Patent process and Drafting

PATENT PROCESS, PATENT SEARCH,
BASICS OF SPECIFICATION DRAFTING
By
Somashekar Ramakrishna
BananaIP Counsels
Copyright 2016, BananaIP Counsels 1

Patent Process
• Filing
• Publication
• Examination
• Pre-Grant Opposition
• Grant
• Post-Grant Opposition

Filing
• Patent Application
– Form of Application
• Provisional Application (Provisional Specification +
Filing documents)
• Non Provisional/Complete Application (Complete
specification + Filing documents)
• Priority Date- filing date of the first application in a
chain of applications

Filing
• Filing Routes
• Direct Filing
• Foreign Filing
• PCT

Filing
• Patent Offices
• Mumbai Patent Office- States of Maharashtra, Gujarat,
MadhyaPradesh, Goa, Chattisgarh, Diu Daman, Dadra
and Nagar Haveli
• Chennai Patent Office- States of Andhra Pradesh,
Karnataka, Tamil Nadu, Kerala, Pondicherry and
Lakshadweep
• Delhi Patent Office- States of Haryana, Himachal Pradesh,
Jammu and Kashmir, Punjab, Rajasthan, Uttar Pradesh,
Uttaranchal, Delhi, Chandigarh
• Kolkata Patent Office- Rest of India

Filing
• Applicants
– True and First Inventor
– Assignee of the inventor
– Legal representative of the deceased person

Publication
• Notice to Public (18 months from the priority
date)
• Rights start from the date of publication
• Request for early publication

Examination
• Proper request must be filed
– By the Applicant
– By the interested person (person engaged in or in
promoting, research in the field of the invention)
• Time limit- 48 months from priority date
• Formality check
• Prior Art search and analysis by the Examiner

Examination
• First Examination report from the Examiner
within 6 months from the date of request
• Response from the Applicant within 12
months

Pre-Grant Opposition
• Should be filed after the application has been
published and before grant
• Will be considered only when Request for
Examination is filed
• May be filed by any person
• Should include statement and evidence

Pre-Grant Opposition
• Grounds
– Wrongful obtainment
– Invention in public domain
– No sufficient disclosure
– Failure to disclose the information as to
corresponding foreign application
– Failure to file convention application within 12
months
and so on…. (section 25 (1))

Grant
• 3-4 years from the date of filing
• To be renewed every year after 2 years from
the grant date

Post-Grant Opposition
• Should be filed within one year from the grant of
patent
• Must be filed by an interested person
• Grounds
– Wrongful obtainment
– Invention in public domain
– No sufficient disclosure
– Failure to disclose the information as to
corresponding foreign application
– Failure to file convention application within 12
months
and so on…. (section 25 (2))

Filing in India
Was the filing a
complete or a
provisional?
File the complete specification (12
months)
Provisional
Complete
Publishing (18 months*)
Request for examination (48 months)
Examination Report (24 months**)
Examiner decision (36 months)
(grant/refusal)
Indian Patent Process

Provisional Filing in India First Filing in India Request for a foreign filing permit
Filing in Convention country12 months
6 weeks
21 days
Publishing (18 months)
Examination Report
Examiner decision (grant/refusal)
Was the filing a
complete or a
provisional?
File the complete specification (12
months)
Provisional
Complete
Filing in Convention country

Provisional Filing in India First Filing in India Request for a foreign filing permit
PCT filing12 months*
6 weeks
21 days
Publishing (18 months)
Search Report** (16 months)
Do you want to
respond to
search report?
No
Yes
Do you want to
proceed to
examination
stage?
No
Yes
File an informal response (2 months
from report/18 months – whichever is
later)
A
File a demand + response*** (19
months) B
PCT Patent Process

Examiner Opinion
B
Enter into National Phase (20/30/31
months)
A
Due process in each of the National
phase countries
PCT Patent Process (Cont’d)

Exercise 1
• A Complete Specification was filed on Januray
01, 2017.
– When should a request for examination be filed
for the complete specification?
– Who can file for the request for examination?

Exercise 2
Example:
Provisional specification was filed disclosing elements A B and C
on 18th
June, 2016. Complete specification is filed on 19th
June, 2016 disclosing elements D and E along with elements
A,B and C.
1. Can the complete specification claim priority from provisional
specification?
2. What is the priority date of a claim claiming elements A B and
C?
3. What is the priority date of a claim claiming elements D and
E?
4. What is the priority date of a claim claiming elements A, B, C,
D and E?

