Patent Law and Concepts PDF

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Basic Patent Law and

Concepts
All Copyrights are held by
Indian Institute of Patent and Trademark Attorney, Delhi

C/o Mabbit Communications Private Limited
G – 85 Preet Vihar, Main Vikas Marg, Delhi 110092
All the trademarks mentioned in this book belong to their respective companies and are
represented here for educational purpose only.
Indian Institute of Patent and Trademark Attorney

Contents
PATENT SYSTEM IN INDIA ............................................................................................................. 3
PATENT CORPORATION TREATY .............................................................................................. 32
US PATENT SYSTEM....................................................................................................................... 44
EUROPEAN PATENT SYSTEM ...................................................................................................... 63
UNDERSTANDING PATENT LANGUAGE.................................................................................... 72
GLOSSARY ........................................................................................................................................ 86
ANNEXURE 1 – INDIAN PATENT FORMS………………………………………………………………...106
ANNEXURE 2 – US PATENT FORMS…………………………………………………………………………158
ANNEXURE 3 – EUROPEAN PATENT FORMS…………………………………………………………..163

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Patent System in India

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Exclusive rights of the patentee
Patent is a set of exclusive rights granted by a state (national government) to an inventor or

their assignee for a limited period of time in exchange for a public disclosure of an invention.
The owner of the "Patent", i.e. patentee is entitled to deal with such property in the same
manner as owner of any other moveable property.
The patentee can sell the whole or part of this property (Patent).
He can also grant license to other(s) to use the patented property.
He can also assign such property to any other(s).
Such sale, license or assignment of such patented property naturally has to be for valuable
consideration, acceptable mutually.
PERIOD OF PATENT
20 Years
The criteria for an invention to be patentable are –
(i) It must be novel
(ii) It must have an inventive step; and
(iii) It must be capable of industrial application.
Further, the invention should not fall under any of the categories of Inventions Not Patentable”
mentioned under sections (3) and (4) of the Patents Act, 1970.
Novelty of Invention
An invention is considered new (novel) if it has not been anticipated by publication in any
document anywhere in the world or used in the country or prior claimed in an application for
patent in India or form part of the knowledge, oral or otherwise, available within any local or
indigenous community in India or elsewhere that is, the subject matter has not fallen in the
public domain or that it does not form part of the state of the art. In order to establish the
novelty of an invention, search for anticipation by previous publication and by prior claim in

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relation to the subject matter of the invention for which the patent has been applied for is
conducted by the examiner in the patent and non-patent literature to ascertain whether the
invention has been anticipated by previous publication and prior claiming. Also, Prior public use
of the invention in India before the date of filing of application destroys the novelty of the
invention.
The term "obvious" means that the invention does not go beyond the normal progress of
technology but merely follows plainly or logically from the prior art, i.e. something which does
not involve the exercise of any skill or ability beyond that to be expected of the person skilled in
the art.
Inventive Step
An invention should contain inventive step – technically advance or economic advance or

combination of both. For example invention must either be a step towards advancement in
technology – like advancement in mobile technology from 2G to 3G or it may become cheap
due to reduced cost of manufacturing etc.
Industrial Application
Invention must have some industrial application. (Only theories are not patentable.)
PATENTS OFFICE ADMINISTRATION
The Patent Office, under the Ministry of Commerce & Industry, Department of Industrial Policy
& Promotion, has been established to administer the various provisions of the Patents Law
relating to the grant of Patents & the Designs Law, relating to the registration of Industrial
Designs.
The Controller General’s Headquarters is located at Mumbai. There are four Patent Offices in
India. The Head Office is at Kolkata and other Patent Offices are located at Chennai, Delhi and
Mumbai. The Controller General of Patents, Designs and Trade Marks delegates his powers
regarding various procedures for patent grant to Senior Joint Controller of Patents & Designs,
Joint Controllers of Patents & Designs, Deputy Controllers of Patents & Designs and Assistant
Controllers of Patents & Designs. Examination of patent applications is done by Examiners of
Patents & Designs.
The appropriate office of the patent office shall be the head office of the patent office or the
branch office as the case may be within whose territorial limits …

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 Residence of applicant or domicile; or

 His the place of business; or
 The place where the invention actually originated.
 If the applicant has no business or domicile in India, the address for Service in India is
given by such applicant
Territorial Jurisdiction Patent Office Branch

Mumbai: The States of Maharashtra, Gujarat Madhya Pradesh and Goa, Daman & Diu & Dadar
& Nagar Haveli
Chennai: The States of Andhra Pradesh, Kerala Tamil Nadu, Mysore and Pondicherry, Laccadive,
Minicoy and Aminidivi Islands.
New Delhi: States of Haryana, Himachal Pradesh, Jammu & Kashmir, Punjab, Rajasthan and
Uttar Pradesh, Chandigarh and Delhi.
Kolkata: The rest of India’s from the act
The examination of patent applications is carried out by Patent Examiners. The government of
India has set up a Patent Information System (PIS) at Nagpur that provides services for patents
and patent search. PIS provide information to researchers and scientists.
Patent law in India is governed by Patent Act 1970. It is divided into sections and certain rules.
Let us look into certain important provisions.
Definitions and Interpretation
The Patent system in India is governed by the Patents Act, 1970 (No 39 of 1970) & The Patents
Rules 1972, effective from April 20, 1972. Subsequently The Patents Act, 1970 is amended
effective from January 1, 1995 & The Patents Rules, 1972 is amended effective from June 2,
1999.
Section 2-"assignee" includes an assignee of the assignee and the legal representative of a
deceased assignee and references to the assignee of any person include references to the
assignee of the legal representative or assignee of that person;
Assignee is the company / university / bank / investor into research.

Example- Mr. X working in TATA Motors has filed patent. TATA is the assignee and Mr. X is true
inventor.
Section 2-"Capable of industrial application", in relation to an invention, means that the

invention is capable of being made or used in an industry; As per the definition of ‘invention’
prior to the amendment, an invention had to be new and useful for grant of patent, it was held

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that ‘utility’ does not mean improvement. It means practicability. The test of utility is whether
the invention will work and whether it will do what is claimed for it.
Section 2 -"exclusive license" means a license from a patentee which confers on the licensee, or
on the licensee and persons authorized by him, to the exclusion of all other persons (including
the patentee), any right in respect of the patented invention, and exclusive licensee shall be
Construed accordingly;
Exclusive License can be given to particular person or company on agreed terms and conditions
between parties which prevent others and even patentee to make use / sell it under the agreed
time period of contract.
Section 2 -"Invention" means a new product or process involving an inventive step and capable
of industrial application;
Section 2 -"Inventive step" means a feature of an invention that involves technical advance as
compared to the existing knowledge or having economic significance or both and that makes
the invention not obvious to a person skilled in the art;
Non Patentable Inventions are governed by section 3 and section 4.
1. An invention which is frivolous or which claims anything obviously contrary to well

established natural laws. Some examples of a frivolous nature and contrary to natural laws
are: -
A machine purports to produce perpetual motion,
A machine alleged to be giving output without any input.
2. An invention the primary or intended use or commercial exploitation of which could be

contrary public order or morality or which causes serious prejudice to human, animal or
plant life or health or to the environment; some examples are: An invention, the use of
which is contrary to the law which is in force, or use of which is prohibited such as,
a. Any device, apparatus or machine or method for committing theft/burglary,
b. Any machine or method for counterfeiting of currency notes,
c. Any device or method for gambling,
d. An invention the use of which can cause injury to human beings, plants and animals.
Inventions, the established or intended use or commercial exploitation of which is

found to be injurious to public, animal or plant life or health, such as, a method of
adulteration of food.

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An invention, the present or intended use of which is likely to violate the well
accepted and settled social, cultural, legal norms of morality, e.g. method of cloning
An invention, the primary or proposed use of which would disturb the public orders
e.g. a device for house-breaking.
3. The mere discovery of a scientific principle or the formulation of an abstract theory or

discovery of any living thing or non-living substances occurring in nature; There is a
difference between discovery and invention. A discovery adds to the amount of human
knowledge by disclosing something already existent, which has not been seen before,
whereas an invention adds to the human knowledge by creating a new product or processes
involving a technical advance as compared to the existing knowledge. Example- Einstein’s
theory is not patentable but the machine or process formed on the basis of theory is
patentable.
4. the mere discovery of a new form of a substance which does not result in the enhancement
of a known efficacy of that substance or the mere discovery of a new property or new use
of a known process, machine or apparatus unless such known process results in a new
product or employs at least one new reactant. Explanation: For the purpose of this clause,
salts, Esters, ethers, polymorphs, metabolites, pure form, particle size, isomers mixtures of
isomers, complexes, combinations and other derivatives of known substance shall be
considered to be the same substance, unless they differ significantly in properties with
regard to efficacy. In order to be patentable, any salts, esters, ethers, polymorphs,
metabolites, pure form, particle size, isomers, mixtures of isomers, complexes,
combinations and other derivatives of known substance, they must differ significantly in the
properties with regard to efficacy. The requirement here that namely the new form must
result in enhancement of known efficacy of known substance and that in order to be
distinct from the known substance, the new form must differ in the properties with regard
to efficacy.
5. a substance obtained by a mere admixture resulting only in the aggregation of the
properties of the components thereof or a process for producing such substance; A mixture
of sugar and some colorants in water to produce a soft drink is a mere admixture resulting
into aggregation of the properties. Similarly, a mixture of different types of medicament or
medicine to cure multiple diseases is also a mere admixture of substances and is not a
patentable invention. However, an admixture resulting into synergistic properties of a
mixture is not considered as mere admixture, e.g., soap, detergent, lubricants and polymer
composition etc.
6. the mere arrangement or re-arrangement or duplication of known devices each functioning
independently of one another in a known way; It is important to bear in mind that in order

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to be patentable an improvement on something known before or a combination of different

matters already known, should be something more than a mere workshop improvement;
and must independently satisfy the test of invention or an 'inventive step'. To be patentable
the improvement or the combination must produce a new result, or a new article or a
better or cheaper article than before. The combinations of old known integers may be so
combined that by their working inter relation they produce a new process or improved
result. Mere collocation of more than one integers or things, not involving the exercise of
any inventive faculty, does not qualify for the grant of a patent.
Note – Such designs which are arrangement or rearrangement but are industrially
important or makes task easy can be protected under utility models/ utility patents. These
are granted for 10 years. India has not still implemented this form of IP but it is practiced in
USA and China.
7. A method of agriculture or horticulture;
A method of producing a new form of a known plant by natural propagation is not
patentable but any method involving tissue culture techniques is patentable. A method of
producing improved soil from the soil with nematodes by treating the soil with a
preparation containing specified phosphorathioates was held not patentable.A method of
producing mushroom plant and a method for cultivation of an algae (445/Del/93] were held
not patentable.
8. any process for the medicinal, surgical, curative, prophylactic, diagnostic, therapeutic or
other treatment of human beings or any process for a similar treatment of animals to
render them free of disease or to increase their economic value or that of their products. A
method of treatment of malignant tumor cells and method of removal of dental plaque and
caries are not patentable, since they are held as treatment of human beings. Also,
treatment of sheep for increasing wool yield was held as not patentable. An invention of a
method of treatment of the human or animal body by surgery or therapy or of diagnosis
practiced on the human or animal body shall not be taken to be capable of
industrial application
9. Plants and animals in whole or any part thereof other than micro-organisms but including
seeds, varieties and species and essentially biological processes for production or
propagation of plants and animals; As per this sub-section, while plants and animals or any
part of the plant or animal is not patentable, an exception is made in the case of micro-
organisms. However, any discovered micro-organism from the nature is not patentable
10. A mathematical or business method or a computer program per se or algorithms; A
computer implemented invention mean any invention the performance of which involves
the use of computer, computer network or other programmable apparatus, or an invention

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one or more features which are realized wholly or partially by means of a computer
program me/ programmers’.
11. A literary, dramatic, musical or artistic work or any other aesthetic creation whatsoever
including cinematographic works and television productions. Writings, music, works of fine
arts, paintings, sculptures, computer programmes, electronic databases, books, pamphlets,
lectures.
12. A mere scheme or rule or method of performing mental act or method of playing game;
Method of performing mental act or method of playing game or a mere scheme or rule are
as such excluded from patentability, because they are considered as outcome of mere
mental process.
a. Method of learning a language
b. Method of playing chess.
c. Method of teaching.
d. Method of learning
e. Method of operating a machine or equipment as per the set of instructions
13. A presentation of information; Any manner, means or method of expressing information
whether visual, audible or tangible by words, codes, signals, symbols, diagrams or any other
mode of representation is not patentable. For example, a speech instruction means in the
form of printed text where horizontal underlining indicated stress and vertical separating
lines divided the works into rhythmic groups is held not patentable.
14. An invention which in effect, is traditional knowledge or which is an aggregation or
duplication of known properties or traditionally known component or components.
Traditional Knowledge, being knowledge already existing, is not patentable. An example is
the anti septic property of turmeric for wound healing. Another example is the pesticide
and insecticidal properties of neem.
15. No Patent shall be granted in respect of an invention relating to atomic energy.
Persons who are entitled to apply for patent
(a) By any person claiming to be the true and first inventor of the invention.
(b) By any person being the assignee of the person claiming to be the true and first inventor in
respect of the right to make such an application;
(c) By the legal representative

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Patent filing in India
So patent can be filed by true inventor or the company in which he is working or the legal
representative.
Let see how patent filing procedure works in India.
Step 1: When the inventor thinks that his invention is about to get complete in 6 months then
he can file provisional application i.e. he can file application with Title and Abstract of his
invention. The main advantage of filing provisional application is that he will get protection on
his invention along with priority date.
Now, what is priority date?
This is very important to understand. Priority date is the date of first disclosure of the invention.
Priority Date (PD) is important because 20 years of protection start from PD. For example
person X filed patent in India on 1st January 2010 and on 6th May 2010 he filed patent in USA, so
this priority date for both countries will be 1st January 2010 only.
Step 2: After provisional application is filed, inventor or applicant (whoever has applied for
patent- inventor or assignee or legal representative) has to submit complete specification of the
patents within 9 months from PD. Complete Specification should contain- Title, Abstract,
Summary, Field of invention, Object of the invention, Description, Drawings and Claims.
Claims are the most important part of the patent, as only claims have legal value. For example if
you have written in the description about process of extraction of iron from iron ore can be
optimally be done at 100F, but somehow you missed to claim the temperature in the claims,
you lose your legal right.
Therefore it is very important for patent analyst to understand and interpret the language of
the claims.
Patent Drafting will be discussed further in this book.
Step 3: If the invention is complete then the inventor can directly file the complete
specification. If the inventor fails to submit the application within 9 months from the PD, he can
be granted special extension of 3 months on the request to the Controller of the Patent Office.
Step 4: After the submission of the complete specification, patent application gets publish at
the end of 18 months from PD in the official gazette of the Patent Office, which is publicly
accessible at the patent office website – ipindia.nic.in

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Publication with contain complete detail of the invention.
If the inventor has not completely his invention or due to any reason want to withdraw his
invention without the loss of novelty, then he can withdraw his application 3 months prior from
publication or 15 months from the PD.
Remember patent application automatically gets publish within 18 months from the PD. If the
applicant wants he can request for early publication of the patent application by filing request
through Form 9 (given in the annexure).
The main aim of the publication is that if any third party wants to oppose the patent, he can file
pre grant opposition by application to controller. Pre grant opposition can be done on various
grounds-
a) Wrongfully obtaining
b) Prior publication / prior claiming
c) Prior claiming in India
d) Prior public knowledge or public use in India
e) Obviousness and lack of inventive step
f) Not an invention or the invention not patentable
g) Insufficient description of the invention
h) Failure to disclose information or furnishing false information relating to Foreign filing
i) Convention application not filed within the prescribed time
j) Incorrect mention of source/geographical origin of biological material
k) Invention anticipated with regard to traditional knowledge of any community, anywhere in

the world
Also the publication will have the following effects
1) The depository institution will make the biological material (mentioned in the specification)
available to the public.

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2) The Patent office will make the specification and drawing available to the public on Payment
of prescribed fee is Rs.200 for individual natural person(s) and Rs.800 for legal entity other than
natural person(s)).
3) The applicant shall have like privileges and rights as if a patent for the invention had been
granted from the date of publication of the application until the date of grant. But he shall not
be entitled to institute any proceedings for infringement until the patent has been granted.
Further, the rights of patentee for applications filed u/s 5(2) before 1st day of January, 2005 will
accrue from the date of grant of the patent.
4) The applications will be taken up for examination only on request in Form 18 made after the
publication of application (within 36 months from the date of priority or from the date of filing
whichever is earlier) by the applicant or the person interested with the prescribed fee (Rs.
2,500 for natural person(s) and Rs. 10,000 for other than natural person and with the
prescribed fee (Rs. 3,500 for natural person(s) and Rs. 14,000 for legal entity other than natural
person.
Step 5: After publication, applicant or any other party interested can file for examination of the
patent. Maximum time to apply for examination is 48 months from the PD. It can be filed early
also.
Divisional application (Section 16)- When the application made by an applicant claims more
than one invention, the applicant on his own request or to meet the official objection raised by
the controller may divide the application and file two or more applications as applicable for
each of the inventions. This type of application is divided out of the parent one and is termed as
divisional application. The priority date for all the divisional applications will be same as that
claimed by the parent application. It is termed as Ante Dating. The complete specification of the
divisional application should not include any matter not in the substance disclosed into
complete specification of the first application. The reference of the parent application should
be made in the body of the specification.
Early publication and examination request can be filed at the time of filing patent application. If
the file the request early patent application will be get published within 1 month and will be
sent for examination.

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FORM NO. FORM FEES (Natural Fee) FEES ( Legal Entity)

1 Application for grant of patent 1000 4000
2 Provisional / Complete Specification No fee No fee
- 100 (each sheet of - 400 (each sheet of
specn. -in addition to specn. -in addition to
30) 30)
- 200 (for each claim in - 800 (for each claim in
addition to 10) addition to 10)
3 Statement and undertaking under No fee No fee

section 8
5 Declaration to Inventorship No fee No fee
9 Early Publication 2500 10,000
18 Examination 2500 10,000
The application will not be published if secrecy direction is given under Section .35 or has been
abandoned under section 9 or has been withdrawn 3 months prior to the expiry of 18 months.
In case a secrecy direction has been given it will be published after the expiry of the 18-month
period or when the secrecy direction is lifted off, whichever is later.
Step 5: Patent Examination is done by patent examiners working at the patent office.
Examination is of two types technical and substantive. Technical examination check foe criteris
of patentability and substantive examination checks for whether all the fees have been paid or
documents have been submitted.
Step 6: After 6 months from the date of request of examination, patent office issues the first
examination report (FER). FER contain any errors which patent office want applicant to correct.
Step 7: After receiving of the FER, applicant has to reply back to the patent office.
Step 8: Once all the corrections have been made, patent is put for grant and certificate is issued
after 12 months.
After the patent is granted, patent can be opposed at patent office till 12 months. It is called
post grant opposition. It is done through form 7.

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PATENT FILING IN INDIA
Provisional Application
Note – Directly complete 9 months

specification can be filed.
Complete Specification
Note – Early Publication can

be done.
Publication 18 months
Pre grant
Note – Early
Examination can be Examination 48 months opposition
done.
Substantive Technical
First Examination Report
6 months
Response to examination report
Put for grant
GRANT OF PATENT

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SURRENDER OF PATENT
Section 63
(1)A patentee may, at any time by giving notice to the Controller, offer to surrender his patent.
(2) Where such an offer is made, the Controller shall publish the offer and also notify every
person other than the patentee whose name appears in the register as having an interest in the
patent.
(3) Any person interested may after such publication, give notice to the Controller of opposition
to the surrender using Form 14, and where any such notice is given, the Controller shall notify
the patentee.
(4) If the Controller is satisfied after hearing the patentee and any opponent, if desirous of
being heard, that the patent may properly be surrendered, he may accept the offer and, by
order, revoke the patent.
Filing of Notice of Opposition:
• Notice of opposition to the surrender of Patent may be given by any interested person
within 3 months from the date of advertisement of the notice in the Official Gazette
• Notice of opposition will be in Form-14
• Fee: 1500 / 6,000
The Controller on receipt of the evidence, if any, and after giving the parties an opportunity to
be heard, decide the case.
• The Controller accepts the Patentee's offer to surrender the patent, he may direct the
Patentee to return the patent
• Notify such revocation in the Official Gazette.
• The patent will revoke only after the receipt of the “patent” by the Controller.
• Any order is appealable in High Court

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Revocation of Patents
A Patent may be revoked by High Court on any of the grounds stated herein after, at any time
during the life of the patent.
(i) On the petition by any person interested or
(ii) On the petition by the Central Government by the Appellate Board
(iii) On a counter claim by the defendant in a suit of infringement.
Section 64: Revocation of Patents
(1) subject to the provisions contained in this Act, a patent, whether granted before or after the
commencement of this Act, may, on the petition of any person interested or of the Central
Government or on a counter-claim in a suit for infringement of the patent, be revoked by the
High Court on any of the following grounds, that is to say-
(a) that the invention, so far as claimed in any claim of the complete specification, was
claimed in a valid claim of earlier priority date contained in the complete specification of
another patent granted in India;
(b) that the patent was granted on the application of a person not entitled under the
provisions of this Act to apply therefore: Provided that a patent granted under the
Indian Patents and Designs Act, 1911 [(2) of 1911] shall not be revoked on the ground
that the applicant was the communicate or the importer of the invention in India and
therefore not entitled to make an application for the grant of a patent under this Act;
(c) that the patent was obtained wrongfully in contravention of the rights of the
petitioner or any person under or through whom he claims;
(d) that the subject of any claim of the complete specification is not an invention within
the meaning of this Act;
(e) that the invention so far as claimed in any claim of the complete specification is not
new, having regard to what was publicly known or publicly used in India before the
priority date of the claim or to what was published in India or elsewhere in any of the
documents referred to in section 13; Provided that in relation to patents granted under
the Indian Patents and Designs Act, this clause shall have effect as if the words “or
elsewhere” had been omitted;

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(f) that the invention so far as claimed in any claim of the complete specification is
obvious or does not involve any inventive step, having regard to what was publicly used
in India or what was published in India or elsewhere before the priority date of the
claim.
(g) that the invention, so far as claimed in any claim of the complete specification, is not
useful;
(h) that the complete specification does not sufficiently and fairly describe the invention
and the method by which it is to be performed, that is to say, that the description of the
method or the instructions for the working of the invention, as contained in the
complete specification are not by themselves sufficient to enable a person in India
possessing average skill in, and average knowledge of, the art to which the invention
relates, to work the invention, or that it does not disclose the best method of
performing it which was known to the applicant for the patent and for which he was
entitled to claim protection;
(i) that the scope of any claim of the complete specification is not sufficiently and clearly
defined or that any claim of the complete specification is not fairly based on the matter
disclosed in the specification;
(j) that the patent was obtained on a false suggestion or representation;
(k) that the subject of any claim of the complete specification is not patentable under
this Act;
(l) that the invention so far as claimed in any claim of the complete specification was
secretly used in India, otherwise than as mentioned in sub-section (3), before the
priority date of the claim;
(m) that the applicant for the patent has failed to disclose to the Controller the
information required by section 8 or has furnished information which in any material
particular was false to his knowledge;
(n) that the applicant contravened any direction for secrecy passed under section 35
(o) that leave to amend the complete specification under section 57 or section 58 was
obtained by fraud.

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Section 66: Revocation of patent in public interest - If Central Govt. is of opinion that a Patent is
mischievous or prejudicial to public it may give the patentee an opportunity of being heard,
notify a declaration to that effect in official Gazette and thereafter revoke the patent
GROUNDS FOR REVOCATION
1. Invention claimed is the subject of prior grant:

2. Patentee not entitled to the Patent:
3. Patent was wrongfully obtained by a person other than the person entitled
4. Invention is "lacking in novelty with regard to prior knowledge or prior use
5. Invention is obvious or does not involve inventive step
6. Invention is not useful Invention is not sufficiently described
7. Patent was obtained by false suggestion or representation
8. Claimed invention was secretly used before the priority date
9. Failure to disclose information regarding Foreign Application
10. Non-compliance of secrecy direction
Compulsory licensing
Compulsory licensing is when a government allows someone else to produce the patented
product or process without the consent of the patent owner. It is one of the flexibilities on
patent protection included in the WTO’s agreement on intellectual property — the TRIPS
(Trade-Related Aspects of Intellectual Property Rights) Agreement. In a developing country such
as India, compulsory licensing is probably the most effective safeguard against the potential
abuse of monopoly by patentees.
Grounds for Invoking Compulsory Licensing Provisions
The provisions relating to compulsory licenses can be resorted to in any of the following
circumstances:
 The reasonable requirements of the public with respect to the patented invention have
not been satisfied;
 The patented invention is not available to the public at a reasonably affordable price;
 The patented invention is not worked in India;
 There is a national emergency;
 There is an extreme urgency; or
 There is public non-commercial use.

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The Indian Patent Law has provided for adequate powers to the Controller of Patents to issue
compulsory licenses to deal with the following extreme and/or urgent situations.
Section 84 :- The provisions for compulsory licenses are made to prevent the abuse of patent
as a monopoly and to make the way for commercial exploitation of the invention by an
interested person. Any person interested can make an application for grant of
compulsory license for a patent after three years from the date of grant of that patent on
any of the following grounds –
a) The reasonable requirements of the public with respect to the patented invention have not
been satisfied.
b) The patented invention is not available to the public at a reasonably Affordable price
c) The patented invention is not worked in the territory of India.
The request for grant of a compulsory license can also be made by a licensee of the
patent. Application for compulsory license should be made in Form 17 with the prescribed fee
of Rs.1500 for natural person and Rs.6000/- for other than natural person with a
statement setting out the nature of the applicant’s interest and the facts upon which the
application is based.
B) Revision of the grant of compulsory license
a. An application under sub-section (4) of section 88 for the revision of the terms and
conditions of a license which have been settled by the Controller shall be in form 20 along with
the prescribed fee of Rs.1500/- for natural person / Rs.6000/- for other than natural person
in duplicate and shall state the facts relied upon by the applicant and the relief he seeks
and shall be accompanied by evidence in support of the application. Such application can be
made only after twelve months from the compulsory licensee has started working the
invention.
b. If the Controller is satisfied that a prima facie case has not been made out of the
revision of the terms and conditions of the license, he may notify the applicant
accordingly and unless within a month the applicant requests to be heard in the matter
the Controller may refuse the application.
c. The Controller after giving the applicant an opportunity of being heard shall determine
whether the application shall be proceeded with or whether the application shall be
refused.

