UNIT 5 & 6 : PRIOR ART SEARCHES

 Significance of Prior Art Searches How to Search Patents

What is Prior Art :
Information known publicly before the effective filing date of a U.S. patent application is
called prior art. • Prior art consists of information available to the public including:-U.S.
patents and published patent applications-Foreign patents and published patent applications-
Journal and magazine articles-Books, manuals, and catalogs-Websites-Conference
proceedings-Scientific papers
Example- In 2011 the computer company Apple sued Samsung, claiming that the company
had copied its design of the iPad for its Galaxy Tab. • In defense, Samsung attorneys
contended that Apple had patented a common design of a square display with rounded
corners which is seen often in movies. • As evidence of prior art, Samsung referred to scenes
from “2001: A Space Odyssey,” a science fiction film released in 1968.
Prior art searches aim to
 Prove your idea is new and original
 Know how your idea fits in the technological field
 Check patents other people in your field are filing
 Look out for people who might someday infringe on your idea
 Look for inventions that you might accidentally infringe on if you make and sell your
invention
 Find out how strong your idea is
Three major types of prior art patent searches:–Text searching,–Patent classification
searching, and–Patent citation searching.
Text searching- Identify main concepts of the invention. •Develop words and terms for each
concept. • Perform text research using multiple databases.
Classification searching-Use of classification codes to search for prior art. •Determine the
area of technology relevant to an invention. • Limit, focus, or target the search to a specific
area of art when searching patent files. A classification system is a system of hierarchical
categories used to organize like “things” by their characteristics and relationships. •
Classification systems are useful for sorting and searching large collections of information.
What is Cooperative Patent Classification (CPC)? • Joint partnership with USPTO and the
European Patent Office (EPO) • Harmonization of United States Patent Classification
(USPC) and European Classification System (ECLA). • The CPC is divided into 8 main
areas, A-H:–A: Human Necessities –B: Performing Operations; Transporting–C: Chemistry
and Metallurgy–D: Textiles and Paper–E: Fixed Construction–F: Mechanical Engineering;
Lighting; Heating; Weapons; Blasting; Engines or Pumps–G: Physics–H: Electricity
 Where to Search Detailed information
− Google Patents: You can search and read the full text of patents from around the
world.
 − World Intellectual Property Organization's IP Portal search: You can access a publicly
available patent database.
− Delphion patent database: You can view the first pages of patents.
− Google Scholar: You can search for scholarly publications.
− Non-patent literature: You can search for articles, publications, or journals (printed or
electronic).
− United States Patent and Trademark Office (USPTO): You can search the patent and
patent application databases.
− World Intellectual Property Organization (WIPO): You can search the
PATENTSCOPE application database.
− European Patent Office: You can search the Espacenet EU patent and patent
application database.

 Systematic classification of documents Patents offer more than technical

information
 Patents offer more than technical information
 Form a general understanding of your invention
 Conduct initial searches to get an overall sense of what prior art exists Perform
in-depth searches and review the results
UNIT 7. PRIOR ART SEARCH
− To generate ideas for R&D
− To avoid duplication of research
− To reduce significantly R&D investment
 − To develop new technical solutions to problems To evaluate specific technology
− To plan new products
− To identify state-of-art of technologies To find legal status of patent applications To
assess novelty and patentability
− To market for commercialization To update new technological trends
− To monitor competitor’s research activities
− To prevent infringement actions (validity, ownership etc.)
− Prior Art Searches and Lawsuits

