Process Of Examination Of Patent Application – Intellectual Property Rights Laws and Practices Important Questions

Question 1.
Write a brief note on the novelty of the invention,
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 form 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 a 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.

Followings are the general principles relating assessment of Novelty:

(1) An invention is considered as 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.

(2) For the purpose of determining novelty, an application for Patent filed at the Indian Patent Office before the date of filing of the complete specification of a later-filed application but published after the same is considered for the purposes of prior claiming.

(3) While ascertaining novelty, the Examiner takes into consideration, inter alia, the following documents:

  • Which have been published before the date of filing of the complete specification.
  • Such Indian Patent Applications have been filed before the date of filing of complete specification and published on or after the date of filing of the complete specification, but claim the same subject matter.
  • Also, the Examiner may consider such documents which 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.

(4) A prior art will be considered as anticipatory if all the features of the invention under examination are present in the cited prior art.

(5) The prior art should disclose the invention either in an explicit or implicit manner.

(6) Mosaicking of prior art documents is not followed in the determination of novelty.

(7) A generic disclosure in the prior art may not necessarily take away the novelty of a specific disclosure.

(8) A specific disclosure in the prior art takes away the novelty of a generic disclosure.

(9) In a case where prior art is cited as an anticipation in the Examination Report, which is not deemed to be anticipation by reason on Section 29-34, the onus of proving is on the applicant.

Question 2.
Discuss the concept of the patent application.
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 to 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 basically 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 tee.

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

Request for Examination:
The Patents Act, 1970 provides for examination of patent application 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 the 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 a period of one month’ from such reference but not exceeding three months from such reference [Rule 24B (2)].

Allocation of Application to the 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 in accordance with sections 12 and 13 of the Patents Act, 1970. Before such a reference, the controller has to take the following points into consideration. In order of filing of request: Reference of the patent application shall be strictly in accordance with the sequential order of filing of the request for examination.

Examination of Patent Application: Regulatory Regime:
The examination of a patent application is conducted in accordance with the provisions of section 121 of the Patents Act, 1970. After the patent application is filed and subsequent to 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 in accordance with the provisions of the Act and the Rules made thereunder.

Question 3.
What do you mean by examination of a patent application and discuss the different types of examination of a patent application?
Formal examination: The patent examination can broadly be classified in 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(1 )(i) of the Patents

• Rules to decide the Appropriate Office for processing of the patent application. Jurisdiction is normally decided on the normal residential or domiciled address or place of business of the applicant or of the First Mentioned Applicant, in case of joint applicants or the place from where the invention actually 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 (Controller may take Suo moto decision in the matter) (Rule 5)

• To check whether any request has been made for the 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-month period 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 specification or making a request to convert the complete specification to provisional specification 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 original has been filed and whether the patent agent is authorized to practice before the patent office on behalf of the applicant(s). A self-attested photocopy of a General Power of Attorney is also admissible provided, an indication to 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 the 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 11A If the application is published before the period of 18 months from the date of filing the application, 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-18) 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 to under section 12 conducts an examination of the patent application together with the complete specification and the other documents related therewith for making a report in respect of matters as mentioned in section 12(1 )[(a) to(d)] to the Controller. The examiner ascertains whether any lawful ground of objections exists to the grant of a patent under the statute.

Question 4.
What are single inventive concepts?
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 so as to form a single inventive concept. The Manual Of Patent Office Practice and Procedure, of the year 2016 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 so as to form a single inventive concept. If claims relate to a plurality of distinct inventions, it may be objected on grounds of lack of unity of invention”. The single common technical relationship which is inventive is called the “special technical feature”. This determination should be done 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 which 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 in relation to any prior art, or may only become apparent “a posteriori,” that is, after taking the prior art into consideration. Space to write important points for revision

Question 5.
Discuss the re-issue and re-examination.
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 a period of 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 patent can be filed within 18 months from the date of cessation of 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.

CS Professional Intellectual Property Rights Laws and Practices Notes