DRAFT
Manual of Patent Office Practice and Procedure
PUBLISHED BY THE OFFICE OF CONTROLLER GENERAL OF PATENTS, DESIGNS & TRADEMARKS
BOUDHIK SAMPADA BHAWAN, S M ROAD, ANTOP HILL, MUMBAI (INDIA)
Preface
The Patents Act, 1970 was amended in 1999, 2002 & 2005. The amended Act, in accordance with TRIPS, has provided for product patents in foods, medicines and chemical substances. India became signatory to PCT in 1998. As a consequence, patent filing including PCT National Phase Applications have increased exponentially.
Considerable changes have been made in the patenting procedure through the introduction of Patent Rules, 2003, which were further amended in 2005 and 2006, resulting in new practices and procedure.
Indian Patent Office has been modernized with office automation and electronic processing of patent applications during the past one decade. The objective of the modernization project was to increase the efficiency and streamline the functioning in tune with the international scenario, especially with regard to transparency. It has been our constant endeavor to be more transparent in all the spheres of patenting process. IT enabled office process have enabled us to make all information relating to the status of patent application and contents of file, publicly available through the official website. This manual is yet another step to fulfill our commitment to be more efficient and transparent.
There has been a demand from the new inventors, patent practitioners and foreign applicants to codify the practices in Indian Patent Office in the form of a manual. A draft manual was published in 2009 in the official website inviting comments and suggestions from stakeholders. Taking into account the comments and suggestions received, that draft has been thoroughly revised to make it more precise and simple. It is our ardent hope that this manual will effectively meet the demands from stakeholders.
This manual may be considered as a practical guide for effective prosecution of patent applications in India. However, it does not constitute rule making and hence does not have the force and effect of law.
The manual will be revised from time to time based on interpretations by a Court of Law, statutory amendments and valuable inputs from the stakeholders.
(P H Kurian) Controller General of Patents, Designs and Trademarks
INDEX
Chapters:
01 Introduction 02 Key definitions
02.01 General
02.02 Definitions
02.02.01 Controller
02.02.02 Government undertaking
02.02.03 Invention
02.02.04 Inventive step
02.02.05 Capable of industrial application
02.02.06 Legal representative
02.02.07 Assignee
02.02.08 Patentee
02.02.09 Patent office
02.02.10 Appropriate office
02.02.11 Person
02.02.12 Person interested
02.02.13 Prescribed
02.02.14 Prescribed manner
02.02.15 True and first inventor 03 Filing of Patent Applications
03.01 Applicant
03.01.01 Procedure to be followed in case of death of applicant or in case the legal entity ceases to exist
03.02 Jurisdiction
03.03 Type of patent applications
03.04 Filing of a patent application
03.04.01 Contents of Patent Application
03.04.02 E-filing
03.04.02.01 Steps for e-filing of Patent Application 03.04.03 Leaving and serving documents at Patent Office 03.04.04 Receiving documents in Office 03.04.05 Language and Paper size etc. 03.04.06 Sequence listing 03.04.07 Fee
03.05 Processing of Application
03.05.01 Initial processing
03.05.02 Scrutiny of application
03.05.03 Secrecy Directions and consequences thereof
03.05.04 Inventions relating to Atomic Energy
03.06 Withdrawal of patent application 04 Publication
04.01 Publication of Patent Application
04.02 Early Publication
04.03 Particulars of Publication
04.04 Effects of Publication 05 Provisional and complete specification
05.01 Specification
05.02 Provisional Specification
05.02.01 Provisional Specification – General
05.02.02 Contents of Provisional Specification
05.03 Complete Specification
05.03.01 Complete Specification shall
05.03.02 National phase applications
05.03.03 Title
05.03.04 Field of the Invention and use of Invention
05.03.05 Prior Art and problem to be solved
05.03.06 Objects of the Invention
05.03.07 Summary of the Invention
05.03.08 Detailed Description of Invention
05.03.09 Drawings 05.03.10 Abstract 05.03.11 Best Method 05.03.12 Claims 05.03.13 Unity of invention and clarity of claims 05.03.14 Significance of Claims 05.03.15 Scope of claims 05.03.16 Structure of claims
05.04 Priority of a claim
05.04.01 General
05.04.02 Divisional application
05.04.03 Convention application
05.04.04 Effect of Priority Date of a Claim 06 Divisional application and patent of addition
06.01 Divisional Application
06.01.01 General
06.01.02 Contents
06.01.03 Priority
06.01.04 Appropriate office
06.01.05 Reference
06.01.06 Fee
06.02 Patent Of Addition
06.02.01 General
06.02.02 Novelty and inventive step
06.02.03 Reference 07 Convention application, international application and national phase application
07.01 Convention application
07.01.01 Paris Convention and WTO Agreement
07.01.02 Convention Country
07.01.03 Convention Application
07.01.04 Documents to be submitted
07.01.05 Multiple priorities
07.01.06 Other conditions
07.02
PUBLISHED BY THE OFFICE OF CONTROLLER GENERAL OF PATENTS, DESIGNS & TRADEMARKS
BOUDHIK SAMPADA BHAWAN, S M ROAD, ANTOP HILL, MUMBAI (INDIA)
Preface
The Patents Act, 1970 was amended in 1999, 2002 & 2005. The amended Act, in accordance with TRIPS, has provided for product patents in foods, medicines and chemical substances. India became signatory to PCT in 1998. As a consequence, patent filing including PCT National Phase Applications have increased exponentially.
