Indian Patent Agent Exam Notes

I am sharing some notes which I had created during my preparation for exam and also collected some materials in between. Below are some notes which can be used while preparing for Patent Agent exam. I have tried best of avoid errors. There might be error which might have crept in during the course of preparing the materials. Users of this material have to use their discretion

Template for Patent Drafting

FORM 2

THE PATENTS ACT, 1970

(39 of 1970)

&

The Patents Rules, 2003

PROVISIONAL/COMPLETE SPECIFICATION

(See section 10 and rule 13)

1.      TITLE OF THE INVENTION

2.      APPLICANT(S)

(a) NAME:

            (b) NATIONALITY:

            (c) ADDRESS:

 3.  PREAMBLE TO THE DESCRIPTION

The following specification particularly describes the invention and the manner in which it is to be performed

4.      DESCRIPTION

4.1 Field of Invention

     The invention relates to……….

4.2 Background of the Invention

4.3 Summary of the Invention

The principal object of the invention is……….

Another object of the invention is…………….

A further object of the invention is……………

4.4  Detailed description of the invention

(The detailed description may be started with the following sentences depending on the nature of invention)

Accordingly the invention provides an (apparatus/process/product/composition) consisting/comprising of…

There is also provided a method of preparing..

In the general embodiment of the present invention, an efficient method for the preparation….

5.  CLAIMS (Not applicable for provisional specification. Claims should start with the preamble – “I/We claim” on separate page)

6.  DATE AND SIGNATURE (to be given at the end of last page of specification)

7.  ABSTRACT OF THE INVENTION (to be given along with complete specification on

separate page)

-------------------------------------xxxxxxxxxxxxxxxxxxxx--------------------------------------------

Tips for Drafting

TITLE OF THE INVENTION

·         Keep the title in Capital Letters (not compulsory)

·         Title should give fair indication of the art or industry to which the invention relates to.

·         Should be within 15 words

·         Following things are not allowed in a title: Inventor’s Name, The word ‘Patent’, words in other languages, abbreviations, fancy words

Background of the invention

Priort art and the problem to be solved must be described in the background. while reading the invention, mark the prior art description and also the problems associated with prior art and add it to this section

Field of Invention

The description should preferably begin with short general statement

The invention relates to……….

Summary of the invention

The solution sought by the invention should be clearly brought out as:

The principal object of the invention is……….

Another object of the invention is…………….

A further object of the invention is……………

Detailed Description of the invention

·         Before going into the details of the invention start with the following words

·         (The detailed description may be started with the following sentences depending on the nature of invention)

·         It usually starts like, “Accordingly the invention provides an apparatus consisting of ---------- which is characterized in that --------------“.Other aspects and processes, if any, can also be stated e.g. “There is alsoprovided a method of preparing ---------” etc.

·         Sufficient number of examples must be included in the description especially in case of chemical inventions

·         Reference to drawings (if any) should be specific and preferably in following form:

“ The invention is illustrated in the accompanying drawings throughout which like reference letters indicate corresponding parts in the various figures”

·         Specification with respect to patent of addition should contain at the beginning of the description a definite statement.

·         Terms in other languages, if any, used in the description should be accompanied by their English equivalents. The use of vague slang words and colloquialisms is objectionable and should be avoided

·         Best method of working the invention should be described

Claims

·         The description of invention in the complete specification is to be followed by a “statement of claims” preceded by the prescribed preamble, “I or we claim” as the case may be.

·         Claims should start from the fresh page after full description of the invention with the claims serially numbered.

·         There is no restriction to the number of claims to be incorporated in the specification. But the applicant has to pay additional fee, if there are more than ten claims. Its better if we restrict our claims to 10 unless further claims are necessary

·         Claims must be supported by the description (fairly based on the description). This means that all the characteristics of the invention, that form the part of the claims must be fully explained in the description

Also refer to following links for claim drafting tips

http://www.ipwatchdog.com/2010/08/07/drafting-patent-applications-writing-patent-claims/id=11832/

http://www.patentsimple.com/claimdrafting101.htm

http://www.cs.washington.edu/education/courses/cse490t/11sp/slides/05-Claim-Drafting.pdf

Abstract

·         An abstract should provide brief technical information on the invention. It should start with the “Title of the invention” and should give concise summary of the invention ,preferably within 150 words, An abstract should be given on a separate page after claim(s).