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d. If the Controller allows the application to be proceeded with, he shall direct the applicant
to serve copies of the application and of the evidence in support thereof upon the patentee or
any other person appearing in the register to be interested in the Patent or upon any
other person on whom in his opinion such copies should be so served.
e. The applicant shall inform the Controller the date on which the service of copies of
application and of the evidence on the patentee and other persons referred to in (d) above has
been effected.
f. The patentee or any other person on whom copies of the application and of the evidence
have been served, may give to the Controller notice of opposition in Form 14 in duplicate within
2 months from the date of such service. Such notice shall contain the grounds relied upon by
the opponent and shall be accompanied by evidence in support of the opposition.
g. The opponent shall serve copies of the notice of opposition and his evidence on the
applicant and inform the Controller the date on which such service has been effected.
h. No further evidence or statement shall be filed by either party without special leave
of or on requisition by the Controller.
i. On completion of the above proceedings or at such other time as he may deemed fit, the
Controller shall appoint a date and the time for the hearing of the case and shall give the
parties not less than 10 days notice of such hearing.
j. If the Controller decides to revise the terms and conditions of license he shall amend
the license granted to the applicant in such manner as he may deem necessary
Section 92 A :-Compulsory Licensing of Patents relating to the manufacture of

pharmaceutical products for export to countries with public health problems. 92 A. Compulsory
license for export of patented pharmaceutical products in certain exceptional circumstances. –
(1) Compulsory license shall be available for manufacture and export of patented
pharmaceutical products to any country having insufficient or no manufacturing capacity in the
pharmaceutical sector for the concerned product to address public health problems, provided
compulsory license has been granted by such country or such country has, by
notification or otherwise, allowed importation of the patented pharmaceutical products
from India.
(2) The Controller shall, on receipt of an application in the prescribed manner, grant a
compulsory license solely for manufacture and export of the concerned pharmaceutical product
to such country under such terms and conditions as may be specified and published by him the

22
patentee or any other person appearing in the register to be interested in the Patent or
upon any other person on whom in his opinion such copies should be so served.
Compulsory Licensing of Patents relating to the manufacture of pharmaceutical products for

export to countries with public health problems.
Section 92 A of the Patent Act 1970 as amended by The Patents (Amendment) Act
2005 has been recently introduced and this section states:-
92 A. Compulsory license for export of patented pharmaceutical products in certain exceptional

circumstances. –
(1) Compulsory license shall be available for manufacture and export of patented
pharmaceutical products to any country having insufficient or no manufacturing capacity in the
pharmaceutical sector for the concerned product to address public health problems, provided
compulsory license has been granted by such country or such country has, by
notification or otherwise, allowed importation of the patented pharmaceutical products
from India.
(2) The Controller shall, on receipt of an application in the prescribed manner, grant a
compulsory license solely for manufacture and export of the concerned pharmaceutical product
to such country under such terms and conditions as may be specified and published by him.
Sections 92 (1) and 92 (3)—Both these sections enable the Central Government and the
Controller, respectively, to deal with circumstances of national emergency or circumstance of
extreme urgency related to public health crises by granting relevant compulsory license.
GOVERNMENT USE OF THE INVENTIONS
1. Anytime after filing or grant of patent, Government or any person authorized by it

can use the patented invention for the purpose of Government.
2. If an invention is used before the priority date of the relevant claim of complete
specification by the Government or any person authorized by it for the purpose of
Government, then no royalty or remuneration need to be paid to the Patentee. If an
invention is to be used at any time after the granduncle of Complete Specification by
Government or any person authorized by it for the purpose of Government, then that
use should be made only on terms agreed between the Government or any person
authorized and the patentee or in default of agreement be decided by High Court under
section 103.

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3. Government can authorize any person in respect of an invention either before or after the
grant whether or not the patentee authorizes that person.
4. Where Government authorizes any person for using an invention for Govt. purposes then
unless it is contrary to the Public interest the Central Government shall inform the
patentee from time to time, the extent of use of the invention for the purpose of Government.
In case of use by the undertaking, Government may call for such information from the
undertaking.
5. The right to use the invention for the purpose of Government includes the right to sell the
goods and the purchaser has the power to deal with the goods as if the Government or the
person authorized were the patentee of the invention.
6. In case, of an exclusive licensee as per section 101 (3) or an assignor, Central Government
should also inform the exclusive licensee or assignor as the case may be, regarding the extent of
use of invention for the purpose of Government.
7. In respect of an invention used by the Government for the purpose of Government,

any agreement, license of assignment etc. between the patentee or applicant and any
person other than the Government shall have no effect if the agreement restricts the use
for the purpose of Government or instructs any payment in respect of any use for the purpose
of Government.
8. In relation to any use of the invention made for the purpose of Government by the patentee
to the order of Central Government any sum payable by virtue of section 100 (3) shall be
divided between the patentee and the assignor in such proportion as may be agreed or in
default be decided by high Court under section 103
9. In case there is an exclusive licensee authorized under his license to use the invention
for the purpose of Government the patentee shall share any payment and such licensee in such
proportion as agreed upon or in default is decided by High Court under section 103.
10. If necessary central Government can acquire an invention from the applicant or
patentee for a public purpose, by publishing a notification to that effect in the Official Gazette
11. Notice of acquisition shall be given to the applicant or patentee as the case may be and
other persons appearing in the register as having interest in that patent.
12. Compensation should be given by the Central Government to the concerned personas
agreed upon between them or in default be determined by High Court under Section 103.

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Termination of License
The law also provides for termination or revocation of a license if the conditions that justified
its being granted no longer exist.
Renewal of patents
Patents must be renewed annually from the third year after the date of filing by the payment of
renewal fees. A grace period of six months is allowed for payment at an additional cost, but
thereafter the patent lapses.
Restoration
A lapsed patent can be restored under certain circumstances. These are:
 that the omission to pay the renewal fee was unintentional; and
 that no undue delay has occurred in making the application for restoration of the
patent, 18 months’ time period has been provided to submission of fee from the
cessation of patent.
Application for restoration is made to the registrar. The application is accompanied by an

affidavit by the patentee explaining how and why the renewal fee was not paid.
The registrar formally examines the application documents and if he finds that a prima facie
case has been made out, he advertises the restoration application in the Patent Journal. For a
period of two months thereafter any interested person may oppose the application for
restoration. In the absence of opposition, the registrar, on payment of the outstanding renewal
fees, issues an order restoring the patent to the register, but in so doing protects third party
rights in terms of section 48 of the Act.
INFRINGEMENT
Patent infringement is the commission of a prohibited act with respect to a patented invention
without permission from the patent holder. Permission may typically be granted in the form of
a license. The definition of patent infringement may vary by jurisdiction, but it typically includes
using or selling the patented invention. In many countries, a use is required to be commercial to
constitute patent infringement.
Patents are territorial, and infringement is only possible in a country where a patent is in force.
For example, if a patent is filed in the United States, then anyone in the United States is
prohibited from making, using, selling or importing the patented item, while people in other

25
countries may be free to make the patented item in their country. The scope of protection may
vary from country to country, because the patent is examined by the patent office in each
country or region and may have some difference of patentability, so that a granted patent is
difficult to enforce worldwide.
What constitutes a patent infringement?
A patent granted to a person bestows exclusive right to the person to make, distribute,
mortgage, or sell the invention. Patents are jurisdictional rights, and are therefore restricted to
a country that grants the patent. Patents are analogous to Real-estate property. Both grant
exclusive rights to the owner. Violation of the exclusive rights of a Real-estate property by
someone who unlawfully uses an area of the real-estate property is called .encroachment..
Similarly, an encroachment upon the invention patented by the owner is called "infringement".
Patent infringement is the unauthorized making, using, offering for sale, selling of any patented
invention within a jurisdiction, or importing into the jurisdiction of any patented invention
during the term of a patent. In India, Section 104 to section 114 of the Indian Patents Act 1970
provides guidelines relating to patent infringement.
Patent infringement occurs when a product infringes one or more patents. To determine patent
infringement, firstly a product or a process is analyzed and compared with all relevant patents
that may claim an invention similar to the product. Secondly, the product or the process is
scrutinized to see if the product or the process .reads on. one or more patents and is
substantially described by the claims of the one or more patents.
There are basic types of patent infringements:
Direct patent infringement
Direct patent infringement. is the most obvious and the most common form of patent
infringement. In the most basic definition, direct patent infringement occurs when a product
that is substantially close to a patented product or invention is marketed, sold, or used
commercially without permission from the owner of the patented product or invention.
Indirect patent infringement and contributory patent infringement
Indirect patent infringement. suggests that there was some amount of deceit or accidental
patent infringement in the incident. For e.g. a person A holds a patent for a device and a person
B manufactures a device which is substantially similar to the person A.s device. The person B is
supplied with a product from a Person C to facilitate manufacturing of the person B.s device. If
the device so manufactured by the person B infringes on the Person A.s patent, then the person

26
C indirectly infringes the Person A.s patent. Further, if such a product is knowingly sold or
supplied, it may lead to .contributory patent infringement.. For example, in the above example
if the person C knowingly supplies the product to the Person B then the infringement is
construed as .contributory patent infringement..
Detecting patent infringement
Determining patent infringement is very crucial for a company. A company may hold patents
and may have products and/or processes in the market which may be protected by these
patents. However, patenting an invention or a product is not the last stop. To reap complete
benefits of patent system, these patents should be enforced by the company. Thus, the
company should make sure that competitor’s products and/or processes are not infringing on
their patents and are not damaging the company’s revenues, market share, and market
position. The company should also make sure that none of its products and/or processes are
infringing patents granted to others. This is important because, in a scenario the company may
have a product and/or a process in the market which has breakthrough invention at its core and
generates a significant amount of revenues for the company. However, if that product infringes
on some patents, then the company may end up incurring significant financial losses in the
litigation process due to the infringement.
Therefore, it is always advisable to keep a tab on competitor’s patents and products. A direct
way to determine patent infringement is to keep a market watch for all products released in the
market in a particular technology domain, especially for competitors. All these products can
then be closely examined to determine what features of these products read onto the
inventions patented by a company. To facilitate this, the company can avail some patent
analytic services to create a patent portfolio for the company, especially, if the company has a
huge number of patents across various technological domains.
Secondly, the company should keep an eye on all the published patent applications of its
potential competitors. This can be done by doing a patent-watch in the technology area and for
the competitors to analyze patenting activity in last couple of years. The portfolios generated
using patent-watch help in anticipating the product that a competitor may be launching. A
comparison with the company’s patent portfolio may establish that some of these anticipated
products may infringe on one or more of its patents. This gives an early idea about competitor’s
moves and helps the company prepare in advance to take further appropriate action. For
example, to save litigation costs, the company may try to invalidate/oppose the patent/patent
publication before hand, so that the competitor never launches the product in question.

27
Steps to establish infringement
Having detected that one of the patents of the company might be infringed by a competitor’s
product or process, a detailed analysis should be performed to establish patent infringement.
The product or the process need not infringe all claims of a granted patent; in fact it is merely
enough even if the product or process in question is found to infringe even a single claim of the
granted patent.
To perform this analysis, a complete description of all products or processes of a competitor,

which will include all product brochures or promotional materials, web site pages, instructions
or directions for use, advertisements, and product packaging should be compared with patents
that are being infringed. The infringement analysis may be depicted in the form of a claim chart,
which highlights the features, of a competitor’s product or process that read onto one or more
claims of the patents granted to the company.
The usual strategy of a defendant will be to try to invalidate the patent in question and if the
defendant succeeds in invalidating the patent, then the litigation suit will have to be
withdrawn. Therefore, before filing a patent infringement suit, it is very essential to get an
invalidation search conducted for the patents to evaluate the strength of the patents. It is
advisable to establish validity of the patents before filing a patent infringement suit against a
competitor, because, if a competitor succeeds in invalidating the patents in question, the
company may incur significant legal costs and also market prestige, position, and market share
will be at stake.
Patent infringement disputes in India
Patent infringement disputes in India starts with a suit that a plaintiff files in the District Court,
which is followed by a reply to the suit by the defendant. Subsequently, a hearing is held as per
the Patent Rules 2003 in the District Court, taking into consideration evidences, scientific
expert’s testimony, statements of the witness etc. After considering the defenses put by
defendants the District Court decides the dispute and award the damages or prescribe the
penalties, provided the infringement is found. If any of the plaintiff and the defendant are not
satisfied, they can approach the High Court under Article 226/227 and further to the Supreme
Court under Article 32,133,136,or 142.
In India only High Courts have the power to deal with matter of both infringement and
invalidity simultaneously. A specialized forum, i.e., Intellectual Property Appellate Board (IPAB)
has now been established. Provisions related to IPAB were introduced into the Act in 2002 and

28
are enforced now. Also, all pending appeals from Indian High Courts under the Patents Act
were to be transferred to the IPAB from April 2, 2007. The IPAB has its headquarters at Chennai
and has sittings at Chennai, Mumbai, Delhi, Kolkata and Ahemdabad. The IPAB is the sole
authority to exercise the powers and adjudicate proceedings arising from an appeal against an
order or decision. Also, all the cases pertaining to revocation of patent other than a counter-
claim in a suit for infringement and rectification of register pending before the Indian High
Court shall be transferred to the IPAB. In case of a counter-claim in a suit for infringement, the
Indian High Court continues to be the competent authority to adjudicate on the matter. The
IPAB also has exclusive jurisdiction on matters related to revocation of patent and rectification
of register.
The IPAB in its sole discretion may either proceed with the appeals afresh or from the stage
where the proceedings were transferred to it.
PATENT CLAIM INFRINGEMENT
As described above, patent infringement may occur where the defendant has made, used, sold,
or imported in India any invention that has been patented in India.
In India, no infringement action may be started until a patent has been granted. In India, a right
to obtain provisional damages requires a patent holder to show the following:
(1)The infringing activities occurred after the patent application was published;
(2)The patented claims are substantially identical to features of the process or the product
infringing the patent; and
(3)The infringer had actual notice of the published patent application.
INJUNCTION
Injunction is as an equitable remedy in the form of a court order, whereby a party is required to
do, or to refrain from doing, certain acts. An injunction may be preliminary or permanent. A
preliminary injunction is a provisional remedy granted to restrain activity of a defendant on a
temporary basis until the Court can make a final decision after trial and a permanent injunction
is one which is granted after the trial. Preliminary (temporary or interim) injunction and
permanent injunction are provided under Order 39, Rule 1-2 of Code of Civil Procedure, 1908.
For the court to order an injunction, the plaintiff has to fulfill the following criteria:

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(1)Establish his case only at a prima facie level, i.e., the plaintiff has to show that he has some
possibility of success and that his claim is not vexatious;
(2)Demonstrate irreparable injury if a temporary injunction is not granted; and
(3)Demonstrate that the balance of convenience is in favor of the plaintiff (i.e. the plaintiff will
be more disadvantaged because of the non-grant of the injunction that the defendant will be
disadvantaged because of the grant of one).
PROCEDURE FOLLOWED BY JUDGES IN PATENT INFRINGEMENT CASES IN INDIA
In India judges of District Courts, High Courts and Supreme Court deal with patent infringement
cases. Described below are general methods used by Indian judges in deciding such type of
cases:
METHODS ON JUDICIAL PROCEDURE
(1)Concerned parties, plaintiff and defendant, are notified in advance of the judicial rights and
the judicial obligations they shall comply with during lawsuits.
(2) The parties are required to exchange the evidence before the trial begins. When the plaintiff
accuses the defendant of infringement, the plaintiff is responsible for providing the proof.
During trial, parties concerned are required to verify and cross-examine disputed facts and
evidences. If the defendant is accused of infringing a process patent, then reversal of burden of
proof is implemented. In other words, the party who is accused of infringement is responsible
for providing evidences for the manufacture process of such product.
(3) Either of the plaintiff and the defendant may appeal to the Appellate board against the
decision of the Controller and other matters within three months from the date of the decision.
(4) The plaintiff should bring the suit in the court within three years from the date of
infringement (which is called the limitation period). The limitation period for the suit starts
from the date of infringing act and not from the date of the grant of the patent. The limitation
period is defined by the Section 40 of the Indian Limitations Act,
(5) Section 77 of the Patents Act, 1970 confers powers of a Civil Court on the Controller in
following matters:
a. The Controller can summon and enforce the attendance of any person and examine him on
oath;

30
b. Every party is entitled to know the nature of his opponent’s case. The Controller can direct
and obtain the documents from plaintiff for handing it to defendant or vice versa;
c. The Controller can receive evidence on affidavits from the plaintiff or defendant;
d. During the proceeding of suit some people are exempted from appearing in person. In such
circumstances, the Controller is empowered to issue Commissions for the examination of
witnesses or documents;
e. The Controller can award costs which are reasonable with regard to all the circumstances of
the case;
f. The Controller can be requested to review his decision. This can be done by filling form 24
along with prescribed fee within one month from the date of decision;
g. The Controller can set aside an order passed in absence of any party at the hearing. However,
the affected party should make a request to set aside an order. This can be done by filing form
24 along with the prescribed fee within one month from the date of communication.
Facts finding and application of substantive law
(1)To make conclusions for infringement actions against patents, the courts generally adopt the
following steps:
a. The protection scope of patent right are determined;
b. Relevant technical characteristics of products which are accused of infringing the patent is
determined; and
c. The essential technical characteristics of the claims of the patent and that of the products
accused of infringement are compared.
(2) The Courts may apply the Estoppels Principle in patent litigation. In other words, during
prosecution, the contents abandoned by the patentee can no longer be used against the party
accused of infringement.
(3) To calculate the amount of compensation for losses due to patent infringement, the court
uses following methods:
a. The actual economic loss incurred to the patentee due to infringement is considered as the
amount of compensation against such a loss;

31
b. The total profit obtained by the infringer through infringement is regarded as the amount of
compensation against such a loss. The arithmetic formula could be expressed as: profit
obtained from each piece of infringed product X total number of infringed products sold =
infringement profit; and
c. A reasonable amount not less than the royalty of patent licensing is regarded as the amount
of compensation against such a loss.

32
PATENT CORPORATION TREATY

33
We will try to understand PCT in form of the question and answer.
Question - I have an invention. How can I protect it in several countries?
Answer - You have a few options. For example:
(a) You can file separate patent applications at the same time in all of the countries in which
you would like to protect your invention (for some countries, regional patents may be
available);
(b) You can file a patent application in a Paris Convention country (one of the Member States of
the Paris Convention for the Protection of Industrial Property), and then file separate patent
applications in other Paris Convention countries within 12 months from the filing date of that
first patent application, giving you the benefit in all those countries of the filing date of the first
application;
(c) You can file an application under the PCT, which is simpler, easier and more cost-effective
than either (a) or (b).
Question -What is the Patent Cooperation Treaty (PCT)?
Answer - The PCT is an international treaty, administered by the World Intellectual Property
Organization (WIPO), between more than 125 Paris Convention countries. The PCT makes it
possible to seek patent protection for an invention simultaneously in each of a large number of
countries by filing a single “international” patent application instead of filing several separate
national or regional patent applications. The granting of patents remains under the control of
the national or regional patent Offices in what is called the “national phase”. Briefly, an outline
of the PCT procedure includes the following steps:
Filing: you file an international application, complying with the PCT formality requirements, in
one language, and you pay one set of fees.
International Search: an “International Searching Authority (ISA)” (one of the world’s major
patent Office’s) identifies the published documents which may have an influence on whether
your invention is patentable and establishes an opinion on your invention’s potential
patentability.
International Publication: as soon as possible after the expiration of 18 months from the
earliest filing date, the content of your international application is disclosed to the world.

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International Preliminary Examination: an “International Preliminary Examining Authority

(IPEA)” (one of the world’s major patent Office’s), at your request, carries out an additional
patentability analysis, usually on an amended version of your application.
National Phase: after the end of the PCT procedure, you start to pursue the grant of your
patents directly before the national (or regional) patent Offices of the countries in which you
want to obtain them.
These steps in the PCT procedure are considered in more detail below.
Question -What is the effect of an international patent application?
Answer - In general terms, your international patent application, provided that it complies with
the minimum requirements for obtaining an international filing date (see PCT Article 11), has
the effect of a national patent application (and certain regional patent applications) in all PCT
Contracting States.
An international patent application must be prepared in accordance with certain formal

requirements set out in the Treaty and Regulations, which have become international standards
effective in all of the PCT Contracting States. If you comply with these requirements,
subsequent adaptation to varying national (or regional) formal requirements (and the cost
associated therewith) will not be necessary.
Question -Who has the right to file an international patent application under the PCT?
Answer - You are entitled to file an international patent application if you are a national or
resident of one of the PCT Contracting States. If there are several applicants named in the
international application, only one of them needs to comply with this requirement.
Question – Who has the right to file an international patent application under the PCT?
Answer You are entitled to file an international patent application if you are a national or
resident of one of the PCT Contracting States. If there are several applicants named in the
international application, only one of them needs to comply with this requirement.
Question - Where can I file my international patent application?
Answer- You can file an international patent application, in most cases, with your national
patent Office, or directly with WIPO if permitted by the national security provisions in your
national law. Both of those Offices act as PCT “receiving Offices”. If you are a national or
resident of a country which is party to the ARIPO Harare Protocol, the OAPI Bangui Agreement,

35
the Eurasian Patent Convention or the European Patent Convention, you may alternatively file
your international patent application with the regional patent Office concerned, if permitted by
the applicable national law.
Question- Can I file PCT applications electronically?
Answer - You can file PCT applications electronically with receiving Offices which accept such
filings. Full electronic filing is possible with the PCT receiving Office at WIPO. WIPO’s electronic
filing software, PCT-SAFE (“Secure Applications Filed Electronically”), which can be downloaded
from the PCT web site or obtained free of charge on a CD-ROM, helps PCT applicants to prepare
their international applications in electronic form and to file them either via secure on-line
transmission or on CD-R or diskette. While the data about the application is being entered, the
PCT-SAFE software validates the entered data and draws the applicant’s attention to incorrectly
or inconsistently completed parts. It is possible to attach the application text and drawings in
XML (eXtensible Markup Language) as well as in other electronic formats, such as PDF or TIFF
format (the file formats available depend on the receiving Office selected). Applicants who file
electronically are entitled to certain PCT fee reductions – the highest reductions are applicable
when the filing format is XML. More details about PCT electronic filing can be found at
www.wipo.int/pct-safe/en/.
Question- What are the costs associated with the filing and processing of an international
application under the PCT?
Answer - PCT applicants generally pay three types of fees with the filing of their international
applications: an international filing fee of 1,400 Swiss francs (the equivalent of approximately
1,100 US dollars depending on the applicable exchange rate), a search fee which can vary from
approximately 180 to 1,900 US dollars depending on the International Searching Authority
chosen, and a small transmittal fee which varies depending on the receiving Office. Because an
international patent application is effective in all PCT Contracting States, you do not incur, at
this stage in the procedure, the costs that would arise if you prepared and filed separate
applications for all of those States; you have to pay only a single set of fees for filing the
international patent application with the PCT receiving Office. These fees cover the filing,
searching and publication of the international patent application, and are payable in the
currency, or one of the currencies, accepted by the receiving Office. Further information about
PCT fees can be obtained from the receiving Offices, the PCT Applicant’s Guide and the PCT
Newsletter (see Question 26). The fees you will need to pay as you enter the national phase
represent the most significant pre-grant costs. They can include fees for translations of your
application, national (or regional) Office filing fees and fees for acquiring the services of local

36
patent agents. In several Offices, national filing fees are lower for international patent
applications than they are for direct national applications. You should also remember that in
the case of all granted patents, whether or not the PCT is used to obtain them, you will need to
pay maintenance fees in each country in order to keep the patents alive.
Question- Are there any fee reductions available under the PCT?
Answer- PCT fee reductions are available to applicants who file electronically, based on the
type of filing and the format of the application submitted (see Question 6). In addition, an
applicant who is a natural person and who is a national of and resides in a State whose per
capita national income is below 3,000 US dollars is entitled to a reduction of 75% of certain
fees, including the international filing fee. This same 75% reduction applies to any person,
whether a natural person or not, who is a national of and resides in a country classified by the
United Nations as a “least developed country”. If there are several applicants, each must satisfy
those criteria. For more details, including the list of the PCT Contracting States the nationals
and residents of which are eligible for such fee reductions, please refer to the PCT Applicant’s
Guide or contact the PCT Information Service (see Question 26).
Question- How long does the PCT process take?
Answer- You have, in most cases, 18 months from the time you file your international patent
application (or 30 months from the filing date of the initial patent application of which you
claim priority – see Question 10) before you have to begin the national phase procedures with
individual patent Offices. This means that you normally have at least 18 additional months
before you have to fulfill the national requirements (see Question 23) than if you do not use the
PCT.
This additional time can be useful for evaluating the chances of obtaining patents and exploiting
your invention commercially in the countries in which you plan to pursue patent protection,
and for assessing both the technical value of your invention and the continued need for
protection in those countries. It is important to note, however, that you don’t have to wait for
the expiration of 30 months from the earliest filing date of your patent application (“priority
date”) before you enter the national phase – you can always request an early entry into the
national phase (see PCT Articles 23(2) and 40(2)). In the national phase, each patent Office is
responsible for examining your application in accordance with national or regional patent laws,
regulations and practices resulting in, if all things are favorable, the grant of a patent. The time
required for the examination and grant of a patent varies across patent Offices.
Question- Can priority of an earlier patent application be claimed?

