Utility Patent

Inventive Step

A technical leap or jump which makes an invention Technically Advance or Economical than existing technologies/products without being obvious to a person skilled in the art.

Section 2(1)(ja) of Indian Patent Act defines the term Inventive Step.

Novelty

A product/process not anticipated by any prior art (Patent, Publications, Products, etc.) present anywhere in the world is called Novel invention, or an invention having Novelty.

Industrial Application

Invention for which patent is sought must get manufactured, used, produced in an industry.

Patent Grant Process

1. Patent Application Filing: Application is filed at the Indian Patent Office (IPO) with complete or provisional specification.

2. Publication: Automatically published after 18 months from the date of filing or priority date. But, it can be early published on request (Form 9, Fee 2500).

3. Request for Examination (RFE): Must be filed within 48 months of filing/priority date (Form 18 or 18A for expedited exam). Only after RFE, the application is queued for examination.

4. Examination and First Examination Report (FER): Examiner reviews application under patentability criteria: Novelty, Inventive step, Industrial applicability, and Patentable Subject Matter and Issues FER listing objections if any.

5. Response to FER: Applicant must respond within 6 months (extendable by 3 months). May involve written submissions, amendments, or explanations.

6. Hearing (Subjective): If objections persist, a hearing is scheduled. Applicant presents arguments and clarifies points before the Controller.

7. Grant of Patent: If the Controller is satisfied, the patent is granted and published in the Patent Journal. The term of the patent is 20 years from the date of filing.

Technical v/s Non-technical Inventions

If a Technical Problem, i.e., problems related to method or way of doing something (such as Issues in Antenna working, less efficient RO purification, issues with working of any other machine) is solved by a Technical Solution (antenna with multiple receiver elements, better purification method than RO, etc.), said solution will be called a Technical invention.

Solutions that are Administrative (such as a method for assessing employee performance), Financial (such as a method for calculation of employee bonus, Educational (a method for teaching mathematics to kids), Business (a method for selling old products), and such similar solutions are non-technical as they are not solving any technical problem.

Patent Application

An application drafted and filed to get a patent grant is called Patent Application. It typically comprises Form-1 (For Clerical Details of the invention and inventor) and Form-2 (specification that describes the invention).

Provisional Specification

If an inventor believes that his/her idea is at a nascent/baby stage and it needs refinement, he/she can opt filing a patent application with Provisional Specification to secure the idea. After this, the inventors have a flexibility to complete their application by filing Complete Specification, within 12 months from the date of filing of provisional specification.

Complete Specification

If inventors believes that their idea is complete in every aspect, i.e. that there is no scope of any modification, they can go for fling Application with Complete Specification.

Complete After Provisional (CAP)

In cases where provisional specification is filed, the application is to be completed by filing Complete After Provisional Specification (CAP).

Novelty Search

A search used to check/confirm a proposed solution/invention/idea's Newness/Novelty is called Novelty search. Given that only New/ Novel inventions get patent, it is prudent to assess Novelty of invention before a patent application is filed---it saves Time, Money, and Efforts.

Patentability Search

To get a patent, an invention must also possess an Inventive Step or Inventive Leap while not being obvious to a person skilled in the art. To assess an invention on both Novelty and Inventive Step parameters, a more comprehensive search is conducted. This search is called Patentability Search.

Lack of Novelty Objection

If a single prior art publication (patent or non-patent) discloses all/each feature/limitation/functionality of an independent claim of an invention, the patent office raises 'Lack of Novelty' objection in its examination report.

Lack of Inventive Step or Obviousness

If a combination of analogous prior art publications teach all/each feature/limitation/functionality of the independent claim of a patent application, the patent office raises 'Lack of Inventive Step' or 'Obviousness' objection in its examination report.

Claim

When a patent application is filed, specification has a section for Claims---where inventor/applicant mentions what he wants to claim or secure. Claims define the boundary/fence of the protection.