Patent Search
• Performed to uncover prior arts
• Prior arts- Patent applications, Granted
patents, Technical papers, Articles and so on

Database
• Free
– IPO, USPTO, EPO, WIPO, Google patents and so on
• Paid
– Questel, Thomson Scientific, STN and so on

Search Types
• Classification based Search
• Keyword based search

Search
• Analysis
– Patentability
– Freedom to Operate
– Technology Landscape
– Competitor Watch

BASICS OF
SPECIFICATION DRAFTING

Object of Patent Law
• The object of Patent Law is to encourage scientific research,
new technology and industrial progress. The price of the grant
of the monopoly is the disclosure of the invention at the
Patent Office, which after the expiry of the fixed period of the
monopoly, passes into the public domain. Biswanath Prasad
Radhey Shyam vs Hindustan Metal Industries on 13 December, 1978
SPECIFICATION

In the Indian Patent Act
• Section 7(4)- Every such application….shall be accompanied
by a provisional or complete specification
• Section 10(1) Every application…shall describe the invention
and…begin with a title…
• Section 10 (4)- every complete specification shall
• Fully and particularly describe the invention
• Disclose the best method
• End with a claim
• Be accompanied by an abstract
• And so on….

Specification Contents
• Title
• Preamble
• Technical field
• Background
• Objects
• Brief description of the drawings
• Detailed description
• Claims
• Abstract
• Drawings

Drafting Perspectives
• Invention Perspective (X+1)
• Patentability/Examination Perspective
• Third Party Perspective

Title
1. Should be provided in the first page of Form-2
2. Should indicate the subject matter
3. Should not be more than 15 words
4. Should be free from fancy expression or
ambiguity
5. Inventor’ s name, the word “patent”, words in
other languages and so on should not be used

Title
6. Should correspond to the broadest claim
7. Should embrace all variants of the invention
(apparatus and method)
Title for our Invention?
“Apparatus and method for dispensing coffee”
“Coffee dispensing Machine and method of
dispensing coffee”

Preamble
• Should be provided in the first page of Form-2
• Provisional Specification
– The following specification describes the invention
• Complete Specification
– The following specification particularly describes
the invention and the manner in which it is to be
performed

Technical Field
• Provided in page 2 of Form-2
• Should indicate general art to which the
invention belongs
• Areas of application may be mentioned
Technical field for our invention?
“The embodiments herein generally relate to
dispensing machines and more particularly to an
apparatus and method for dispensing coffee”

Background
• Distinguish the invention from what is already
existing in the field
• Should not describe the claimed Invention
• Should use drawings to explain any prior art
• If the latest art in the field (prior to the
invention at hand) is Applicants own work ,
then such work should not be described here
• Do not exaggerate the disadvantages of prior
art

Background
• Do not criticize the prior art
• Example
Mesh layer
Guard
panel
• Specification:
– Composite guard includes guard
panel and mesh layer attached by
continuous fusing or
heat/ultrasonic welding
– criticized attachment means in
prior art
• Background:“[t]he attachment
means used in other prior art gutter
guards is generally less effective, and
more costly, time consuming, and
labor intensive”

Background
• Claim:
– Heat weld...connecting said mesh layer to said guard panel
• Accused product: Mesh screen attached to guard panel by
adhesive/hot glue
• Held: No literal infringement and no infringement under DOE

Background
• Background for our invention?
“…At present, coffee beans are crushed/ground
separately to obtain coffee powder. Thereafter, the
coffee powder is packaged and brought to be fed
into the coffee dispensing machine. The
aforementioned process is tedious and time
consuming and further, the baldes/crushing
elements of typical a crusher or a grinder are not
appropriate enough to crush the coffee beans to the
desired size. Therefore, having a crusher/ grinder
integral to the coffee dispensing machine is
desirable…”

Background
“…In the existing coffee dispensing machine as shown
in Fig. _, powdered coffee is provided manually
through an inlet i of the machine…”

Objects
• Should set forth broad objectives
• Acts as a pointer while drafting detailed
description
Objects for our invention?
“An object of this invention is to provide an apparatus for
crushing coffee beans and dispensing coffee.”
“Another object of this invention is to provide a method for
crushing coffee beans and dispensing coffee.”