37
Answer- Generally, patent applicants who wish to protect their invention in more than one
country first file a national or regional patent application with their national or regional patent
Office, and within 12 months from the filing date of that first application (a time limit set in the
Paris Convention for the Protection of Industrial Property), they file their international
application, under the PCT. Thus, in an international patent application, you may claim the
priority, under the Paris Convention – and to a certain extent within the framework of the
World Trade Organization –, of one or more earlier patent applications for the same invention,
whether they were national, regional or international applications, for up to 12 months after
the filing of the earliest of those applications. If you do not claim priority of an earlier
application, the priority date for the purposes of the PCT procedure will be the international
filing date of the international application. During the PCT procedure, priority claims can be
added and corrected, within certain time limits.
Question- In what languages can an international patent application be filed?
Answer- In general, an international patent application can be filed in any language which the
receiving Office accepts. If you file your application in a language which is not accepted by the
International Searching Authority that is to carry out the international search, you will be
required to furnish a translation of the application for the purposes of international search.
Receiving Offices are, however, obliged to accept filings in at least one language which is both a
language accepted by the competent International Searching Authority that is to carry out the
international search and a “publication language”, that is, one of the languages in which
international patent applications are published (Chinese, English, French, German, Japanese,
Russian and Spanish). You therefore always have the option of filing your international patent
application in at least one language from which no translation is required for either PCT
international search or publication purposes.
Question- Who will carry out the international search of my PCT application?
Answer- The following have been appointed by the PCT Contracting States as International
Searching Authorities (ISAs): the national Offices of Australia, Austria, Canada, China, Finland,
Japan, the Republic of Korea, the Russian Federation, Spain, Sweden and the United States of
America, and the European Patent Office. The availability of a particular ISA to the nationals or
residents of a country is determined by the receiving Office where the international application
was filed. Some receiving Offices provide a choice of more than one competent ISA. If your
receiving Office is one of those, you can choose any one of them, taking into account differing
requirements relating to language, fees, etc.
Question- What is a PCT international search?

38
Answer- A PCT international search is a high quality search of the relevant patent documents
and other technical literature in those languages in which most patent applications are filed
(that is, English, French and German, and in certain cases, Chinese, Japanese, Russian and
Spanish, and from April 1, 2007, Korean). The high quality of the search is assured by the
standards prescribed in the PCT for the documentation to be consulted, and by the qualified
staff and uniform search methods of the ISAs, which are all experienced patent Offices. The
international search is carried out in accordance with the International Search and Preliminary
Examination Guidelines and results in an international search report and a written opinion of
the ISA on the potential patentability of your invention.
Question- What is an international search report?
Answer- The international search report consists mainly of a listing of references to published
patent documents and technical journal articles which might affect the patentability of the
invention claimed in the international application. The report contains indications for each of
the documents listed as to their possible relevance to the critical patentability questions of
novelty and inventive step (non-obviousness). Together with the search report, the ISA
prepares a written opinion on patentability, which will give you a detailed analysis of the
potential patentability of your invention. The international search report and the written
opinion are to be communicated by the ISA to you by the fourth or fifth month after the filing
of the international patent application.
Question- What is the value of the international search report?
Answer- The report enables you to evaluate your chances of obtaining patents in PCT
Contracting States. An international search report which is favorable, that is, in which the
documents cited would appear not to prevent the grant of a patent, assists you in the further
processing of your application in those countries in which you wish to obtain protection. If a
search report is unfavorable (for example, if it lists documents which challenge the novelty
and/or inventive step of your invention), you have the opportunity to amend the claims in your
international patent application (to better distinguish your invention from those documents),
and have them published, or to withdraw the application before it is published. The high quality
of the international search assures you that any patent granted from an international
application is less likely to be successfully challenged, and thus provides valuable input in
support of investment decisions.
Question- What is the written opinion of the International Searching Authority?

39
Answer- For every international application filed on or after 1 January 2004, the ISA will
establish, at the same time that it establishes the international search report, a written opinion
which is a preliminary and non-binding opinion on whether the invention appears to meet the
patentability criteria in light of the search report results. That opinion is sent to you and to
WIPO together with the international search report. The written opinion helps you understand
and interpret the results of the search report with specific reference to the text of your
international application, being of special help to you where you want to evaluate your chances
of obtaining a patent without incurring the additional cost of international preliminary
examination. Applicants can, if they wish, submit informal comments to WIPO in response to
this written opinion; in this way, they have an opportunity to respond to the reasoning and
conclusions of the written opinion even if they do not plan to take advantage of international
preliminary examination. If you do not request international preliminary examination, the
written opinion of the ISA will form the basis of the international preliminary report on
patentability (IPRP (Chapter I)) which will be communicated by the International Bureau to all
PCT Contracting States patent Offices which request it, together with any informal comments
submitted. However, if you do request international preliminary examination, the written
opinion of the ISA will, in general, be used by the International Preliminary Examining Authority
(IPEA) as its own first written opinion, unless the IPEA notifies WIPO to the contrary. The
content of the IPRP (Chapter I) will also be very useful for patent Offices in deciding whether or
not to grant the patent, especially for those Offices which do not carry out significant
substantive examination. This report is made available to the public once 30 months from the
priority date have expired.
Question- What does international publication under the PCT consist of?
Answers- WIPO publishes the international application shortly after the expiration of 18
months from the priority date (if it has not been withdrawn earlier), together with the
international search report. You receive a copy of the published international application, and
each PCT Contracting State receives a copy of all published international applications. In
addition, WIPO publishes the weekly PCT Gazette which contains basic data about the
international applications published that week in a uniform and abbreviated format. The
Gazette can be found at www.wipo.int/pct/en/gazette/index.jsp – it is searchable (by
bibliographic data, text of the title and abstract, and by full text soon after publication), and the
interface is multilingual (English, French, Spanish).
Question- What is international preliminary examination?

40
Answer- International preliminary examination is a second evaluation of the potential

patentability of the invention, using the same standards on which the written opinion of the ISA
was based. If you wish to make amendments to your international application in order to
overcome documents identified in the search report and conclusions made in the written
opinion of the ISA, international preliminary examination provides the only possibility to
actively participate in the examination process and potentially influence the findings of the
examiner before entering the national phase – you can submit amendments and arguments,
and are entitled to an interview with the examiner. At the end of the procedure, an
international preliminary report on patentability (IPRP Chapter II) will be issued. The
International Preliminary Examining Authorities (IPEAs) which carry out the international
preliminary examination are the International Searching Authorities. For a given international
patent application, there may be one or more competent IPEAs; your PCT receiving Office can
supply details or you may consult the PCT Applicant’s Guide and the PCT Newsletter.
Question- What is the value of the international preliminary report on patentability (Chapter
II)?
Answer- The IPRP (Chapter II) which is provided to you, with copies also being sent to WIPO
and by WIPO on to the patent Offices of the Contracting States which request it, consists of an
opinion on the compliance with the international patentability criteria of each of the claims
which have been searched. It provides you with an even stronger basis on which to evaluate
your chances of obtaining patents, and, if the report is favorable, a stronger basis on which to
continue with your application before the national and regional patent Offices. The decision on
the granting of a patent remains the responsibility of each of the national or regional Offices in
which you enter the national phase; the international preliminary examination report should be
considered by the Offices but is not binding on them.
Question- What is the role of WIPO in the PCT?
Answer- For each PCT application filed, WIPO is responsible for:
 receiving and storing all application documents;

 performing a formalities examination;
 publishing the application;
 publishing the PCT Gazette (data about the application);
 translating various portions of the PCT application and certain associated documents
into English and/or French, where necessary;
 communicating documents to Offices and third parties; and
 providing legal advice on request to Offices and users.

41
WIPO also:
 provides a framework for overall coordination of the PCT system;

 provides assistance to existing, new and potential Contracting States and their Offices;
 provides advice on implementing the PCT in the national legislation and on setting up
internal procedures in the Contracting States’ patent Offices;
 publishes the PCT Applicant’s Guide and the PCT Newsletter;
 creates and disseminates PCT information via the PCT web site, paper publications and
through telephone and e-mail assistance;
 organizes and gives PCT seminars and training courses.
Question- Who uses the PCT?
Answer- The PCT is used by the world’s major corporations, research institutions and
universities, when they seek international patent protection. And it is likewise used by small
and medium-sized enterprises and individual inventors. The PCT Newsletter (see
www.wipo.int/pct/en/newslett/index.jsp) contains a yearly list of the largest PCT filers. Such as
Philips, Siemens, Matsushita, Sony, Nokia, Motorola, 3M, Intel, Procter & Gamble, Du Pont,
Mitsubishi and the University of California.
Question- Can third parties access documents contained in the file of the international patent
application? If so, when?
Answer- Until international publication (18 months after the priority date), no third party is
allowed access to your international patent application unless you request or authorize it. If you
wish to withdraw your application (and you do so before international publication),
international publication does not take place and, as a consequence, no access by third parties
is permitted. However, where international publication occurs, certain documents in the
international application file are made available electronically together with the published
international application and third parties can request copies of most other documents
contained in the file of the international application; such requests may be made either to
WIPO or the national or regional Offices, depending on the document concerned. Under certain
conditions, third parties can also have access to the written opinion established by the
International Searching Authority, including any informal comments submitted by the applicant,
and to the international preliminary examination report.
Question- How do I enter the national phase?

42
Answer- It is only after you have decided whether, and in respect of which States, you wish to
proceed further with your international application that you must fulfill the requirements for
entry into the national phase. These requirements include paying national fees and, in some
cases, filing translations of the application. These steps must be taken, in relation to the
majority of PCT Contracting States’ patent Offices, before the end of the 30th month from the
priority date. There may also be other requirements in connection with the entry into the
national phase – for example, the appointment of local agents. More information on national
phase entry in general can be found in Volume II of the PCT Applicant’s Guide, and specific
information concerning fees and national requirements can be found in the national chapters
for each PCT Contracting State in the same Guide.
Question- What happens to my application in the national phase?
Answer- Once you have entered the national phase, the national or regional patent Offices
concerned begin the process of determining whether they will grant you a patent. Any
examination these Offices may undertake should be made easier by the PCT international
search report and the written opinion, which enable you to make necessary amendments to the
claims in the application even before the national procedure starts. It is facilitated even more
by the international preliminary examination procedure during which further amendments (and
their patentability evaluation) are possible. You also achieve other savings in communications,
postage and translations because the work done during the international processing is
generally not repeated before each Office (for example, you submit only one copy of the
priority document instead of having to submit several copies).
Question- What are the advantages of the Patent Cooperation Treaty?
Answer- The procedure under the PCT has great advantages for you as an applicant, for the
patent Offices and for the general public:
 you have up to 18 months more than if you had not used the PCT to reflect on the
desirability of seeking protection in foreign countries, to appoint local patent agents in
each foreign country, to prepare the necessary translations and to pay the national fees;
 you can rest assured that, if your international application is in the form prescribed by
the PCT, it cannot be rejected on formal grounds by any PCT Contracting State patent
Office during the national phase of the processing of the application;
 on the basis of the international search report and the written opinion, you can evaluate
with reasonable probability the chances of your invention being patented;

43
 you have the possibility during the optional international preliminary examination to
amend the international application and thus put it in order before processing by the
various patent Offices;
 the search and examination work of patent Offices can be considerably reduced or
eliminated thanks to the international search report, the written opinion and, where
applicable, the international preliminary report on patentability that accompany the
international application;
 since each international application is published together with an international search
report, third parties are in a better position to formulate a well-founded opinion about
the potential patentability of the claimed invention; and
 for you as an applicant, international publication puts the world on notice of your
application, which can be an effective means of advertising and looking for potential
licensees.
Ultimately, the PCT:
 brings the world within reach;

 postpones the major costs associated with international patent protection;
 provides a strong basis for patenting decisions; and
 is used by the world’s major corporations, research institutions and universities when
they seek international patent protection.

44
US PATENT SYSTEM

45
There are several main sources of laws-
1. Title 35 of the United States Code. These are the broad based laws enacted by Congress
that guide the PTO in enacting more detailed laws governing patent prosecution. They
are sometimes referred to as the Patent Laws. You can find the patent laws on the PTO
website at: www.uspto.gov/web/offices/pac/mpep/patlaws1214.pdf
2. Title 37 of the Code of Federal Regulations. These are often referred to as the Patent
Rules and are somewhat more detailed than the patent laws. These rules can be found
on the PTO website at: www.uspto.gov/web/offices/pac/mpep/patrules0322201.pdf
3. Manual of Patent Examining Procedure. This is referred to as the “MPEP” for short and
is a detailed rule book that you will inevitably consult as you prosecute your application.
This is, in effect, the bible of the PTO. If your examiner needs guidance, he or she will
consult the MPEP. Therefore, it also makes sense for you to consult the MPEP. The
MPEP can be found online at: www.uspto.gov/web/offices/pac/mpep/mpep.htm
The most significant benefit of a U.S. Patent is that it will give you the right to exclude others
from making, using, selling, or offering for sale or importing your invention within the United
States, its territories, and possessions.
TYPES OF AVAILABLE PATENTS
UTILITY PATENT
There are three types of patents that you can obtain from the PTO. The first and most common
patent is called a utility patent. A utility patent protects the way an article is used and works.
(U.S.C.,Title 35, Sec. 101.) A utility patent is the most common type of patent. Unless otherwise
noted, the chapters of this book are written on the assumption that you are interested in
preparing a utility patent.
DESIGN PATENT
The second type of patent you can obtain is called a design patent. A design patent protects the
way an article looks. By and large, most of what applies to utility patents in this book will also
be applicable to design patents.
PLANT PATENT
The last type of patent you can obtain is called a plant patent, which, as the name suggests,
protects the discovery of new varieties of plants.

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WHAT IS PATENTABLE
There are four categories of inventions that Congress deemed to be the appropriate subject
matter of a patent: processes, machines, manufactures and compositions of matter. (U.S.C.,
Title 35, Sec. 101.)
Process means a process, art, or method, and includes a new use of a known process, machine,
manufacture, composition of matter, or material. Process inventions consist of a series of steps
or acts to be performed, namely a model of treating certain materials to produce a given result.
It is an act, or a series of acts, performed upon the subject matter to be transformed and
reduced to a different state or thing. A process requires that certain things be done with certain
substances, and in a certain order.
Example: If you were to develop a new business method for allowing mutual funds to pool their
assets, you could seek a patent for this process.
A machine is defined as a concrete thing consisting of parts or certain devices and combination
of devices. Examples of machines include cars, telephones, and computers.
A manufacture is the production of useful articles from raw or prepared materials by giving to
these materials new forms, qualities, properties, or combinations. This category is sometimes
also referred to as an article of manufacture. Examples include such things as desks, cabinets,
and screwdrivers. You can distinguish an article of manufacture from a machine because
manufactures do not have working parts as their primary feature.
A composition of matter is a composition of two or more substances and all composite articles,
whether they be the results of chemical union, mechanical mixture, or whether they be gases.
In biotechnology, composition of matter includes chemical structures and formulations of
drugs, genes, and proteins.
WHAT IS NOT PATENTABLE
While the Supreme Court stated that “anything under the sun that is made by man is
patentable,” this famous quotation does have limits. First, the United States Code requires that
the subject matter sought to be patented be a “useful” invention. (U.S.C., Title 35, Sec. 101.)
Second, you cannot patent things that you find as they exist in nature. For example, if you
discovered a new mineral in the earth, you would not be able to patent the mineral unless you
made some type of alteration to it (such as by genetic engineering.) Similarly, while you would
not be able to obtain protection on a new, naturally occurring protein or chemical compound, a
patent could be obtained on purified forms of the protein or chemical compound. This is the

47
reason that in patents to such compositions you will see words like “a purified,” “an isolated,”
“a substantially pure,” or “a biologically pure” product or compound to distinguish them from
naturally occurring, non-statutory subject matter.
Akin to not being able to patent things that exist in nature, courts have also held that you
cannot patent ideas, laws of nature, and natural phenomena. Thus, scientific ideas like
Einstein’s E=mc2 would not be patentable, nor would Newton’s law of gravity. However, while
the idea itself is not patentable, a new device by which it may be made practically useful would
be.
Printed matter per se is not proper subject matter for protection by patent. An exception exists,
however, where the printed matter has physical significance and is incorporated appropriately
into a claim. For example, layout marks on a headband or physical demarcations on magnetic
storage media have been held to constitute statutory subject matter.
REQUIREMENTS OF PATENTIABILITY
1. novelty;
2. obviousness;
3. written description requirement;
4. enablement;
5. best mode; and,
6. utility.
NOVELTY
As the name suggests, novelty has to do with whether your invention is new. If your invention is
an old concept, then it makes sense that the government will not give you an exclusive
monopoly in the form of a patent. This is because patents are granted to inventors in return for
the exchange of new information that can advance the technological body of knowledge in this
country. The government is not interested in giving away patents in exchange for information
that is already known.
If all else fails, you can think of novelty as requiring that your invention must not have been
known before. However, as you will learn, patent law is much more specific about what this
term means. You will be at an advantage if you can start thinking about this in terms of patent
law.
Under patent law, novelty requires two things:

48
 prior art and

 anticipation of your invention by that prior art.
Prior art can include printed material like patents and publications, or it can include things
like public knowledge and use or sale of your invention. Prior art can be a patent or
publication that discusses an invention similar or related to yours. It also can be general
public knowledge, public use, or public sale of such an invention.
Lack of novelty is when such prior art anticipates your invention.For example, if your
invention is a table, you might have one claim that claims the table with legs and a top. In
such a case, you are claiming a table made up of legs and a top. The legs and top are said to
be "elements" or "limitations" of your claim because they are the features that you list in
your claim. If you were to have a second claim to the table having legs, top, and an enamel
surface, then this claim would have an additional limitation—the enamel surface.
You look at claims individually for anticipation purposes. A claim is anticipated only if each
and every element as set forth in your claim is found, either expressly or inherently, in a
prior art reference. In other words, anticipation requires that a piece of prior art (a patent,
publication, sale, or use) disclose each and every limitation of your claimed invention. The
invention described by the prior art must be shown in as complete detail as is contained in
your claim.
Although the elements must be arranged as required by your claim, identical terminology is
not required. (MPEP Sec. 2131.)
It is permissible for your examiner to find that a prior art reference inherently discloses an
element of your claim, even though the disclosure does not come right out and explicitly
state the element. To do this your examiner must provide a basis in fact and/or technical
reasoning to reasonably support his or her decision.
In considering whether your claims are anticipated and therefore invalidated by prior art, it
is helpful to develop a claim chart. In a claim chart, you make two columns, one for the
invention as described in your patent claim and one for the reference you are considering.
When you write the claim in the left column, you divide it into its "elements" or
"limitations." On the right side of your chart, you can list the elements that are disclosed in
your prior art reference. If your claim reads on the prior art in that it contains all of the
elements disclosed in the prior art reference, it is invalid. Reading on means that there is a
1:1 correspondence between the items in the two columns of the chart.

49
If you uncover a prior art reference that has a 1:1 correspondence with your claimed invention,
you will need to think of an element to add to your claimed invention that is not contained in
the prior art reference in order to differentiate your claimed invention and thereby negate such
anticipation. If you find it impossible to this, then your invention is not patentable the way it is.
You will therefore want to reconsider whether you should even try to obtain a patent on it at
this point in time.
OBVIOUSNESS
In addition to a lack of novelty discussed above, a claimed invention is unpatentable if the

differences between your claimed invention and the prior art are such that the subject matter
as a whole would have been obvious, at the time your invention was made to a person having
ordinary skill in the art (a person skilled in your field). In short, the PTO can take anything that
qualifies as prior art, combine it with any other prior art, and then reject your claimed invention
on the basis that it is an obvious invention—even though neither one of such references alone
would anticipate your invention.
WRITTEN DESCRIPTION REQUIREMENT
The written description requirement is the first of three requirements under the first paragraph
of U.S.C. Title 35, Sec. 112. The second and third requirements, "enablement" and "best mode"
will be discussed in the next two sections.
The written description requirement prevents you from claiming subject matter that was not
described in your patent application as filed. In fact, it prevents you from doing anything to
your claims of your patent application that are not supported by your written description in
your application as you file it.
The essential goal of the written description requirement is to clearly convey the subject matter
that you have invented. The requirement for an adequate disclosure ensures that the public
receives something in return for the exclusionary rights that are granted to you by a patent.
The government will give you a patent, but in return, wants you to disclose your invention to
the public. This disclosure will add to the scientific body of knowledge that will advance
technology.
ENABLEMENT
Enablement is another requirement, and becomes an issue in more unpredictable fields like
biology and chemistry. The test for enablement is whether one skilled in your art would be able
to practice your claimed invention without an undue amount of experimentation. The state of

50
the art that is considered is based on the art as it exists at the time you file your application.
The fact that the state of art latter changes so that one is enabled to practice your invention
does not eliminate this rejection if one skilled in your art was not enabled to practice your
invention at the time your application was filed.
For some types of inventions, particularly computer-related inventions, it is not unusual for the
claimed invention to involve more than one field of technology. For such inventions, the
disclosure must satisfy the enablement standard for each aspect of the invention.
Example: To enable a claim to a programmed computer that determines and displays the three-
dimensional structure of a chemical compound, the disclosure must enable a person skilled in
the art of molecular modeling to understand and practice the underlying molecular modeling
processes. The disclosure must also enable a person skilled in the art of computer programming
to create a program that directs a computer to create and display the image representing the
three dimensional structure of the compound.
As long as your specification discloses at least one method for making and using your claimed
invention that bears a reasonable correlation to the entire scope of your claim, then the
enablement requirement is satisfied.
There are many factors that are considered when determining whether there is sufficient
evidence to support a determination that a disclosure does not satisfy the enablement
requirement and whether any necessary experimentation is "undue." These factors include, but
are not limited to:
The breadth of your claims. If your claims are narrow in scope, then it will be easier to satisfy
the enablement requirement. This is because it is more likely that someone can practice your
narrowly-defined invention without undue experimentation.
The nature of your invention. This is the subject matter to which your claimed invention
pertains. The nature of your invention will become a backdrop to determine the state of the art
and the level of skill possessed by one skilled in your art.
The state of the prior art. This is what one skilled in your art would have known, at the time you
filed your application, about the subject matter to which your claimed invention pertains. The
state of the prior art will provide evidence for the degree of predictability in the art.
The level of one of ordinary skill. This refers to the skill of those in your art in relation to the
subject matter to which your claimed invention pertains.

51
The level of predictability in the art. The more predictability in you art, the more likely it is that
someone can practice your invention without undue experimentation. If one skilled in the art
can readily anticipate the effect of changes within your invention’s field or subject matter, then
there is predictability in the art.
BEST MODE
The best mode requirement is the third requirement of The United States Code. (U.S.C.Title 35,
Sec. 112 (1).) The best mode requirement does not permit inventors to disclose only what they
know to be their second-best embodiment, while retaining the best for themselves. In other
words, if you know of a preferred way of using and making your invention, you cannot conceal
this from the public by leaving it out of your patent application.
There are two factual inquiries to be made in determining whether a specification satisfies the
best mode requirement. First, there must be a subjective determination as to whether at the
time your application was filed, you knew of the best mode of practicing your invention.
Second, there must be an objective determination as to whether the best mode was disclosed
in sufficient detail to allow one skilled in the art to practice it.
UTILITY
Utility is a patentability requirement that makes sure your claimed invention has an actual real-
world use. In most cases, this will not be a concern to you as most novel inventions are useful
to someone in this world. However, utility becomes an issue in the less predictable arts.
Consider biotechnology as an example where this requirement has barred applicants. You may
have heard in the news that the PTO has been using this as a bar to patentability to many
applicants who are trying to claim naked DNA sequences that have no known function. In the
past, companies would present DNA sequences of human genes in order to exclude others from
using those genes in the market place. The thing that stirred up the public was that the
companies did not even know anything about those sequences. It is much harder or impossible
to do this now and even those past patents claiming such naked sequences may be invalid
based on lack of utility.
Some types of inventions that plainly lack utility are inventions that do not operate to produce
the results claimed. Such inventions are called inoperative and if an invention does not work, it
cannot be said to have any utility. These cases are rare, however, and usually revolve around
inventions that are incredible, such as speculative claims that some uncharacterized
composition cures a wide range of cancers. The PTO may establish a reason to doubt your

52
asserted utility when the written description suggest(s) an inherently unbelievable undertaking
or involve(s) implausible scientific principles.
PARTS OF YOUR APPLICATION
The recommended ordering of your application is stated at C.F.R.,Title 37, Sec. 1.77(a) and is
also stated in the MPEP at Sec. 601 and Sec. 608.01(a). According to these sections, your
application should include the following parts:
 utility application transmittal form;

 fee transmittal form;
 application data sheet;
 specification;
 drawings; and,
 executed oath or declaration.
As provided by C.F.R., Title 37, Sec. 1.77(a), your specification consists of the following parts
in the following order:
 title of the invention;

 cross-reference to related applications;
 statement regarding federally sponsored research or development;
 reference to a “sequence listing”, a table, or a computer program listing appendix on a
compact disc and an incorporation by reference of the material on the compact disc;
 background of your invention which includes both
• the field of your invention and
• a description of related art;
 brief summary of your invention;
 brief description of the several views of your drawings;
 detailed description of your invention;
 claim(s) that must commence on a separate sheet (see Chapter 5);
 abstract; and,
 DNA sequence listing (only applicable to biotechnology invention)
After you have submitted your patent application, it is received by the Mail Room and stamped
with a provisional serial number and the current date. This will become the official filing date of
the application. The application is then forwarded to the Office of Initial Patent Examination
(OIPE) of the PTO to confirm that it contains all the necessary parts.