Considerable changes have been made in the patenting procedure through the introduction of Patent Rules, 2003, which were further amended in 2005 and 2006, resulting in new practices and procedure.
Indian Patent Office has been modernized with office automation and electronic processing of patent applications during the past one decade. The objective of the modernization project was to increase the efficiency and streamline the functioning in tune with the international scenario, especially with regard to transparency. It has been our constant endeavor to be more transparent in all the spheres of patenting process. IT enabled office process have enabled us to make all information relating to the status of patent application and contents of file, publicly available through the official website. This manual is yet another step to fulfill our commitment to be more efficient and transparent.
There has been a demand from the new inventors, patent practitioners and foreign applicants to codify the practices in Indian Patent Office in the form of a manual. A draft manual was published in 2009 in the official website inviting comments and suggestions from stakeholders. Taking into account the comments and suggestions received, that draft has been thoroughly revised to make it more precise and simple. It is our ardent hope that this manual will effectively meet the demands from stakeholders.
This manual may be considered as a practical guide for effective prosecution of patent applications in India. However, it does not constitute rule making and hence does not have the force and effect of law.
The manual will be revised from time to time based on interpretations by a Court of Law, statutory amendments and valuable inputs from the stakeholders.
(P H Kurian) Controller General of Patents, Designs and Trademarks
INDEX
Chapters:
01 Introduction 02 Key definitions
02.01 General
02.02 Definitions
02.02.01 Controller
02.02.02 Government undertaking
02.02.03 Invention
02.02.04 Inventive step
02.02.05 Capable of industrial application
02.02.06 Legal representative
02.02.07 Assignee
02.02.08 Patentee
02.02.09 Patent office
02.02.10 Appropriate office
02.02.11 Person
02.02.12 Person interested
02.02.13 Prescribed
02.02.14 Prescribed manner
02.02.15 True and first inventor 03 Filing of Patent Applications
03.01 Applicant
03.01.01 Procedure to be followed in case of death of applicant or in case the legal entity ceases to exist
03.02 Jurisdiction
03.03 Type of patent applications
03.04 Filing of a patent application
03.04.01 Contents of Patent Application
03.04.02 E-filing
03.04.02.01 Steps for e-filing of Patent Application 03.04.03 Leaving and serving documents at Patent Office 03.04.04 Receiving documents in Office 03.04.05 Language and Paper size etc. 03.04.06 Sequence listing 03.04.07 Fee
03.05 Processing of Application
03.05.01 Initial processing
03.05.02 Scrutiny of application
03.05.03 Secrecy Directions and consequences thereof
03.05.04 Inventions relating to Atomic Energy
03.06 Withdrawal of patent application 04 Publication
04.01 Publication of Patent Application
04.02 Early Publication
04.03 Particulars of Publication
04.04 Effects of Publication 05 Provisional and complete specification
05.01 Specification
05.02 Provisional Specification
05.02.01 Provisional Specification – General
05.02.02 Contents of Provisional Specification
05.03 Complete Specification
05.03.01 Complete Specification shall
05.03.02 National phase applications
05.03.03 Title
05.03.04 Field of the Invention and use of Invention
05.03.05 Prior Art and problem to be solved
05.03.06 Objects of the Invention
05.03.07 Summary of the Invention
05.03.08 Detailed Description of Invention
05.03.09 Drawings 05.03.10 Abstract 05.03.11 Best Method 05.03.12 Claims 05.03.13 Unity of invention and clarity of claims 05.03.14 Significance of Claims 05.03.15 Scope of claims 05.03.16 Structure of claims
05.04 Priority of a claim
05.04.01 General
05.04.02 Divisional application
05.04.03 Convention application
05.04.04 Effect of Priority Date of a Claim 06 Divisional application and patent of addition
06.01 Divisional Application
06.01.01 General
06.01.02 Contents
06.01.03 Priority
06.01.04 Appropriate office
06.01.05 Reference
06.01.06 Fee
06.02 Patent Of Addition
06.02.01 General
06.02.02 Novelty and inventive step
06.02.03 Reference 07 Convention application, international application and national phase application
07.01 Convention application
07.01.01 Paris Convention and WTO Agreement
07.01.02 Convention Country
07.01.03 Convention Application
07.01.04 Documents to be submitted
07.01.05 Multiple priorities
07.01.06 Other conditions
07.02
Preface
The Patents Act, 1970 was amended in 1999, 2002 & 2005. The amended Act, in accordance with TRIPS, has provided for product patents in foods, medicines and chemical substances. India became signatory to PCT in 1998. As a consequence, patent filing including PCT National Phase Applications have increased exponentially.