There are two prominent type of claim: 1) Product/Apparatus/Machine Claim and 2) Process/Method Claim

Product or Apparatus Claim

If you want to claim a product or an apparatus, you will have to write Product claims. Such as, An apparatus for cutting vegetable, comprising a sharp edge....

Process or Method Claim

If you want to claim a product or an apparatus, you will have to write Product claims. Such as, A process for cutting vegetable, comprising the steps of: using a knife .....

Besides product and process claims, claims are further categorized into: 1) Independent Claim and 2) Dependent Claim.

Independent Claim

Typically the first claim of a patent application is the independent claim, and it is the broadest claim of a patent application. Independent claims are very crucial as it defines the scope of protection one will get in his/her patent. Therefore, due thoughts should be put in to choose what you, or your agent, is writing in the independent claims----one lesser element in independent claim will lead to encroachment on prior invention claims----one extra element in claims will lead to enforcement issues or design around room for competitors.

Claims exemplary mentioned in the product and process part above are independent claims.

Dependent Claim

Claims written to give extra FENCE to the independent claim are called dependent claims. Different variations of any claim element present in the independent claim can be specified in the dependent claims.

Dependent claims are narrower than the independent claims.

Dependent claim starts as follows: The apparatus of claim 1, wherein the sharp edge is 0.1mm thick.

Patent Application Publication

When a patent application is filed, Patent office publishes it in Patent Journal as well on its website and made it public for public scrutiny after 18 months of patent application filing date.

Early Publication

If one doesn't want to wait for 18 months publication of your patent application, he can file Form 9 and pay INR 2500 (For Natural Person and Startups) for early publication of his application. By this provision, the application publishes as early as in a month's time.

Request For Examination

To get a patent grant, every application is examined by the patent office. Unlike publication, the examination does not happen autonomously----applicant has to make a Request for Examination (RFE) by filing Form 18 and pay a fee of INR 4000 (For Natural Person and Startups) to start the examination. Once this request is made, the patent application is referred to the examination queue.

Request For Expedited Examination

During large amount of patent application filing, the examination queue mentioned above is very long. Therefore, certain type of applicants, such as, for instance, Women applicants, Startups, PCT application filers, etc. are privileged with a relatively faster examination queue. However, said special applicants needs to pay an premium fee of INR 8000 (Natural Person and Startups) and file Form 18A.

First Examination Report (FER)

When Examination is completed by the patent office, it shares First Examination Report or FER with the applicant. FER primarily has patent office's observations on 1) Novelty, 2) Inventive Step, 3) Industrial Application, and 4) Procedural Issues.

FER Reply/Response

When Examination report has any negative observations, or objections, for the claimed invention, the applicant is required to respond to said observations/objections by filing a reply/response to the examination report.

Patent Grant

When examiner is satisfied with applicant's response to the examination report, he grants/issues a patent to the applicant.

Patent Maintenance/ Annuity

A yearly maintenance fee is required to be paid by the patentee to the patent office from 2nd year onwards till 20th year to maintain the patent as active.

Patent Prosecution

When a patent application is filed, Patent office examines the application. This legal process from filing till patent grant is called prosecution.

Patent Opposition

When a patent application is under prosecution (Pre Grant Opposition) and also after grant of patent but within one year of patent grant (Post Grant Opposition), patent application/patent can be challenged/opposed by any person (person having interest in case of Post Grant Opposition). This legal process is called opposition.

Patent Revocation

Patent revocation refers to legal cancellation of grant of a patent. It renders the patent null and void, meaning the patentee loses all exclusive rights previously granted under the patent. In India, patent revocation is governed by Sections 64 to 66 of the Indian Patents Act, 1970. Any interested person or the Central Government can file a petition for revocation of a patent on one or more grounds such as Lack of Novelty, Lack of Inventive Step, Insufficient Disclosure, Wrongful Obtainment and so on.

Patent Litigation

When patentee of a patent decides to enforce his patent by suing the person/entity that infringes (infringer) his patent, this legal process is called patent litigation.

Patent Infringement

When someone illegally uses, makes, sells, or imports a patented invention, it is called patent infringement.