53
Your application is then sent to the Licensing and Review Branch that determines whether it is a
candidate for a secrecy order or whether it is drafted to certain subject matter, such as nuclear
materials. Your application is then assigned to a group art unit. A filing receipt identifying the
inventors, the title of the invention, the serial number and the filing date is issued to you by the
Applications branch.
After you file your patent application, your application will be examined and you will receive
back your first office action. Past data shows that the PTO needed an average of 13.5 months in
1999 to take its first office action on 81 percent of applications (see the New York Times,
December 31, 2001, page C4 for this data).
The first office action that you receive will either allow your claims or, more typically, reject
some or all of your claims.
After an office action, you as the applicant or patent owner must request reconsideration by
your examiner with or without an amendment if your action is adverse in any respect. In most
cases you will present your reply in the form of an amendment. (The specifics of drafting an
amendment appear later in this chapter.)
Whether you submit arguments or an amendment as your reply, you must distinctly and
specifically point out the supposed errors in your examiner’s action. You must respond to every
ground of objection and rejection in the action.
You must also point out the specific distinctions you believe renders your claims patentable
over any references that your examiner is applying against you. For example, if the issue
surrounding your rejected claims is novelty, then you must point out the patentable novelty of
your amended claims in the “Remarks” section of your amendment. A general allegation that
your claims are patentable without specifically pointing out why is not a sufficient reply. (MPEP
Sec. 714.02.)
You should also point out the justification behind any amendments that you have made to your
specification. In other words, you should point out that any changes you have made are
supported by your original disclosure as filed (i.e., do not constitute new matter).
By statute, you are given up to six months to respond to any action that the PTO sends you. This
is an absolute cut-off period and cannot be altered by the PTO. This means that even if you can
buy another extension of time, you will not be able to use such extension to avoid
abandonment of your application if it means that your response is after six months from the
mailing date of your office action.

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The PTO typically sets a three-month period to respond to your office action, unless the action
relates to a preliminary matter. If this is the case, the PTO typically gives you only one month to
respond. This three-month time period to respond is often called a shortened statutory period.
It is called shortened because as stated above, a statute sets a longer six-month absolute cut-
off period to respond to actions from the PTO. However, this same statute gives the PTO the
right to set shorter time periods that the PTO has done. Your action will tell you the shortened
statutory period that the PTO has set for response to your action.
Just keep in mind, however, that even though you may be able to buy more months, you can
never respond later than six months. The actual time it takes you to reply to your office action
is calculated from the date stamped or printed on your office action to the PTO’s date of receipt
(or, if you use Express Mail, the date of deposit with the post office).
When the PTO says that you have three months to respond to an action, this time period is
calculated by months. The PTO does not take into account fractions of a day, unless it has given
you one month to respond. Then you are given at least thirty days to send in your response.
When the last day that you have to respond to an action falls on a Saturday, Sunday, or Federal
holiday, the time period that you can file your response is can file your response is extended to
the next business day that the PTO is open for business. This rule does not, however, apply
when you are using an extension of time. This is a lot to remember, but if you file your
responses at least several days before the due date, you will not have to worry about whether
you are filing your response on the absolute cut-off date.
If you fail to reply to an office action or fail to file a complete and proper reply within the fixed
statutory period, then your application becomes abandoned. An abandoned application dies
and it can no longer issue into a patent unless you are able to win a petition to revive your
application. If you cannot revive your application, your only alternative is to pay a new filing fee
and file a new patent application for your invention. This can be a fatal course of action because
your priority date will now be the date that you file your subsequent patent application. Any
prior art that exists before this date could prevent you from obtaining a patent on your
invention. Your examiner is authorized to accept a timely reply by you to a non-final office
action that is made in good faith and is substantially complete except for an inadvertent
omission. (C.F.R., Title 37, Sec. 1.135 (c).) Such inadvertent omissions include unsigned
amendments or amendments that present additional claims but do not include the fees
necessary for such claims. In such circumstances, your examiner may consider your reply
adequate to avoid abandonment and give you a shortened statutory time period of one month
to correct your omission.

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By far the most frequent ground of rejection is on the ground of un patentability in view of the
prior art. In other words, your claimed subject matter is either not novel or it is obvious based
on prior art references. (U.S.C., Title 35, Secs. 102 and 103.)
In a proper prior art rejection, your examiner must identify and communicate to you a reason,
based in law, why your claimed subject matter fails to satisfy the novelty and non-obviousness
requirements. If the PTO succeeds, the burden shifts to you to rebut, or knock down, the
examiner’s case. You cannot achieve allowance for your rejected claims without coming
forward with evidence to rebut his or her case. The only exception to this rule is where you can
point to sufficient evidence of patentability in the existing prosecution record.
United States Code Title 35, Section 102(a)
A person shall be entitled to a patent unless (a) the invention was known or used by others in
this country, or patented or described in a printed publication in this or a foreign country,
before the invention thereof by the applicant for a patent.
You will see the above statement if the PTO is rejecting one or more of your claims on the basis
of U.S.C., Title 35, Sec. 102(a). The third and fourth categories, (3) a patent obtained or (4) a
printed publication describing all of the aspects of your claimed invention, can occur anywhere
in the world.
You have the following options to choose from in overcoming a Sec. 102(a) rejection.
 Argue that your claims are distinguishable from the reference(s) being used by the PTO
to reject your claim(s). This is true because even if an act or document constitutes prior
art under Sec.102, it will not bar patentability of your claim(s) unless it anticipates your
claim(s). As we have previously discussed, anticipation only occurs if the prior art
reference teaching each and every element of your claim(s). If you are successful in
arguing that the reference does not anticipate your claims (because it is
distinguishable), you will have removed that reference as a 102(a) prior art bar to the
patentability of your invention.
 Amend your claims (as discussed in Chapter 10) so that they are distinguished from the
prior art reference(s). This is really the same means to overcoming a Sec. 102(a) prior art
rejection as just discussed, except that here you actually make changes to your claims so
as to negate anticipation. Again, this can be used with any of the prior art rejections you
will encounter. File an affidavit or declaration that shows that your invention was made
prior to the effective date of the reference being applied against you by the examiner.
(C.F.R., Title 37, Sec. 1.131.)

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A Rule 131 Affidavit is sometimes referred to as swearing back of a reference which your
examiner is using against you. In other words, a Rule 131 Affidavit/Declaration supports the
proposition that your claimed invention was made before the date on which your cited
reference became prior art under one of the categories discussed above. There are three ways
that you can use to establish that your invention was made prior to the effective date of your
prior art reference.
First, you can show that your invention was put to actual practice (“reduction to practice”) prior
to the effective date of your reference.
Second, you are also allowed to show that you conceived your invention prior to the effective
date (even without actual reduction to practice of your invention prior to the effective date of
your cited reference). As long as you also show that you took steps with due diligence to reduce
your invention to practice prior to the effective date of the cited prior art reference, it is not
absolutely essential that you show you have reduced to practice your invention before the
effective date of the prior art reference.
Third, you can show conception of your invention before the effective date of the reference
coupled with due diligence from before to the reference date up to the filing of your application
(constructive reduction to practice). This is the same way as discussed in the second option
above, except here you are considered to have constructively reduced to practice your
invention when you file your application.
Reduction to practice may be either actual or constructive. Actual reduction requires that the
invention is reduced to a physical or tangible form. Actual reduction for a process requires
successful performance of the process. For a machine, actual reduction requires that the
machine be assembled, adjusted, and used. For a manufacture, the article must be completely
manufactured. For a composition, the matter must be completely composed. Constructive
reduction is the filing of a patent application.
Example: Sally conceived of an invention on June 8, 1998, but did not start to take any actions
in reducing her invention to practice (no reasonable diligence) until June 7, 1999. Just after this
day on June 8, 1999, Molly claimed to invent the same invention and reduced it to practice on
September 1, 1999. Even if Sally reduces the invention to practice on October 1, 1999, she is
awarded priority since she took reasonable diligence to reduce the invention to practice prior
to Molly’s conception. However, if Sally had not taken this reasonable diligence prior to Molly’s
conception, the results would be the reverse.

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The essential thing is that you show priority of your invention. This may be done by any
satisfactory evidence of the facts. Facts, not conclusions, must be alleged in your declaration. A
general allegation that your invention was completed prior to the date of your cited reference
is not sufficient. You need factual evidence.
The allegations of fact might be supported by submitting as evidence one or more of the
following:
 attached sketches;
 attached blueprints;
 attached photographs;
 attached reproductions of notebook entries;
Finally, you and any other co-inventor(s) must sign your declaration. Another thing to note
is that in establishing the date of your invention, you cannot only rely on inventive acts in
the U.S., but also acts in a NAFTA country (Mexico or Canada) on or after December 8, 1993,
and in a WTO country on or after January 1, 1996.
File an affidavit or declaration under C.F.R., Title 37, Section 1.132 showing that the prior art
reference is by you and not by another person. Even when published within the year
preceding the filing date of your application, inventor authored publications may constitute
prior art against your claims if the authors of the publication and the inventors of your
application overlap but do not completely correspond. In such a case the publication is
considered the work of "another," and therefore is available as a Sec. 102(a) prior art
against your claims.
You can use a 1.132 affidavit/declaration to remove such co-authored publications and co-
inventored patents that your examiner seeks to use against you. Where you are one of the
co-authors of a publication cited against your application, you may also remove the
publication as a reference by filing a 1.132 affidavit signed by any of your co-authors which
disclaim any inventive contribution to your claimed subject matter.
Perfect any priority claims to any earlier applications that you may have filed on your
invention. You would do this by amending your specification to a contain a specific
reference to the prior application or by filing a new application data sheet that contains a
specific reference to the prior application. If you are claiming priority to an earlier filed
foreign application you will need to provide a certified copy of that priority document as
well as an English language translation if the document is not in English.

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Conception is when the inventor forms, in his or her mind, a definite and permanent idea of
the complete and operative invention as it will be applied in practice. (Coleman v. Dines,
754 F.2d 353, (Fed. Cir. 1985).) Conception is more than a vague idea of how to solve a
problem.
The requisite means themselves and their interaction must also be comprehended.
Conception must include every feature or limitation of your claimed invention. (Davis v.
Reddy. 620 F.2d 885 (C.C.P.A. 1980).) Conception is made when the invention is made
sufficiently clear to enable one skilled in the art to reduce your invention to practice
without the exercise of extensive experimentation.
While conception is the mental part of your inventive act, it must be capable of proof, such
as by demonstrative evidence or by a complete disclosure to another person. The
sufficiency of corroborative evidence is determined by the Rule of Reason. Accordingly, a
court must make a reasonable analysis of all of the pertinent evidence to determine
whether an inventor’s testimony is credible.
United States Code Title 35, Section 102(b)
A person shall be entitled to a patent unless (b) the invention was patented or described in
a printed publication in this or a foreign country or in public use or on sale in this country,
more than one year prior to the date of application for patent in the United States.
If you have language like this in your office action then your claim(s) have been rejected.
(U.S.C., Title 35, Sec. 102(b).)
The on sale category of Sec. 102(b) means the sale of your invention and not the sale of the
rights to your invention as in an assignment. Two conditions trigger the on-sale bar. First,
there must be an offer for sale.
Second, the invention must be “ready for patenting.” (Pfaff v. Wells Electronics, Inc., 525
U.S. 55, (1998).)
An invention is “ready for patenting” if it is reduced to practice or if the inventor prepares

drawings or other descriptions of the invention that are sufficient to enable one skilled in
the art to practice the invention.
If someone only conceives an invention, there is effectively no invention that could be

placed on sale. Therefore the offer for sale would not be a bar to patentability. The main
differences between a rejection under Sec.. 102(b) and Sec. 102(a) is that whereas a
Sec.102(a) category act or publication must be made by “another,” a Sec. 102(b) act or

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publication can be made by another or yourself. For example, if you disclose your own work
in a publication more than one year prior to filing a patent application for that work, then
you will be barred from obtaining a patent for the invention under Sec. 102(b), but not so
under Sec. 102(a).
The rationale for barring you under Sec. 102(b) is that once you have decided to lift the veil
of secrecy from your work, you must choose between the protection of a federal patent or
the dedication of the idea to the public at large. Thus there are indeed penalties for
revealing your invention without obtaining a patent.
The second difference between Sec. 102(a) and Sec. 102(b) is that Sec. 102(a) is keyed off of
one of its categories occurring prior to the date of your invention, while Sec. 102(b) is keyed
off of one of its categories being before the date of your patent application. Thus the date
of invention referred to in Sec. 102(a) is sometimes termed “soft” and open for debate on a
case-by-case basis, whereas the Sec. 102(b) filing date of an application is certain. Prior art
that arises under Sec. 102( b) is unforgiving, and hence a bar to patentability. Sec. 102(b) is
sometimes termed an absolute statutory bar.
There are three possible ways that a Sec. 102(b) rejection can be overcome.
The first way is your option of arguing that your claims are distinguishable from the prior art
reference(s) being used by the PTO to reject your claims. As with Sec. 102(a), you argue that
your claims are not anticipated by the references in your response.
The second thing you can do is to amend your claims so as to distinguish your claim(s) from
the prior art.
The third way that you can overcome this rejection is if you have previously filed another
U.S. application for the same invention, but you have forgotten to perfect priority to that
application. In such a case, you should file a new application data sheet which contains a
specific reference to the prior application so that you can obtain the earlier priority date.
Claiming foreign priority does not help you in overcoming prior art based on a Sec. 102(b)
rejection. This is because the one-year bar of U.S.C., Title 35, Sec. 102(b) dates from the U.S.
filing date and has nothing to do with any foreign filing date. When the statute says “prior
to the date of application for patent in the U.S.”, that is really what is meant. You cannot
use a prior foreign application date for your invention to overcome this.
As stated earlier, your options are more limited under U.S.C., Title 35, Sec. 102(b) as
compared with U.S.C., Title 35, Sec. 102(a). You cannot use a C.F.R., Title 37, Sec. 1.131

60
affidavit as your could in Section 102(a) because Section 102(b) is keyed off of the date of
your U.S. application. On the other hand, Section 102(a) is keyed off of the date of your
invention, which the PTO assumes to be the date you file your patent application but can be
otherwise shown by presenting a C.F.R.,
Title 37, Sec. 1.131 affidavit.
You also cannot present a C.F.R., Title 37 Sec. 1.132 declaration or affidavit showing that the
prior art reference is of your own work because Sec. 102(b) applies to acts or documents by
you, unlike Sec. 102(a).
OBVIOUSNESS (35 U.S.C. SEC. 103(A))
A patent may not be obtained though the invention is not identically disclosed or described
as set forth in section 102 of this title, if the difference between the subject matter sought
to be patented and the prior art are such that the subject matter as a whole would have
been obvious at the time the invention was made to a person having ordinary sill in the art
to which the subject matter pertains. Patentability shall not be negative by the manner in
which the invention was made. You will get the above rejection if your invention is thought
to be an obvious one in light of the prior art. The PTO can take any reference that qualifies
as prior art under any one of the 102 sections that we have looked at so far, combine it with
any other 102 prior art reference(s), and then reject your claim(s) on the basis that such
claim(s) are obvious with respect to the prior art references. This is stated in Section 103.
The following basic criteria must be met. (MPEP Sec. 706.02(J).)
To support the conclusion that your claimed invention is directed to obvious subject matter,
either the references must expressly or impliedly suggest your claimed invention or your
examiner must present a convincing line of reasoning as to why the artisan would have
found your claimed invention to have been obvious in light of the teachings of the
references.
If the proposed modification would render the prior art invention unsatisfactory for its
intended purpose, then there is no suggestion or motivation to make the proposed
modification, and therefore it is not an obvious modification.
Example: Joe claimed a new blood filter assembly device for use during medical procedures.
In the device, the inlet and outlet for the blood were located at the bottom end of the filter
assembly and a gas vent was present at the top of the assembly.

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The examiner rejected Joe’s claims based on a prior art reference which taught a liquid
strainer for removing dirt and water from gasoline wherein the inlet and outlet were at the
top of the device. The examiner thought it was obvious.
The court reversed, however, reasoning that if the prior art device was turned upside down
it would be inoperable for its intended purpose because the gasoline to be filtered would be
trapped at the top and water sought to be separated would flow out of the outlet instead of
the purified gasoline.
Therefore it was not an obvious invention.
In order for it to be obvious, there must also be a reasonable expectation, at the time of the
invention, that the modification or combination of the prior art references will be
successful.
The prior art reference (or combination of references if more than one is being used) must
teach or suggest all your claim limitations.
NOTE: If the product in a product-by-process claim is the same as or obvious from a product
of the prior art, the claim is un patentable even though the prior product was made by a
different process.(In re Thorpe, 777 F.2d 695 (Fed. Cir. 1985).)
One common scenario where obviousness exists (in the absence of new of unexpected
results) is where an inventor merely changes the order of performing process steps.
Differences in concentration or temperature will generally be obvious unless there is
evidence indicating such concentration or temperature is critical. Use any or all of the
following lines of attack in order to overcome your Obviousness rejection.
Argue that any one of the applied reference(s) do not qualify as prior art under any one of
the 102 sections above that we have looked at. If such reference(s) do not constitute prior
art under one of those sections, then your examiner is wrong to use it as a reference in an
obviousness rejection against you.
In determining whether a particular reference constitutes prior art under one of the
sections previously discussed, you should make sure that the cited references meet all of
the criteria necessary to constitute prior art under the particular relevant section.
If the prior art that your examiner is using against you is prior art under Sec. 102(e), 102(f)
or 102(g), then you should note the following rule:

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If your invention and the referenced inventions were, at the time you made your invention,
owned by the same person or subject to an obligation of assignment to the same person,
then the references cannot be considered as prior art under Sec. 102(e), 102(f) or 102(g) for
103 obvious use purposes (see U.S.C., Title 35, Sec. 103(c) and MPEP 706.01l).)
Common ownership requires that the person(s) or organization(s) own 100 percent of the
subject matter and 100 percent of the claimed invention at the time the claimed invention
was made.
The requirement for common ownership at the time your claimed invention was made is
intended to preclude you from obtaining ownership of subject matter after the invention
was made in order to disqualify that subject matter as prior art against your claimed
invention.
NOTE: In situations where you file an application with joint inventors, your examiner will
presume that the subject matter of your various claims was commonly owned at the time
any inventions covered by such claims were made absent any evidence to the contrary. You
have the duty to inform your examiner if this is not the case.
As with any U.S.C., Title 35, Sec. 102 rejection, you can point out or amend your claims to
include an element not shown in any of the cited reference(s). This element may be a
separate structural element, chemical component or step, or a novel relationship among
other elements or steps of the claim.

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European Patent System

64
Nature and purpose of the European Patent Convention
A patent is a legal title granting its holder the right – in a particular country and for a certain
period of time – to prevent third parties from exploiting an invention for commercial purposes
without authorisation. The EPC has established a single European procedure for the grant of
patents on the basis of a single application and created a uniform body of substantive patent
law designed to provide easier, cheaper and stronger protection for inventions in the
contracting states.
The contracting states are: Albania, Austria, Belgium, Bulgaria, Cyprus, Croatia, Czech Republic,
Denmark, Estonia, Finland, former Yugoslav Republic of Macedonia, France, Germany, Greece,
Hungary, Iceland, Ireland, Italy, Latvia, Liechtenstein, Lithuania, Luxembourg, Malta, Monaco,
Netherlands, Norway, Poland, Portugal, Romania, San Marino, Slovakia, Slovenia, Spain,
Sweden, Switzerland, Turkey and United Kingdom.European patents are granted for inventions
that are new, involve an inventive step and are susceptible of industrial application. An
invention can belong to any field of technology.
The EPC does not define the meaning of "invention", but it does provide a non-exhaustive list of
subject-matter and activities that may not be regarded as inventions, i.e. that are expressly
excluded from patentability.
In this respect your attention is particularly drawn to the following four fields:
The first is programs for computers, which are not regarded as inventions if claimed as such.
However, a computer program is not excluded from patentability under Article 52 if, when
running on a computer, it causes a further technical effect going beyond the "normal" physical
interaction between the program (software) and the computer (hardware). An example of a
further technical effect is where the program serves to control a technical process or governs
the operation of a technical device. The internal functioning of the computer itself under the
influence of the program could also bring about such an effect.
If the computer program itself is not excluded, it is immaterial whether the program is claimed
by itself, as a data medium storing the program, as a method or as part of a computer system.
Thus computer programs are not automatically excluded from patentability.
The second field is methods for treatment of the human or animal body by surgery or therapy,
and diagnostic methods practiced on the human or animal body. These inventions are expressly
excluded from patentability. The exclusion from patentability does not apply to products,
substances and compositions for use in such methods, e.g. medicaments or surgical

65
instruments. Substances and compositions are in fact singled out for special treatment in the
EPC as regards the novelty requirement: even a known substance or composition may be
patented for further medical or veterinary uses, provided that such use is novel and inventive.
The third field is plant and animal varieties and essentially biological processes for the
production of plants or animals, which are expressly excluded from patentability.
In the case of plant varieties, a separate form of protection is available in most contracting
states and under EU law.
A process for the production of plants or animals is essentially biological if it consists entirely of
natural phenomena such as crossing or selection.
The exclusion does not apply to microbiological processes or the products of such processes. In
general, biotechnological inventions are also patentable if they concern biological material that
is isolated from its natural environment or produced by means of a technical process, even if it
previously occurred in nature.
The last field is inventions excluded from patentability because their commercial exploitation
would be contrary to "ordre public" or morality. In particular, patents are not granted in respect
of processes for cloning human beings, processes for modifying the germ line genetic identity of
human beings, uses of human embryos for industrial or commercial purposes, or processes for
modifying the genetic identity of animals that are likely to cause them suffering without any
substantial medical benefit to man or animal, and also animals resulting from such processes.
Novelty
Basic principles
An invention is considered to be new if it does not form part of the state of the art.
The definition of the state of the art in the EPC reflects the principle of absolute novelty: the
state of the art comprises everything made available to the public anywhere in the world by
means of a written or oral description, by use, or in any other way, before the date of filing or
priority. However, novelty is prejudiced only by something which is clearly disclosed to a skilled
person in a single source of prior art, e.g. in a patent application published before the date of
priority.
An earlier disclosure of the invention is non-prejudicial only if it occurred no earlier than six
months before the filing of the European patent application and was due to an evident abuse in
relation to the applicant or to display at an exhibition falling within the terms of the Paris.

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Convention on international exhibitions. Apart from these two cases, the second of which is
rare in practice, any disclosure of the invention before the date of filing can be cited against the
applicant as forming part of the state of the art, even if the applicant himself was responsible
for the disclosure.
Inventive step
An invention is held to involve an inventive step if it is not obvious to the skilled person in the
light of the state of the art. The inventive step requirement is intended to prevent exclusive
rights forming barriers to normal and routine development.
The Office seeks to make a realistic and balanced assessment of the inventive step criterion.
Inventive step is usually evaluated on the basis solution presented to the problem in the patent
application is obvious or not to the person skilled in the art.
This always depends on the specific circumstances of the case. Depending on the situation,
various factors are taken into account, such as the unexpected technical effect of a new
combination of known elements, the choice of specific process parameters within a known
range, the difficulty the skilled person has in combining known documents, secondary indicia
such as the fact that the invention solves a long-standing technical problem which there have
been many attempts to solve, or the overcoming of a technical prejudice.
The European patent grant procedure
The European patent grant procedure is an examination procedure beginning with a formalities
examination and a mandatory search.
The first stage ends with the publication of the European patent application and the search
report.
At the applicant's request this is followed by the second stage, substantive examination.
After the patent has been granted, there may be a further procedure in the form of opposition
proceedings or, upon request of the patentee, limitation or revocation proceedings.
The first stage of the procedure comprises an examination on filing, formalities examination,
preparation of the European search report and a preliminary opinion on patentability, and
publication of the application and the search report. Responsibility for this stage rests with the
Receiving Section and a search division.

67
The second stage comprises substantive examination and grant. Examining divisions are made
up of three technically qualified examiners, who may if necessary be joined by a legally
qualified examiner. Until a decision has to be taken on the application, its examination is as a
rule entrusted to one of the technically qualified examiners. This examiner is responsible for
issuing the requisite communications and for discussing the application with the applicant in
writing, in person or on the telephone.
If oral proceedings are requested by the applicant or (in exceptional cases) arranged at the
Office's initiative, they are held before the full examining division. The final decision on the
grant of the patent or refusal of the application is also a matter for the full examining division.
After the grant of the patent there may be opposition proceedings, involving third parties such
as competitors as opponents. Responsibility for examining oppositions rests with the
opposition divisions, which are composed in the same way as the examining divisions, except
that only one member of the opposition division may have been involved in the earlier grant
proceedings, and that member is not allowed to chair the division.
After the grant of the patent there may also be revocation or limitation proceedings initiated by
the patent proprietor himself. At any time after the grant of the patent the patent proprietor
may request the revocation or limitation of his patent. Decisions on the revocation or limitation
of European patents are taken by the examining divisions.
Appeal proceedings constitute a special procedure. Appeals may be filed against decisions
taken by the Receiving Section, the examining divisions, the opposition divisions or the Legal
Division. A decision which does not terminate proceedings as regards one of the parties can
only be appealed together with the final decision, unless the decision allows separate appeal.
Decisions on appeals are taken by the boards of appeal.
On receiving an application the Receiving Section examines whether it can be accorded a date
of filing. This is the case if the application documents contain:
 an indication that a European patent is sought

 information identifying the applicant
 a description or a reference to a previously filed application
It is not necessary to file any claims in order to obtain a date of filing. You may file claims within
two months from the date of filing or from an invitation requesting you to do so. However, you
should take care not to extend the scope of the subject-matter in the application if the claims
are filed later.

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If a date of filing cannot be accorded because any deficiencies found have not been remedied in
due time despite an invitation to do so, the application will not be dealt with as a European
patent application. For a date of filing to be accorded, the documents do not have to meet any
particular requirements as to form or presentation. It is essential, however, that they be
sufficiently legible to enable the information to be discerned.
Once the date of filing has been accorded, the Receiving Section examines whether the filing
and search fees have been paid in due time and whether a translation of the application into
the language of the proceedings, if required, has been filed in due time . If the filing fee or
search fee has not been paid in due time, the European patent application is deemed to be
withdrawn.
If the application has been accorded a date of filing and is not deemedto be withdrawn, the
Receiving Section checks for compliance with the provisions governing translations, the content
of the Request for Grant , the presence of claims , the filing of the abstract , representation ,
formal requirements , any priority claimed , designation of the inventor and the filing of any
drawings. If the Receiving Section finds correctable deficiencies, it invites you to remedy them if
you fail to do so, the legal consequences provided for in the EPC take effect, i.e. the application
is deemed to be withdrawn or is refused.
If the deficiencies relate to a claim for priority and are not correctable, or if you do not remedy
them although invited to do so, you lose your right of priority.
A distinction must be made between failure to indicate the date or country of the prior
application(s) within the 16-month time limit and failure to meet other requirements. Only
deficiencies relating to the latter requirements are correctable
If parts of the description or drawings referred to in the description or the claims are missing on
the date of filing but are filed subsequently, you have a choice between re-dating the
application to the date when the missing parts of the description or the drawings are filed and
deleting the late-filed parts of the description or drawings together with references to them in
the application. However, the first option is available only within two months from the date of
filing or, alternatively, within a two-month time limit set in an invitation. The second option is
available only within one month from the notification of the new date of filing. If the missing
parts are completely contained in the priority document, no re-dating of the filing date is
necessary.
While the formalities examination is in progress, the European search is performed.

