Granting a Patent
The granting a patent involves a multi-faceted
procedure-both domestically and in different countries
S. 71- 79 deal with application, processing application
and grant of patent
You are required to familiarize yourself with
application and procedure in particular when you
enter practice
However, some salient features are referred to
Granting a Patent
You make the application for patent in Sri Lanka [under the law of Sri
Lanka]
The date of application is important because your rights commence on
that date
You can seek a patent in any or all of the member countries of the Paris
Convention claiming priority of your national application [ application
date]
You can make applications each country where you expect protection
individually or under the Patent Corporation Treaty [PCT]
PCT provides a mechanism to make one application to the WIPO
designating the countries where you need protection. It is effective in
all designated countries. After the completion of ‘international phase’
[in WIPO- international search and publication etc.], it enters ‘national
phase.’ Then the patent is granted/refused by the particular country
under the national law
Application – S. 71(1)
An application for the grant of a patent is made to the
IP Office in the prescribed form.
Regulation No 32(1) sets out form P 01 for application.
The application must be signed by the applicant or the
duly appointed agent
There is an application fee
Application – Contents
A request for the grant of the patent – [The request - a petition
that the patent be granted (Form P01 carries it ), the title of the
invention, the name, address, description and any other
prescribed information concerning the applicant, the inventor
and the agent, if any.]
A description of the invention- [Paragraph (ii) of s.71 (1) carries
the word ‘patent’ after the words ‘description of’. This must be a
drafting or printing error. The correct word is ‘invention.’ There
is no patent to be described in the application and therefore this
word is meaningless and senseless. There is only an ‘invention’ at
this stage. Moreover, section 71(3) expressly and correctly refers
to the description of ‘invention’ ]
A claim or claims
A drawing or drawings, where required
An abstract
Application – Contents
Date and number of any application for a patent filed by
the applicant abroad (hereinafter referred to as ‘the foreign
application’), if any, relating to the same, or essentially the
same, invention as that claimed in the application
A declaration that the applicant or his predecessor in title
has not obtained a patent abroad before the application
was filed relating to the same or essentially the same
invention as that claimed in the application.
[The court may declare, if this declaration is found to be
false on an application made by any interested party or a
competent authority including the Director General to
which the registered owner of the patent, assignees and
licensees are made party, the patent null and void. ]
Application- Description
The application for the patent must, in terms of section 71,
contains a description of the invention. The description
must disclose the invention in a manner sufficiently clear
and complete for the invention to be evaluated, and to be
carried out by a person having ordinary skill in the art and
must, in particular, indicate the best mode known to the
applicant for carrying out the invention [S. 71(3) ]
These provisions embraces the concept of ‘sufficiency’- the
description must disclose the invention in a manner
sufficiently clear and complete for the invention to be
evaluated, and to be carried out by a person having
ordinary skill in the art
Application- Description-
Regulation No 36(1)
Description of the invention must first state the title of the invention as appearing in the
request and then must
specify the technical field to which the invention relates;
indicate the background art which, as far as known to the applicant, can be regarded as
useful for the understanding, searching and examination of the invention, and
preferably, cite the documents reflecting such art;
disclose the invention in such terms that it can be understood and, in a manner
sufficiently clear and complete for the invention to be evaluated as to its novelty,
inventive step and industrial application and to be carried out by a person having
ordinary skill in the art and state the advantageous effects, if any, of the invention with
reference to the background art;
briefly describe the figures in the drawings, if any;
set forth at least the best mode contemplated by the applicant for carrying out the
invention. This is done in terms of examples, where appropriate, and with reference to
the drawings, if any;
indicate explicitly, when it is not obvious from the description of the nature of the
invention, the way in which the invention is industrially applicable and the way in which
it can be made and used, or, if it can only be used, the way in which it can be used.
Application- Description
Regulation No 36(2)
The manner and order specified above must be
followed except when, because of the nature of the
invention, a different manner or a different order
would result in a better understanding and a more
economical presentation.
Application- Claims
The description describes the invention and discloses how it can be practiced.
However, the claims are of central importance in a patent application because they finally
determine the patentability of the invention and the exclusive rights of the patentee.
They play therefore a duel role, determining whether an invention is patentable and
whether any act of infringement of rights attached to a patent has occurred.
The objective of the claims is the clear and precise definition of the claimed monopoly or
the protection sought and its boundaries
They may also be explained as the statements of technical facts expressed in legal terms
defining and identifying the scope of the invention the protection of which is sought.
As S. 71 (6) provides, ‘the terms of any claim determine the scope and extent of the
protection afforded by the patent.’
Like in many other jurisdictions around the globe S. 71(4) requires the claim or claims to
be ‘clear, concise and supported by the description.’ Thus, the claims clearly and concisely
present in writing to the world what the applicant claims to be the invention.
