PROCEDURE OF FILING OF A

PATENT APPLICATION
 PATENTS : AN OVERVIEW
Patent : is a limited monopoly right
conferred by the State in consideration of
disclosure of the invention.
 Why should you consider
Patenting your invention?
1. You own the invention for given time.
2. You can use it to build a business.
3. License it to existing businesses.
4. You can also completely sell the patent to the
other company.
 WHAT IS AN INVENTION?
Sec. 2(1)(j)
Old New
‘Invention’ means any new ‘Invention’ means a new
and useful – product or process involving
(i)art, process, method or an inventive step and capable
manner of manufacture of industrial application.
(ii)Machine, apparatus or (with effect from 2003)
other article
(iii)Substance produced by
manufacture
and includes any new and
useful improvement of any
of them, and an alleged
invention – Dimminaco case
 INVENTION
 Fundamental research
 Improvement on existing art
 Solving unsolved problems of art/unaddressed
issues
 Different approach
 BEFORE DRAFTING
 What is the invention ?
 Is invention novel ?
 Is invention patentable ?
 Prior art/prior disclosure ?
• Oral disclosure ?
• Prior printed publication available to the public ?
• Prior public use ?
 WHAT IS NOT PATENTABLE?
Inventions that cannot be patented are:
 Frivolous
 Contrary to well established natural laws
 Contrary to morality or injurious to public health (animals/plants) or to environment
 Scientific principle or abstract theory
 New property or use of a known substance
 Mere admixtures (as opposed in synergistic mixtures) and processes thereof
 Mere arrangement or rearrangement of known devices each functioning independently
of one another in a known way
 Method of agriculture or horticulture
 Treatment of human being, animals including diagnostic methods
 Plants and animals in whole or any part thereof
 Essentially biological processes
 Mathematical or business methods, computer programme per se or algorithm
 Literary, dramatic, musical or ar6tistic work
 Method of playing games
 Presentation of information
 BEFORE DRAFTING:
VERIFY THE FOLLOWING:
 Conduct search

 Enlist problems in prior art

 What is the problem sought to be solved by the

invention?
 What is the novelty?

 Is the solution obvious?

 Ascertain the type of application -whether complete or

provisional is to be filed
 Decide the area and nature of protection- PCT, ordinary

application.
 STEPS INVOLVED IN PATENT
APPLICATION FILING
Step 1: Invention Disclosure
Write down the invention with as much detail as
possible.
Disclosure consisting of:
1. The Specification: It is a main document in a
patent application. It describes the ways in which
the invention is innovative compared to similar
inventions and explains the scope of monopoly the
applicant believes he or she has to the invention.
Further, the specification notes the patent
application filing date on which inventor can the
rely. It also offers evidence that the invention
belongs to the person in question.
At the disclosure stage the most relevant
specification is ‘provisional specification’ under
the following circumstances:
-Where there are many competitors in the market;
-When your research/invention is at a very early
stage.
2. The Enablement: This explains how to create the
object and how someone in the field can do so.
The instructions cannot be vague or unclear, but
must be exact and detailed. When the patent
expires, the enablement should still be usable.
This section should include any figures or
drawings, with explanations.

3. Best Mode Requirement: The path revealed must

be the best way of creating the item within the
author's awareness at the time of filing. Therefore,
it may include specific or unique techniques.
There should be no concealment. A poor-quality
disclosure can risk the appearance of concealment.
4. Claims: This explains the item or part of the
object that is special.

Step 2: Non-Disclosure Agreement:

When discussing with the patent professional,
supervisors, partners, technical assistance etc. you
need to protect the confidently of it by way of
signing the NDA with the parties to whom you are
disclosing the invention.

Step 3: Is my invention patentable

 This can be done by doing novelty search.

 This is an optional step.

 In order to find out whether the claimed invention
meets all patentability criteria as per Indian Patent
Act.
 The novelty search is conducted by Patent
Professional.
 Time duration is 7 days.

Step 4: Filing Patent Application: Two ways to

proceed about the patent filing. Sec 9
Provisional Specification/ Provisional Patent
Application:

A provisional patent specification is a preliminary

application before filing a usual patent. It explains
the invention in a broad manner but not
completely. It is the document which may be filed
before a Complete Specification in the Office of the
Controller of Patents pertaining to a prospective
patent.
It gives the following benefit:
-Secures the filing date/Priority date

-12 Months time to file complete specification

-Low Cost
- Government fees for application of patent Rs.
1600 for an individual applicant
- FORM 2 “ The following specification describes
the invention”
- Complete specification has to be filed before the
expiry of 12 months from the date of filing
provisional application.