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The search report is drawn up on the basis of the claims, with due regard to the description and
any drawings. It mentions the documents available to the EPO when it is drawn up which may
be taken into consideration in assessing novelty and inventive step.
The search report is accompanied by an opinion on whether the application and the invention
to which it relates meet the requirements of the EPC.
The opinion is not issued if you have waived your right to receive the communication under
Rule 70(2) EPC before the search report has been communicated to you. In this situation you
will receive a first communication from the examining division instead.
The non-binding opinion is not published together with the search report but is available to the
public by way of file inspection after publication of the application.
If the application contains more than one independent claim in the same category and none of
the exceptions listed under Rule 43(2) applies, you will be invited to indicate, within a two-
month period, the basis on which the search is to be carried out. If you fail to do so, the search
will be carried out on the basis of the first independent claim in each category.
Similarly, if it is impossible to carry out a meaningful search on the basis of all or some of the
subject-matter claimed, you will be invited to file, again within a two-month period, a
statement indicating the subject-matter to be searched. Should your statement not be
sufficient to overcome the deficiency, the EPO will issue a partial search report or a declaration
that no meaningful search can be carried out.
When the examining division assumes responsibility, it will invite you to delete the unsearched
subject-matter from the application unless it finds that the objection was unjustified.
Immediately after it has been drawn up, the European search report is transmitted to you
together with copies of any cited documents. If you require a second copy of the documents,
you can obtain it by indicating it in the appropriate box on the Request for Grant form and
section 39 of the Request for Grant) when filing the application and by paying the prescribed
administrative fee.
Having received the search report, you may withdraw the application if you think it has no
chance of success. If you decide to pursue the patent grant procedure, you will have an
opportunity to amend the application to reflect the results of the search
If the search division considers that the application does not comply with the requirement of
unity of invention, it draws up a European search report on those parts which relate to the
invention first mentioned in the claims. It informs you that, if the search report is to cover the

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other inventions, you must pay a further search fee in respect of each of them within a period
that it specifies.
If you do not respond to this invitation, and if the examining division considers the search
division's objection justified, you are deemed to want the application to proceed in respect of
the invention for which the search report has been drawn up. The application must not include
claims for subject-matter for which a further search fee has not been paid. You may however
file a divisional application for such subject-matter.
Any further search fees paid will be refunded on request if it emerges during examination
proceedings that the search division's payment demand was not justified.
Upon drawing up the European search report, the search division determines the definitive
content of the abstract and transmits it to you together with the search report.
Publication of the European patent application
The European patent application is published without delay once eighteen months have
elapsed since the date of filing or the earliest priority date. You may however request that it be
published earlier.
The publication contains the description, the claims and any drawings, all as filed, plus the
abstract. If the European search report is available in time, it is annexed (A1 publication); if not,
it is published separately (A3 publication). A European patent application which was not filed in
English, French or German is published in the language of proceedings.
All European patent applications, European search reports and European patent specifications
are published in electronic form only, on the EPO's publication server. The publication server is
accessible via the EPO website (www.epo.org).
If you amend the claims after receiving the European search report but before completion of
the technical preparations for publication, the amended claims will be published in addition to
the claims as filed. The technical preparations are deemed to have been completed five weeks
before expiry of the eighteenth month after the date of filing or, if priority is claimed, after the
date of priority.
The European patent application is not published if it has been finally refused or withdrawn or
deemed withdrawn before completion of the technical preparations for publication.
The EPO informs you of the date on which the European Patent Bulletin mentions publication
of the European search report, and it draws your attention to the period for filing the request

71
for examination (paying the fee for examination), which begins on that date . It also informs
you that the designation fees must be paid within six months of the date on which the
European Patent Bulletin mentions publication of the European search report.
Where and how to file
After you have filed a European patent application, you may file other documents as referred to
in Rule 50 EPC with the EPO in Munich, The Hague or Berlin, either electronically, using the
EPO's Online Filing software, by hand or by post. The EPO provides forms which serve either as
a prepared acknowledgement of receipt (Form 1037) or as letter accompanying subsequently
filed documents (Form 1038).
You may also file documents (other than authorisations and priority documents) by fax.
Documents may not be filed by e-mail, on diskette, or by teletex, telegram, telex or similar
means.
If you filed the application with a national authority, you may likewise file all other documents
relating to the application with that authority, subject to any restrictions under national law,
but only until the date on which you receive notification that the EPO has received your
application. Once you have received this notification, you must file any such documents with
the EPO direct.
Signature
With the exception of annexes, any documents filed after filing of the European patent
application must be signed. The signature may take the form of a handwritten signature,
reproduction of the filer's signature (on faxes) or, in the case of online filings, by facsimile, text
string or electronic signature. The name and position of that person must be clear from the
signature. Regarding signature of documents filed electronically in appeal proceedings, please
contact the EPO for further information.
If the signature is omitted from a document, the EPO will invite the party concerned to sign
within a fixed time limit. If signed in due time, the document retains its original date of receipt;
otherwise it is deemed not to have been received.

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UNDERSTANDING PATENT
LANGUAGE

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Your claims section must begin on a separate sheet of paper, and it must start with one of the
following phrases:
“I claim” (use this if you are the sole inventor);
“We claim” (use this if you are filing an application where there are more than one inventors);
or,
“The invention claimed is” (this can be used whether you have one or more inventors).
A claim contains three separate parts:
 the preamble;
 a transition phrase; and,
 the body of the claim.
Following is a detailed explanation of each of the three parts.
Following the appropriate numeral, start your claim with a capital letter (typically “A” or “An”)
and then the product or method that you are claiming. This portion of your claim is known as
the preamble.
The preamble of a claim is an introductory statement, usually in single paragraph form, that
should recite at least the statutory class of the invention (e.g. apparatus, composition, process),
but it may recite more.
You will see that the claim starts off with the phrase “A folding carrier mountable on an
automobile or the like.” This is the preamble. The phrase starts off with the word “A” and then
cites an apparatus (“a folding carrier”), which is the statutory class of the invention.
If the body of your claim (discussed below) fully sets forth all the limitations of your claimed
invention, and your preamble merely states, for example, the purpose or intended use of your
invention, then your preamble will not be considered a limitation and will be of no significance
in construing your claim. However, any terminology in your preamble that limits the structure
of your claimed invention must be treated as a claimed limitation.
The transitional phrase is an introductory clause between the preamble and body of the claim.
It indicates where the background ends and where the body begins, and defines how to
interpret the claims. The commonly used phrases are “comprising,” “consisting essentially of,”
and “consisting of.” Each one of these phrases is important to understand because its use
determines how broad your claim will be. Each phrase defines the scope of your claim with

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respect to what unrecited additional components or steps, if any, are excluded from the scope
of your claim.
Open-Ended Transitional Phrases. The word “comprising” is frequently used because it is open-
ended in that it does not exclude additional, unrecited method steps or elements. Comprising is
a term of art used in claim language that means that the named elements are essential, but
other elements may be added and still be within the scope of the claim.
Such an open-ended claim is infringed if all the recited elements are found in the infringing
product, even if additional elements are also found. In other words, an accused product or
method will infringe upon product or method claim having the transitional phrase “comprising”
even if it employs additional steps.
Example: A claim that recites a device as comprising elements A,B, and C, would be infringed by
a device having elements A,B,C, and D. The claim is interpreted as “my invention is at least the
following, but it may include more.”
Sometimes you will see the word “including” or “which comprises” instead of “comprising.” All
are equivalent to each other. The use of the transition phrases “comprising” or “including” are
the best types of transition phrases that you can use in drafting your patent claims because
your coverage is broadest.
However, sometimes the PTO will not give to the broad coverage that you normally get by using
the transition clause “comprising.” For example, your detailed description may not enable such
broad coverage. Also, it is easier for prior art to anticipate a broad claim than a claim with
more elements. So if you write a claim comprising only two elements hoping to capture
potential infringers whose products contain those two elements, it will be easier for a prior art
reference to anticipate (teach each and every element) elements A and B rather than elements
A, B, and C.
Closed Transitional Phrases. Consisting of is a transitional phrase that is much more limiting
when it comes to what you are claiming. The use of the word “consisting” when used as a
transitional phrase excludes any element which you have not specifically claimed. Thus if your
claim is to a gadget “consisting of” elements A and B, any potentially infringing product must
contain only elements A and B or their equivalents and nothing else.
Partially open ended transitional phrases. A third type of transitional phrase that can be used in
claim drafting is the phrase consisting essentially of. This transition phrase is used to denote a

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partially open claim. It occupies a middle ground between closed claims that are written in
consisting of format and fully open claims that are drafted in a comprising format.
This transition phrase is sometimes seen preceding a list of ingredients in a composition claim
or a list of steps in a process claim. By using the term consisting essentially of, you signal that
the invention necessarily includes the listed ingredients or steps and is open to unlisted
ingredients or steps that do not materially affect the basic and novel properties of the
invention.
An ingredient or step has a material effect if the effect is of importance or consequence to

those persons having the typical and ordinary skill in your art. For example, if your invention is
to a chemical composition, then you might ask whether the addition of some other element to
that composition would have any importance in respect to the properties of that composition.
If the answer is no, then a claim using "consisting essentially of" would encompass that
additional element. If the answer is yes, then the element would be outside the scope of the
claim and escape literal infringement of that claim.
Although consisting essentially of is typically used in the compositions of matter, there is

nothing wrong with using this term as modifying language for method steps. In such a case, the
claim can only include steps that do not materially affect the basic and novel characteristics of
the claimed method.
Example:
1. A process of producing a completely hardened metal structural element provided with a

fracture of an intended course consisting essentially of:
(a) subjecting the surface of the completely hardened structural element at least along a
portion of the intended course of the fracture and in traverse limitation thereto to a high
energy radiation to selectively embrittle the metal and
(b) splitting the elements along the intended course of the fracture.
While a consisting essentially of may help you to capture potential infringers who try to include
steps that do not materially affect the basic and novel characteristics of your invention, this
type of claim can sometimes run into problems with prior art just as with the broader
comprising format.
To see this, say there is prior art that has the additional elements of (c) and (d), so that the prior
art contains elements (a,b,c,d). So long as (c) and (d) do not affect the basic and novel
characteristics of the process, you would not be able to argue that your claimed invention is

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different from the prior art for anticipation purposes. You would be able to argue this if you had
written the claim in the consisting of claim format.
By writing a claim with consisting essentially of, you are in effect saying “I’m claiming my listed
steps, plus any other steps that do not affect the basic and novel characteristics of my method.”
You would need to amend your claim in such a situation to the more restricting transition
phrase of consisting, or else you would be infringing upon this prior art and the PTO would
reject your claim.
For purposes of searching for and applying prior art, if you do not spell out clearly in your
specification what the basic and novel characteristics are, consisting essentially of will be
construed as equivalent to comprising.
Moreover, if you contend that additional steps or materials in the prior art are excluded by the
recitation of consisting essentially of, you have the burden of showing that the introduction of
additional steps or components would materially change the characteristics of your invention.
The third part of your claim is called the body of your claim. This is where you set out either the
process steps (if you are claiming a method or process) or the structural limitations (if what you
are claiming is a structure). These steps or limitations are what define and make up your
invention for which you seek protection.
I have reproduced the start of this claim for you below and have put in italics the start of the
body of the claim.
1. A folding carrier mountable on an automobile or the like, said carrier comprising:
(a) a frame;
(b) a carrying member pivotally mounted to said frame said carrying member movable about a
first axis between an operative extended position and a collapsed position, said carrying
member and said frame being in a substantially side-by-side relationship when said carrying
member is in its collapsed position, a foot of said carrying member positioned to contact the
automobile when said carrying member is in its operative extended position;
In this claim, there are structural limitations set out in the form of (a), (b), etc. To make the
reading of these limitations easier, each of the elements or limitations is set out in a separate
paragraph.
You should also notice that the structural elements making up this folding carrier are not set
out alone but are rather interrelated to the other structural elements set out in the claim. Your

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claim must end with a period, and you may not use a period in your claim anywhere except at
the end of your claim.
Apparatus claims are one type of product claim that covers a device. For example, the following
would be considered an apparatus claim.
1. A decorative figure assembly, comprising:
a) a non-fluid filling, material;
b) a plurality of individual closure means each for closing a bag;
c) a plastic torso bag containing a first portion of said filling material and having an open end
being closed by a first of said plurality of closure means;
d) a plastic head bag containing a second portion of said filling material and having an open end
being closed by a second of said plurality of closure means;
e) two plastic arm bags containing third and fourth portions, respectively, of said filling material
and each having an open end being closed by a third and a fourth of said plurality of closure
means, respectively; and
f) a plurality of coupling means for coupling said torso bag to said head bag, to said arm bags,
and to said legs bags, wherein said head bag, said arm bags, and said leg bags are coupled by
said plurality of coupling means to said torso bag and form a figure proportioned to a costumed
human.
A claim to an apparatus covers what a device is. As you can see from claim 1 above, there are
elements or limitations (a-f) that define the structure of the decorative figure assembly. The
claim in this case ends with a wherein clause. Such wherein or whereby clauses are typical in
apparatus claims and usually tie in the important elements of the apparatus and state the
advantage or what is accomplished by the apparatus.
Claims directed to an apparatus must be distinguished from the prior art in terms of structure
rather than function.You should claim an apparatus in terms of its structure, not by what it
does.
The only time that you are allowed to come close to describing something by its function is
when you use a special type of claim drafting format called a means-plus-function clause. The
reason for this one exception is that there is a special statute that states that an element in

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a claim for a combination may be expressed as a means for performing a specified function,
without recital of the structure, material, or acts disclosed in the specification.
The apparatus claim above had the following elements in means-plus function format—
(b) a plurality of individual closure means…
(f) a plurality of coupling means for coupling said torso bag…
As stated, if you use a means-plus-function format in your claim, you must remember to always
include more than one element in your claim. In other words, you cannot write your claim with
a single means plus a statement of function and nothing more. This rule comes from the statute
that authorizes means-plus-function claims.
An element in a claim for a combination may be expressed as a means or step for performing a
specified function without the recital of structure, material, or acts in support thereof, and such
claim shall be construed to cover the corresponding structure, material, or acts described in the
specification and equivalents thereof. (U.S.C., Title 35, Sec. 112.)
The key word above is “combination.” If your claim with a means-plus function clause is not a
combination of more than one element, then the claim will be rejected.
A means-plus-function element can be incorporated in the preamble of a claim, as well as in the

body as above. It can appear in combination with other means-plus-function elements or in
combination with nonfunctional elements. If you are using more than one “means” clause in
your claim, it is often helpful to distinguish between the clauses by stating “first means” to refer
to the first means clause and “second means” to refer to the second means clause and so on.
Again, in order to make sure that your apparatus claim is not “anticipated” by prior art, you
must recite at least one feature that structurally differentiates your apparatus from any prior
art apparatus. You cannot avoid anticipation by claiming some novel function that your
apparatus does.
Example: Evan’s claims were drawn to a disposable diaper having three fastening elements. A
prior art reference disclosed two fastening elements that could perform the same function as
the three fastening elements in Evan’s claims. Evan’s claims would not be anticipated by the
reference since the reference did not disclose the separate third fastening element.
If you are claiming a chemical compound, a typical way to phrase your claim is to say, “A
compound of the formula:” and then draw the formula that you are claiming. Such claims are
commonly referred to simply as compound claims. The format of this claim is exactly like a
conventional format except that it lacks a transitional phrase like “comprising.”

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If you do not know the formula or structure of the compound that you are claiming, you may
claim your compound by listing its physical and chemical characteristics. This is sometimes
referred to as fingerprinting.
A second way that you may claim a compound of unknown formula is by claiming it in terms of
the process by which it is made. (ie: your product-by-process claim). For example, it would be
proper to claim “A chemical compound produced by a process comprising the steps of:” and
then list all of the steps.
Composition claims define a composition as a combination of chemical components. Such

claims may not be directed to naturally occurring substances because such substances are
unpatentable under U.S.C.,
Title 35, Sec. 101. Claims directed to newly discovered compositions of matter that are
products of nature must be prefixed with the phrases such as “a purified,” “an isolated,” “a
substantially pure” or “a biologically pure,” product or compound (such as a “purified” protein)
to distinguish them from naturally occurring, unpatentable subject matter. You will often see
ranges cited in a composition claim. One thing that you need to keep in mind is that such
ranges are anticipated by prior art that intersects anywhere within your cited range. Thus if
your claim cites 02–0.4% molybdemum (Mo) and 0.6–0.9% Nickel (Ni) as your composition, this
claim will be anticipated by a reference that discloses 0.25% by weight Mo and 0.75% Ni.
If your claimed composition is physically the same as the composition cited in prior art, and you
are simply stating some new property or use of the composition, the prior art will render your
claim unpatentable.
Thus, you would not distinguish yourself from prior art merely by citing the glass transition
temperature of a copolymer that was not cited in the prior art since this is merely citing a new
physical property of the same composition. (In re Spada, 911 F.2d 705 (Fed.Cir. 1990).)
There are two types of process claims. The first type is a claim that defines how to make
something such as an apparatus, composition or compound. Such a process claim may consist
of a single step or many steps.
The second type of process claim is one that defines how a machine operates or how to
operate on a composition, material or article to make it do something. The second type of
process claim is commonly referred to as a “method” claim although the word “process” is
good form because it is the word used in the relevant statute.

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Example:
1. A purified polynucleotides having a nucleic acid sequence selected from the group consisting
of SEQ ID NO:1, SEQ ID NO:2 and SEQ ID NO:3.
2. An expression vector comprising the polynucleotide of Claim 1.
3. A host cell transformed with the expression vector of Claim 2.
4. A process for producing and purifying a polypeptide, said process comprising the steps of:
(a) culturing the host cell of Claim 3 under conditions suitable for the expression of the peptide;
and
(b) recovering the polypeptide from the host cell culture.
This last claim, a process claim, is taking the host cell which was claimed in Claim 3, and
performing process steps on the cell to obtain a protein.
A Markush Group is a group of related items joined by the word “and.” Inventions in
metallurgy, refractories, ceramics, pharmacy, pharmacology and biology are most frequently
claimed under the Markush format. However, purely mechanical features or process steps may
also be claimed this way.
A Markush group, incorporated in a claim, should be “closed,” i.e., it must be characterized with
the transition phrase “consisting of,” rather than “comprising” or “including.” The Markush
group can be broadened somewhat, however, by the transitional phrase “consisting essentially
of” to include traces of materials outside the specified group.
PRODUCT-BYPROCESS CLAIMS
There is one type of hybrid between a product and process claim that is authorized, called a
product-by-process claim. In this type of claim, the process referred to is the process of making
a product, not the process of using a product.
While a product-by-process claim format may appear to cross the line between improperly
combining two statutory classes of invention, it is acceptable because a product-by-process
claim merely uses one statutory class of invention (e.g., process limitation) to define or
fingerprint another statutory class (i.e., the product). (Ex parte Lyell, 17 USPQ2d 1549 (1990).)

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If you include a product-by-process claim in your application, you should also include a product
claim if possible. There are some disadvantages of a product-by-process claim when compared
with a product claim:
Product by-process claims are easier to infringe than a product claim alone. This is because a
product-by-process claim is infringed only by the claimed product made through a substantially
identical process as the process recited in your product-byprocess claim. However, if you have a
product claim, your product claim will be infringed by the same product made by a different
process. In other words, the process serves as an added limitation of a product-by-process
claim when it comes to infringement analysis.
Even though product-by-process claims are defined by a process, determination of patentability

is based on the product itself. If the product in the product-by-process claim is the same as or
obvious from a product of the prior art, the claim is unpatentable even though the prior
product was made by a different process.
If you include a product-by-process claim and your process is itself novel and non-obvious, you
should also include a claim directly to your process in your application. If your product claim is
not allowed, you will be able to patent your process claim.
DEPENDENT CLAIMS
A dependent claim is a claim that refers back to and further restricts a single preceding claim.
There are many reasons for including dependent claims in your application. Here are several of
them.
A dependent claim saves you from repeating all of the elements of the main claim (the claim
from which the dependent claim depends).
A dependent claim shall be presumed valid even though dependent upon an invalid claim.
(U.S.C., Title 35, Sec. 282.)
Dependent claims are a good way to add additional claims to your application if you want to
add some significant element or feature to a claim that you have previously written. If your
main, broader claim is held invalid, your dependent claim will be evaluated on an independent
basis and is presumed valid until proven otherwise.
Thus if a potential infringer finds a prior art reference that anticipates your broad main claim
and is successful in invalidating it (but not your narrower dependent claim), you will still be able
to enforce your narrower dependent claim.

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Of course, independent claims also stand on their own and you would be able to achieve the
same result by writing your independent claims as dependent claims. However, you are
charged an extra fee for each independent claim that you file in excess of three independent
claims. Filing dependent claims will therefore not only save you from repeating all of the
elements of an independent claim but it will also save you money.
By further restricting your invention with the use of dependent claims, there is greater
likelihood that one of your dependent claims has all of the features in an accused infringer’s
product.
Although the accused product will also infringe the broader independent main claim in your
application from which your dependent claim depends, you may gain a psychological advantage
with a judge or jury who is able to clearly see how the accused product matches up to your
claim.
A dependent claim may depend from an independent claim or from another dependent claim.
There is no limit to the length of a chain of dependent claims. However, you should group all
claims dependent from the same independent claim directly after that claim. Also, any
dependent claim that you write must further restrict the claim(s) on which it depends.
Example: Inventor Joe claimed an electrical circuit in the following manner:
I claim:
1. An electrical circuit comprising, in series, a 10-20 amperes DC current source of variable

content, an 8-10 ohm resistor, and a 3-8 uf capacitor.
2. An electrical circuit according to claim 1, wherein the resistor is a 5- 10 ohm resistor.”
The second dependent claim is rejected by the PTO since it broadens rather than restricts claim
1 (The ohm range of the resistor is increased from a 8–10 range to a 5–10 range). The PTO will
be this detailed regarding your claims.
When you draft a dependent claim, your dependent claim is considered to include all of the
limitations that you have placed in the claim from which your dependent claim depends as well
as any additional limitations that you add in your dependent claim. This has the practical effect
where any time the main claim is not infringed, then your dependent claim will never be
infringed. In fact, the PTO defines a dependent claim as one that shall not conceivably be
infringed by anything that would not also infringe the basic claim. This makes sense because
main claims are less restrictive and therefore more encompassing than dependent claims.

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Since the transition phrase consisting of is a closed ended phrase, if youuse it in the main claim,
you are not allowed to add new elements to its dependent claim. You are allowed to add new
information to your dependent claim that further defines a pre-existing element contained in
the prior claim, but you cannot go as far as to add a new feature to your dependent claim.
There is no rule against using a dependent claim that is in a different statutory class from the
main independent claim. For example, if your main independent claim is a product claim, you
are allowed to use a dependent claim that is a process of using the product of your main claim.
Examples
The specification is directed to an artificial hip socket that includes cup implants adapted to
replace the acetabulum (the cup-shaped socket of the hip bone). The specification discloses
that the shape of the cup is not important, so long as the implant can effectively function as an
artificial hip socket. The application is a continuation-in-part (CIP). The parent application
describes an acetabular cup prosthesis wherein the cup is a trapezoid, a truncated cone, or of
conical shape.
All of these terms describe a conical-shaped cup. In contrast to the CIP specification, the parent
specification touts the criticality of a conical cup over all other shaped cups.
A reference disclosing the claimed invention was published between the filing date of the
parent application and the instant application. Applicant asserts entitlement to the filing date of
the parent application.
Claims:
Claim 1. An acetabular cup prosthesis comprising:
a body extending generally longitudinally and terminating into front and rear surfaces, the front
surface extending substantially transversely toward the body; and at least one fin for securing
the cup to a prepared acetabulum cavity, the fin having a length extending generally
longitudinally from the front surface continuously along the body toward the rear surface
thereby engaging the body with the cavity and securing the cup.
Claim 2. The prosthesis of claim 1, wherein the body has a generally conical outer surface.
Analysis:
Claim 1

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Claim 1 is broadly drawn to an acetabular cup prosthesis that is generic as to shape. (Compare
claim 1 to claim 2.)
The parent application more narrowly describes acetabular cup prostheses. For example, the
parent application discloses only conical shaped cups, and discloses that a conical shape is
critical to cup function compared with other cup shapes.
For a claim in a later-filed application to be entitled to the filing date of an earlier application,
the earlier application must describe the subject matter of the claim in a way that satisfies the
written description requirement of 35 U.S.C. 112, first paragraph.
To do so, the disclosure of the earlier application must convey to one of ordinary skill in the art
that the inventor had possession of the later-claimed subject matter at the time the parent
application was filed. Here, there is nothing in the earlier-filed application to suggest that
shapes other than conical are part of the disclosure. In fact, the earlier-filed application teaches
the advantages of conical cups versus other shapes of cups. Accordingly, a person of ordinary
skill in the art would not view the applicant to have been in possession of the generic subject
matter claimed based on the single species disclosed in the earlier-filed application.
The parent application fails to adequately
describe the full scope of the genus of claim
1. Thus, claim 1 is not entitled to the benefit
of the parent application filing date.
Accordingly, a rejection should be made under
the appropriate section(s) of 35 U.S.C.
102 over the intervening prior art.
Claim 2
Claim 2 is narrowly drawn to an acetabular cup prosthesis that has a conical outer surface.
Because the parent application likewise describes acetabular cup prostheses that have
conical shapes, a person of ordinary skill in the art would view the applicant to have been in

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possession of the narrow subject matter claimed based on the single species disclosed the
earlier-
filed application.
Conclusion:
The specification satisfies the written description requirement of 35 U.S.C. 112,
first paragraph, with respect to the full scope of claim 2.

