Patents

1. What is a patent?
2. Pre-requisites for filing a patent
3. Forms in filing
4. Stages in patent filing.
5. AI patent trend
6. Reason for Rejection.

Prepared by Naveen adhithya

What is a patent?
• A ‘Patent’, in basic terms, is an exclusive right that is granted to any invention (whether a process or a
product) under the Patents Act. An ‘invention’, as per the Patents Act is defined as ‘a new product or process
involving an inventive step and capable of industrial application’. The definition highlights three important
components, also referred to as the patentability requirements, namely:

• The invention should be a new invention i.e., the invention should not be disclosed in the public domain in
any manner prior to the date of filing of patent application.

• The product or process that has to be patented should involve an inventive step i.e. the invention should in
some manner involve technical advancement as opposed to the existing knowledge. In simpler words, the
invention should not be obvious to another person possessing the same skill set.

• The invention should be capable of industrial application, i.e. the process or product intended to be patented
should have the ability to be used or made in a particular industry or any industry.
Pre-requisites

• Considering an Invention - When an inventor decides on inventing a product or a process, it is imperative that the inventor
take note of all details as regards the invention including the steps, the minute details and any diagrams, steps, mechanism
that may be involved in creating the invention. An inventor has to make sure that their invention complies with the
requirements of novelty, inclusion of an inventive step and being capable of industrial application and also to ensure
that their particular invention does not fall under the ambit of section 3 of the Patents Act.

• Patent Search - Before filing a patent application, it is imperative to conduct a patent search for existence of similar
inventions in order to avoid any rejection from the relevant authorities.

• Drafting of Application – Form 2- requires the inventor to provide specifications as regards their invention. It is advisable
that the specification be as detailed as possible and include the various parts of the invention (if divided in stages);
drawings and diagrams to showcase the mechanism of the inventions; background of the invention; a detailed description
of what the invention entails, the purpose for which it is being created and how it would serve the particular industry it
would potentially belong to; an abstract of the description as well as a summary of the invention.
Forms in Patent filing

• Form – 1: contains information such as – personal details of the inventor(s); the title of the invention; whether the inventor is
a natural person or an entity; along with certain declarations are collected as part of Form 1. Startups prefer Form – 28.

• Form -2 : specifically requires the detailed specifications with regards the invention of the product or the process. If not the
complete specification for the invention is available at the time of filing or in case the invention is at a nascent stage, the
inventor may provide provisional specification with regards the invention. However, it is pertinent to note that the complete
specification of the invention has to be provided within 12 (twelve) months of filing the patent. Failing which application will
be abandoned.

Provisional specifications.
 Description of the invention
 Title with subject matter
 Drawings, models or samples illustrating the invention.
 best method for performing the invention for which the inventor is entitled to claim protection;
 a claim or claims defining the scope of the invention for which protection shall be claimed; and
 abstract providing a technical know- how of the invention.
• Form 3 – Statement and Undertaking - An inventor filing an international patent application for his invention is required to
provide a statement encompassing the details for such application as well as an undertaking that the inventor (from time
to time) would inform the Controller General of Patents, Designs and Trademarks (“Controller General”) (in writing) of any
applications filed with regards the same or similar inventions in any country outside India.

• Form 5 – Declaration as to Inventorship

• Form 26 – Power of Attorney

• Form 28 – In case a small entity or Startup is the applicant

Source: https://ipindia.gov.in/form-and-fees.htm
 Stages of Patent filing

Filing the Publication of the Request for Response to Grant of Patent

application application examination objection if any

Elaborated earlier section

Application for grant usually published 18 Request for examination In case of any objections in the
months after date of application however should be filed within examination report, a response
can be expedited within a month by paying 18months of publication of hast to be filed within 6 months
additional fee (Form 9) patent application.
Subject to clearance the patent is granted*
from the date of publication to the date of Request for early
grant of patent, an application is afforded examination (Form 18A)
the same privileges and rights as if a patent can be filed to expedite
for the invention had been granted early examination (Max 3
months)

* Any objections to the grant of patent to be raised within a year. Patent offers exclusive rights to the inventor for 20yrs
 Patents filed in India.
583 Patents filed in Image processing in 2022, second highest after healthcare with regards to patents filed on AI

Source: https://indiaai.gov.in/article/insights-into-the-rise-of-ai-patent-trends-for-2023
Reasons for rejection

• Non descriptive - Patent requests can also be denied when there are errors in the application. These can be of two types.
First, we have informalities – dealing with rules/guidelines to be observed when drafting the application. The second is the
insufficiency of technical details about your invention

• Lack of inventive step - The term "inventive step" has been defined with the provision of Section 2(1)(ja) of the Indian
Patents Act 1970. This provision defines "an inventive step" as "a feature of an invention that involves a technical
advancement over existing knowledge or has economic significance, or both, and that makes the invention not obvious to
a person skilled in the art.“

• Lack of novelty - If the invention is not the first of its kind and the examiner can find a previously patented invention that
is very similar, then most likely get a rejection
Sample rejection letter
Thank You