Process of Patenting

MODULE 5

MITE

1

26-05-2025

MANGALORE INSTITUTE OF TECHNOLOGY & ENGINEERING

(A Unit of Rajalaxmi Education Trust^®, Mangalore)

Autonomous Institute affiliated to VTU, Belagavi, Approved by AICTE, New Delhi

Accredited by NAAC with A+ Grade & ISO 9001:2015 Certified Institution

Contents

• Prior Art Search
• Choice of Application to be Filed
• Patent Application Forms
• Jurisdiction of Filing Patent Application
• Publication
• Pre-grant Opposition
• Examination
• Grant of a Patent
• Validity of Patent Protection
• Post-grant Opposition
• Commercialization of a Patent

MITE

2

26-05-2025

Patents:

• A patent is a grant from the government which confers on the guarantee for a limited period of time the exclusive privilege of making, selling and using the invention for which a patent has been granted.

​

MITE

3

26-05-2025

Conditions for Obtaining a Patent Protection:�

There is a set criterion, as provided in Section 2(1)(j) of the Patents Act, 1970, which must be fulfilled for a product or a process to qualify for the grant of a patent.

i. Novelty: Not part of ‘State of the Art

ii. Inventive step: Not obvious to the person (s) skilled in the art.

iii. Capable of industrial application: For the benefit of society

​

MITE

4

26-05-2025

Process of Patenting

• In India, the process of grant of a patent is a lengthy procedure that may take anywhere 3-4 years or more. The major steps involved in this process are listed in figure 2.1.

MITE

5

26-05-2025

Prior Art Search

​

• Before filing a patent, an inventor must ensure their invention is novel

by checking if it already exists in the public domain.

• This involves reviewing patent documents, non-patent literature

(NPL), scientific journals, reports, and magazines.

• Any publicly available information before the patent filing or priority

date is considered Prior Art.

MITE

6

26-05-2025

Prior Art Search

• Conducting a prior art search helps:�✔ Avoid infringement�✔ Track research & development�✔ Gain detailed insights into existing inventions
• The search is based on parameters like novelty, patentability, state of the art, infringement, validity, and freedom to operate.
• Common databases used for this search fall into two categories: Patent Databases and Non-Patent Literature (NPL).

​

MITE

7

26-05-2025

Patents’ Databases

• Indian Patent Advanced Search System: (InPASS- http://ipindiaservices.gov.in/publicsearch/).
• Patentscope(WIPO- https://www.wipo.int/patentscope/en/).
• Espacenet(EU- https://worldwide.espacenet.com/patent/).
• USPTO(USA- https://www.uspto.gov/).
• Google Patents Advanced Search: (https://patents.google.com/advanced).
• Orbit Intelligence: (https://www.questel.com/business-intelligence-software/orbit-intelligence/).
• Derwent Innovation (https://clarivate.com/derwent/solutions/derwent-innovation/).
• PROQUEST(https://about.proquest.com/search/?searchKeyword=patent+)

​

MITE

8

26-05-2025

Non-Patent Literature (NPL)

• Scholarly publications: Handbooks, Textbooks, Withdrawn Patents, Encyclopedias, Journals (IEEE, Research Gate, Springer, Wiley Online Library, etc.), Dissertations, NCBI‘s PubMed, Conference Proceedings, Technical Reports, Public Conferences, etc.
• Industry/trade publications: Industry reviews and public disclosures (Social media, YouTube, Books, Magazines, Datasheets, Blueprints, etc.).
• Others: Newspapers, Websites, Technology blogs, Researchers‘ websites, etc

MITE

9

26-05-2025

Choice of Application to be Filed

1. After deciding to patent an invention, the next step is selecting the type of application:� a. Provisional Patent Application� b. Complete (Final) Patent Application

2. Why Choose a Provisional Patent Application?� Cost-effective – Cheaper, faster, and requires fewer formalities� Flexibility – Allows inclusion of improvements in the final application� No need for complete specifications – Can be filed even if some data is pending� Secures Priority Date – Establishes an early filing date

3. Important: The complete patent application must be filed within one year of

the provisional application, or the application will be rejected.

​

MITE

10

26-05-2025

Patent Application Filing Process

• As per the Patent Act, 1970 (Section 39) and Patent Rules, 2003, a patent application is filed using:�Form-1 – General Information (Title, Applicant/Inventor Names, Type of Application)�Form-2 – Technical Details (Provisional or Complete Application)

​

• Filing Requirements:�Provisional Application – Requires only Description of the Invention & Abstract�Complete Application – Includes Description, Abstract, Claims, and Implementation Details

​

MITE

11

26-05-2025

Patent Application Filing Process

• Significance of Claims

🔹 Define the legal boundaries of the invention� 🔹 Specify what is protected under the patent� 🔹 Drafted in technical & legal terms

• Types of Claims:� 🔹 Independent Claims – Standalone claims� 🔹 Dependent Claims – Linked to independent claims
• Precision in claim drafting is crucial to secure strong patent

protection and prevent infringement.