8. SEARCH DATABASES
− Search Google.
− Search Google patents.
− Search the patent AND patent application databases of the United States Patent and
Trademark Office (USPTO).
− Search the PATENTSCOPE application database of the World Intellectual Property
Organization (WIPO).
− Search the Espacenet EU patent and patent application database of the European
Patent Office.
− Search any relevant technical or field specific publications or databases.
9. READING OF PATENTS
How to read patents Title of the invention
Cross-reference to related applications Invention background
Abstract Claims
Pedagogy adopted: Demonstration Method led by Drafting 3 Hrs.
10. DRAFTING OF PATENTS
Strategic Importance & Role of Communications Claims
Detailed Description or Specification Drawings
Background Abstract Summary
BASIC READING
https://www.wipo.int/export/sites/www/about-
wipo/en/oversight/iaod/evaluation/pdf/2017_evaluation_communi cations.pdf
Pedagogy adopted: Demonstration Method led by Drafting 3 Hrs.
11. DRAFTING OF PATENTS
Writing Specifications- Rules of the game To understand what might be patentable,
Who might be a co-inventor and preparing invention disclosures
BASIC READING
https://www.wipo.int/edocs/pubdocs/en/patents/867/wipo_pub_8
3 Hrs.
67.pdf
Pedagogy adopted: Demonstration Method led by Drafting
12. DRAFTING OF PATENTS
Specifications Provisional Complete
BASIC READING
Dr. S.R Myneni by Patent Drafting & Specification Writing Paperback
– 1 January 2019 https://www.wipo.int/edocs/mdocs/aspac/en/wipo_ip_bkk_16/wi
po_ip_bkk_16_t10_1.pdf
Pedagogy adopted: Demonstration Method led by Drafting 3 Hrs.
13. PATENT CLAIMS
● Importance of claims
A patent claim is indisputably the most important part of a patent specification. It defines the
boundary of the patent. To break it down, a patent claim defines exactly what is claimed by
the invention and therefore what is sought to be protected. It clearly lays down what the
patent does and does not cover. Simply put, the extent of protection conferred by a patent is
defined by the patent claims. A claim is usually expressed as a statement of technical facts
expressed in legal terms, defining the scope of the invention sought to be protected.
The preceding paragraph would have made the immense importance of a patent claim
evident. A patent claim is that part of the specification, which after the patent is granted, tells
third parties what they can and cannot do insofar as the invention is concerned. The exclusive
right conferred by the grant of a patent is defined by a patent claim. Any mistake in drafting
patent claims could result in an utterly useless patent. Only the patent claims define the scope
of protection granted by a patent. The rest of the patent specification only helps explain the
invention in detail. Claims define the contours of legal rights when the patent is granted.
Section 10 (4) (c) of the Patents Act, 1970 states that every complete specification must end
with a patent claim or patent claims that defines the scope of the invention for which
protection is claimed.
● Independent Claims
They are 'stand alone' claims that do not bear reference to any other claim. It contains a
preamble and all the elements necessary to define the invention. The first claim is usually an
independent claim that sets the tone for the protection claimed by the invention. Independent
claims are usually broader as compared to the dependent claims so as to prevent potential
infringers from circumventing the independent claim in any which way.
Independent Claims may be of three types:
 − A claim for a thing
− A claim for a method of making a thing
− A claim for a method of using a thing
● Dependent Claims
Dependent claims always bear reference to an earlier claim or independent claim
and limit their scope. Dependent claims are therefore relatively narrow as they
limit the scope of an earlier claim. Further, dependent claims refine the scope of
protection sought for an invention. Additionally, it may contain additional non-
essential features and even the minute aspects and optional features that are
not described in the independent claim.

These are the basic types of patent claims. On the whole, claims must be drafted
meticulously in order to get the patent protection that is sought and protect the
invention against potential infringers.

● Multiple Dependent Claims

A multiple dependent claim is a dependent claim that refers to more than one claim. The
USPTO will not object to proper multiple dependent claims. Unfortunately, most
specifications originating from foreign countries contain multiple dependent claims that
would be improper under US patent rules.

UNIT 14 : INDIAN PATENT FILING

Step 2: Draft Patent Specification.

