Patent Prosection and Patent Filing Process

Spec Jury

Claims Judge

Experts Obviousness
PHOSITA Damages

Dr. Chellapilla Kameswara Rao, Retired Senior DGM,

BHEL Corporate R&D, Vikasnagar, Hyderabad-500090
 About me

• Dr. CHELLAPILLA KAMESWARA RAO

• PhD from AU (1976), Lecturer in Mechanical Engineering at AU from 1971 to 1977.
• Worked in BHEL R&D for 26 Years at Vikas Nagar, Hyderabad and took VRS in 2003.
• From 2003 June to October 2018, Worked as HOD, Dean(R&D) and Principal at DCET, HTEC, TKREC,
Tirumala EC, Gurunank NIT and NNRG, Hyderabad
Provisional Specification:
- Filed when the invention delay is expected in
submitting full and specific description of
invention.
- It is followed by Complete Specification.
- Complete Specification is submitted within 12
months of filing Provisional specification.

Satara College of Pharmacy, Satara 3

 Patent Application Filing

Filing a patent application is just the start of your

journey.  For us, this is a well-trodden path.  We have
been helping clients with IP and patent filing for more
than a hundred years.  We are proud to have
successfully represented clients with tens of
thousands of applications during that time.

The strength of a patent application is rarely tested until several

years after it has been filed. This is typically when an opposition
is launched or enforcement action taken.  These are contentious
and complex matters that our attorneys deal with all the time.
 Consequently, we draft patent applications with this in mind,
ensuring they are strong, robust and deliver exceptional
commercial value.
.
 DRAFTING PATENT SPECIFICATION

A well-drafted patent application sows the seeds for

success in years to come.  Get this wrong or
mismanage the prosecution and investors may leave,
valuations fall, companies lose their advantage and
competitors move in.  At GJE, we will make sure it
doesn’t happen to you.
From the start of our relationship, we’ll work with you
to understand your commercial goals and business
aims.  We appreciate that every client is different, so
this is essential in setting you up for success.  We
then draft and prosecute patent applications to help
you meet those goals.  Through the patent filing and
IP filing process, we’ll leverage the technological
advantage of your patented product or service to
ensure commercial success, and prevent your
competitors from gaining ground in the same market
 PATENT FILING IN INDIA

Wish to file a patent application in India

then Global IP Partners has something for
you. A thorough understanding of the Indian
Patent Act and the nuances involved in
prosecuting Indian patent applications has
given our IP the standing of one of the most
reliable names in patent filing & prosecution
services in India. Our experienced team
includes patent agents in India, who are well
versed with the prevailing patent laws &
patent prosecution procedures of the Indian
Patent Office. This has made our practice in
patent filing and prosecution, cost-effective
and quality efficient.
 PATENT PROSECUTION

In the legal world, prosecution generally refers to the plaintiff’s side of litigation. 
However, patent prosecution is the process of writing and filing a patent
application and pursuing protection for the patent application with the patent
office.  Patent prosecution is very different from litigation, so the use of the term is
often confusing to people not familiar with patent lingo.  If you are looking for a
lawyer to sue another party for violating your patent rights, you are looking for a
patent litigator.  However, if you are looking for a patent attorney to help you
develop an intellectual property protection strategy, including preparing and filing
patent applications with the patent office, you are looking for a patent prosecutor. 
Patent litigators are not required to have a technical background, nor are they
required to be licensed to practice in front of the patent office.  Patent prosecution
lawyers must both be licensed to practice law as well as licensed to practice in
front of the patent office.
 

A patent application can be filed at any of the four patent offices in India (Kolkata,
Delhi,Mumbai or Chennai). The patent application passes through the following
required stages:
Complete specification - The complete specification
is an essential document and includes:
1) Title of invention,
2) Field of invention,
3) Background of invention with regard to the drawback
associated with known art,
4) Object of invention,
5) Statement of invention,
6) A summary of invention,
7) A brief description of the accompanying drawing,
8) Detailed description of the invention with reference to
drawing/examples,
9) Claim(s),
10) Abstract
Satara College of Pharmacy, Satara 8
Grant of patent

a) Application is filed with one of the patent

offices.
b) Controller makes allotment of the application
to the examiner.
c) Examiner determines the procedural validity
and compliance .
d) Examination of patent application.
e) Prior art search covering publication in India
and abroad is done.
f) First examination report- in 18-24 months.
Satara College of Pharmacy, Satara 9
g) Objection (or adverse report) if any of the
examiner is to be communicated to the applicant
for compliance.
h) If the requirements are complied with, the
claims of patent are published in Gazette of the
patent office (takes normally 6 months).
i) Section 25 allows for opposition of any member
of public.
j) If the applicant overcomes the oppositions and
the examiner accepts the submitted complete
specification by advertising in the official gazette.