For more details, visit: www.ipindia.nic.in

​

MITE

12

26-05-2025

MITE

13

26-05-2025

MITE

14

26-05-2025

MITE

15

26-05-2025

MITE

16

26-05-2025

MITE

17

26-05-2025

MITE

18

26-05-2025

MITE

19

26-05-2025

Jurisdiction of Filing Patent Application

• India has four offices for filing patent applications (Table 2.1).
• The applications can be filed only in one of the offices based on the applicant‘s residence or domicile or place of business or origin of the invention.
• These are termed as jurisdictions to file patents.

MITE

20

26-05-2025

MITE

21

26-05-2025

MITE

22

26-05-2025

Patent Filing for Foreign Applicants

• The Patent Office for filing is determined by:�🔹 Address for service in India OR�🔹 Business location of the patent agent
• Joint Applications�🔹 All applicants have equal rights & consideration.

​

MITE

23

26-05-2025

Patent Application Publication Process

• After filing at the Regional Patent Office, the application remains confidential for 18 months.
• After 18 months (from the filing date or priority date, whichever is earlier), it is published in the Official Journal of the Patent Office.
• Purpose: To inform the public about the invention.
• Mandatory Step in the patent process.
• For published applications: www.ipindia.nic.in/journal-patents.htm

​

MITE

24

26-05-2025

Pre-Grant Opposition & Early Publication

• Pre-Grant Opposition�🔹 Anyone can challenge the patent application within 6 months of publication
• by filing an objection with the Controller of Patents.�🔹 The application may be rejected or proceed to examination based on the
• decision.

MITE

25

26-05-2025

Pre-Grant Opposition & Early Publication:

• Early Publication (Form-9)�🔹 Though the application remains confidential for 18 months, this period
• can be reduced under special circumstances, such as:�🔹 Selling or licensing the patent�🔹 Seeking investors�🔹 To request early publication, the applicant must submit Form-9 to the
• Controller General.

MITE

26

26-05-2025

Patent Examination Process:

• A crucial step in the patent grant process where experts evaluate:�🔹 Novelty�🔹 Inventive Step�🔹 Technical Details
• Key Points:�🔹 Examiners may raise queries that inventors must address.�🔹 If responses are satisfactory, the patent is recommended for grant.�🔹 Examination is NOT automatic after publication.�🔹 The applicant must request examination by filing Form-18A within 48
• months from the filing date.

​

MITE

27

26-05-2025

Patent Grant & Publication:

• Once all requirements, objections, and queries from the Patent Examiner and the public are addressed, the patent is granted.
• The granted patent is then published in the Official Journal of the Patent Office, released every Friday.
• The journal includes:�🔹 Published patent applications (Section 11A)�🔹 Post-grant publications�🔹 Patent restorations�🔹 Notifications & public notices�🔹 List of non-working patents

​

MITE

28

26-05-2025

MITE

29

26-05-2025

Patent Protection & Renewal:

• Patent Duration:�🔹 Granted for 20 years from the filing date.�🔹 Must be renewed annually by paying the Patent Renewal Fee (as per

Section 53, Rule 80 of the Indian Patents Act).�🔹 Non-payment may result in cancellation of the patent.

• Patent Extension:�🔹 In some countries, patent protection can extend beyond 20 years.�🔹 Extensions compensate for administrative delays before a product reaches

the market.�🔹 This ensures the patent owner maximizes their rights post-grant.

​

MITE

30

26-05-2025

Post-Grant Patent Challenges:

• A granted patent can be challenged within 1 year from its publication date.� Challenges can be filed through:�🔹 Patent Office�🔹 Court of Law
• Grounds for Patent Cancelation:�🔹 Wrongful ownership of the invention�🔹 Prior publication before the priority date�🔹 Public knowledge or use before the priority date�🔹 Lack of inventive step (obvious invention)�🔹 Non-patentable subject matter (as per Chapter II of the Patent Act, 1970)

🔹 Incomplete or unclear specifications of the invention

MITE

31

26-05-2025

Patent Licensing & Commercialization

• The patent owner can grant permission to others (individuals, organizations, industries) to make, use, and sell the patented invention under agreed terms.
• Reasons for Licensing a Patent:�🔹 The owner has a different focus (e.g., academic career) and doesn't want to

exploit the patent.� 🔹 Lack of necessary manufacturing facilities.� 🔹 Inability to meet market demand.� 🔹 The owner prefers to focus on specific geographic markets and license the

patent for others.

​

MITE

32

26-05-2025

Patent Licensing & Commercialization

• Types of Licensing:�🔹 Exclusive License – The patent is granted to one licensee for a set period.�🔹 Non-exclusive License – The patent is granted to multiple parties.
• Patent Working & Licensing (Form-27):�🔹 The patentee must submit annual information on commercialization and licensing of the patent.

​

MITE

33

26-05-2025

Patent Licensing & Commercialization

• Compulsory Licensing:�🔹 If the patent isn't commercialized within 3 years from grant, others may

request compulsory licensing from the Controller of Patents if:� 🔹 Public needs for the invention are unmet.� 🔹 The invention is not available at a reasonable price.� 🔹 The invention is not worked in India.

MITE

34

26-05-2025