 After conducting thorough searches worldwide, the specification of the invention is written in a
techno-legal language with or without the inventor’s claims. Without claims is the provisional
specification and with claims is the complete specification.
 The specification outlines the field of invention, detailed description of the invention with working
examples, and the best method to use the invention so that when it comes to the knowledge of a
person skilled in the art, it can be easily used. Legal protection to the patent is granted when the
specification is drafted with the inventor’s claim and is complete.

Step 3: Patent Application.

There are two types of application- Complete Application and Provisional Application. Both these filings serve
different purposes in the patent application process.
• Provisional patent filing establishes patent rights over a product which is yet to be developed and helps
claim an early filing date. The status of the Patent after Provisional patent filing remains “Pending.” A
12 months window is further provided to develop the invention before a complete patent application can
actually be filed.
• A complete patent filing, on the other hand, includes the detailed description of the developed invention,
outlining all the claims of the applicant, and presenting any necessary diagram to represent it.
There are 6 types of patent applications forms which can be filed on the basis of their purpose. Ordinary patent
application: Used to file a patent application directly in India, seeking protection only within the Indian
territory.
 PCT National phase patent application: Used to enter the national phase of PCT or Patent
Cooperation Treaty in India, after which the applicant will be allowed to seek patent protection in
multiple countries.
 PCT International patent application: Used to file a single patent application for patent registration
Step 4: Patent Registration
These documents are essential for successful patent registration to the extent that their incorrect or
inadequate filing may result in the application being rejected by the Patent Office. Here’s a complete list of
these documents required for Patent Registration in India. The website for the same is
https://ipronline.ipindia.gov.in/epatentfiling/goForLogin/doLogin
1. Application Form: A duly filled and signed patent application form (Form 1) is required, providing
details such as the applicant’s name, address, and contact information.
2. Provisional/Complete Specification: A patent specification document (Form 2) is required,
describing the invention in detail, including its technical aspects, working examples, and any
drawings or diagrams necessary for understanding the invention. A provisional patent specification
may be initially filed, followed by a complete patent specification within 12 months.
3. Abstract of the Invention: A brief summary (not exceeding 150 words) highlighting the technical
features and advantages of the invention is required.
4. Power of Attorney: If the patent filing procedure is being carried out by a Patent Agent or Service
Provider, a Power of Attorney document authorizing them to act on behalf of the applicant is
required.
5. Statement and Undertaking: A statement and undertaking (Form 3) declaring the inventorship of
the invention and the accuracy of the information provided in the application must be submitted.
6. Priority Document (if applicable): If the applicant is claiming priority based on an earlier filed
patent application in the convention country, a certified copy of the priority document, along with its
English translation must be submitted.
7. Proof of Right to File: In cases where the applicant is not the inventor, a document establishing the
applicant’s right to file the patent application, such as an assignment deed or employer-employee
agreement, needs to be submitted.
8. Form 28: If the applicant is a registered MSME or DPIIT Recognized Startup, they can claim
reduction in Patent registration fees by using Form 28.
9. Proof of Fee Payment: The requisite patent registration fees for filing the patent application form,
along with any additional fees for specific services like Patent Examination and filing replies to
Patent Objection, must be paid and the proof of such payment must be submitted.
10. Form 26: Form for authorization of a patent agent (only required if you are using a patent agent.
Step 5: Patent Publication for Public Opposition
Once the patent application process is complete, then after the expiry of 18 months from the date of patent
filing or date of priority whichever is earlier, the patent is published in an official journal and is open for
public viewing and inspection. This provides an opportunity to the general public to raise an objection to the
patent on valid grounds. The application status can be checked from
https://iprsearch.ipindia.gov.in/PublicSearch/PublicationSearch/ApplicationStatus

Step 6: Requesting Patent Examination

The patent application is examined only when a request for examination has been filed. The request for
examination has to be filed within 48 months of the patent filing date or date of the priority. The patent
examiner examines a patent application and issues an examination report. The examination report contains a
series of objections raised by an examiner. The response to an examination report has to be filed within 12
Step 7: Grant of a Patent
After all objections to the examination report have been replied to and the examiner is satisfied with the
reply of the applicant, the application is put in order for grant of Patent Registration. This marks the end of
the procedure for registration of Patent. On the other hand, if the examiner is not satisfied with the reply and
arguments of the applicant, then he/she can reject the patent application. In this case, the applicant will again
have to repeat the entire patent procedure in India again to get patent protection.