Complete Specification/ Complete Patent

Application:
- One can directly go for complete patent
application, if the invention is almost complete
with all requirements.
- Complete Specification includes entire description of
invention and claims, diagrams and embodiments.
- The government fees for filing is Rs. 1600.

Step 5: Publication of Application

Upon filing the complete specification of the invention, the
application is published after 18 months from the filing
date.
To speed up this process-An early publication request can
also be made with the additional fees.
From No: 9
Government fees for early publication is Rs. 2500.
Step 6: Request for Examination:
-Patent application is examined at patent office
only after receiving request for Examination.
-Ideally the REF is filed along with the application
for the patent.
- Filing fees- Rs. 4000
-Upon receiving the, the controller gives your
application to a patent examiner who examines the
patent application with different patentability
criteria.
-The examiner creates the first examination report
and submitted to controller, which generally
contains the objections raised to the patent
application and same report is communicated to
patent applicant.

Step 7: Respond to objections in examination

report
Best approach to analyze the application with patent
professional or patent agent. The response to the
objection should be created cautiously and try to
prove the invention is indeed patentable and
satisfies all patentability criteria.

Step 8: Grant of Patent

Application would be placed in order of grant if
fulfills all the requirement. The grant of patent is
notified in the patent journal.
Why the Disclosure is important?
Patented claims, when supported by adequate
disclosures, properly confer the power to exclude
others from practicing the patented technology. 
Unless an invention is fully disclosed, a patent on
that invention is invalid. To receive and sustain a
valid patent, applicants may be required to disclose
the claimed invention itself, how to carry it out
(including the best known mode), any known
technology (‘prior art’) relevant to assessing
whether the claimed invention is patentable, the
identity of the true inventor, and the legal basis for
entitlement to be granted a patent.
Can a publicly disclosed invention patentable in
India?

In order to obtain a patent in India, the invention

should not be disclosed in the public domain prior
to filing of a patent application. 

In India, when the patent office examines a patent

application, it tries to determine whether the subject
matter intended to be protected in the patent
application is anticipated or not.
Few exceptions are provided 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.
(a) Anticipation by previous publication (Sec. 29)
(b) Anticipation by previous communication to the
government (Sec. 30)
(c) Anticipation by public display (Sec. 31)
(d) Anticipation by public working (Sec. 32)
Anticipation by previous publication (Sec 29)
A complete specification filed shall not be deemed to have
been anticipated if the invention has been published prior
to filing of the patent application, if the applicant or the
patentee proves that the matter published was obtained
from him or any person from whom he derives title without
his consent or the consent of any such person.
Anticipation by previous communication to the
government (Sec 30)
A complete specification filed shall not be deemed to have
been anticipated if the invention has been communicated to
the government or any person authorised by the
government for the purpose of investigation of the
invention.
Anticipation by public display (Sec 31)
A complete specification shall not be deemed to have been
anticipated if:
-the invention has been displayed in an exhibition to which the
provisions of the instant section has been extended by the Central
Government; or
-the invention is described in a publication in consequence of display
of the invention in such an exhibition; or
-the invention has been used by any person without the consent of
the true and first inventor or a person deriving title from him after it
has been displayed in such an exhibition; or
-disclosing the invention before a learned society or publishing the
invention in the transaction of such society;
provided the application is filed within 12 months from
aforementioned public display.
Anticipation by public working (sec 32)
A complete specification shall not be deemed to have been
anticipated if the invention has been filed within 12 months after the
invention has been publicly worked for the purpose of reasonable
trial considering the nature of the invention.
City of Elizabeth v. American Nicholson Pavement Co.
Nicholson (Plaintiff) charged the City of Elizabeth (Defendant) with
patent infringement when the City laid down a wooden pavement
using his patented process.
Issue: Is an invention placed within the statutory meaning of "public
use" by public experimentation?
An invention is not placed in "public use" by public experimentation.
It is not enough that the public know about the invention as public
use or sale must occur.  If the invention is in public use or sale prior
to the two years before filing as required by statute, the policy of
abandonment requires that the inventor loses all rights. 
However, street pavement cannot be experimented upon
satisfactorily without public use. 
The public had incidental use of Plaintiff’s pavement, but not "public
use" within the meaning of the statute.  If Plaintiff had allowed to lay
pavement down somewhere else in the city or if he had sold it, it
would have been different, but Plaintiff never let the invention be out
of his control.  Public knowledge of the invention does not prevent
the inventor from receiving a patent.  It is the public use or sale of
the object that will prevent the patent.
Duty of Disclosure in the Indian Patent System

Section 8 of the Indian Patent Act, which imposes a duty on

applicants to disclose information regarding all
corresponding foreign applications, is a ground for revocation and
non-compliance with the provision makes a case for revocation as
contained in Section 64(1)(m) of the Act.
Enercon India v. Aloys Wobben
IPAB strongly asserted that non-disclosure of the information as
prescribed under Section 8 is a ground of Revocation.
Chemtura Corporation v. Union of India
The court held that in view of the prima facie non-compliance by the
plaintiff with the requirement of Section 8, the ground for
revocation as contained in Section 64(1)(m) is prima facie attracted. 
 Provisional Specification
Sec 9: Where an application for a patent (not being a
convention application or an application filed under the
Patent Cooperation Treaty designating India) is
accompanied by a provisional specification.