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GLOSSARY

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A
Abandon
The explicit or implicit relinquishment of a potential patent right. Simple inaction may render a
patent right abandoned
Abstract
A concise summary of the invention described in a patent application. It should include all the
most important technical features of the invention.
Address for service
The address to which the Office will send all correspondence relating to a particular patent
application. This must be an address in the respective country , and will usually be the address
of your patent agent (if you have one).
Affidavit
A written statement made upon oath or affirmation and signed in the presence of a person who
is authorized to administer oaths (normally a solicitor).
Amendments
Alterations (such as clarifications or deletions) made to a patent application or to a granted

patent specification. The description, drawings and claims can all be altered by amendment,
either because the applicant wishes to, or because the Office requires it. Any amendments
must not add any material to the application or specification that was not p>sent when the
application was filed.
Anticipation
This is when the prior art indicates that a patent application lacks novelty.
Appeals
Most decisions in the Office (such as a refusal to grant a patent) are open to appeal. Usually an
appeal is made to the Court, and further appeals, with leave, can be made to the Court of
Appeal.

88
Applicant
A person who makes a patent application. Often this will be the inventor, but it need not be so.
Several people can apply jointly for a patent, as can organizations.
Application (for Patent)
Papers comprising petition, specification, drawings (when required), one or more claims, oath
or declaration and filing fee, whereby an applicant seeks a patent.
Arbitration
An alternative method of resolving disputes between parties. The right of Appeal from a
decision of the arbitrator is limited by the Arbitration Act
Assignee
The person(s) or corporate body to whom all or limited rights under a patent are legally
transferred. Assignment Transfer of all or limited rights under a patent.
Assignment
The transfer of intellectual property rights from the owner of the rights to another person or
organization.
Assignor
One who assigns a patent right.

89
C
Caveat
A request to be informed of future events relating to a patent application or granted patent
Citations
Citations may be made by the examiner or author. They comprise a list of references that are
believed to be relevant prior art and which may have contributed to the "narrowing" of the
original application. The examiner can also cite references from technical journals, textbooks,
handbooks and sources.
Civil Procedure Rules (CPR)
The rules which govern the procedure and format of proceedings before the courts. Hearings
before the Office are also based on the provisions of the Civil Procedure Rules.
Claims
A precise statement of the invention that the applicant wishes to protect. It is the monopoly
rights that the applicant is trying to obtain for the invention. A main claim will define the
invention in its broadest form, by including its essential technical features. Further "dependant"
claims can then relate to additional features of the invention. The claims become the actual
monopoly that is given when/if the patent is granted.
Continuation
(see Continuing Applications)
Applicable mainly in the US, continuations are second or subsequent applications which are
subsequently filed while the original parent application is pending. Continuations must claim
the same invention as the original application to gain the benefit of the parent filing date.
Continuation-in-part
Generally referred to as a 'C.I.P' this is essentially the same as the continuation with the
exception that some new material may be included. The disclosure of the parent is usually
amplified and the C.I.P may claim the same or a different invention. A C.I.P application is
accorded the benefit of the filing date of the parent application to the extent of the two

90
applications' common subject matter. The C.I.P must be filed while the original parent
application is pending for any disclosed material in common with the parent.
Continuing Applications
There are three types of continuing applications: division, continuation and continuation- in-
part
Convention country
A state that has signed up to the Paris Convention.
Copyright
A Copyright is a type of protection given to authors of original works. Items that can be
copyrighted include: literary works; computer programs; lyrics and musical works; dramatic
works; pantomimes and choreographic works; pictorial, graphic or sculptural works; motion
pictures; audio visual works; sound recordings, etc

91
D
Decisions
The exercise in writing or orally by the Comptroller of any discretion vested in by, for example,
the Patents Act 1977 and the Patents Rules 1995.
Defensive Publication
A publication and disclosure to the public of a pending patent application.
Description
A full and detailed explanation of the invention and how it works, filed at the Office to initiate a
patent application. The description may be accompanied by one or more drawings.
Design Patent
A type of patent covering the shape characteristics of an object.
Disclosure
Usually in the form of a request, this relates to the making available of relevant documents
believed to be in the possession of the other party in a with notice (inter partes) proceeding.
Disposal
In some countries, such as the USA, this refers to where an application has been resolved by
being withdrawn, rejected or granted. It can also have the connotation of being rejected only.
Division
If the patent office decides that an application covers too large an area to be considered as a
single patent, then the application is split into one or more divisional applications. A divisional
application has the same specification as the "parent" but claims a different invention.

92
Drawing
One or more specially-prepared figures filed as a part of a patent application to explain and
describe the invention. Drawings (or illustrations, where appropriate) are more commonly
found with inventions for mechanical or electrical devices. As a rule, chemical patents will
include chemical formulae in the description of the invention and/or in the examples.
Duty of Disclosure
This is a requirement imposed on all persons involved with the patenting process to disclosure
information (patents, articles, laboratory data etc.) to the patent examiner that may affect the
granting of a patent.

93
E
Entitlement
The right to own a patent or patent application. A dispute about entitlement can be resolved by
bringing entitlement proceedings before the Office or the courts.
Equivalent
A patent which relates to the same invention and shares the same priority application as a
patent from a different issuing authority.
European patent application
A single patent application to the European Patent Office which can lead to the grant of a
patent in each country designated by the applicant. Once granted, the European patent is
treated as a bundle of separate, national patents.
European Patent Convention (EPC)
Nineteen European countries are parties to the European Patent Convention. It is the
international convention governing the application for, processing and grant of a European
patent. A patent application filed under this convention will, when granted, usually
automatically be effective in each of the countries designated by the applicant.
European Patent Office (EPO)
The intergovernmental organization (not part of the EU) set up to administer the EPC.
Evidence
Information in the form of personal testimony, documents or objects filed in support of the
issue in question.
Examiner
A patent office official who is appointed to determine the patentability of applications.
Examples

94
1.A worked description of one aspect (embodiment) of theinvention within the patent
application.
2.Possible alternative embodiments of the invention within the patent application, with little
detail provided.
Exclusive license
A license granted by the owner of a patent which allows other party to use the invention
protected by the patent. With such a license, the owner himself cannot then use his invention,
but he can collect royalties on the use of his patent.
Exhibit
Document or object included as part of the written evidence in proceedings before the
Comptroller.
Ex parte proceedings
Also known as without-notice proceedings. A hearing before the Office to resolve an issue
between a single party (for example, the applicant for a patent) and the Office.
Expiry Date
The date when a patent has run its full term in a country and is no longer protected there (see
also Lapse, Withdrawn).

95
F
Filing date
The date on which a full description is lodged at the Office. An important date when
considering if the invention in the patent application is novel and inventive.
First to File
The applicant who is the first to file an application for an invention will be awarded the patent
over all others. This law is becoming increasingly the standard for countries adhering to Trade-
Related aspects of Intellectual Property (TRIPs) guidelines.
First to Invent
In some countries, the applicant who is the first to invent will be awarded the patent over all
others.
Forfeited Application
An application on which the issue or maintenance fee has not been paid within the designated
period.

96
G
Grant
A temporary right given by a patent office for a specified period, to p>vent anyone else from
using the technology defined in the claims of a patent.
I
Infringe
To make, use or sell the patented item or process within the country covered by the patent
without permission or license from the patentee.
Infringement
Carrying out an action which falls within the scope of the patent rights owned by another
person, without their permission.
Injunction
A court order prohibiting a person from doing something or requiring a person to do

something.
Intellectual property
The general term for intangible property rights which are a result of intellectual effort. Patents,
trademarks, designs and copyright are the main intellectual property rights.
International patent application
Single patent application for up to 104 countries, made under the Patent Co-operation Treaty
(PCT) via one of a number of receiving Offices . This can lead to the grant of a patent in each
country designated by the applicant.
Inter partes proceedings
known as with-notice proceedings. A hearing before the Office to resolve an issue between two
or more parties.
Inventive step

97
If a patent for an invention is to be granted, the invention must contain an inventive step. This
means that the invention must not be an obvious development of what has gone before, when
considered by someone who is skilled in the area of technology to which the invention relates.
J
Judicial Precedent
A previous judicial decision or proceeding that may be replied upon.
Jurat
The final statement signed by a person who is authorized to administer oaths indicating when
the affidavit or statutory declaration was sworn, affirmed or declared.
K
Kinds
The letter, often with a further number, indicating the level of publication of a patent. For
example DE-A1 is the German Offenlegungsschrift (application laid open for public inspection)
while a DE-C1 is the German Patentschrift (first publication of the granted patent).
Kokai
An unexamined Japanese patent application.
Kokoku
An examined and allowed Japanese patent application.

98
L
Lapse
The date when a patent is no longer valid in a country or system due to failure to pay renewal
(maintenance) fees. Often the patent can be reinstated within a limited period.
License
The means by which the owner of a patent gives permission to another person to carry out an
action which, without such permission, would infringe the patent. Thus a license can allow
another person to legitimately manufacture, use or sell an invention protected by a patent. In
return, the patent owner will usually receive royalty payments.
License of right
A patent owner may indicate (via the Office) that licences under his patent are available as of
right to anyone who asks for one on reasonable terms. The owner is then allowed to pay half
the usual renewal fees on his patent.
M
Markush
A term used to describe the series of compounds covered by a patent claim, where the
compound is defined as a basic structure with a variable list of possible substituents (e.g. where
R=H, alkyl, aryl etc.).
N
Non-Convention Equivalents
An application filed in a second, or subsequent country which does not claim a priority
application in another country. Usually a result of filing the application after the 12 month
Convention period, but may be within that period by choice of the applicant.

99
Novelty
If an application for a patent is to be granted, the invention must be novel. This means that the
invention must not have been publicly disclosed, anywhere in the world, before the date of
filing of the patent application (or before the priority date, if the application has one).
O
Obviousness
The concept that the claims defining an invention in a patent application must involve an
inventive step if, when compared with what is already known (i.e. prior art), it would not be
obvious to someone skilled in the art.
Open for Public Inspection (OPI)
In relation to a patents file, for example, that part which members of public can inspect as from
the date of 'A' publication of the application.
Opposition
The time period allowed for an interested party to post oppositions to the grant of a patent. For
example, this may be up to nine months from the date of grant of a European patent.
P
Paris convention
The Paris Convention for the Protection of Industrial Property. An agreement concluded in 1883
and updated several times since. It provides common rules between the member states for
designs and other forms of intellectual property. A member state is often referred to as a
Convention country.

100
Patent
A patent is an intellectual property right relating to inventions - that is, to advances made in a
technical field. A patent for an invention is granted by the government to the applicant, and
gives him the right for a limited period to s others from making, using or selling the invention
without permission. In return for this right, the applicant must disclose how his invention works
in sufficient detail. When a patent is granted, the applicant becomes the owner of the patent.
Like any other form of property, a patent can be bought, sold, licensed or mortgaged. Patents
are territorial rights, so a UK patent will only give the owner rights within the United Kingdom
and rights to s others from importing products into the United Kingdom.
Patentability
The basic conditions of patentability, which an application must meet before it is granted, are
that the invention must be novel, contain an inventive step, be capable of industrial application
and not be in one of a number of excluded fields. In some countries certain types of inventions,
e.g. computer software and plants, may be unpatentable.
Patent agent
A person who acts on behalf of an applicant for the purposes of drafting a patent application
and then taking that patent application through the various stages needed to grant the patent.
Patent Co-operation Treaty (PCT)
A system by which a patent application can be filed in many different countries at once. A single
international application is filed initially at a receiving Office. After a search and publication, the
application may be converted to a series of national applications in different countries.
Patent Family
All the equivalent patent applications corresponding to a single invention, covering different
geographical regions Patent Law Treaty (PLT) A treaty to harmonise formal requirements for
patent applications worldwide, which is currently in the process of being implemented.
Pending
The period in which the patent office has not yet decided whether to reject or to grant a patent
application, and it has not yet been withdrawn.

101
Plurality
The claims of a patent application must relate to just one invention or to a number of
inventions which all share the same inventive concept. If an application has claims which relate
to more than one invention or inventive concept, there is "plurality of invention" and the claims
must be altered by amendment to remove the plurality before a patent can be granted.
Preliminary Examination
The initial study of an application by an official in the patent office to check that the
specification is properly arranged and for p>paring search reports.
Preliminary hearing
A hearing appointed to decide a point of procedure, usually in with notice (inter partes)
proceedings.
Prior Art
Previously used or published technology that may be referred to in a patent application or

examination report.
Priority date
A patent application may claim as a priority date the filing date of an earlier patent application
provided that the earlier application was (i) filed in the p>vious 12 months, (ii) filed by the same
applicant as the later application and (iii) filed in a Convention country. Thus the later
application need not be made in the same country as the earlier one. In practice, this means
that all patent applications filed in Convention countries in a single year by the same applicant
and relating to the same subject matter can be given the same effective date of filing. This
effective date of filing is important when considering if the invention in the patent application is
novel and inventive.
Priority document
A previously-filed patent application which provides a priority date for a later application.

102
Publication
A patent application which is successfully granted will be published twice. The first time (A-
publication) occurs around 18 months after the filing date of the application (or the priority
date, if it has one). The application will generally be published "as filed". The second time (B-
publication) occurs when the patent is granted, and publishes the application in its final form.
R
Renewal fees
Once a patent is granted, annual renewal fees are payable to the Office to keep the patent in
force.
Reinstatement
Restoring a patent to protection after it has apparently lapsed by error or been revoked.
Rejection
When a patent application is refused by a patent office.
Research Disclosure
Defensive-type publications which are published, often anonymously, to give companies and
inventors "freedom of use" rather than legal protection. Once research disclosures are
published the invention described cannot be patented.
Restorations
The proceedings by which a patent which has lapsed through failure to pay renewal fees may
be restored.

103
Revocation
A process by which a granted patent can be annulled. This can happen because it is
demonstrated that the patent does not satisfy one of the patentability criteria - but it can also
occur for other reasons.
S
Search report
A report to the applicant by a patent examiner, bringing to the applicant's attention documents
which are thought by the patent examiner to establish whether the invention is novel and
inventive.
Specification
The term used to cover the description, drawings and claims contained in an application.
Status
The legal standing of a patent or patent application, i.e. whether it is pending, lapsed or still
protected etc.
Substantive examination
A full examination of the patent application, undertaken by a patent examiner. This will
determine whether the application complies with all the legal requirements set out in the
Patents Act The examination report takes into account any documents listed in the search
report. In the light of the issues raised in an examination report, amendment of the patent
application may be required.

104
T
Term of patent
The maximum number of years that the monopoly rights conferred by the grant of a patent
may last.
Third party terms
Conditions placed on the reinstatement of an application or patent which are designed to

protect a third party who may have started to work the invention.
Tribunals
Bodies outside the hierarchy of the courts with administrative or judicial functions. The Patent
Office is a tribunal.
Trade Secret
Businesses often rely on confidential information -- inventions, strategies and processes -- to

keep their competitive edge. If such information is improperly disclosed -- for example, by a
former employee -- or otherwise illegally acquired by a competitor.
Trademark
A Trademark is a word, brand name, symbol, or device, or a combination of them used by a

manufacturer or merchant to identify goods, distinguishing them from others. It indicates origin
and carries with it the expectation of quality of the goods bearing this mark (i.e.: Kodak, GE,
AT&T, Burger King). A trademark cannot be acquired if it is identical to a trademark owned by
another with similar goods or services. A trademark is specific in wording, graphic portrayal,
color, etc.
TRIPS
Trade Related Aspects of Intellectual Property Matters. (Part of GATT General Agreement on
Tariffs and Trade) .

105
U
Utility
Fitness for some desirable practical or commercial purpose.
Utility Model
In some countries, a type of patent which is available involving a simpler inventive step than
that in a traditional patent. Such patents generally have a shorter life.
Utility Patent
Utility Patents, sometimes called "functional"(or, final) patents, cover a new and useful
invention in the categories of processes; mechanical, electrical or chemical procedures;
machines with moving parts; articles of manufacture, such as hand tools; compositions of
matter, like chemical compounds, combinations, or mixtures. the life of a utility patent is
currently 20 years from the date of filing.
W
WIPO
The World Intellectual Property Organization. An intergovernmental organization with its

Headquarters in Geneva, Switzerland. It is responsible for the promotion of the protection of
intellectual property throughout the world through co-operation amongst states. It is also
responsible for the administration of various international treaties, such as the Patent Co-
operation Treaty.

106
( Form 1 )
FORM 1 (FOR OFFICE USE ONLY).
THE PATENTS ACT 1970 (39 of 1970) & Application No:
THE PATENTS RULES, 2003 Filing Date:
APPLICATION FOR GRANT OF PATENT Amount of Fee Paid:
[See section 7, 54 & 135 and rule 20(1)] CBR No: Signature:
1. APPLICANT(S)
Name Nationality Address
2. INVENTOR(S)
Name Nationality Address
3. TITLE OF THE INVENTION
Page 1of 4
107
Form 1 )
4 Address for Correspondence of Applicant / Authorised Telephone No.
. agent in India
Fax No.
Mobile No.
E-mail
5. PRIORITY PARTICULARS OF THE APPLICATION (S) FILED IN CONVENTION

COUNTRY
Country Application Filing Name of the Title of the Invention
Number Date Applicant
6. PARTICULARS FOR FILING PATENT COOPERATION TREATY (PCT)

NATIONAL PHASE APPLICATION
International application number International filing date as allotted by the
receiving office
7. PARTICULARS FOR FILING DIVISIONAL APPLICATION

Original (Hist) application number Dale of filing of Original {first) application
8. PARTICULARS FOR FILING PATENT OF ADDITION

Main application/patent Number Date of filing of main application
9 DECLARATION :
(i) Declaration by the inventor(s)
I/We the above named inventor(s) is/are the true and first inventor(s) for this invention
and declare that the applicant(s) herein is/are my/our assignee or legal representative
Page 2 of 4
108
( Form 1 )
(a) Date .............
(b) Signature(s)
(c) Namefs)
(ii) Declaration by the applicant(s) in the convention country
I/We, the applicant(s) in the convention country declare that the applicant(s) herein is/are my/our assignee
or legal representative.
(a) Date ............
(b) Signature(s)
(c) name(s) of the signatory

(iii) Declaration by the applicants):
I/We, the applicants) hereby declare(s) that:—
* I am/We are in possession of the above-mentioned invention.

* The provisional/complete specification relating to the invention is filed with this application.
* The invention as disclosed in the specification upes the biological material from India and the
necessary permission from the competent authority shall be submitted by me/us before the grant of
patent to me/us.
* There is no lawful ground of objection to the grant of the Patent to me/us.
* I am/We are the assignee or legal representative of true & first inventors.
* The application or each of the applications, particulars of which are given in Para 5 was the first
application in convention country/countries in respect of my/our invention.
* I/We claim the priority from the above mentioned application(s) filed in convention country /
countries and state that no application for protection in respect of the invention had been made in a
convention country before that date by me/us or by any person from which I/We derive the title.
* My/our application in India is based on international application under Patent Cooperation Treaty
(PCT) as mentioned in Para - 6.
* The application is divided out of my/our application particulars of which are given in Para - 7 and pray
that this application my be treated as deemed to have been filed on under section 16 of the Act.
* The said invention is an improvement in or modification of the invention particulars of which are
given in Para - 8.
Page 3 of 4
109
( Form 1 )
10 FOLLOWING ARE THE ATTACHMENTS WITH THE APPLICATION:

(a) Provisional specification/Complete specification
(b) Complete specification (in conformation with the international application)/as amended before
the International Preliminary Examination Authority (IPEA) as applicable (2 copies), No. of
pages _____________________________ No. of claims ___________________________

(c) Drawings (in conformation with the international application)/as amended before the
International Preliminary Examination Authority (IPEA), as applicable (2 copies), No. of
Sheets _________________________________________
(d) Priority documents
(e) Translation of priority document/Specification/International Search Report
(0 Statement and undertaking on Form 3
(g) Power of Authority
(h) Declaration of inventorship on Form 5
(i) Sequence listing in electronic form
(I) ______________________________________________________________
Fee Rs ________________________________________________________________________ in
Cash./Cheque/Bank Draft bearing no ___________________________ Date __________________
on ___________________________________ Bank. ______________________________________

I/We hereby declare that to the best of my/our knowledge, information and belief the fact and matters
stated herein are correct and I/We request that a patent may be granted to me/us for the said invention.
Dated this __________________________ day of ___________________________ 20_________.
Signature: ______________________________________
Name: _________________________________________
To, The Controller of Patent
The Patent Office, at ___________________________
Note.—"Repeat boxes in case of more than one entry.

"To be signed by the applicant(s) or by authorised registered patent agent otherwise where mentioned.
"Tick (~J)/Cross (x) whichever is applicable/not applicable in declaration in para 9.
•Name of the inventor and applicant should be given in full, family name in the beginning.
'Complete address of the inventor and applicant should be given stating the postal index no./code, State
and country,
"Strike out the column which is/are not applicable *For fee: See First Schedule.
Page 4 of 4
110
FORM 2
THE PATENT ACT 1970
(39 OF 1970 )
&
THE PATENTS RULES, 2003
PROVISIONAL/COMPLETE SPECIFICATION
( See section 10 and rule 13 )
1. TITLE OF THE INVENTION
2.. APPLICANT(S)
(a) Name:
(b) Nationality:
(c) Address:
3. PREAMBLE TO THE DESCRIPTION

PROVISIONAL COMPLETE
The following specification describes the invention.
The following specification
particularly describes the invention
and the manrtr in which it is to be
performed
4. DESCRIPTION (Description shall start from next page )

111
5. CLAIMS (not applicable for provisional specification . Claims should start with the preamble --- “
I/we claim” on separate page )
6. DATE AND SIGNATURE ( to be given at the end of last page of specification )
7. ABSTRACT OF THE INVENTION ( to be given along with complete specification on separate page )
Note :-
• Repeat boxes in case of more than one entry.
• To be signed by the applicant(s) or by authorized registered patent agent.
• Name of the applicant should be given in full, family name in the beginning.
• Complete address of the applicant should be given stating the postal index no./ code, state
and country.
• Strike out the column which is/are not applicable.
Page 2 of 2
112
FORM 3
THE PATENTS ACT, 1970 (39 of
1970)
&
STATEMENT AND UNDERTAKING UNDER SECTION 8
(See section 8, rule 12)
1. Name of the applicant(s).I/We. ____________________________________
_______________________________________________________________
_______________________________________________________________
2. Name, address and nationality of the joint applicant ______________________
_______________________________________________________________
_______________________________________________________________
_______________________________________________________________
hereby declare
(ii) that I/We have not made any this application for the same/substantially the same
invention outside India.
or
(ii) that I/We who have made this application No. ______________________________
Dated ________________ alone /jointly with ________________________________
______________________________________________________________________
made for the same/substantially same invention, application (s) for patent in the other
countries, the partiulars of which are given below :-
Name of the Date of Application Status of the Date of Date

country application No. application publication of
grant
3. Name and address of the assignee : _____________________________________________
__________________________________________________________________________
__________________________________________________________________________
113
(iii) that the rights in the application (s) has/have been assigned to _____________________
__________________________________________________________________________
__________________________________________________________________________
that I/We undertake that upto the date of grant of the patent by the Controller, I/We would keep
him informed in writing the details regarding corresponding applications for patents filed
outside India within three months from the date of filing of such application.
Dated this ________ day of_____________ 20____
4. To be signed by the applicant or Signature ___________________________

his authorized registered patent
agent.
5. Name of the natural person who ( _________________________________ )

has signed.
To
The Controller of Patens,

The Patent Office,
At _________________________________________
__________________________________________________________________________
Note : Strike out whichever is not applicable.
__________________________________________________________________________
114
FORM 4
THE PATENTS ACT, 1970 (39 of
1970)
&
REQUEST FOR EXTENSION OF TIME
1. Name of the applicant(s).I/We. ____________________________________
_______________________________________________________________
_______________________________________________________________
hereby request for extension of time for ________ month(s) under

Section/rule____________________ in connection with my/our/application/Patent No.
____________________ .
This reason for making the request are as follows :-
______________________________________________________________________
______________________________________________________________________
______________________________________________________________________
Dated this _________day of _______________ 20__
4. To be signed by the applicant or Signature ___________________________

his authorized registered patent
agent.
5. Name of the natural person who ( _________________________________ )

has signed.
To
The Controller of Patens,

The Patent Office,
At _________________________________________
__________________________________________________________________________
Note: For fee : See First Schedule
__________________________________________________________________________
115
116
FORM 5
THE PATENTS ACT, 1970 (39 of 1970)
&
DECLARATION AS TO INVENTORSHIP
1. Name of applicant(s). _____________________________________________
_______________________________________________________________
______________________________________________________________
hereby declare that the true and first inventor(s) of the invention disclosed in the complete
specification filed in pursuance of my/our application numbered ggjgjg gjgjh jhg
____________
dated __________________ is/are
2. Inventor(s)
(a) Name ____________________________________________________________
_____________________________________________________________
(b) Nationality ________________________________________________________
(c) Address __________________________________________________________
__________________________________________________________
__________________________________________________________
Dated this ________________ day of _____________ 20_______
Signature
Name of the signatory___________________________________
3.Declaration to be given when the application in India is filed by the Applicant(s) in

the convention country: -
We the applicant(s) in the convention country hereby declare that our right to apply for
a patent in India is by way or assignment from the true and first inventor(s).
Dated this ________________ day of _____________ 20_______
Signature
Name of the signatory___________________________________

117
.4. STATEMENT (to be signed by the additional inventor(s) not mentioned in the
application form)
I/We assent to the invention referred to in the above declaration, being included in the
complete specification filed in pursuance of the stated application.
Dated this ___________ day of ___________ 20 _______.
Signature of the additional inventor(s)
Name:
To,
The Controller of Patent

The Patent Office, at ___________________________
Note. —
•Repeat boxes in case of more than one entry. '
*To be signed by the applicant(s) or by authorized registered patent agent otherwise
where mentioned.
"Name of the inventor and applicant should be given in full, family name in the
beginning.
*Complete address of the inventor should be given stating the postal index no./ code,
state and country.
* Strike out the column which is/are not applicable.
118
FORM 6
THE PATENTS ACT, 1970
(39 of 1970) & THE PATENTS RULES, 2003
CLAIM OR REQUEST REGARDING ANY CHANGE IN APPLICANT
FOR PATENT
[See sections 20 (1), 20 (4) and 20 (5); rules 34 (1), 35 (1) and 36 (1)]
(Repeat the columns (a) to (c) if there are more than one Applicant. Insert the
name in full. The family or principal name in the beginning if the applicant is a
natural person.)
I/We ________________________________________________________________
____________________________________________________________________
(a) _________________________________________________________________
_____________________________________________________________________
(b) _________________________________________________________________
_____________________________________________________________________
(c) __________________________________________________________________
_____________________________________________________________________
Complete address including postal index number/code and state and/or country.
__________________________________________________________________
__________________________________________________________________
__________________________________________________________________
nationality.______________________
Hereby request that the application for patent No __________________ dated
________ made by _______________________________________________
____________________________________________________________________
____________________________________________________________________
may proceed in my/our name and further request that direction of the Controller, if
necessary be made in that effect
Reasons for making the above request are as follows :-
______________________________________________________________
____________________________________________________________________
____________________________________________________________________
119
(Original and certified copies of the documents shall accompany the claim or
request. Consent by the legal representative of the deceased joint applicant shall be
filed whenever required.)
I furnish the following document(s) in support of my above request –
(a) ______________________________________________________________________
(b) ______________________________________________________________________
(c) ______________________________________________________________________
My/our address for service in India is ( Complete address including postal

index number/code and state along with Telephone and Telefacsimile number(s).)
_________________________________________________________________
_________________________________________________________________
_________________________________________________________________________
Dated this____________day of ______________20______
Signature
( _______________________________ )
To be signed by the applicant(s) or authorized registered patent agent.
.
,
To,
The Controller of Patents,
The Patent Office,
At __________________________________
_______________________________________________________________________
N.B.— This form is not applicable for mere change of name.