·         It should be written on a separate page after claims

Note: In case the invention doesn’t have drawing, try to construct the invention by drawing the invention on paper while reading it sentence by sentence. This helps to clearly understand the invention and it also helps to find the main elements of invention.

References 

 It is best to view certain Indian patents of your subject of Interest from Indian patent office and learn the drafting.

Also one can refer to this book   and see some patents drafted

Also refer to Indian draft patent manual-2008.

First Patent application in India--Guess who was the one?

I have a curious mind and so i thought of finding out the first patent applicant in india. I searched for it and finally found it in a newspaper article.[Source: The Hindu]

It says George Alfred DePenning  made the first application for a patent in India. The patent granted was for  "A punkah pulling machine".

History:

The first Intellectual Property Rights legislation was enacted in India 150 years ago. The development of the IPR legislation in our country has been in parallel with the international scenario. The Act relating to Patent Rights introduced in 1856 granted exclusive privileges to the inventor of new methods of manufacturing for a period of 14 years.

This Act was amended on the lines of the British Patent Law (1852) and re-enacted in 1859. The monopoly granted to the inventor was known as "exclusive privileges"

ON February 28, 1856, the Government of India promulgated legislation to grant what was then termed as "exclusive privileges for the encouragement of inventions of new manufactures". On March 3, 1856, a civil engineer, George Alfred DePenning of 7, Grant's Lane, Calcutta petitioned the Government of India for grant of exclusive privileges for his invention — "An Efficient Punkah Pulling Machine". On September 2 , DePenning, submitted the Specifications for his invention along with drawings to illustrate its working. These were accepted and the invention was granted the first ever Intellectual Property protection in India. DePenning, submitted petitions for two more inventions that same year — No. 2 and No. 4 of 1856 under the Act and in the years to follow several patents were granted by the Calcutta Patent Office to this prodigious inventor.

Having secured his place in Indian history, George Alfred DePenning could well have rested. But he did not. The entrepreneur in him saw other inventors struggling with the process involved in patenting new inventions and he saw the possibility of representing them as a Patent Agent. And so in 1856, the firm of DePenning & DePenning was born. Today, exactly 150 years on, not only does the firm continue to exist, but has grown to become one of the largest attorney firms devoted exclusively to the protection of Intellectual Property Rights with an impressive list of clients from many parts of the world. The firm has always had a member of the DePenning family at the helm. Started initially in Calcutta, the firm relocated its headquarters to Chennai in 1987 and today has branches in Kolkata, Mumbai and New Delhi.

The interesting fact is i could not retrive the patent document from the indian patent office website. when i did a little search i obtained the patent document from the Depenning& Depenning Company website. Its an indispensable wealth of india and i am happy that Depenning company has preserved the copy of patent.

Novartis loses battle for cancer drug patent- Glivec

Novartis famed cancer drug, Glivec, will not get patent protection in India. The apex body on patent and trademark disputes, the Intellectual Property Appellate Board (IPAB), has ruled that the drug “lacks innovation” and the high price tag of Rs 1,20,000 per month per patient would be too high for the common man. “Any patent granted to support such a high monopoly price would be against ‘public order’,” the ruling said. Source: Business Standard

This brings the curtains down on a high profile three-year legal battle over patent rights between the Swiss multinational drug major and the Indian government.

Case History:

In May 2006, Novartis started a legal procedure to tackle the refusal of the Chennai Patent Office to grant a patent over the ‘Beta crystalline form of imatinib mesylate’: the active ingredient of the leukaemia medicine ‘Glivec'.The Patent Office considered ‘Beta crystal’ to be a new form of an existing compound and decided therefore, although it had been patented in 35 other countries, to accept the opposition filed by a group of cancer patients (‘Cancer Patients Aid Association’).