What should an inventor keep in mind while filing a

Provisional Patent Specification?
It is not a rough draft of the Complete Patent Specification.
Whereas it defines the scope of the invention and it is the
Provisional Patent Specification on which the following
Complete Specification and finally the grant of Patent will
be based upon.
The inventor/applicant should keep in mind that this is not the ‘final’
or ‘conclusive’ step towards securing a patent. It is the initial step in
the procedure towards patent registration.
It has to be kept in mind that if the time period of twelve months
within which the applicant has to file Complete Patent Specification
is not adhered to then the patent application will be deemed to be
‘abandoned’.
Although the confidentiality is maintained after the Provisional
Patent Application, complete and adequate disclosures should be
made in the Provisional Patent Application as incomplete
applications will be disadvantageous for the applicant in the future
and his scope of securing a patent may considerably reduce.
A rough set of claims should be designed even though they need not
be a part of the Provisional Patent Application. This should be done
in order to conceptualize the invention and understand the
implications of the invention completely.
What are the documents required to file a Provisional Patent
Specification?

- Form 1 ( Application for grant of patent), THE PATENTS ACT 1970 (39 of 1970)
and THE PATENTS RULES, 2003.
- Form 2 (Provisional Specifications), THE PATENTS ACT 1970 (39 of 1970) and
THE PATENTS RULES, 2003.
- Form 5 ( Declaration of Inventorship) THE PATENTS ACT 1970 (39 of 1970)
and THE PATENTS RULES, 2003.
- Form 26 (Power of Attorney). THE PATENTS ACT 1970 (39 of 1970) and THE
PATENTS RULES, 2003. If your patent is filed by a Patent Agent then this form is
necessary, otherwise not.
- E-filing fees (Patent Statutory fee) THE PATENTS ACT 1970 (39 of 1970) and
THE PATENTS RULES, 2003 (Electronic Payment).
- Form 3 (Corresponding foreign patent application statement and undertakings)
THE PATENTS ACT 1970 (39 of 1970) and THE PATENTS RULES, 2003.
- Priority Document ( This is used for convention applications if priority date is
claimed).
- Illustrations/Drawings of the invention.
What are the components of a Provisional Patent Specification?

The two broad divisions are Title and Description of the Patent.
TITLE
The Provisional Patent Specification should begin with the title of the
invention. The title should fairly capture features of the invention and
should be short and to the point. It should be under fifteen words. The
inventors’ name, the word “Patent”, the abbreviation “etc.”, words in
various languages or any fancy words should not be used in the title.
An illustration of patent TITLE is given below.

“an insecticide consisting X,Y,Z; or”

DESCRIPTION
The description begins with the Preamble and contains the field and object
of invention. It begins on a fresh page after the Title. The Provisional
Patent Specification does not need to have “claims”
What are the components of a Provisional Patent Specification?

The two broad divisions are Title and Description of the Patent.
TITLE
The Provisional Patent Specification should begin with the title of the
invention. The title should fairly capture features of the invention and
should be short and to the point. It should be under fifteen words. The
inventors’ name, the word “Patent”, the abbreviation “etc.”, words in
various languages or any fancy words should not be used in the title.
An illustration of patent TITLE is given below.

“an insecticide consisting X,Y,Z; or”

DESCRIPTION
The description begins with the Preamble and contains the field and object
of invention. It begins on a fresh page after the Title. The Provisional
Patent Specification does not need to have “claims”
PREAMBLE
The description of the invention in a Provisional Patent Specification starts with
the Preamble ‘The following Specification describes the invention’.
FIELD
The technical field to which the invention belongs to should be mentioned in this
section. It should be crisp to the point that it can be easily identified that what is
the nature of the invention and classification of its technology. While mentioning
the field it should be kept in mind that it does not ‘limit the scope’ the invention in
any sense.
For example, the term “liquid dispensing machine” should be used in the place of
“coffee dispensing machine” in which case it would limit the scope and eliminate
dispensing soda, tea, etc.
OBJECT
The point of having this section is in showing the necessity of the invention. The
advantages that the invention would bring about should be primarily solutions
made by the invention.
The statements which can be used in this section include “the principle object of
this invention is …”; “Another object of the invention is …”.
 Complete Specification
The Complete Specification is a techno-legal document which fully and
particularly describes the invention and discloses the best method of performing
the invention. As the Complete Specification is an extremely important document
in the patent proceedings it is advised that it should be drafted with utmost care
without any ambiguity.