They must not exceed the scope of the invention. Nor do they be unnecessarily broader
[Read and learn more about claim when you enter practice ]
Application- Drawings
The applicant for a patent may present the ‘drawings’
to explain and clarify the contents of the description,
where necessary. [Flow sheets and diagrams are
considered drawings - Regulation No. 38(2)]
However, the inclusion of drawing is not a mandatory
requirement. They may be, however, used for
interpreting and understanding the claimed invention.
[S.71 (6) and Regulation No. 38(1) (a)]
Application- Abstract
The abstract is part of the application, but is merely
intended to serve the purpose of technical information.
[S.71 (7)]
It cannot be used for the purpose of determining or
interpreting the scope and extent of the protection
afforded by the patent. [S.71 (7)]
It consists of a summary of the disclosure as contained in
the description, claims and any drawings.
Generally, drawings are not included in the abstract
It should not exceed more than 150 words
Application…. [ Patent
Specification]
Generally, the document that accompanies the duly perfected prescribed application
form contains:
(i) title of the invention, [a brief, clear and attractive one which represents the invention,
preferably with one sentence]
(ii) background statements including the field of invention (an identification of the
related area of technology very briefly), a brief description of the invention (introducing
the invention very briefly with a brief statement of objectives of the invention), a
presentation of the prior art relevant to the invention and if the applicant so desires, the
problem encountered in the prior art and the objective of the invention
(iii) a detailed description of the invention [Making a complete and enabling disclosure.
An embodiment of the invention. ‘Embodiment’ means a physical form of the invention
in the real world. Note that the claims must protect at least one embodiment. Put here
what exactly [and very clearly] you have invented [and want to protect]. Only the
information about the exact invention and how it works/ is made]
(iv) drawings (if any – to explain and clarify the elements of the invention described in
the detained description)
(v) claims and
(vi) abstract
Other matters related to
application and grant of patent…
See S. 72-79: They relate to –
application fee,
search report,
unity of invention,
amendment and division of application,
priority,
filing date,
examination of application, and
grant of patent…
Patent - Duration and Renewal
A patent expires, subject to the other provisions of the Act, twenty
years after the filing date of application for its registration. [S. 83(1)]
Where a patentee intends at the expiration of the second year from the
date of grant of the patent to keep the same in force, the patentee must,
twelve months before the date of expiration of the second and each
succeeding year during the term of the patent, pay the prescribed
annual fee for the renewal of the patent. [S. 83 (2). Regulation No. 54
prescribes the form P04 for making the application for renewal]
However, a period of grace of six months is allowed after the date of
such expiration, upon payment of the prescribed surcharge. [First
proviso to s. 83 (2). The fees are prescribed in the Second Schedule to
Regulations]
The patentee may also pay in advance the whole or any portion of the
aggregate of the prescribed annual fees. [Second proviso to s.83 (2)]
Rights of the Owner of a Patent
The owner of a patent does not receive absolute
ownership to the invention. Instead, the law grants the
owner certain exclusive rights in relation to the
patented invention.
Accordingly, subject and without prejudice to other
provisions of the Act relating to patents, the owner is
entitled, under section 84(1), to the following exclusive
rights-
(i) to exploit the patented invention;
(ii) to assign or transmit the patent; and
(iii) to conclude license contracts
Rights of the Owner of a Patent
S. 84 (2) further provides that no person shall do any of the acts referred to in s.
84 (1) without the consent of the owner of the patent.
[84 (3)] the expression ‘exploitation of a patented invention’ means any of the
following acts in relation to a patent:
(a) when the patent has been granted in respect of a product-making,
importing, offering for sale, selling, exporting and using the product
and stocking such product for the purpose of offering for sale, selling,
exporting or using.
(b) when the patent has been granted in respect of a process-using
the process, doing any of the acts referred to in the above
paragraph (a), in respect of a product obtained directly by means
of the process, and preventing any person from using that process
or using, selling or importing any product obtained directly by
means of that process unless such person is authorized to do so
Rights of the Owner of a Patent
S. 84 (2) further provides that no person shall do any of the acts referred to in s.
84 (1) without the consent of the owner of the patent.
[84 (3)] the expression ‘exploitation of a patented invention’ means any of the
following acts in relation to a patent:
(a) when the patent has been granted in respect of a product-making,
importing, offering for sale, selling, exporting and using the product
and stocking such product for the purpose of offering for sale, selling,
exporting or using.
(b) when the patent has been granted in respect of a process-using
the process, doing any of the acts referred to in the above
paragraph (a), in respect of a product obtained directly by means
of the process, and preventing any person from using that process
or using, selling or importing any product obtained directly by
means of that process unless such person is authorized to do so