The actual case was divided into two groups of arguments: those challenging the constitutionality of Section 3(d) and those aimed at refuting the refusal of patent protection in that particular case. Novartis alleged incorrect application of Section 3 (d) of the Patents Act in view of the factual situation; and nonconformity with TRIPS to prove that India, in enacting Section 3 (d), had acted unconstitutionally. under Article 253 and 51 (c) of the Indian Constitution it would be held that national laws need to be in accordance with India’s international obligations and the contested Section would be TRIPS non-compliant. Secondly, Novartis argued that Gleevec as applied before the Indian Patent Office had greater manufacturing stability and could be more easily absorbed by the body: and even under Section 3 (d) the applied substance should be patentable, Novartis said. Thirdly, apart from non-compliance with TRIPS, Novartis also invoked internal constitutional arguments in claiming that Section 3 (d) is unconstitutional because of its vagueness and the resulting unjustified discretionary power granted to the patent offices (violating article 14 of the Indian Constitution).

In section 3 of the principal Act, for clause (d), the following shall be substitued, namely:—
"(d) the mere discovery of a new form of a known substance which does not result in the enhancement of the known efficacy of that substance or the mere discovery of any new property or new use for a known substance or of the mere use of a known process, machine or apparatus unless such known process results in a new product or employs at least one new reactant. [as per the Indian patent act amended in 2005]

Impact of the case:

The case has triggered massive international reactions. NGO’s like the ‘Berne Declaration’67 contested that the challenge of Section 3 (d) of the Indian Patents Act is not about access to medicines by referring to the damages Novartis’s exclusive market rights on that medicine would already have led to.

Back to the Novartis Latest decision:

The IPAB panel, comprising Chairman ZS Negi and Technical Member PC Chakraborti, ruled that the beta crystalline version of the drug was not patentable under section 3(d) of the Indian Patent Act and lacked “significant enhanced efficacy” over and above the prior known molecule. The panel, in its decision on June 26, also ruled that the patents granted for the drug in about 40 countries may not be applicable to India.

In its recent ruling, the IPAB denied Glivec’s patentability by upholding objections under Section 3(d) of the amended Patent Law — under which a patent is granted only if a product proves to be more efficacious than the existing drug molecules.

On novelty and innovation, though, the judgment seems to make a favourable mention of Novartis’ Glivec, observed another lawyer

In an e-mail response, Novartis said, “We are pleased that IPAB acknowledged that our patent application fulfils all international patentability criteria. Unfortunately, IPAB upheld the objections under Section 3(d), a legal provision unique to Indian patent law, which constitutes a hurdle to innovation in the pharmaceutical field.”


Shubha Mudgal, executive director of Cancer Patient Aid Association, which opposed the patent application in 2006, was predictably happy and said the “landmark judgement is a victory for patients as it will set a precedent in India to offer critical drugs at affordable prices.”[as per business standard article]

Details of the judgment are still being digested by different parties to the case. On the face of it, domestic drug companies will be able to continue to sell their versions of Imatinib Mesylate, though they will not be able to use the two processes that have been sent for reassessment, said company representatives.

The legal wrangle over Glivec has attracted international attention because it is the first test on the ground of India’s amended Patent Law. The product patent regime became effective in the country in 2005.

At the heart of the patent debate also appears to be the emotive price issue, with Novartis’ Glivec costing over Rs 1 lakh a month to a patient, while local drug companies make similar versions of the drug available at Rs 10,000 a month.

Novartis Arguments:

Novartis said it was concerned about the patent system in India and was looking to have a system that supported innovation in the pharmaceutical field. “We are currently reviewing the decision and will look at the various options available to us,”

Novartis, however, has maintained that it has, as part of its GIPAP (Glivec International Patient Assistance Programme), given patients the medicine at no cost. “In India, more than 11,000 patients currently receive their medicine through GIPAP. Since the inception of the programme in India in late 2002, Novartis has distributed Glivec valued at close to Rs 3,000 crore to patients enrolled under GIPAP absolutely free of any charge,” Novartis said.