Sec 10(4): Complete Specification Every complete specification shall:

a) fully and particularly describe the invention and its operation or use and the
method by which it is performed;
b) disclose the best method of performing the invention which is known to the
applicant for which he is entitled to claim protection;
c) end with a claim or set of claims defining the scope of the invention for which
the protection is claimed;
d) make reference to deposit of the biological material in the international
depository authority, if applicable; and e) be accompanied by an abstract.
Rule 13(7)(a) Title:
Title:
The title should be sufficiently indicative of the subject matter of the invention
and shall disclose the specific features of the invention. It need not be the same
as the preamble of the main claim. It shall be brief, free from fancy expressions
or ambiguity and as precise and definite as possible, but it need not go into the
details of the invention itself and should not ordinarily exceed fifteen words.
The following are not permissible in the title: Inventor‘s name, the word
‗Patent‘, words in other languages, the abbreviation ―etc., fancy words e.g.
―Wash well Soap, ―Universal Rest Easy Patent Chair.

Field of the Invention and use of Invention:

The description should preferably begin with a general statement of the
invention so as to indicate briefly the subject matter to which the invention
relates, e.g. “This invention relates to …………………”.
Thereafter, the advantages of the invention may be mentioned to bring out
clearly the areas of application and preferable use of the invention. The
applicant may substantiate industrial applicability of the invention in this part.
Object of the invention – the necessity of the invention

Summary of the invention- the distinguishing novel features of the

invention for which protection is desired

Drawings (where necessary)- written description might be

supplemented with clearly labeled drawings,

Abstract- short paragraph describing the invention.

Best Method- describe the best mode of carrying out the invention

Claims- defines what is claimed by the invention and therefore what

is sought to be protected.
Important differences between a provisional and a complete
application

A Provisional specification may be filed even in the case where the idea of
the invention is not completely mature. But in the case of a complete
specification there remains no scope for further development as it requires
filing of detailed claims.

A provisional patent application is relatively inexpensive as compared to a

complete application as the provisional specification doesn’t include all the
parts of a patent application and doesn’t require the same amount of time as
a complete and so as a result the professional fee charged is lesser although
the statutory fees is the same.

As opposed to a complete specification which needs to include all the parts

of a patent application, a provisional specification need not include the
claims and abstract.
A complete specification is mandatory in order to secure a patent and can
exist independently. A provisional patent application has no existence if a
corresponding complete application is not filed within 12 months as the
patent application is considered to be abandoned.

Though, both the provisional and complete application can be used for
claiming priority, however, any foreign application filing like PCT
application or a convention application needs to be mandatorily
accompanied by a complete specification only.
 Post-dating of Patent Application

Sec 9 (1): An application accompanying a provisional specification

is deemed to be abandoned of no commplete specification is filed
with in 12 months form the date of filing of provisional
specification.

Applicant has an option to post-date:

1. Sec 9(4):Where a complete specification has been filed in
pursuance of an application for a patent accompanied by a
provisional specification; the Controller may, if the applicant so
requests at any time before grant of patent, cancel the provisional
specification and post-date the application to the date of filing of
the complete specification.
 Post-dating of Patent Application

Sec 17: Power of Controller to make orders respecting dating of

application.— (1) Subject to the provisions of section 9, at any time
after the filing of an application and before the grant of the patent
under this Act, the Controller may, at the request of the -applicant
made in the prescribed manner, direct that the application shall be
post-dated to such date as may be specified in the request, and
proceed with the application accordingly:
Provided that no application shall be post-dated under this sub-
section to a date later than six months from the date on which it
was actually made or would, but for the provisions of this sub-
section, be deemed to have been made.
One issue arises that whether an applicant can post
date the provisional specification application if the
complete specification application has already been
filed.
Standipack Pvt. Ltd. v. Oswal Trading Co. Ltd.
(1999 IVAD Delhi 613, AIR 2000 Delhi 23, 80
(1999) DLT 56) 
The Court stated that provisions make it crystal
clear that post-dating of the patent can be done only
to the date of filing of the complete specification.
Section 17(1) for the post-dating of a provisional
application where the complete specification has
not been filed, Section 9(4) must not be taken into
account.