Note. —(a) Strike out whichever is not applicable.
(b) For fee: See First Schedule.
___________________________________________________________________
120
FORM 7
NOTICE OF OPPOSITION
(See section 25(3) and rule 55A)
I/We ( state names, address and nationality) ______________________________________
___________________________________________________________________
___________________________________________________________________
___________________________________________________________________
hereby give notice of opposition to patent No. ______________________________
granted on application No. _____________________________________ made by
__________________________________________________________________
___________________________________________________________________
on the grounds ( state the grounds taken, one after another) ___________________________
___________________________________________________________________
___________________________________________________________________
___________________________________________________________________
My/our address for service in India is (complete address including postal index number code and
state along with telephone and fax number)
___________________________________________________________________
___________________________________________________________________
___________________________________________________________________
___________________________________________________________________
Signature ___________________________________
( to be signed by the opponent or by the authorized registered patent agent)
( _________________________________________________)
( name of the natural person who has signed )
Page 1 of 2
121
Form 7
To,
The Controller of Patents

The Patent Office
At _____________________________
___________________________________________________________________
Note: For fee, see first schedule

___________________________________________________________________
Page 2 of 2
122
FORM 8
(39 of 1970)
&
REQUEST OR CLAIM REGARDING MENTION OF INVENTOR AS SUCH IN A PATENT
(See section 28(2), 28(3) and 28(7); rules 66, 67 and 68 )
I/We (state name, address and nationality of the person making this application ) ________________
___________________________________________________________________
___________________________________________________________________
___________________________________________________________________
___________________________________________________________________
hereby state / claim that the following person(s) be mentioned as inventor(s) in the
patent application no. ____________________________________________ dated
_____________ made by ______________________________________________
___________________________________________________________________
or hereby declare that ( insert the name of the person mentioned as inventor)
___________________________________________________________________
___________________________________________________________________
ought not to have mentioned as inventor in the application for Patent No.
______________________________ dated _______________________ made by
___________________________________________________________________
___________________________________________________________________
and I/We hereby apply for a certificate to that effect.
A statement setting out the circumstances under which this application is made is
attached together with the copy / copies thereof as required under the Rules.
My / Our address for service in India is ( complete address including postal index number/ code
and state along with telephone and fax number ) _____________________________________
___________________________________________________________________
Page 1 of 2
123
Form 8
__________________________________________________________________
___________________________________________________________________
___________________________________________________________________
Dated this _____________________ day of _____________________ 20______
Signature______________________________
To be signed by the applicant or his authorized registered patent agent
( ________________________________________________)
To,

The Patent Office
At _____________________________
___________________________________________________________________

___________________________________________________________________
Page 2 of 2
124
FORM 9
(39 of 1970)
&
REQUEST FOR PUBLICATION
(See section 11A(2); rule 24A)
I/We ( state name, address and nationality of applicant(s)) ______________________________
___________________________________________________________________
___________________________________________________________________
___________________________________________________________________
hereby request for early Publication of my/our application for Patent No.
___________________ dated ______________ under section 11A(2) of the act.
Dated this _____________________ day of _____________________ 20______
Signature______________________________
To be signed by the applicant or his authorized registered patent agent
( ________________________________________________)
To,

The Patent Office
At _____________________________
___________________________________________________________________

___________________________________________________________________
125
FORM 10
(39 of 1970)
&
APPLICATION FOR AMENDMENT OF PATENT
(See section 44; RULE 75)
I/We ( Repeat the columns (a) to (c) if, there are more than one applicant) _____________________
(a) ( insert the name in full, Family or, principal name in the beginning if the applicant is a natural person )
___________________________________________________________________
___________________________________________________________________
(b) ( insert the complete address including postal index number / code and state and/or country )
_____________________________________________________________________
___________________________________________________________________
___________________________________________________________________
( c) ( insert the nationality)_____________________________________________
____________________________________________________________________
____________________________________________________________________
_____________________________________________________________________
___________________________________________________________________
___________________________________________________________________
___________________________________________________________________
____________________________________________________________________
Form 1 of 3
126
Form 10
_____________________________________________________________________
___________________________________________________________________
___________________________________________________________________
hereby request that Patent No. ______________________ dated ____________________
granted to _________________________________________________________________
__________________________________________________________________________
may be amended by substituting my/our name for the name grantee and in support to
my/our request . I / We furnish the following documents. :-
_________________________________________________________________________
_________________________________________________________________________
_________________________________________________________________________
My/Our address for service in India is (complete address including postal index number code and state
along with telephone and fax number)
___________________________________________________________________
___________________________________________________________________
___________________________________________________________________
___________________________________________________________________
Dated this _____________________ day of _____________________ 20______
Signature ___________________________________
( to be signed by the applicant(s) or his authorized registered patent agent)
( _________________________________________________)
Form 2 of 3
127
Form 10
To,

The Patent Office
At _____________________________
___________________________________________________________________

___________________________________________________________________
Form 3 of 3
128
FORM 11
(39 of 1970)
&
APPLICATION FOR DIRECTION OF THE CONTROLLER
(See section 51(1) and 51(2); Rules 76 and 77)
I / We ( state the name in full, address and nationality ) _______________________________
___________________________________________________________________
_________________________________________________________________________
_________________________________________________________________________
_________________________________________________________________________
hereby apply for the following direction in respect of patent no. _______________________
dated ________________ grant to _____________________________________________
_________________________________________________________________________
the reasons for making this application are as follows :
_________________________________________________________________________
_________________________________________________________________________
_________________________________________________________________________
___________________________________________________________________
___________________________________________________________________
___________________________________________________________________
___________________________________________________________________
Dated this _____________________ day of _____________________ 20______
Signature ___________________________________
( _________________________________________________)
Form 1 of 2
129
Form 11
To,

The Patent Office
At _____________________________
___________________________________________________________________

___________________________________________________________________
Form 2 of 2
130
FORM 12
REQUEST FOR GRANT OF PATENT UNDER SECTION 26(1) & 52(2)
(See section 26(1) AND 52(2), Rules 63A and 79)
I/We ( Repeat the columns (a) to (c) if, there are more than one applicant) _____________________
___________________________________________________________________
___________________________________________________________________
_____________________________________________________________________
___________________________________________________________________
___________________________________________________________________
( c) ( insert the nationality)___________________________________________________
___________________________________________________________________
___________________________________________________________________
_____________________________________________________________________
___________________________________________________________________
___________________________________________________________________
___________________________________________________________________
___________________________________________________________________
Form 1 of 3
131
Form 12
_____________________________________________________________________
___________________________________________________________________
___________________________________________________________________
hereby declare :
(i) that I / we made opposition under section 25(3) before the controller or a petition under
section 64 of the Act before the Appellate board or High Court of ( name of t high court )
_________________________________________________________________________
and the details of the patent and the opposition for the petition are given below :-
Patent No. ______________________ dated __________________ grantee / Patentee
__________________________________________________________________
Opposition ________________________________________________________________
Notice dated ________________ or Petition No. ____________________________ dated
____________________
(ii) that I / we have claimed to be the true and first inventor(s) / assignee(s) / legal
representative(s) of ( name, address and nationality of the true and first inventor) _________________
_________________________________________________________________________
_________________________________________________________________________
_________________________________________________________________________
the true and first inventor of the invention for which the said patent was granted.
(iii) that by an order in the said opposition or petition the patent was revoked/the complete
specification of the patent was directed to be amended by exclusion of _____________

claims thereof.
(iv) that the Controller or Appellate Board or Court ordered to grant to me a patent in lieu of
the said patent/part of the invention excluded by the amendment..
Form 2 of 3
132
Form 12
(v) that I/We submit a statement and certified copy of the order of the Controller or Appellate
Board or Court in support of my application and request that a patent be granted to me in
accordance with the order of the Appellate Board or Court.
___________________________________________________________________
___________________________________________________________________
___________________________________________________________________
___________________________________________________________________
Dated this _____________________ day of _____________________ 20______
Signature ___________________________________
( _________________________________________________)
To,

The Patent Office
At _____________________________
___________________________________________________________________
Note: (a) Strike out whichever is not applicable
(b) For fee, see first schedule
___________________________________________________________________
Form 3 of 3
133
FORM 13
APPLICATION FOR AMENDMENT OF THE APPLICATION FOR PATENT
/ COMPLETE SPECIFICATION
(See section 57, rule 81(1))
I/We ( Name of the applicant ) _______________________________________________
___________________________________________________________________
request leave to amend the application / complete specification with respect to application
for patent No. ___________________________ dated ______________ as highlighted in
the copy hereto annexed.
My / Our reasons for making this request are as follows :-
___________________________________________________________________
___________________________________________________________________
___________________________________________________________________
I / We declare that no action for infringement or for the revocation of the patent in
question is pending before Appellate Board or a Court.
I / We declare that the facts and matters stated herein are true to the best of my /
our knowledge information and belief.
Dated this _____________________ day of _____________________ 20______
Signature ___________________________________
( to be signed by the applicant(s) or patentee(s) by his authorized registered patent agent )
( _________________________________________________)
To,
The Patent Office
At _____________________________
___________________________________________________________________
Note: (a) For fee, see first schedule

___________________________________________________________________
134
FORM 14
(39 of 1970}
&
NOTICE OF OPPOSITION TO AMENDMENT/RESTORATION/
SURRENDER OF PATENT/GRANT OK COMPULSORY LICENCE
OR REVISION OF TERMS THEREOF OR TO CORRECTION OF
CLERICAL ERRORS
(See sections 57 (4), 61 (1), 63 (3), 78 (5) and 87 (2); rules 81 (3)(b), 85(1), 87(2), 98(1), 101(3)
and 124)
I/We (State the name, address and nationality. _______________________________________________________
______________________________________________________________________________________________
______________________________________________________________________________________________
______________________________________________________________________________________________
hereby give notice of opposition:—
to the amendment! of the application / specification with respect to application for Patent
No.______________________ dated _________________
or
To the application for restoration of Patent No. ___________________ dated _____________
or
To the offer to surrender the Patent No. _________________________ dated ____________
or
For the grant of compulsory/licens, or revocation of Patent No. _________________________
Dated ________________
or
for the revision of the terms and conditions of license in respect of Patent No. __________
____________________ dated __________________
or
For correction of a clerical error in Patent No. _____________________ dated ____________
/ Specification No. ____________________________ dated _________________ in respect
of Patent No. _______________________ dated __________________ or Patent application
No. _____________________ dated ___________________
page 1 of 2
135
Form 14
The grounds in which the opposition is made are as follows :-
___________________________________________________________________________
___________________________________________________________________________
___________________________________________________________________________
My/Our address for service in India is ( complete address including postal index number/code and state
along with telephone and fax number )
___________________________________________________________________________
___________________________________________________________________________
___________________________________________________________________________
___________________________________________________________________________
Dated this _____________________ day of _____________________ 20______
Signature ___________________________________
( to be signed by the opponent or his authorized registered patent agent )
( _________________________________________________)
To,
The Patent Office
At _____________________________
__________________________________________________________________________________

__________________________________________________________________________________
Page 2 of 2
136
137
FORM 15
& THE PATENTS RULES, 2003
APPLICATION FOR THE RESTORATION OF PATENT
(See section 60; rule 84)
I/We (insert the name, address, nationality of the applicant(s) ____________________________________
_______________________________________________________________________________
_______________________________________________________________________________
_______________________________________________________________________________
_______________________________________________________________________________
hereby apply for an order of the Controller for the restoration of Patent No ________________
dated ________________ granted to _______________________________________________
____________________________________________________________________________
The circumstances which led to the failure to pay the renewal fee for the year ______________
on or before ____________________ are as follows :
____________________________________________________________________________
I /We declare that I/We have not assigned the patent to any other person(s) and that the facts
and matters stated herein are true to the best of my/our knowledge information and belief.
Dated this _____________________ day of _____________________ 20______
Signature ___________________________________
( to be signed by the applicant(s) or by his authorized registered patent agent )
( _________________________________________________)
To,
The Patent Office
At _____________________________

138
FORM 16
& THE ATENTS RULES, 2003
APPLICATION FOR REGISTRATION OF TITLE/INTEREST IN A
PATENT OR SHARE IN IT OR REGISTRATION OF ANY DOCUMENT
PURPORTING TO AFFECT PROPRIETORSHIP OF THE PATENT
See sections 69 (1), 69 (2); rules 90 (1), 90 (2)]
I/We ( Insert the name, address and nationality of the applicant(s)) ____________________________________________
_______________________________________________________________________________________________
_______________________________________________________________________________________________
_______________________________________________________________________________________________
_______________________________________________________________________________________________
hereby apply that my/our name(s) may be registered in the register of patent as a person entitled to the
patent / a share in the patent / an interest in the patent details of which are specified below:
Patent No. __________________ dated _____________ Grantee ___________________________
_____________________________________________________________________________
Patentee ________________________________________________________________________ and in

Proof thereof we transmit the accompanying. (a description of the nature of the document, giving the date and the
names, address and nationality of the parties thereto) __________________________________________________
_____________________________________________________________________________________
_______________________________________________________________________________
with a certified copy thereof.

or
.
Transmit herewith an attested copy of (a description of the nature of the document, giving the date and
the names, address and nationality of the parties thereto) _______________________________________________
____________________________________________________________________________________
___________________________________________________________________________________________________________________________
Form 1 of 2
139
Form 16
in respect of Patent No(s) _________________________________ dated____________ granted is
_________________________________________________________________________
as well as the original document for verification and I/We hereby apply that a notification thereof may be
entered in the register of patents.
My/Our address for service in India is (complete address including postal index number code and state along with
telephone and fax number)
________________________________________________________________________________________
________________________________________________________________________________________
________________________________________________________________________________________
________________________________________________________________________________________
Dated this _____________________ day of _____________________ 20______
Signature ___________________________________
( to be signed by the applicant or his authorized registered patent agent)
( _________________________________________________)
To,

The Patent Office
At _____________________________
___________________________________________________________________

___________________________________________________________________
Form 2 of 2
140
FORM 17
APPLICATION FOR COMPULSORY LICENCE
(See sections 84 (1), 91, 92(1) or 92A; rule 96)
I/We ( Name, address and nationality of the applicant(s) )______________________________________________
____________________________________________________________________________________
____________________________________________________________________________________
____________________________________________________________________________________
____________________________________________________________________________________
hereby apply for the grant of a compulsory license under Patent No. ___________________ dated
______________ granted to ________________________________________________________
for which the patentee is ____________________________________________________________
on the following grounds namely :-
________________________________________________________________________________
________________________________________________________________________________
________________________________________________________________________________
________________________________________________________________________________
I/We declare that the facts and matters stated herein are true to the best of my/our knowledge,
information and belief.
The details of documentary evidence in support of my/our interest and the grounds stated above are
given below (certified copies of the documents are to be enclosed in duplicate )
(a) ____________________________________________________________________________
Page 1 of 2
141
Form 17
(b) ___________________________________________________________________________
© ___________________________________________________________________________
(d) ___________________________________________________________________________
My/Our address for service in India is ( complete address including postal index number/code and state along
with telephone and fax number )
_______________________________________________________________________________
_______________________________________________________________________________
______________________________________________________________________________
______________________________________________________________________________
Dated this _____________________ day of _____________________ 20______
Signature ___________________________________
( to be signed by the applicant(s) or by his authorized registered patent agent )
( ______________________________________________________ )
To,
The Patent Office
At _____________________________
______________________________________________________________________________________

______________________________________________________________________________________
Page 2 of 2
142
FORM 18 (FOR OFFICE USE ONLY)
THE PATENTS ACT 1970 0
(39 of 970) RQ. No: ______________________________________________
&
THE PATENTS RULES, 2003 Filing Date: ____________________________________________
REQUEST/EXPRESS RFQUEST FOR
EXAMINATION OF APPLICATION FOR Amount of Fee Paid: __________________________________
PATENT
{See section 11B and rules 20 (4) (ii), 24B (1) CBR No: _______________________________________________
(i)]
Signature:______________________________________________
1. APPLICANT(S)/OTHER INTERESTED PERSON
Name:____________________________________________________________________________
________________________________________________________________________________
Nationality: ______________________________________________________________________
Address
________________________________________________________________________________
_________________________________________________________________________________
_______________________________________________________________________:_________
2. STATEMENT IN CASE OF REQUEST FOR EXAMINATION MADE BY THE APPLICANT(S)
I/ we hereby request that my/our application for patent no. __________________________ filed on
________________ for the invention titled _____________________________________________
________________________________________________________________________________
shall be examined under section 12 and 13 of the Act.
or
I / We hereby make an express request that my / our application for patent no. _________________
Filed on ______________ based on Patent Cooperation Treaty (PCT ) application
no._________________________________________ Dated________________ made in country
_____________________________ shall be examined under section 12 and 13 of the Act,

immediately without waiting for the expiry of 31 months as specified in rule 20 (4)(ii).
3. STATEMENT IN CASE OF REQUEST FOR EXAMINATION MADE BY ANY OTHER INTERESTED PERSON
I/we the interested person request for the examination of the application no. __________________
Dated _____________ filed by the applicant __________________________________________
page 1 of 2
143
Form 18
Titled ________________________________________________________________________________
_____________________________________________________________________________________
Under section 12 and 13 of the Act.

As an evidence of my/our interest in the application for patent following documents are submitted :-
(a)____________________________________________________________________________________
(b) ___________________________________________________________________________________
© ____________________________________________________________________________________
4. ADDRESS FOR SERVICE: -
_______________________________________________________________________________________________________
_______________________________________________________________________________________________________
_______________________________________________________________________________________________________
Dated this _____________________ day of _____________________ 20______
Signature ___________________________________
( to be signed by the applicant(s) or by his authorized registered patent agent. )
Name of the signatory _____________________________________________________

To,
The Patent Office
At _____________________________
Note: - Strike out the column which is / are not applicable

For fee: See first Schedule
Page 2 of 2
144
FORM 19
APPLICATION FOR REVOCATION OF A PATENT FOR NON WORKING
(See section 85(1); rule 96)
I/We ( Name, address and nationality of the applicant(s))._______________________________________________________
_______________________________________________________________________________
_______________________________________________________________________________
________________________________________________________________________________
hereby apply for revocation of Patent No. _________________________ dated _______________
granted to ______________________________________________________________________
for which the patentee / applicant for patent is __________________________________________
________________________________________________________________________________
_______________________________________________________________________________
for the following reasons, namely :-
(state the nature of the applicant’s interest, the facts on which he relies and the grounds on which the application is
made )___________________________________________________________________________________________
________________________________________________________________________________
________________________________________________________________________________
The details of documentary evidence in su[port of my ;/ our interest and the reasons stated above are
given below :- (certified copies of all the documents are to be enclosed in duplicate )
(a)__________________________________________________________________________
(b)__________________________________________________________________________
Page 1 of 2
145
Form 19
©__________________________________________________________________________
I/We declare that the facts and matters stated herein are true to the best of my / our knowledge,
My / Our address for service in India is: ( complete address including postal index number/code and
state along with telephone and fax number(s) ) __________________________________________
_______________________________________________________________________________
________________________________________________________________________________
________________________________________________________________________________
Dated this _____________________ day of _____________________ 20______
Signature ___________________________________
( to be signed by the applicant(s) or his authorized registered patent agent )
( _________________________________________________)
To,
The Patent Office
At _____________________________
________________________________________________________________________________

(b) Strike out whichever is not applicable
________________________________________________________________________________
Page 2 of 2
146
147
FORM 20
APPLICATION FOR REVISION OF TERMS AND CONDITIONS OF LICENCE
(See sections 88(4); rule 100)
I/We ( Name, address and nationality of the applicant(s) ____________________________________________
__________________________________________________________________________________
__________________________________________________________________________________
_______________________________________________________________________________________________
__________________________________________________________________________________
hereby declare :-
(i) that Patent No.______________________________ dated ___________________ was
granted to
_____________________________________________________________________________
for which the patentee is _________________________________________________________
_____________________________________________________________________________
(ii) that I/We am/are holding license under the patent, granted by the Controller by an order dated
___________________.
(iii) that the terms and conditions settled by the Controller have proved to be more onerous than
originally expected and we are unable to work the invention.
(iv) that the circumstances in which this application is made are set forth in the accompanying
statement in duplicate.
I/We request the Controller to revise the terms and conditions of the licence.
Dated this _____________________ day of _____________________ 20______
Page 1 of 2
148
Form 20
Signature ___________________________________
( to be signed by the applicant or by his authorized registered patent agent )
( _________________________________________________)
To,
The Patent Office
At _____________________________
_________________________________________________________________________________

_________________________________________________________________________________
Page 2 of 2
149
FORM 21
&
REQUEST FOR TERMINATION OF COMPULSORY LICENCE
(See section 94; rule 102 (1))
I/We ( Name, address and nationality of the applicant(s) ____________________________________________
__________________________________________________________________________________
__________________________________________________________________________________
______________________________________________________________________________________________
__________________________________________________________________________________
hereby apply for the termination of the compulsory licence granted to ________________________
___________________________________________________________________________________
by the order of the Controller dated ______________________ under Patent No. ___________________
dated ___________________ granted to __________________________________________________
____________________________________ for which the patentee _____________________________
________________________________________________________________________________________________
I/we declare that I am /We are patentee for the above mentioned patent.
I/we declare that I/we derive title / interest in the patent.
I/We make the above mentioned request for termination on the following grounds, namely :-
______________________________________________________________________________
______________________________________________________________________________
______________________________________________________________________________
Page 1 of 2
150
Form 21
I / We declare that the facts and matters stated herein are true to the best of my/our knowledge,
The details of documentary evidence in support of my/our interest and the grounds stated above
are given below (certified copies of the documents are to be enclosed in duplicate ):-
______________________________________________________________________________
______________________________________________________________________________
______________________________________________________________________________
My/Our address for service in India is ( complete address including postal code and state along
with telephone and fax number )
______________________________________________________________________________
______________________________________________________________________________
______________________________________________________________________________
______________________________________________________________________________
Dated this _____________________ day of _____________________ 20______
Signature ___________________________________
( to be signed by the applicant or his authorized registered patent agent )
( _________________________________________________)
To,
The Patent Office
At _____________________________
__________________________________________________________________________________

__________________________________________________________________________________
Page 2 of 2
151
FORM 22
(39 of 1970)
&
APPLICATION FOR REGISTRATION OF PATENT AGENT
[See rules 109(1) and 112]
I beg to apply for registration as a patent agent under the Patents Act, 1970.
A certificate of character ( Certificate testifying to t h e character of the applicant should be from a person not related to
and being a Gazetted Officer or any other person whom the Controller thinks fit.) From _______________________________
_______________________________________________________________________________________
_______________________________________________________________________________________
________________________________________________________________________________________
is enclosed herewith.
I hereby declare that I am not subject to any of the disqualifications specified in rule 114 of the Patents Rules,
2003 and that the information given below is true to the best of my knowledge and belief.
1. Name (Family of principal name in the beginning ) _________________________________________________________________
2. Address./place of residence : ______________________________________________________
________________________________________________________________________________
_______________________________________________________________________________
_______________________________________________________________________________
3. Principal place of business : _______________________________________________________
_______________________________________________________________________________
_______________________________________________________________________________
_______________________________________________________________________________
4. Address of the branch office if any __________________________________________________
_______________________________________________________________________________
_______________________________________________________________________________
_______________________________________________________________________________
Page 1 of 2
152
Form 22
5. Father’s Name _________________________________________________________________
_______________________________________________________________________________
6. Nationality _____________________________________________________________________
7. Date and place of birth ___________________________________________________________
_______________________________________________________________________________
8. Occupation ____________________________________________________________________
9. Particulars of qualification for registration a patent agent (either original certificates and other documents or
copies thereof duly attested by the Gazetted Officer or any other person whom the Controller thinks fit must be sent with
the application )
__________________________________________________________________________________________
_______________________________________________________________________________________
_______________________________________________________________________________________
_______________________________________________________________________________________
Dated this _____________________ day of _____________________ 20______
Signature ___________________________________
( to be signed by the applicant t )
( _________________________________________________)
To,
The Patent Office
At _____________________________
________________________________________________________________________________________