Considerable changes have been made in the patenting procedure through the introduction of Patent Rules, 2003, which were further amended in 2005 and 2006, resulting in new practices and procedure.
Indian Patent Office has been modernized with office automation and electronic processing of patent applications during the past one decade. The objective of the modernization project was to increase the efficiency and streamline the functioning in tune with the international scenario, especially with regard to transparency. It has been our constant endeavor to be more transparent in all the spheres of patenting process. IT enabled office process have enabled us to make all information relating to the status of patent application and contents of file, publicly available through the official website. This manual is yet another step to fulfill our commitment to be more efficient and transparent.
There has been a demand from the new inventors, patent practitioners and foreign applicants to codify the practices in Indian Patent Office in the form of a manual. A draft manual was published in 2009 in the official website inviting comments and suggestions from stakeholders. Taking into account the comments and suggestions received, that draft has been thoroughly revised to make it more precise and simple. It is our ardent hope that this manual will effectively meet the demands from stakeholders.
This manual may be considered as a practical guide for effective prosecution of patent applications in India. However, it does not constitute rule making and hence does not have the force and effect of law.
The manual will be revised from time to time based on interpretations by a Court of Law, statutory amendments and valuable inputs from the stakeholders.
(P H Kurian) Controller General of Patents, Designs and Trademarks
INDEX
Chapters:
01 Introduction 02 Key definitions
02.01 General
02.02 Definitions
02.02.01 Controller
02.02.02 Government undertaking
02.02.03 Invention
02.02.04 Inventive step
02.02.05 Capable of industrial application
02.02.06 Legal representative
02.02.07 Assignee
02.02.08 Patentee
02.02.09 Patent office
02.02.10 Appropriate office
02.02.11 Person
02.02.12 Person interested
02.02.13 Prescribed
02.02.14 Prescribed manner
02.02.15 True and first inventor 03 Filing of Patent Applications
03.01 Applicant
03.01.01 Procedure to be followed in case of death of applicant or in case the legal entity ceases to exist
03.02 Jurisdiction
03.03 Type of patent applications
03.04 Filing of a patent application
03.04.01 Contents of Patent Application
03.04.02 E-filing
03.04.02.01 Steps for e-filing of Patent Application 03.04.03 Leaving and serving documents at Patent Office 03.04.04 Receiving documents in Office 03.04.05 Language and Paper size etc. 03.04.06 Sequence listing 03.04.07 Fee
03.05 Processing of Application
03.05.01 Initial processing
03.05.02 Scrutiny of application
03.05.03 Secrecy Directions and consequences thereof
03.05.04 Inventions relating to Atomic Energy
03.06 Withdrawal of patent application 04 Publication
04.01 Publication of Patent Application
04.02 Early Publication
04.03 Particulars of Publication
04.04 Effects of Publication 05 Provisional and complete specification
05.01 Specification
05.02 Provisional Specification
05.02.01 Provisional Specification – General
05.02.02 Contents of Provisional Specification
05.03 Complete Specification
05.03.01 Complete Specification shall
05.03.02 National phase applications
05.03.03 Title
05.03.04 Field of the Invention and use of Invention
05.03.05 Prior Art and problem to be solved
05.03.06 Objects of the Invention
05.03.07 Summary of the Invention
05.03.08 Detailed Description of Invention
05.03.09 Drawings 05.03.10 Abstract 05.03.11 Best Method 05.03.12 Claims 05.03.13 Unity of invention and clarity of claims 05.03.14 Significance of Claims 05.03.15 Scope of claims 05.03.16 Structure of claims
05.04 Priority of a claim
05.04.01 General
05.04.02 Divisional application
05.04.03 Convention application
05.04.04 Effect of Priority Date of a Claim 06 Divisional application and patent of addition
06.01 Divisional Application
06.01.01 General
06.01.02 Contents
06.01.03 Priority
06.01.04 Appropriate office
06.01.05 Reference
06.01.06 Fee
06.02 Patent Of Addition
06.02.01 General
06.02.02 Novelty and inventive step
06.02.03 Reference 07 Convention application, international application and national phase application
07.01 Convention application
07.01.01 Paris Convention and WTO Agreement
07.01.02 Convention Country
07.01.03 Convention Application
07.01.04 Documents to be submitted
07.01.05 Multiple priorities
07.01.06 Other conditions
07.02
Considerable changes have been made in the patenting procedure through the introduction of Patent Rules, 2003, which were further amended in 2005 and 2006, resulting in new practices and procedure.