Satara College of Pharmacy, Satara 10

k) After accepting the complete specification
(Plain or after opposition), the patent shall be
granted to the applicant.
l) Controller shall seal the patent with the seal of
patent office and the date of sealing of patent is
entered into register.

Satara College of Pharmacy, Satara 11

Opposition
Any person intended can oppose the grant of
patent within 6 months from the date of
publication in Official Journal (Pre-Grant
Opposition) or within 1 year of grant of patent
(Post- grant opposition).
Opposition can be raised when:
1)Patent is wrongfully obtained from the person
opposing the application.
2) Invention is obvious to person skilled.
3) The claims do not relate to an invention.
4) The best mode is not disclosed in the complete
specification. Satara College of Pharmacy, Satara 12
Patent Infringement
Infringment occurs when:
Manufacture
Sale or
Import of a patented invention
Without permission from patent owner.

But, use of Patent by Government will not constitute

Infringement.

Satara College of Pharmacy, Satara 13

 Penalties :

Contravention Description Penalty

Contravention of Failure to comply Imprisonment up to
secrecy provisions with any directions 2 years or with fine
relating to certain given under or with both.
inventions (Sec.118) section 35.

Falsification of If any person makes Imprisonment up to

entries in register etc false entry in any 2 years or with fine
(Sec.119) register kept under or with both.
this Act.

Satara College of Pharmacy, Satara 14

 Continued..

Unauthorized claim If any person falsely Punishable with fine

of patent rights represents that any that may extend to
(Sec.120) article sold by him is Rs.1,00,000.
patented in India.
Wrongful use of If any person uses on Imprisonment for a
words, "patent his place of business term that may
office" (Sec.121) or any document the extend to 6 months,
words “patent office” or with fine, or with
lead to the belief that both.
his place of business
is connected with the
patent office.

Satara College of Pharmacy, Satara 15

Compulsory License
Compulsory Licensing (CL) allows
governments to license third parties (that is,
parties other than the patent holders) to
produce and market a patented product or
process without the consent of patent
owners.
Any time after three years from date of
sealing of a patent, application for
compulsory license can be made
Satara College of Pharmacy, Satara 16
Continued..

Compulsory license is granted provided:

• Reasonable requirements of public have not been
satisfied;
• Patented invention is not available to public at a
reasonably affordable price or
• Patented invention is not worked in India.

Section 92A of Patents Act, 1970 provides for

compulsory licensing of patents relating to the
manufacture of pharmaceutical products for export
to countries with public health problems.

Satara College of Pharmacy, Satara 17

 4. CONCLUSION

The legal protection of new creations is

necessary because it encourages innovation.

The promotion and protection of intellectual

property spurs economic growth, creates new
jobs and industries, and enhances the quality
and enjoyment of life.

Satara College of Pharmacy, Satara 18

 5. REFERENCES
1) www.caa.in/Image/34_hb_on_IPR.pdf - Adukia Rajkukumar S., Handbook of
Intellectual Property Rights in India.
2) Dr. Kuchekar B. S., Khadtare A. M., Itkar Sachin C., ‘Forensic Pharmacy’,
Eighth edition, Nirali Prakashan, Pg. no. 16.1-16.20.
3) Subbaram N. R., “What Everyone Should Know About Patents”, Second
edition, Pg no. 1-16, 17-45, 77-84.
4) ipindia.nic.in
5) www.patentoffice.nic.in
6) ipr.icegate.gov.in
7) www.ipab.tn.nic.in
8) www.mit.gov.in
9) www.nipo.in
10) www.wto.org
11) www.wipo.int
12) www.dcmsme.gov.in/emerge/website_material_on_IPR.pdf
13) www.ipo.gov.uk/ipindia.pdf
14) www.pfc.org.in/workshop/workshop.pdf
15) www.ipapharma.org/pt/july2012/19-22.pdf
16) www.nls.ac.in/resources/ded/classnotesforyear2010ded/IPR-NLSUI
%20Oct'2010.pdf
Satara College of Pharmacy, Satara 19