Brief Description of Drawings
• Should clearly indicate that the drawings are
showing embodiments of the invention and
not the invention itself
• Should start with “…The embodiments of the
invention is illustrated in the accompanying
drawings, throughout which like reference letters
indicate corresponding parts in the various figures.
The embodiments herein will be better understood
from the following description with reference to the
drawings, in which:…”

Brief Description of Drawings
Brief description of the drawings for our
invention?
“Fig 1 shows a coffee dispensing machine according
to an embodiment of the present invention; and
Fig. 2 is a flow chart showing the process of
dispensing coffee.”

Detailed description
• Should start with the following, or similar paragraph:
• The embodiments herein and the various features and
advantageous details thereof are explained more fully with
reference to the non-limiting embodiments that are
illustrated in the accompanying drawings and detailed in the
following description. Descriptions of well-known
components and processing techniques are omitted so as to
not unnecessarily obscure the embodiments herein. The
examples used herein are intended merely to facilitate an
understanding of ways in which the embodiments herein may
be practiced and to further enable those of skill in the art to
practice the embodiments herein. Accordingly, the examples
should not be construed as limiting the scope of the
embodiments herein.

Detailed Description
• Should provide sufficient details of the
invention
• The making and using of the invention should
be explained in depth so as to enable a person
having ordinary skill in the art to practice the
invention
• Details of the invention should be explained
with reference to drawings
• Should disclose best mode

• The terminology should be consistent
• Should be well organized and easily
understandable
• Start with a general overview and proceed
with increasing levels of detail
• Should set forth several, if not all, alternative
working examples even if only one
embodiment is illustrated in the drawings

• Detailed description for our invention?
“… the apparatus 100 as shown in Fig 1 includes a
housing 10. The housing 10 is provided with a
first hopper 12a and a second hopper 12b on a
top portion thereof. The housing 10 is adapted to
receive a first container 14a, a second container
14b and a collector 16 and a dispenser 18. The
dispenser 18 includes a plurality of outlets 18o.
……..”

Claims
• Should start in a different page
• Should start with Preamble I/We Claim
• Define the scope of protection
• Every claim has a date associated with it
• Every claim is an invention
• What is not claimed in the “claims” stands
disclaimed

Claims
• Parts of a claim
– Preamble
– Transitional phrase
– Body
Example Preamble Transitional Phrase
A system for……., said system comprising:
element A;
element B; and Body
element C.

Claim Format
• Independent claim
– Stand alone
– usually broad
Example
1. A system for….., said system comprising:
element A;
element B; and
element C.

Claim Format
• Dependent claim
– Dependent on independent claim or another
dependent claim
– Narrow scope
Example
1. The system as claimed in claim 1, wherein
element A comprises element D.

Claim format
• Multiple dependent claim
– Refers back to more than one claim in alternative
– Narrow scope
Example
3. The system as claimed in claim 1 or 2, wherein
element A further comprises element E.

Claim drafting-Practical Tips
• Draft a broadest independent claim with at
least one novel point and then proceed with
drafting dependent claims
• Do not include unnecessary limitation in the
independent claim
• Claim an apparatus in non-operational state
• Do not include multiple dependent claims

Claims
• Example
1. A chair comprising a seat and a back rest.
Said chair further having four legs.
1.A chair comprising:
a seat;
a backrest; and
at least one leg.

Claims
• Example:
1. A fan comprising:
a rotating hub; and
three wings attached to said hub.
1.A fan comprising:
a hub configured to rotate; and
at least one wing attached to said hub.

Claims
• 1. A writing instrument comprising:
– a body;
– a writing element adapted to be received inside
said body;
– a biasing element adapted to move said writing
element from a first position, where the a portion
of said writing element is outside said housing,
and a second position.

Abstract
• Should be in a separate sheet
• Start with the title of the invention
• Should not exceed 150 words
• Should indicate the figure which needs to be
published with it

Drawings
• Should be in a separate sheet
• Should be accurately referenced and
described
• Should show every feature of the invention

THANK YOU
For further information contact
rsshekar@bananaip.com
and/or visit
www.bananaip.com
Blog: www.sinapseblog.com

Patent process and Drafting

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