Indian Patent Office has been modernized with office automation and electronic processing of patent applications during the past one decade. The objective of the modernization project was to increase the efficiency and streamline the functioning in tune with the international scenario, especially with regard to transparency. It has been our constant endeavor to be more transparent in all the spheres of patenting process. IT enabled office process have enabled us to make all information relating to the status of patent application and contents of file, publicly available through the official website. This manual is yet another step to fulfill our commitment to be more efficient and transparent.
There has been a demand from the new inventors, patent practitioners and foreign applicants to codify the practices in Indian Patent Office in the form of a manual. A draft manual was published in 2009 in the official website inviting comments and suggestions from stakeholders. Taking into account the comments and suggestions received, that draft has been thoroughly revised to make it more precise and simple. It is our ardent hope that this manual will effectively meet the demands from stakeholders.
This manual may be considered as a practical guide for effective prosecution of patent applications in India. However, it does not constitute rule making and hence does not have the force and effect of law.
The manual will be revised from time to time based on interpretations by a Court of Law, statutory amendments and valuable inputs from the stakeholders.
(P H Kurian) Controller General of Patents, Designs and Trademarks
Chapters:
01 Introduction 02 Key definitions
02.02 Definitions
02.02.01 Controller
02.02.02 Government undertaking
02.02.03 Invention
02.02.04 Inventive step
02.02.05 Capable of industrial application
02.02.06 Legal representative
02.02.07 Assignee
02.02.08 Patentee
02.02.09 Patent office
02.02.10 Appropriate office
02.02.11 Person
02.02.12 Person interested
02.02.13 Prescribed
02.02.14 Prescribed manner
02.02.15 True and first inventor 03 Filing of Patent Applications
03.01.01 Procedure to be followed in case of death of applicant or in case the legal entity ceases to exist
03.03 Type of patent applications
03.04 Filing of a patent application
03.04.02 E-filing
03.04.02.01 Steps for e-filing of Patent Application 03.05.01 Initial processing
03.05.02 Scrutiny of application
03.05.03 Secrecy Directions and consequences thereof
03.05.04 Inventions relating to Atomic Energy
03.06 Withdrawal of patent application 04 Publication
04.02 Early Publication
04.03 Particulars of Publication
04.04 Effects of Publication 05 Provisional and complete specification
05.02 Provisional Specification
05.02.01 Provisional Specification – General
05.02.02 Contents of Provisional Specification
05.03.02 National phase applications
05.03.03 Title
05.03.04 Field of the Invention and use of Invention
05.03.05 Prior Art and problem to be solved
05.03.06 Objects of the Invention
05.03.07 Summary of the Invention
05.03.08 Detailed Description of Invention
05.03.09 Drawings 05.04.01 General
05.04.02 Divisional application
05.04.03 Convention application
05.04.04 Effect of Priority Date of a Claim 06 Divisional application and patent of addition
06.01.01 General
06.01.02 Contents
06.01.03 Priority
06.01.04 Appropriate office
06.01.05 Reference
06.01.06 Fee
06.02.02 Novelty and inventive step
06.02.03 Reference 07 Convention application, international application and national phase application
07.01.02 Convention Country
07.01.03 Convention Application
07.01.04 Documents to be submitted
07.01.05 Multiple priorities
07.01.06 Other conditions
07.02 INDEX
02.01 General
03.01 Applicant
03.02 Jurisdiction
03.04.01 Contents of Patent Application
03.04.03 Leaving and serving documents at Patent Office 03.04.04 Receiving documents in Office 03.04.05 Language and Paper size etc. 03.04.06 Sequence listing 03.04.07 Fee 03.05 Processing of Application
04.01 Publication of Patent Application
05.01 Specification
05.03 Complete Specification
05.03.01 Complete Specification shall
05.03.10 Abstract 05.03.11 Best Method 05.03.12 Claims 05.03.13 Unity of invention and clarity of claims 05.03.14 Significance of Claims 05.03.15 Scope of claims 05.03.16 Structure of claims 05.04 Priority of a claim
06.01 Divisional Application
06.02 Patent Of Addition
06.02.01 General
07.01 Convention application
07.01.01 Paris Convention and WTO Agreement