Further, it added that more than 99 per cent of patients on Glivec in India receive it free of charge under GIPAP, while less than one per cent of patients pay for it, and these are patients who are reimbursed.[Source: The Hindu]

On the next step, lawyers observe that the judgment could be appealed at a High Court.

Submarine Patents- history,myth and facts

This is an interesting type of patents which i came across while doing my initial search on software patents.

The Definition:

Many definitions have followed regarding the non existing term "Submarine Patents"

• A SubmarinePatent is a patent which an "inventor" files on a device or technology that doesn't exist yet, or which has not yet been successfully implemented. Using various procedural mechanisms, the filer intentionally delays issue of the patent, sometimes for years, until a practical implementation of the device/technology appears on the market. At that time, the filer allows the patent to "come to the surface" and demands royalties from the party who did the real work.
• Submarine patent is an informal term for a patent first published and granted long after the initial application was filed. In analogy to a submarine, its presence is unknown to the public; it stays under water, i.e., unpublished, for long periods, then emerges, i.e., granted and published, and surprises the relevant market

History

Submarine patents are not related to patenting of sumarine its a different catchphrase “submarine patent” cropped up for the first time during the propaganda campaign to make the 20 year patent term proposal palatable. When the Democratic Administration was anxious to obtain the vote of the newly elected Republican Senate majority for the GATT Uruguay Round Implementation Act, Mr. Kantor, the U.S

Trade Representative wrote a letter to Senator Dole, and another letter to the Senate, generally repudiating the deal with the Japanese for the 20 year patent term, and promised the cooperation of the Administration if Congress would desire to amend the patent term provisions of the Uruguay Round Implementation Act to provide for a minimum patent term. In his letter Mr. Kantor defined the phrase “submarine patents” as patents that issue after a long pendency artificially maintained by the applicant, and are then used to hold to ransom industries that have matured on the basis of that technology during such prolonged application pendency. The Trade Representative then conceded that the fixed patent term of 20 years would be useless to eliminate such “submarine patents.”

For example, under the old system, someone in 1950 could have filed a patent on, say, a packet-based computer network router, though there were as yet hardly any computers to speak of. By requesting repeated "continuations" during the patent application process, the filer could force the patent to be delayed indefinitely until packet-based routers started to come onto the market, say in 1970. The filer then stops requesting continuations, the patent issues, and the patent-seeker can collect royalties on network routers for 17 years from that point, until 1987.

One the patents that is best known for its long pendency, is US patent No. 4,621,410 to Williamson. It involves important technology that is widely used throughout the world. The Williams patent issued after a two-way division requirement, an appeal, and a prolonged interference with others who claimed to have made the same invention. In the case of this invention 12 of the total of 15 years pendency was spent merely waiting for the Patent Office to act. The applicant requested less than a total of a year of time extensions, i.e. less than 7% of total application pendency. The pendency of this application was not prolonged by the inventor, but rather by the slow examination in the Patent Office.

Another patent often referred to by the “submarine patent” myth- makers, is US patent No. 5,283,641 of Jerome Lemelson, a modern day Thomas Edison, whose fertile imagination created many new industries and who invented many products used in today’s advanced technology. That famous Lemelson patent issued after a 42 year pendency by which time Mr. Lemelson was a multimillionaire in his 70s, and after he gave away much of his money for charitable causes. These attributes of Mr. Lemelson were mentioned merely to demonstrate that he was not exactly wanting for the kind of wealth that so called “submarine patentees” were rumored to extort from the “innocent infringers” of their delayed patent.

In taking a closer look of that Lemelson patent that issued in the early 90’s, more than 40 years after its initial filing, it should be first noted that the patent was the last of an unprecedented 20-way division requirement imposed on the original application by the Patent Office. The application related to the critical pioneering new invention of the concept that became known as “machine vision.” The invention involved such a monumentally significant new concept, that it had to be divided into as unprecedentedly many as 20 separate new patent applications.