Step 8: Renewing of Patent

The holder of the patent is required to pay an annual fee for patent renewal every year. The maximum
number of years for which a holder can renew the patent is 20 years from the date of applying for the grant of
the patent. After the grant of patent, it needs to be renewed from 3rd year onward by paying renewal fee as
prescribed in (Schedule 1).
 UNIT 15: PATENT OPPOSITION
● Patent Opposition Procedure & Practice
− A patent opposition is a way by which any third party may review the
patentability criteria or validity of a pending patent application and also
that of a granted patent.
− Patent Opposition proceedings provides opportunities for individuals or public at
large or organizations to challenge the pending application of Patents or the granted
Patents. The Patent Opposition, if appropriately used, can act as a vital tool in
preventing the grant of frivolous Patents.
− Even though the goal of preventing the grant of frivolous Patent can be attained by
way of Revocation of Patent and other litigious options, but the Opposition of Patent
serves as the most cost-effective route.
− A Patent acquires a much higher Patent value if it passes the test of the Opposition of
Patent. In India, the system of Patent is unique as it provides two kinds of process for
the Opposition of Patent at two different phases of Patent prosecution.
● Request for examinations 11A and 11B
11A. Publication of applications.-- 3[(1) Save as otherwise provided, no application for
patent shall ordinarily be opened to the public for such period as may be prescribed.
(2) 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.
(3) Every application for a patent shall, on the expiry of the period specified under sub-
section (1), be published, except in cases where the application--
(a) in which secrecy direction is imposed under section 35; or
(b) has been abandoned under sub-section (1) of section 9; or
(c) has been withdrawn three months prior to the period specified under sub-section (1)].
(4) In case a secrecy direction has been given in respect of an application under section
35, then, it shall be published after the expiry of the period 4[prescribed under sub-
section (1)] or when the secrecy direction has ceased to operate, whichever is later.
(5) The publication of every application under this section shall include the particulars of
the date of application, number of application, name and address of the applicant
identifying the application and an abstract.
(6) Upon publication of an application for a patent under this section--
(a) the depository institution shall make the biological material mentioned in the
specification available to the public;
(b) the patent office may, on payment of such fee as may be prescribed, make the
specification and drawings, if any, of such application available to the public.
5
[(7) On and from the date of publication of the application for patent and until the date of
grant of a patent in respect of such application, the applicant shall have the like ivileges
and rights as if a patent for the invention had been granted on the date of publication of
the application:
Provided that the applicant shall not be entitled to institute any proceedings for
infringement until the patent has been granted:
Provided further that the rights of a patentee in respect of applications made under sub-
section (2) of section 5 before the 1st day of January, 2005 shall accrue from the date of
grant of the patent:
Provided also that after a patent is granted in respect of applications made under sub-
section (2) of section 5, the patent-holder shall only be entitled to receive reasonable
royalty from such enterprises which have made significant investment and were
producing and marketing the concerned product prior to the 1st day of January, 2005
and which continue to manufacture the product covered by the patent on the date of
grant of the patent and no infringement proceedings shall be instituted against such
enterprises.]

