EXAMINATION OF PATENTS

•APPLICATION SHLD ADHERE TO

PRESCRIBED FORMALITIES
•NATURE, FORM & CONTENT
 INDUSTRIAL APPLICABILITY
• Novelty – anticipated by prior art
• Non prejudicial disclosure- public disclosures ,
on public policy grounds deemed reasonably
excusably at recognised exhibitions, or
conduct of expiriments, in such events
applicants must submit a declaration to
disregard prior disclosure to redeem novelty
of the invention
 INVENTIVE SPACE
• Which is a requirement which assumes that
there is a gap in technology advancement
between prior art and the invention in
question
• Obvious ness- means it does not go beyond
the normal progress of technology but merely
follows logically from the art
 INDUSTRIAL APPLICABILITY
• The basic principle is that a patent application
must disclose the invention in a manner that
is sufficiently clear and complete for it to be
carried out by a person skilled in the art
• Accordingly in seeking to determine industrial
applicability the following guiding principles
are applied, being that the invention must be
described and interpreted in the context of a
specialist
 Industrial applicability
1. Who is an ordinary unimaginative character
2. Who is aware of the common general
knowledge obtaining in the art as at the
priority date of the application
3. Who would work the invention
Who would read the invention with a mind
willing to understand not misunderstand
• Industrial applicabity would be interpreted
that the invention must be useful
• Must yield some utility as showing
effectiveness to produce the desired result in
any field of technology
• Manufacturing, agriculture, trade,
pharmacetical
 PARIS CONVENTION
• INTERNATION CONVENTION ON PROTECTION
OF INDUSTRIAL PROPERTY
• First signed in 1883 by 11 countries
• Countries formed a union of patent
authorities refred to as the Paris Union
• Currently convention has 173 member states
• The convention has three parts
 PARIS CONVENTION
1. National treatment- each contracting state shall grant
protection to other nationals of other contracting
states as it grants it own nationals
2. Right of Priority-applicant may within 12 months from
the date of first filing apply for protection in other
contracting states. The latter applications are
regarded as if they were filed on the day the first
application was filed(they will have the priority or
right of priority over the same applications which
could have been lodged during the same period)
allows creation of patent families)
3. Common Rules
• The inventor must be named in a Patent
Application
• Patents granted in different contracting
states for the same invention are
independent of each other-that means
• Grant of a patent in one country does not
oblige other contracting states to grant a
patent.
• A patent should not be refused or annulled
because it has faced the same fate in other
contracting states
• Domestic restrictions should not lead to the
refusal of a grant of a patent(only
patentability criteria to be taken into
consideration)
• Compulsory license can be only issued after 3
to 4 yrs if invention is not worked
 ANATOMY OF A PATENT
• TITLE OF INVENTION-should be done in a clear
precise and concise manner
• Applicants details- contact details, country of
residence, principal place of business
• Representative- if applicant is represented by an
agent must be authorised by power of attorney-
contact details necessary
• Inventor- has unfettered right to be named in
application even when inventor is not applicant
• Contact details necessary, deed of
assignement or proof thereto necessary
• Priority Declaration- where neccesary
• Prior Disclosures Declaration or certificate
• Designations if international application
 In short the requirement
• Title of invention
• Clearly and concisely state the technical field to
which invention relates
• Indicate background art
• Briefly describe figures in drawing which should
be consistent with one another
• Disclose invention in such terms that the
technical problem which the invention deals can
be appreciated and the solution thereto can be
understood, stating its advantageous effects with
reference to background art
• Set forth at least the best mode contemplated
by applicant for carrying out invention. This
must be done by manner of examples where
appropriate and with reference to drawings,
• Indicate explicitly if this is not obvious the
description of and nature of invention, the
way in which the invention is capable of
industrial application and the way it can be
used(CLAIMS)
 EXCLUSIVE RIGHTS CONFERED BY A
PATENT
• A patentee can prevent others without his
consent from
• Making, importing, using, offering for sale, or
selling patented product, using the patented
process
• Protection against infringement
• Licencing and assignement
 LIMITATION OF OWNERS RIGHTS
• Patent rights extend only to acts done for
industrial and commercial purposes
• Don’t extends to acts done for scientific
research
• Prior user’s rights
• Compulsory licenses