an application filed corresponding to an international
application in which India is designated, such application shall constitute a series distinct from the rest of the
applications identified by the year of filing of corresponding applications in India.
Numbering format
Numbering format
 Specification
Section 10 Contents of specifications. –
(1) Every specification, whether provisional of complete, shall describe the invention and shall begin with a title
sufficiently indicating the subject-matter to which the invention relates.
(2) Subject to any rules that may be made in this behalf under this Act, drawings may, and shall, if the Controller so
requires, be supplied for the purposes of any specification, whether complete or provisional; and any drawings so
supplied shall, unless the Controller otherwise directs be deemed to form part of the specification, and references in this
Act to a specification shall be construed accordingly.
(3) If, in any particular case, the Controller considers that an application should be further supplemented by a model
or sample of anything illustrating the invention or alleged to constitute an invention, such model or sample as he may
require shall be furnished 40 [before the application is found in order for grant of a patent], but such model or sample
shall not be deemed to form part of the specification.
(4) Every complete specification shall-(a) fully and particularly describe the invention and its operation or use and the
method by which it is to be performed;
(b) disclose the best method of performing the invention which is known to the applicant and for which he is entitled
to claim protection; and
(c) end with a claim or claims defining the scope of the invention for which protection is claimed;
41
 [(d) be accompanied by an abstract to provide technical information on the invention

(5) The claim or claims of a complete specification shall relate to a single invention, or to a group of inventions linked so
as to form a single inventive concept, shall be clear and succinct and shall be fairly based on the matter disclosed in the
specification.
 Provision to be kept in mind before drafting the claims
Section 48: Subject to the other provisions contained in this Act and the conditions specified in section 47, a
patent granted under this Act shall confer upon the patentee—
            (a) where the subject matter of the patent is a product, the exclusive right to prevent third parties, who do
not have his consent, from the act of making, using, offering for sale, selling or importing for those purposes that
product in India;
            (b) where the subject matter of the patent is a process, the exclusive right to prevent third parties, who do
not have his consent, from the act of using that process, and from the act of using, offering for sale, selling or
importing for those purposes the product obtained directly by that process in India:
 Sample Guidelines for Filling-up Indian Patent Form - 2

Title: sufficiently indicate the subject matter, No fancy expressions, Precise, Within 15 words, Do not use:
Inventor name, ‘Patent’, Words in other languages, ‘etc’

Field and Use of Invention: “This invention relates to …………………”, include advantages of the invention
and bring out the areas to show the advantages mentioned, substantiate industrial applicability

Prior Art: Describe invention by clearly distinguishing from closest prior art known to the applicant

Objects of Invention: Necessity of Invention, technological problem with existing technology, proposed
solution

It has already been proposed ………………” followed by the objects which the inventions has in view e.g “The
principal object of this invention is ……………”, “Another object of this invention is ……………..”, “A further
object of this invention is………….”

Summary: distinguish novel features, brief different aspects.

Detailed description: for the person skilled in the art

• Improvement and modification from closest prior art

• Examples and drawings

• Describe in such a way that enablement is possible

• Reference to the drawings should be specific: “This invention is illustrated in the accompanying drawings”,
in the detailed description, keep referring to the reference numerals indicating corresponding parts in the
various figures

• If Patent of Addition, then, at the beginning of the description, a definite statement indicating an improvement
in or modification of, the original invention, and the serial number of the Application for Patent in respect of
the original invention. The Specifications should also contain a short statement of the invention as disclosed
in the earlier Specification.

• Terms in other languages, if any, used in the description should be accompanied by their English equivalents.
Drawings

• Drawings or sketches, which require a special illustration of the invention, shall not appear in the description
itself. Such drawings shall be on separate sheet(s).

• Drawings shall be prepared neatly and clearly on durable 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 be on a scale sufficiently large to show the inventions clearly and dimensions shall not be
marked on the drawings.

• Drawings shall be sequentially or systematically numbered and shall bear— in the left hand top corner, the
name of the applicant; in the right hand top corner, the number of the sheets of drawings, and the consecutive
number of each sheet; and in the right hand bottom corner, the signature of the applicant or his agent.

• No descriptive matter shall appear on the drawings except in the flow diagrams.
Claims:

Claims should start from a fresh page, after detailed description of the invention and should be serially
numbered.
The description of invention in the complete specification is to be followed by a “statement of Claims”
proceeded by the prescribed preamble, “I / We Claim” as the case may be.
Each claim should be in a single sentence and should be clearly worded. 3 parts: Preamble (identifies the
category of the invention and sometimes the purpose (for example, a machine for waxing paper, a composition
for fertilizing soil) Transitional Phase (comprising of, including, consisting of, and consisting essentially of)
Body (claim).

• No restriction as to the number of claims. first claim is always an independent claim also known as
“Principal Claim”. It should clearly define the essential novel features of the most preferred embodiment of
the process/product that constitutes the invention.

• dependent claim derives antecedence from an independent claim and reads into it the features of the
independent claim and may contain additional non-essential features and even the minute aspects and
optional features.

• A claim should be clear in the sense that it should not cause the reader to speculate. For example, if words
like “thin”, “strong”, “a major part”, “such as”, “when required” or “any” are used, the reader may make
a subjective judgment unless such expression follows some definite value.
Abstract:

• Title
• An idea to explain the area to be searched for prior art
• Concise summary contained in the specification
• Within 150 words