1
[11B. Request for examination.--2[(1) No application for a patent shall be examined
unless the applicant or any other interested person makes a request in the prescribed
manner for such examination within the prescribed period.]
(3) In case of an application in respect of a claim for a patent filed under sub-
section (2) of section 5 before the 1st day of January, 2005 a request for its examination
shall be made in the prescribed manner and within the prescribed period by the
applicant or any other interested person.]
(4) In case the applicant or any other interested person does not make a request for
examination of the application for a patent within the period as specified under sub-
section (1)5*** or sub-section (3), the application shall be treated as withdrawn by the
applicant:
[Provided that-- (i) the applicant may, at any time after filing the application but before
the grant of a patent, withdraw the application by making a request in the prescribed
manner; and
(ii) in a case where secrecy direction has been issued under section 35, the request for
examination may be made within the prescribed period from the date of revocation of the
secrecy direction.]
● Opposition of Patent– S.25 – Pre-grant, post –grant and their basis
Section 25(1) of the Act deals with Pre-Grant Opposition and Section 25(2) deals
with Post Grant opposition.

Pre-Grant Opposition: Section 25(1) of the Patents Act, 1970, states

that where an application for a patent has been published but a patent has not
been granted, any person may, in writing, represent by way of opposition to the
Controller against the grant of patent on the following grounds1 :

a. wrongfully obtaining the invention;

b. the claimed invention has been published before the priority date of a
claim in any specification filed in India on or after January 01, 1912, or in
any other documents in India or elsewhere, subject to the limitations on
anticipation under Section 29 Patents Act, 1970;
c. the invention was previously claimed in India having an earlier priority
date i.e. anticipation by prior date, prior claiming in India;
d. publicly known or publicly used in India before the priority date of that
claim;
 e. obviousness and lack of inventive step;
f. non patentable subject matter;
g. complete specification does not sufficiently and clearly describe the
invention or the method by which it is to be performed;
h. non-disclosure of information as per requirement by Section 8 or has
furnished false information;
i. where priority of convention application is claimed, the application was not
filed within 12 months from the priority date of first application;
j. nondisclosure or wrong mentioning of the source and geographical origin
of the biological material used for the invention;
k. anticipated by the traditional knowledge in India or elsewhere.

Procedure for Pre Grant Opposition: Rule 55 of Patents Rule, 2003, lays
down the procedure to be followed for pre grant opposition. Any person can file a
pre-grant opposition by way of a representation to the Controller against the
grant of patent based on any of the grounds mentioned above, wherein:

 Representation for opposition shall be filed in Form 7(A) may be given at

the appropriate office along with a statement and evidence in support of
the opposition.
 The Controller shall forward the notice along with representation to the
Applicant. Upon receiving the representation, Applicant, if desires may
choose to reply to the representation within three months from the date of
notice.
 Controller may either reject the opposition/ representation or require the
amendment of complete specification within one month of receiving the
reply from the Applicant.

Post Grant Opposition: Section 25(2) of the Patents Act, 1970 and Rules 55-62
of the Patents Rules, 2003, deal with Post Grant opposition. Post-grant opposition
can be filed at the appropriate office by any interested person2 within 12 months
from the date of publication of the grant of patent in the Indian Patent Journal.

The grounds for both pre-grant and post-grant oppositions in India are the same.
Nevertheless, there are several procedural differences between filing the two
types of opposition. In pre-grant opposition, any person may challenge the
application for grant of patent, whereas only an interested person can file a post-
grant opposition. Notice of opposition is filed in Form 7. Once the notice of post
grant opposition is received at the Patent Office:

 The Controller shall constitute an Opposition Board consisting of three

members and nominate one of the members as the Chairman of the
Board. An examiner who was involved in the prosecution of the application
cannot be a member of the Board.
 The patentee may reply to the opposition notice within two months of
receiving the notice. If the patentee does not reply to the opposition
notice, then the Patent is deemed to be revoked.
 Opponent may also file evidence in reply to the response from the
patentee within one month from the date of receipt of reply by the
Patentee.
 The Board conducts an examination of the opposition notice along with
replies submitted by the patentee and the opponent.
 The Board submits a report within three months from the receipt of all the
documents and evidences.
Procedural Differences between Pre-Grant and Post-Grant Patent Opposition in India: Pre and post
grant opposition contain virtually identical grounds for proceeding the opposition and there is
nothing which eliminates a pre-grant opponent from consequently filing a post grant opposition.
However despite the similarities there are also several technical differences between the two types
of the opposition which are illustrated below:

i. The most important difference between pre grant and post-grant opposition is that pre
grant proceedings may be initiated by "any person", while only a "person interested" can
introduce a post grant opposition.
ii. Next remarkable difference is with infringement proceedings. Infringement proceedings
cannot be started during pre-grant opposition prosecution as the patent is still in the
application stage, whereas infringement proceedings may be introduced in post grant
opposition.
iii. Section 25(1) of the Act does not openly allow the patent applicant an opportunity to be
heard in a pre-grant opposition.
iv. Moreover, the Indian Patents Act does not explicitly allow the opponent to be heard in a
pre-grant opposition. The opponent has to make an appeal for hearing and the rules do
not detail how a hearing is to be conducted. The opponent's right to be heard solely
depends upon the discretion of the Controller, who decides the same based upon the
merit of the opposition. Additionally, the rules are also not clear whether the opponent
will be heard in the presence of the applicant. In contrast, the opponent in a post-grant
opposition can proceed with the case irrespective of the merit of the notice of
opposition.
v. Furthermore, as per the stand taken by IPAB on numerous occasions; there is no remedy
against an order of the controller in a pre-grant opposition except to file a writ petition
under Indian constitution.
vi. The main drawback of the post-grant opposition process is that this remedy is available
only through the courts, making redressal a lengthy process and, in the case of bad
patents, permitting the patent holder to enjoy a wrongful monopoly. This is of particular
concern in India, given the prolonged nature of the judicial process.
vii. Pre grant opposition on the other hand is more cost effective and result in faster disposal
of cases on merits thereby reducing the costs incurred in contesting the post grant
proceedings. viii. The mechanism of pre-grant opposition is faster as compared to post
grant opposition where trials and extension of hearings occurs in a conventional manner
which it happens in the Courts. Unlike post-grant opposition, there is no fee stipulated
for filing a pre-grant opposition.

● Responding to office actions

● Drafting responses
● Opposition proceedings
UNIT 16: LICENSING OF PATENTS
Licensing of Patents – special reference to public health issues (S. 92and92A) and parallel
imports (S.107A); Compulsory and Voluntary Licences
CASES
Issue of compulsory licence on 9 May 2012 for cancer drug Natco Pharma Limited v. Bayer
Corporation, Application for Compulsory Licence No. 1 of 2011 in respect of Patent no.
215758, Controller of Patents, Mumbai, Decision Available at
http://www.ipindia.nic.in/ipoNew/compulsory_License_12032012.p df
Pedagogy adopted: Demonstration Method; Mock Client Consultation Session
17. INTELLECTUAL PROPERTY APPELLATE BOARD
Role of IPAB
● https://www.ipab.gov.in/
CASES
Gilead Sciences Inc vs. Intellectual Property Appellate ... on 5 January, 2012
Council of Scientific and Industrial Research vs. Hindustan Lever Limited, 2015
Pedagogy adopted: Demonstration Method; Mock Session 3 Hrs.
18. PATENT LITIGATION
● Protection, Enforcement & Patent Litigation
● Rights of Patentee and Patent Infringement (S.47, S.48, S.104),
● Defenses (S.107 and S.107A dealing with parallel imports)
● Opportunity & challenges of Patent Basic Reading:
Patent Law, Naarayan,P. (4th Edition), Revised 2017, Reprint 2018, Eastern Law House,
Kolkata
CASES
Novartis Ag vs Union Of India & Ors, Supreme Court, 1 April, 2013 Bayer Corporation
&Anr vs Union Of India & Ors on 9 February, 2010 Novartis Ag &Anr vs Cipla Ltd, High
Court of Delhi, on 9 January, 2015
Cipla Limited vs Novartis Ag &Anr. High Court of Delhi, 9 March, 2017
Pedagogy adopted: Demonstration Method; Mock Session 3 Hrs.