Jerome H. Lemelson filed many applications that became submarine patents.  He and his heirs have collected over 1.3 billion dollars (U.S.) in royalties.Many of these patent claims, covering machine vision and bar codes, but 76 claims of his 14 patents were struck down in January 2004 by the federal district court in Las Vegas, Nevada.

Facts and present status of Submarine patents:

Europe

Under Article 93 EPC, a European patent application shall be published as soon as possible after the expiry of eighteen months after the date of filing or, if priority has been claimed, as from the date of priority.  Consequently, the key submarine patent strategy of delaying publication of a patent application for several years is not possible.

Also, it is not admissible to amend the claims of a European patent application to include subject matter that extends beyond the content of the application as originally filed.  In Europe, this requirement is interpreted strictly (to protect third parties' interests ) to mean that information that is not directly and unambiguously derivable from the application as originally filed may not be added subsequently. This reduces the possibility of a granted patent having significantly different or broader scope than the patent application as published. Claim broadening, in particular, is subject to particularly careful examination under European practice

United States

In the past, when the life of a U.S. patent was 17 years from the date it was granted, submarine patents could issue decades after the initial filing date. Therefore, an applicant for a U.S. patent could benefit by delaying the issuance, and thus expiration date, of a patent through the simple, but relatively costly expedient of filing a succession of continuation applications. Some submarine patents emerged as much as 40 years after the date of filing of the corresponding application. During the extended prosecution period the claims of the patent could be tweaked to more closely match whatever technology or products had become the industry standard.

Currently, the majority of U.S. patent applications are published within 18 months after the filing date. However, the applicant can explicitly certify that they do not intend to file a corresponding patent outside the U.S. at the time they file the patent, and keep the application secret. The applicant can change their mind within the first year, but the application is then published. For continuation applications which claim priority to a previously filed application, the publication is six months after the new filing date. The changes to U.S. patent law that introduced publication at 18 months also changed the duration of the patent to 20 years from the filing date of the earliest patent application in any chain of continuation patent applications. As a result there is little benefit in postponing the grant of the patent. The enforceable life of the patent can no longer be shifted into the period when a technology has become more widely adopted, and the patent applicant must give up the chance of foreign patent protection if he is to maintain patent secrecy beyond the 18 month period. In a recent report the National Academy of Sciences has recommended that "in all cases, applications should be published during patent examinations"

Note: The contents for this post has been taken from various sources and hence i am not responsible for the authenticity of the contents

First Patent Granted under Super Accelerated Examination System in JPO

On October 1, 2008, the JPO launched the “Super Accelerated Examination System” on a pilot basis to process patent applications more rapidly than can be done under the conventional accelerated examination system. The JPO granted a patent for the first time under the new system.
　The patent was granted for an application filed by Keio University. (Application number 2007-054284, Publication number 2008-216061, Title of the invention: Electrochemical Analysis Method Using Boron Doped Electroconductive Diamond Electrode).
　The request for examination and the corresponding petition for Super Accelerated Examination were both filed on October 1, the first day of the pilot program. It took only 17 days* for the application to be granted.

* Under the conventional accelerated examination, the average pendency to first office action is 2.2 months.

My NALSAR Projects- Software Patents

My second NALSAR project concentrates on Software patents which is similar to business method patents. This report contains basics of software patents and the landmark cases in software patents.

The Report can be downloaded by clicking here

Anil Sharma

My NALSAR Project- Business Method patents

This is one of my projects i had submitted during my course on PG diploma in Patent Law from the Top Law university NALSAR. The project contains a deep study on Business Method patents, The famous landmark cases, The recent Bilski case and various other cases. I have also done a brief study of business method patenting laws in various countries.

The Project can be downloaded by clicking here

A reveiw of the effects of bilski case on other domains of technology can be found on Dolcera.com

Anil Sharma