Process Of Examination Of Patent Application Question and Answers

Process Of Examination Of Patent Application

Question 1. Company XYZ Ltd. has made an invention on a new water purifier technology and the company has filed a patent application. The company fears that the Public use of that invention before the date of filing of the application destroy the novelty of the invention. Convince the company XYZ Ltd. why they should not fear by illustrating cases in India.
Answer: Prior public use of the invention before the date of filing of the application destroys the novelty of the invention. However, there is an exception to this general rule.

The Act provides that if an invention has been publicly worked in India within one year before the priority date by the patentee or applicant for the patent or by any third person from whom he derives the title or by the person who has obtained consent to work the invention and such working of the invention was only for reasonable trial and it was necessary to effect such trial or working in public given the nature of the invention then such working of the invention does not anticipate the invention.

The Indian patent law takes the middle way and provides for grace periods in some conditions to evaluate anticipation.

The Indian Patents Act mentions what are not anticipations in Sections 29 to 34, rather than defining anticipation.

Exceptions are mentioned in the Indian Patent Act under which the patent application can be filed despite public disclosure, and such public disclosure will not be considered to have been anticipated.

To conclude, one should file a patent application ideally before publicly disclosing the invention. However, in light of the provisions discussed above one can still contemplate patent application filing.

Lack of novelty is usually referred to as ‘anticipation and is determined by factors such as prior publication, public knowledge, and public use. Commercialized products and selection inventions.

While anticipation is not expressly defined in the Patent Act, Sections 29 to 34 identify what anticipation is not. When testing for anticipation, if a prior art exists (i.e. if the prior art describes something falling within the scope of an alleged claim then, if by studying the prior art the claimed invention can be performed, the claim would be considered to be anticipated.

It may be unnecessary to repeat the prior art test, but expert opinion may be considered to identify anticipation better using relevant expertise.

It can also be identified by showing the predictable result as the outcome of what is described in the prior art, regardless of whether it would be a product or process falling within the scope of the claim.

In India, a patent application is considered to be anticipated if the invention is disclosed in a patent or any other document that is published before the priority date of the application.

However, if the inventor proves that the matter published was obtained fraudulently and was published without his or her consent, then it may not be considered to be anticipated. The concept for identifying prior publication was established in Farbewerke Hoechst Aktiengesellschaft Vormuls. Meister Lucius v.

Unichem Laboratories, wherein the court held as follows: “To anticipate a patent, a prior publication or activity must contain the whole of the invention impugned; i.e., all the features by which the particular claim attacked is limited.

In other words, the anticipation must be such as to describe, or be an infringement of the claim attacked.”

Likewise, in Lailubhai Chakubhai Jariwala v. Chimanlal Chunilai and Co., the court observed that:

‘The two features necessary to the validity of a patent are novelty and utility, but the real test is the novelty of the invention.

Novelty is essential, for otherwise there would be no benefit given to the public and consequently, no consideration moving from the patentee [while interpreting the factor related to public knowledge and public use.”

The court further held that “the next question is, whether the plaintiff’s invention has been anticipated by prior public user.

Has it been publicly used by the plaintiff and/or by others before the date of the application? Public user does not mean a user or exercise of the invention by the public, but a user or exercise in a public manner; and it is in every case a question of fact, If the invention is being put into practice before and at the date of the grant, the grant will not be for a new invention or manufacture, and this applies equally whether the invention is being practiced by the patentee himself or by others.

A use of the invention for trade may constitute a prior user which invalidates the patent, and it has been held that the prior public sale of goods or articles treated according to the invention is a public user of the invention, for the sale is strong evidence that the user was commercial and not experimental”.

In Monsanto Co. v. CoromandelIndag Products (P) Ltd. 1986 A.I.R. 712, it was held that “to satisfy the requirement of being publicly known as used in clauses (e) and (f) of Section 64(1 ), it doesn’t need to widely be used to the knowledge of the consumer public.

It is sufficient if it is known to the persons who are engaged in the pursuit of knowledge of the patented product or process either as men of science or men of commerce or consumers.

Question 2. Write a brief note on the novelty of the invention.
Answer: The novelty of Invention:

An invention is considered new (novel) if it has not been anticipated by publication in any document anywhere in the world, or prior claimed in an application for patent in India, or forms part of the knowledge, oral or otherwise, available within any local or indigenous community in India or elsewhere, or used;
Before the date of filing of patent application or date of priority, whichever is earlier, that is, the subject matter has not fallen in the public domain or that it does not form part of the state of the art.
- The following are the general principles relating assessment of Novelty:
- An invention is considered new if it is not anticipated by prior publication, prior use, or prior public knowledge.
- An invention is new (novel) if it has not been disclosed in the prior art, where the prior art means everything that has been published, presented, or otherwise disclosed to the public before the date of filing of the complete specification.
- To determine novelty, an application for a Patent filed at the Indian Patent Office before the date of filing of the complete specification of an inter-filed application but published after the same is considered for prior claiming.
- While ascertaining novelty, the Examiner takes into consideration, inter alia. the following documents:
Which have been published before the date of filing of complete specification.
1. Such Indian Patent Applications which have been filed before the date of filing of the complete specification and published on or after the date of filing of the complete specification, but claim the same subject matter.
2. Also, the Examiner may consider such documents that have been published before in a transaction of a learned society or exhibited before in an authorized manner as designated by the Government within one year from the date of such filing.
A prior art will be considered anticipatory if all the features of the invention under examination are present in the cited prior art.
The prior art should disclose the invention either explicitly or implicitly.
The Mosaic king of prior art documents is not followed in the determination of novelty.
A generic disclosure in the prior art may not necessarily take away the novelty of a specific disclosure.
A specific disclosure in the prior art takes away the novelty of a generic disclosure.
In a case where a prior art is cited as an anticipation in the Examination Report, which is not deemed to be an anticipation by reason on Section 29-34, the onus of proving is on the applicant.

Question 3. Discuss the concept of patent application.
Answer: Publication of Patent Application: Usually a patent application is published in the Official Patent Office Journal after the lapse of 18 months from the date of filing of the application or the priority claimed date, whichever is earlier.

This publication includes all pertinent details related to the application. It includes the title, abstract, application number, and name and address of the applicant. After this publication, a patent application becomes open for public scrutiny.

An exciting concept of request for early patent publication is also available for the applicant. This can be done when the applicant wants his application to be published before the normal period of 18 months.

Early publication stands for making a patent public before the time of its normal publication. This could be of help when one is planning to sell or license the patent or seek investor and related advantages.

An early publication of an application is allowed as per Section 11(A)(2) of the Indian Patents Act, on payment of the prescribed fee.

Section 11(A)(2) of the Indian Patents Act mentions: The applicant may, in the prescribed manner, request the Controller to publish his application at any time before the expiry of the period prescribed under sub-section (1) and subject to the provisions of sub-section (3), the Controller shall publish such application as soon as possible.

Once such a request is made, the patent office has to publish the application ordinarily within one month from the date of request for publication.

The applicant may request the controller for early publication of the patent application before the lapse of 18 months. Such a request has to be made on Form-9- request for early publication.

Request for Examination: The Patents Act, 1970 provides for the examination of patent applications only on filing of a request for examination by the applicant or any other interested person [section 11 B], This request can be filed on Form-18 with a prescribed fee at any time within 48 months from the date of priority or from the date of filing of the application, whichever is earlier.

The patent application is referred to the examiner strictly in order of the requests filed.

The examiner to whom the application is referred for examination has to submit his report to the Controller ordinarily within one month from such reference but not exceeding three months from such reference.

Allocation of Application to Examiner for Examination: Once the request for examination is received and the application has been published, the Controller shall refer the particular application to an examiner for conducting examination and search under sections 12 and 13 of the Patents Act, 1970.

Before such a reference, the controller has to consider the following points. In order of filing of request: Reference of the patent application shall be strictly per the sequential order of filing of the request for examination.

Examination of Patent Application:

Regulatory Regime: The examination of patent applications is conducted under the provisions of section 121 of the Patents Act, 1970.

After the patent application is filed and after the filing of the request for examination as well as the publication of the same, the Controller shall refer the application and the specification and other documents related thereto to an examiner for making a report to him under the provisions of the Act and the rules made there under.

Question 4. What do you mean by examination of a patent application and discuss the different types of examination of a patent application?
Answer:

Formal examination: The patent examination can broadly be classified into two distinct forms, the formality examination and the substantive examination.

The following steps are involved in the formal examination of patent applications:

To check whether the application, specification, and other related documents are filed in duplicate in prescribed forms or not.
To check whether the applicant is entitled to apply for a patent under section 6 of the Act.
To check the jurisdiction of the applicant as specified under Rule 4 of the Patents.
Rules to decide the Appropriate Office for processing of patent application.
Jurisdiction is normally decided on the normal residential or domiciled address or place of business of the applicant or the First Mentioned Applicant, in case of joint applicants or the place from where the invention originated.
To check the jurisdiction of the applicant who has no place of business or domicile in India.
The address for service in India, as given by the applicant, is to be taken into consideration for deciding the Appropriate Office.
To check whether the address for service has been provided in the application. If not, the Controller has no obligation to proceed further (the Controller may take a suo-moto decision in the matter)
To check whether any request has been made for post-dating of the provisional specification.
Postdating is allowed for a maximum period of 6 months (Sec -17(1)).
To check whether the complete specification is filed within 12 months from the date of filing of provisional specification as specified in section 9(1) of the Act.
The 12 months for filing the complete specification after the provisional specification is not extendable.
To check whether the complete specification is filed within 12 months from the earliest provisional specification when the same applicant has filed more than one provisional specification in respect of inventions which are cognate or of which one is a modification of the another and the whole of such inventions are such as to constitute a single invention(Sec -9(2)).
To check whether the complete specification is filed within 12 months from the earlier complete specification filed which was treated as provisional specification under the provisions of section 9 (3) of the Act.
It is to be noted that there is no provision for filing provisional specifications or making a request to convert the complete specification to provisional specifications in respect of the applications filed under convention and national phase entry via the PCT system.
To check whether a Power of Attorney or a General Power of Attorney in the original has been filed and whether the patent agent is authorized to practice before the patent office on behalf of the applicant(s).
Self-attested photocopy of a General Power of Attorney is also admissible provided, an indication that the earlier patent application with which the original GPA is attached, has been submitted.
To check whether Declaration as to Inventorship (Form -5) has been filed along with the specification filed after filing provisional specification or along with the complete specification filed under convention application or along with the complete specification filed as PCTNP application under PCT route, as the case may be.
To check whether Proof of Right to make an application has been filed as specified in Section 7(2) of the Patents Act along with the application (even at the time of filing a provisional application) except in the cases where the inventor(s) is(are) applicant(s) by himself (themselves).
To check whether Form 3 has been filed along with the patent application or within a period as specified under section 8 of the Patents Act.
To check whether the application has been published under the provisions of Section 11 A If the application is published before the period of 18 months from the date of applying, a check has to be made whether the request in Form – 9 has been filed for early publication, along with the requisite fee and, whether the application has been published after taking Form- 9 on record.
To make cross-reference (s), if any, on the file covers of co-pending applications (cognate type, divisional, and parent applications) The related applications shall be sent together physically to examiners.
A check is to be made whether the request for examination (Form- 1 8) has been filed along with the requisite fee and by whom it was filed.
If Form 18 has been filed by a person other than the applicant it is to be examined whether that person is the ‘person interested’ as defined in Section 2(1)(t) of the Patents Act.
It also needs to be checked as to how many priorities are claimed and whether the requisite fee has been paid or not. Timelines of filing documents and RQs, Forms and fees, right to file, priority rights, etc.
The timeline as provided in the Act and Rules has been suitably incorporated in Annexure-I.

Substantive Examination: The examiners to whom the application is referred under section 12 examines the patent application together with the complete specification and the other documents related there for making a report in respect of matters as mentioned in section 12(1 )[(a) to(d)] to the Controller.

The examiner determines whether any lawful ground of objections exists to the grant of a patent under the statute.

Question 5. What are single inventive concepts?
Answer: Single Inventive Concept: Section 10(5) mandates that the claim/ claims of the complete specification shall relate to a single invention, or to a group of inventions linked to form a single inventive concept.

The Manual of Patent Office Practice and Procedure, of year 201 6 allows that there may be more than one independent claim in a single application if the claims fall under a single inventive concept.

In the Manual, it has been advised “While there is no restriction as to the number of claims, including independent claims, it is advisable to limit the number of claims, as well as the number of independent claims in a single application so that the claims are linked to form a single inventive concept.

If claims relate to a plurality of distinct inventions, it may be objected on the ground of lack of unity of invention”. The single common technical relationship which is inventive is called the “special technical feature”.

This determination should be based on the content of the claims supported by the description in the light of the prior art.

Unity of invention is present only when there is a “technical relationship” among the claimed inventions involving one or more of the same or corresponding “special technical features.”

The expression “special technical features” means those technical features that define a contribution that each of the claimed inventions, considered as a whole, makes over the prior art.

The determination of whether a group of inventions is so linked as to form a single inventive concept is made without regard to whether the inventions are claimed in separate claims or as alternatives within a single claim.

Lack of unity may be evident in an application in the following ways:

‘A priori’, i.e., before consideration of prior art, if the claims falling in different groups do not share the same or corresponding technical feature.

‘A posteriori’, i.e., after a search of the prior art, if the shared technical feature fails to make an inventive contribution over the prior art.

Lack of unity of invention may be directly evident “a priori,” that is, before considering the claims with any prior art, or may only become apparent “a posteriori,” that is, after considering the prior art.

Question 6. Discuss the re-issue and re-examination.
Answer: Re-issue and Re-Examination: After the grant of a patent, every patentee has to maintain the patent by paying a renewal fee every year as prescribed in Schedule I. For the first two years, there is no renewal fee.

The renewal fee is payable from 3rd year onwards. In case the renewal fee is not paid the patent will be ceased. To keep a patent in force renewal fees are payable at the expiration of the second year from the date of the patent or of any succeeding year.

In other words, the renewal fee has to be every year up to the completion of 20 years. Renewal fees can be paid beyond the due date within a period of 6 prescribed fees.

If a patent is granted later than two years from the date of filing of the application, the fees which have become due in the meantime may be made within 3 months from the date of recording the patent in the register.

This time is also extendable by 6 months as described earlier. The patentee has the choice to pay the renewal fees every year or he can pay in lump sum as well.

Further, a request for restoration of the patent can be filed within 18 months from the date of cessation of the patent along with the prescribed fee. After receipt of the request, the matter is notified in the official journal for further processing of the request.

Process Of Examination Of Patent Application

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