Freedom to Operate (FTO)

When one wants to commercialize a product, but don't want to encroach on somebody's Intellectual Property (IP) to avoid litigation, he wisely chooses Freedom to Operate or Freedom to Practice analysis for said product. This analysis is jurisdiction dependent, so if the commercialization is to be done in Indian jurisdiction/ market, FTO will be conducted for Indian IPs, wherein all alive Patent, Patent Application, Design Patent in the domain of the said product needs a review from FTO perspective.

Patent Invalidation

When a patent holder enforces his rights and sues someone for infringement, one remedy to counter the infringement is invalidation of the patent. Invalidation can be done on the basis of publications: 1) published prior to the priority date of the patent and 2) disclosing the subject matter claimed in any independent claim of the patent

Infringement Search

If one has a patent, and he/she wants to look out whether someone is infringing his/her patent, he/she has to perform a search to identify potential infringing products and entities conducting the infringing activity. This search is called Infringement search

Infringement Analysis

Once a potential infringing products and/or potential infringers are identified, a claim v/s product analysis is required to be conducted to ascertain whether or not said product is actually infringing the patent. This analysis is called infringement analysis.

Evidence of Use (EoU) Chart

To establish that a patent is being infringed by a product, all claim elements of an independent claim of the subject patent are mapped against the features present in the alleged infringing product and a EoU chart or claim chart is prepared. This chart helps demonstrate that whether each claim element of an independent claim of a subject patent is actually present in the said product or not. Based on the presence/absence of all claim elements, infringement is determined.

Literal Infringement

If all claim element of an independent claim of a subject patent are literally or explicitly present in a potential infringing product, this type of infringement is called Literal Infringement.

Doctrine of Equivalents Infringement

If all claim element of an independent claim are not present literally (i.e., claim language doesn't match word-for-word) in a potential infringing product, yet equivalent of claim elements (differences are insubstantial, does substantially the same function, in substantially the same way, to achieve substantially the same result) are present, this type of infringement is called Infringement under Doctrine of Equivalents.

Doctrine of Pith & Marrow

The doctrine of Pith and Marrow says that "to determine patent infringement, one must look beyond the literal wording of the patent claims to the substance (pith) and essence (marrow) of the invention", which means infringement occurs as long as the essential elements of the invention are present in the accused product or process even though it does not copy every word of the claim.

This doctrine protects the inventor from clever copying that avoids literal claim language but still appropriates the core inventive concept.

Patent Landscape

A patent landscape is an analysis of existing patents publications (Granted patent and patent applications) of a technology area, or of an organization. It provides a map of the patent publications, helping understand what is being innovated, who is contributing in innovation, how much investments are made in innovation, what technologies are at focus, how competitive or crowded a domain is, where opportunities exist, and such other critical & important questions. Patent Landscape is a crucial tool as it provides:

Patent Landscape Objectives

Competitive Intelligence
Identifies who is working on what, helping in strategic planning, R&D direction, and product differentiation.

Benchmarking and Positioning
Shows one’s technologies comparison with competitors' solutions.

Identification of Potential Threats
Reveals emerging companies/startups that innovate competitive technologies and may become a threat to market share.

Identification of White Spaces
Reveals under-explored or emerging areas (white spaces) where startups can innovate or file patents.

M&A and Licensing Opportunities
Finds potential collaborators, licensors, or acquisition targets with valuable IP.

International Patent Application

If one wants to protect his/her invention internationally, he has two options to do so:

1) Paris Convention Route: File application in every country where protection is sought.

2) Patent Cooperation Treaty (PCT): File a single PCT/International application and enter PCT national phase in the countries where patent protection is required. This is helpful in saving time and money as a single application, rather than multiple applications as required in the Paris Convention Route, can be filed and prosecuted.

International Search Report (ISR)

When PCT application is filed, World Intellectual Property Organization (WIPO) performs a search to ascertain Novelty and Inventive Step of the invention. The outcome of the search is shared with the applicant and called International Search Report.