(b) Attach two recent passport size photographs
© Provide specimen signature in separate sheet
_______________________________________________________________________________________
Page 2 of 2
153
154
FORM 23
(39 of 1970)
APPLICATION FOR THE RESTORATION OF THE NAME
IN THE REGISTER OF PATENT AGENTS
[See section 130 (2); rule 117(1)]
I ________________________________________________________________________
Hereby apply for the restoration of my name in the register of patent agent which was
removed on ___________________ under section 130 or rule 116.
My name was originally entered in the register on _________________ under ____________

ggjgjg gjgjh jhg
__________________ No. ____________________________________
Dated this _____________________ day of _____________________ 20______
Signature ___________________________________
( to be signed by the applicant )
( _________________________________________________)
To,
The Patent Office
At _____________________________
________________________________________________________________________________________
_______________________________________________________________________________________
155
FORM 24
THE PATENTS ACT, 1970 {39 of 1970)
APPLICATION FOR REVIEW/SETTING ASIDE CONTROLLER'S DECISION/ORDER
(See sections 77 (l)(f) and 77 (l)(g) and rules 130(1) and 130(2)]
In the matter of (state the number of patent or patent application number and the relevant proceeding) _____________
______________________________________________________________________________________________________
______________________________________________________________________________________________________
______________________________________________________________________________________________________
I/We ( Name, address and nationality of the applicants) ____________________________________________________
________________________________________________________________________________________________
________________________________________________________________________________________________
________________________________________________________________________________________________
________________________________________________________________________________________________
being the applicant(s} / opponent/party in the above matter hereby apply for the review /
setting aside of the Controller's decision/order dated the_________________________ in

the above matter.
The grounds for making the application are set forth in the accompanying statement
submitted in duplicate.
Dated this _____________________ day of _____________________ 20______
Signature ___________________________________
( to be signed by the applicant(s) or his authorized registered patent agent )
( _________________________________________________)
To,
The Patent Office
At _____________________________
________________________________________________________________________________________
_______________________________________________________________________________________
156
FORM 25
No Fee THE PATENTS ACT, 1970 (39 of 1970)
REQUEST FOR PERMISSION FOR MAKING PATENT APPLICATION OUTSIDE INDIA
[See section 39 and rule 71 (1)]
I am /We are in possession of an invention for (State the title of the invention.) ______________
_____________________________________________________________________
_____________________________________________________________________
I/We have made an application for the grant of a patent for the said invention, its number
being No ____________________________ of Dated _________________________
or
I/We hereby attach the brief description of the invention.
I/We intend to make application(s) alone / jointly with (Name and address of the person(s).)
______________________________________________________________________________
______________________________________________________________________________
______________________________________________________________________________
______________________________________________________________________________
______________________________________________________________________________
for the same/substantially same invention for patent in the following country / countries /
convention countries, namely::-
___________________________________________________________________________
___________________________________________________________________________
___________________________________________________________________________
I/We declare that the rights in the application(s) has/have been assigned to (Name and
address of the Assignee) _____________________________________________________________

Page 1 of 2
157
Form 25
_______________________________________________________________________________
_______________________________________________________________________________
I/We request that I/We may be granted permission to make application(s) for the said
invention in the said country/countries. The reasons for making this application, are as
follows: —
_________________________________________________________________________________________
_______________
The facts and matters stated above are true to the best of my/our knowledge, information and
belief.
Dated this _____________________ day of _____________________ 20______
Signature ___________________________________
( to be signed by the applicant(s) or authorized patent agent )
To,
The Patent Office
At _____________________________
__________________________________________________________________________
Note: Strike out whichever is not applicable

__________________________________________________________________________
Page 2 of 2
158
The demand must be filed directly with the competent International Preliminary Examining Authority or, if two or more Authorities are competent,
with the one chosen by the applicant. The full name or two-letter code of that Authority may be indicated by the applicant on the line below:
IPEA/ EP
PCT CHAPTER II
DEMAND
under Article 31 of the Patent Cooperation Treaty:
The undersigned requests that the international application specified below be the subject of
international preliminary examination according to the Patent Cooperation Treaty.
For International Preliminary Examining Authority use only
Identification of IPEA Date of receipt of DEMAND
Applicant’s or agent’s file reference

Box No. I IDENTIFICATION OF THE INTERNATIONAL APPLICATION
CHOCO 95549
International application No. International filing date (day/month/year) (Earliest) Priority date (day/month/year)
15 February 2011 25 February 2010
PCT/US2011/654321 (15.02.2011) (25.02.2010)
Title of invention
PROCESS FOR FOLDING WRAPPING PAPER FOR CHOCOLATES
Box No. II APPLICANT(S)

Name and address: (Family name followed by given name; for a legal entity, full official designation. Telephone No.
The address must include postal code and name of country.)
CANDY WRAP UNLIMITED, INC. (+1) 301 876-5432

300 Colorado Street Facsimile No.
Baltimore, Maryland 21201-4307
United States of America (+1) 301 876-5555
Applicant’s registration No. with the Office
E-mail authorization: Marking one of the check-boxes below authorizes the International Bureau and the International Preliminary Examining
Authority to use the e-mail address indicated in this Box to send notifications issued in respect of this international application if those offices
are willing to do so.
as advance copies followed by paper notifications; or exclusively in electronic form (no paper notifications will be sent).
candy@anumma.com
E-mail address: __________________________________________________________________________
State (that is, country) of nationality: State (that is, country) of residence:
US US
Name and address: (Family name followed by given name; for a legal entity, full official designation. The address must include postal code and name of country.)
JONES, Mary
1600 South Eads Street
Arlington, Virginia 22202-2913
United States of America
US US
Further applicants are indicated on a continuation sheet.
Form PCT/IPEA/401 (first sheet) (July 2011) See Notes to the demand form
159
International application No.
Sheet No. . . .
Continuation of Box No. II APPLICANT(S)
If none of the following sub-boxes is used, this sheet should not be included in the demand.
E D
UD se
)
CL this
ca
IN rs in
OT
State (that is, country) of nationality:
o
in vState
t
en (that is, country) of residence:
N n ts/
a entity, full official designation. The address must include postal code and name of country.)
Name and address: (Family name followed by given name; forliaclegal
p
p
e ra
h
furt
o
(N
Further applicants are indicated on another continuation sheet.
Form PCT/IPEA/401 (continuation sheet) (July 2011) See Notes to the demand form
160
Sheet No. . .2.
PCT/US2011/654321
Box No. III AGENT OR COMMON REPRESENTATIVE; OR ADDRESS FOR CORRESPONDENCE
The following person is agent common representative

and has been appointed earlier and represents the applicant(s) also for international preliminary examination.
is hereby appointed and any earlier appointment of (an) agent(s)/common representative is hereby revoked.
is hereby appointed, specifically for the procedure before the International Preliminary Examining Authority, in addition to
the agent(s)/common representative appointed earlier.
Name and address: (Family name followed by given name; for a legal entity, full official designation. Telephone No.
The address must include postal code and name of country.)
DAVIS, Catherine (+1) 301 557-3054
2500 Virginia Avenue, N.W. Facsimile No.
Washington, D.C. 20037-1902 (+1) 301 557-3060
United States of America
Agent’s registration No. with the Office
E-mail authorization: Marking one of the check-boxes below authorizes the International Bureau and the International Preliminary Examining
Authority to use the e-mail address indicated in this Box to send notifications issued in respect of this international application if those offices
are willing to do so.
as advance copies followed by paper notifications; or exclusively in electronic form (no paper notifications will be sent).
E-mail address: davispatents@anumma.com
___________________________________________________________________________
Address for correspondence: Mark this check-box where no agent or common representative is/has been appointed and the
space above is used instead to indicate a special address to which correspondence should be sent.
Box No. IV BASIS FOR INTERNATIONAL PRELIMINARY EXAMINATION
Statement concerning amendments:*

1. The applicant wishes the international preliminary examination to start on the basis of:
the international application as originally filed
the description as originally filed
as amended under Article 34
the claims as originally filed

the drawings as originally filed

2. The applicant wishes any amendment to the claims under Article 19 to be considered as reversed.
3. Where the IPEA wishes to start the international preliminary examination at the same time as the international search in
accordance with Rule 69.1(b), the applicant requests the IPEA to postpone the start of the international preliminary
examination until the expiration of the applicable time limit under Rule 69.1(d).
4. The applicant expressly wishes the international preliminary examination to start earlier than at the expiration of the
applicable time limit under Rule 54bis.1(a).
* Where no check-box is marked, international preliminary examination will start on the basis of the international application
as originally filed or, where a copy of amendments to the claims under Article 19 and/or amendments of the international application
under Article 34 are received by the International Preliminary Examining Authority before it has begun to draw up a written opinion
or the international preliminary examination report, as so amended.
English
Language for the purposes of international preliminary examination: _______________________________________________
which is the language in which the international application was filed.
which is the language of a translation furnished for the purposes of international search.
which is the language of publication of the international application.
which is the language of the translation (to be) furnished for the purposes of international preliminary examination.
Box No. V ELECTION OF STATES
The filing of this demand constitutes the election of all Contracting States which are designated and are bound by Chapter II of the
PCT.
Form PCT/IPEA/401 (second sheet) (July 2011) See Notes to the demand form
161
Sheet No. . .3.
PCT/US2011/654321
Box No. VI CHECK LIST
The demand is accompanied by the following elements, in the language referred to in For International Preliminary
Box No. IV, for the purposes of international preliminary examination: Examining Authority use only
received not received
1. translation of international application : sheets
2. amendments under Article 34 : 3 sheets
3. letter accompanying the amendments
under Article 34 (Rule 66.8) : 2 sheets
4. copy (or, where required, translation) of
amendments under Article 19 : sheets
5. copy of the letter accompanying the amendments
under Article 19 (Rules 46.5(b) and 53.9) : sheets
6. copy (or, where applicable, translation) of any
statement under Article 19 (Rule 62.1(ii)) : sheets
7. other (specify) : sheets
The demand is also accompanied by the item(s) marked below:
1. fee calculation sheet 5. statement explaining lack of signature
2. original separate power of attorney 6. sequence listing in electronic form
3. original general power of attorney 7. other (specify): _______________________________
4. copy of general power of attorney; ___________________________________________
reference number, if any: ___________________________________________
Box No. VII SIGNATURE OF APPLICANT, AGENT OR COMMON REPRESENTATIVE

Next to each signature, indicate the name of the person signing and the capacity in which the person signs (if such capacity is not obvious from reading the demand).
Catherine Davis
Catherine Davis
1. Date of actual receipt of DEMAND:
2. Adjusted date of receipt of demand due

to CORRECTIONS under Rule 60.1(b):
3. The date of receipt of the demand is AFTER the 6. The date of receipt of the demand is AFTER the
expiration of 19 months from the priority date and expiration of the time limit under Rule 54bis.1(a) and
item 4 or 5, below, does not apply. item 7 or 8, below, does not apply.
The applicant has been informed accordingly. 7. The date of receipt of the demand is WITHIN the time
limit under Rule 54bis.1(a) as extended by virtue of
4. The date of receipt of the demand is WITHIN the time Rule 80.5.
limit of 19 months from the priority date as extended
by virtue of Rule 80.5. 8. Although the date of receipt of the demand is after the
5. Although the date of receipt of the demand is after the expiration of the time limit under Rule 54bis.1(a), the
expiration of 19 months from the priority date, the delay in arrival is EXCUSED pursuant to Rule 82.
delay in arrival is EXCUSED pursuant to Rule 82.
For International Bureau use only
Demand received from IPEA on:
Form PCT/IPEA/401 (last sheet) (July 2011) See Notes to the demand form
162
CHAPTER II
PCT
FEE CALCULATION SHEET
Annex to the Demand

International
application No. PCT/US2011/654321
Applicant’s or agent’s Date stamp of the IPEA
file reference CHOCO 95549
Applicant
CANDY WRAP UNLIMITED, INC.
CALCULATION OF PRESCRIBED FEES
1. Preliminary examination fee .................................... EUR 1,760 P
2. Handling fee (Applicants from certain States are

entitled to a reduction of 90% of the handling fee.
Where the applicant is (or all applicants are) so
entitled, the amount to be entered at H is 10% of the
handling fee.) ............................................................. EUR 150 H
3. Total of prescribed fees

Add the amounts entered at P and H EUR 1,910
and enter total in the TOTAL box ..............................
TOTAL
MODE OF PAYMENT
(Not all modes of payment may be available at all IPEAs)
authorization to charge deposit credit card (details should be furnished

or current account with the IPEA separately and not included on this sheet)
(see below)
revenue stamps
cheque
cash
postal money order
other (specify): _____________________
bank transfer _________________________________
AUTHORIZATION TO CHARGE (OR CREDIT) DEPOSIT OR CURRENT ACCOUNT

(This mode of payment may not be available at all IPEAs)
EP
IPEA/ _______________________________________
Authorization to charge the total fees indicated above. Deposit or Current Account No.: __________________
(This check-box may be marked only if the conditions for 15 July 2011 (15.07.2011)
Date: ________________________________________
deposit or current accounts of the IPEA so permit)
Authorization to charge any deficiency or credit any Catherine Davis
Name: _______________________________________
overpayment in the total fees indicated above.
Catherine Davis
Signature: ____________________________________
Form PCT/IPEA/401 (Annex) (July 2011) See Notes to the fee calculation sheet
163
Antrag auf Erteilung eines europäischen Patents
Request for grant of a European patent
Requête en délivrance d’un brevet européen
Nachreichung von Form 1001 zu einer früher eingereichten Anmeldung nach Regel 40 (1) vom
Form 1001 filed further to a previous application under Rule 40(1) on
Dépôt du formulaire 1001 pour une demande déposée antérieurement au titre de la règle 40(1) en date du

Bestätigung einer bereits durch Fax eingereichten Anmeldung vom bei
Confirmation of an application already filed by fax on with
Confirmation d’une demande déjà déposée par téléfax le auprès de
Nur für amtlichen Gebrauch / For official use only / Cadre réservé à l’administration
1 Anmeldenummer /
Application No. / MKEY
N° de la demande
2 Tag des Eingangs (Regel 35 (2)) /

Date of receipt (Rule 35(2)) / DREC
Date de réception (règle 35(2))
3 Tag des Eingangs beim EPA (Regel 35 (4)) /

Date of receipt at EPO (Rule 35(4)) / RENA
Date de réception à l’OEB (règle 35(4))
4 Anmeldetag /
Date of filing /
Date de dépôt
5 Es wird die Erteilung eines europäischen Patents und gemäß Artikel 94

EXAM 4
die Prüfung der Anmeldung beantragt. /
Grant of a European patent, and examination of the application under
Article 94, are hereby requested. /
Il est demandé la délivrance d’un brevet européen et, conformément Prüfungsantrag in einer zugelassenen Nichtamtssprache /
à l’article 94, l’examen de la demande. Request for examination in an admissible non-EPO language /
Requête en examen dans une langue non officielle autorisée
5.1 Der Anmelder verzichtet auf die Aufforderung nach Regel 70 (2), zu erklären,
MEPA
ob die Anmeldung aufrechterhalten wird. /
The applicant waives his right to be asked whether he wishes to proceed
further with the application (Rule 70(2)). /
Le demandeur renonce à être invité, conformément à la règle 70(2), à déclarer
s’il souhaite maintenir sa demande.
AREF
6 Zeichen des Anmelders oder Vertreters (max. 15 Positionen) /
Applicant’s or representative’s reference (max. 15 keystrokes) /
Référence du demandeur ou du mandataire (max. 15 caractères ou espaces)
Anmelder / Applicant / Demandeur APPR
7 Name /
Nom
8 Anschrift /
Address /
Adresse
9 Zustellanschrift /
Address for correspondence /
Adresse pour la correspondance
EPA/EPO/OEB 1001. 1 01.12
TRAN FILL Zeichen des Anmelders /

Applicant’s reference /
Référence du demandeur
1
10 Staat des Wohnsitzes oder Sitzes /
164
State of residence or of principal place of business /
Etat du domicile ou du siège
11 Staatsangehörigkeit /
Nationality /
Nationalité
12 Telefon /
Telephone /
Téléphone
13 Fax /
Téléfax
14 Weitere(r) Anmelder auf Zusatzblatt /

Additional applicant(s) on additional sheet /
Autre(s) demandeur(s) sur feuille supplémentaire
FREP
Vertreter / Representative / Mandataire
15 Name / Nom
(Nur einen Vertreter oder den Namen des Zusammenschlusses angeben, der in das
Europäische Patentregister einzutragen ist und an den zugestellt wird) /
(Name only one representative or association of representatives, to be listed in the
Register of European Patents and to whom communications are to be notified) /
(N’indiquer qu’un seul mandataire ou le nom du groupement de mandataires qui sera
inscrit au Registre européen des brevets et auquelles les significations seront faites) et al
16 Geschäftsanschrift /
Address of place of business /
Adresse professionnelle
17 Telefon /
Telephone /
Téléphone
18 Fax /
Téléfax
19 Weitere(r) Vertreter auf Zusatzblatt /

Additional representative(s) on additional sheet /
Autre(s) mandataire(s) sur feuille supplémentaire
GENA
Vollmacht / Authorisation / Pouvoir
20 ist beigefügt / is enclosed / joint
21 Allgemeine Vollmacht ist registriert unter Nummer /

General authorisation has been registered under No. /
Un pouvoir général a été enregistré sous le numéro
INVT 20
Erfinder / Inventor / Inventeur
22 Der (die) Anmelder ist (sind) alleinige(r) Erfinder. /

The applicant(s) is (are) the sole inventor(s). /
Le(s) demandeur(s) est (sont) le(s) seul(s) inventeur(s).
23 Erfindernennung in beigefügtem Schriftstück /

Designation of inventor attached /
Voir la désignation de l’inventeur ci-jointe
TIDE TIEN TIFR

24 Bezeichnung der Erfindung / Title of invention /
Titre de l’invention
EPA/EPO/OEB 1001.2 01.12
Zeichen des Anmelders /

2
25 Prioritätserklärung (Regel 52) und Recherchenergebnisse
nach Regel 141(1) / Declaration of priority (Rule 52) and
165 PRIO
search results under Rule 141(1) / Déclaration de priorité
(règle 52) et résultats de la recherche conformément
à la règle 141 (1)
Die Recherchenergebnisse nach Regel 141 (1) sind beigefügt. /
Eine Prioritätserklärung wird für die folgenden Anmeldungen abgegeben: / Search results under Rule 141(1) are attached /
A declaration of priority is hereby made for the following applications: / Les résultats de la recherche selon la règle 141(1) sont joints
Une déclaration de priorité est produite pour les demandes suivantes :
Staat / Anmeldetag / Aktenzeichen /
State / Date of filing / File No. /
Etat Date de dépôt N° de dépôt
01 01
02 02
03 03
04 04
25.1 Auf einem Zusatzblatt ist angegeben, dass weitere Prioritäten beansprucht
werden und die entsprechenden Recherchenergebnisse nach Regel 141 (1)
beigefügt sind. / Additional declaration(s) of priority and indication(s) of the
attachment of corresponding search results (Rule 141(1)) on additional sheet. /
Il est indiqué sur une feuille supplémentaire que d’autres priorités sont revendi-
quées et que les résultats correspondants de la recherche selon la règle 141(1)
sont joints.
25.2 Diese Anmeldung ist eine vollständige Übersetzung der früheren Anmeldung. / 01 02 03 04 andere
This application is a complete translation of the previous application. / other
La présente demande est une traduction intégrale de la demande antérieure. autres
25.3 Es ist nicht beabsichtigt, eine (weitere) Prioritätserklärung einzureichen. /

It is not intended to file a (further) declaration of priority. /
Il n’est pas envisagé de produire une (autre) déclaration de priorité.
26 Bezugnahme auf eine früher eingereichte Anmeldung /

Reference to a previously filed application /
EAPP
Renvoi à une demande déposée antérieurement
26.1 Es wird auf eine früher eingereichte Anmeldung Bezug genommen.

Die Bezugnahme ersetzt die Beschreibung und etwaige Zeichnungen
(Regel 40 (1) c), (2)). Die Anmeldung, auf die Bezug genommen wird, ist : /
Reference is made to a previously filed application. That reference replaces 
the description and any drawings (Rule 40(1)(c), (2)). The application to
which reference is made is the following: /
Il est fait référence à une demande déposée antérieurement. Ce renvoi
remplace la description et, le cas échéant, les dessins (règle 40(1)c), (2)).
La demande à laquelle il est fait référence est la suivante :
Staat / Anmeldetag / Aktenzeichen /

State / Date of filing / File No. /
Etat Date de dépôt N° de dépôt
26.2 Die Bezugnahme auf die früher eingereichte Anmeldung ersetzt auch die
Patentansprüche (Regel 57 c)). / The reference to the previously filed applica-
tion also replaces the claims (Rule 57(c)). / Le renvoi à la demande déposée
antérieurement remplace également les revendications (règle 57c)).
26.3 Eine beglaubigte Abschrift der früher eingereichten Anmeldung (Regel 40 (3)) / ist beigefügt. / wird nachgereicht. /
A certified copy of the previously filed application (Rule 40(3)) / is attached. / will be supplied later. /
Une copie certifiée conforme de la demande déposée antérieurement est jointe. sera produite ultérieurement.
(règle 40(3))
26.4 Eine Übersetzung der früher eingereichten Anmeldung (Regel 40 (3)) / ist beigefügt. / wird nachgereicht. /
A translation of the previously filed application (Rule 40(3)) / is attached. / will be supplied later. /
Une traduction de la demande déposée antérieurement (règle 40(3)) est jointe. sera produite ultérieurement.
27 Teilanmeldung / Divisional application /

PANR
Demande divisionnaire
EPA/EPO/OEB 1001. 3 01.12
Die Anmeldung ist eine Teilanmeldung, die aus der folgenden früheren Nummer der früheren Anmeldung / Number of earlier application /
Anmeldung hervorgeht: / The application is a divisional application Numéro de la demande antérieure
based on the following earlier application: / La présente demande constitue
une demande divisionnaire relative à la demande antérieure suivante :
DFIL
3
27.1 Datum des ersten Bescheids der Prüfungsabteilung zu der frühesten Anmel-
dung, zu der ein Bescheid ergangen ist (Regel 36 (1) a)): / Date of Examining
Datum / Date 166
Division’s first communication in respect of the earliest application for which
a communication has been issued (Rule 36(1)(a)): / Date de la première
notification de la division d’examen relative à la demande la plus ancienne
pour laquelle une notification a été émise (règle 36(1)a)) :
Bei Abweichung von der in Feld 27 angegebenen Anmeldung ist die Nummer der betreffenden frühesten Anmeldung /
betreffende früheste Anmeldung: / If different from the application Number of the relevant earliest application /
mentioned in Section 27, the relevant earliest application is: / Numéro de la demande la plus ancienne concernée
Si la demande la plus ancienne concernée diffère de celle mentionnée
à la rubrique 27, veuillez indiquer son numéro :

27.2 Datum des Bescheids, in dem die Prüfungsabteilung zum ersten Mal Datum / Date
eingewandt hat, dass die frühere Anmeldung nicht den Erfordernissen
des Artikels 82 genügt (Regel 36 (1) b)): / Date of communication in which
the Examining Division has objected for the first time that the earlier application
does not meet the requirements of Article 82 (Rule 36(1)(b)): /
Date de la notification dans laquelle la division d’examen a objecté pour la
première fois que la demande antérieure ne satisfait pas aux exigences de
l’article 82 (règle 36(1)b)) :
28 Anmeldung nach Artikel 61 (1) b) / Article 61(1) (b)

EANR
application / Demande selon l’article 61(1) b)
Es handelt sich um eine Anmeldung nach Artikel 61 (1) b). / Nummer der früheren Anmeldung / Number of earlier application /
The application is an Article 61(1)(b) application. / Numéro de la demande initiale
La présente demande constitue une demande selon l’article 61(1)b).
29 Patentansprüche / Claims / Revendications

CLMS
Zahl der Patentansprüche /
Number of claims /
Nombre de revendications
29.1 wie beigefügt / as attached /

telles que jointes en annexe
29.2 wie in der früher eingereichten Anmeldung (siehe Feld 26.2) /

as in the previously filed application (see Section 26.2) /
telles que figurant dans la demande déposée antérieurement
(voir rubrique 26.2)
29.3 Die Patentansprüche werden nachgereicht. /

The claims will be filed later. /
Les revendications seront produites ultérieurement.
30 Abbildungen / Figures / Figures

DRAW 2
Zur Veröffentlichung mit der Zusammenfassung wird vorgeschlagen
Abbildung Nr. / It is proposed that the abstract be published together
with figure No. / Il est proposé de publier avec l’abrégé la figure n°
31 Benennung von Vertragsstaaten / Designation of

DEST
contracting states / Désignation d’Etats contractants
Alle Vertragsstaaten die dem EPÜ bei Einreichung der europäischen Patentanmeldung angehören, gelten als benannt (Artikel 79 (1)). /
All the contracting states party to the EPC at the time of filing of the European patent application are deemed to be designated (Article 79(1)). /
Tous les Etats contractants qui sont parties à la CBE lors du dépôt de la demande de brevet européen sont réputés désignés (Article 79(1)).
EPA/EPO/OEB 1001. 4 01.12

4
32 Verschiedene Anmelder für verschiedene Vertragsstaaten /
Different applicants for different contracting states /
167 APPR 02
Différents demandeurs pour différents Etats contractants
Name(n) des (der) Anmelder(s) und benannte Vertragsstaaten: /

Name(s) of applicant(s) and designated contracting states: /
Nom(s) du (des) demandeur(s) et des Etats contractants désignés :
33 Erstreckung des europäischen Patents /

EXPT
Extension of the European patent /
Extension des effets du brevet européen
Diese Anmeldung gilt als Antrag, die europäische Patentanmeldung und das darauf erteilte europäische Patent auf alle Nichtvertragsstaaten des EPÜ
zu erstrecken, mit denen am Tag der Einreichung der Anmeldung Erstreckungsabkommen in Kraft sind. Der Antrag gilt jedoch als zurückgenommen,
wenn die Erstreckungsgebühr nicht fristgerecht entrichtet wird. /
This application is deemed to be a request to extend the European patent application and the European patent granted in respect of it to all non-contracting
states to the EPC with which extension agreements are in force on the date on which the application is filed. However, the request is deemed withdrawn
if the extension fee is not paid within the prescribed time limit. /
La présente demande est réputée constituer une requête en extension des effets de la demande de brevet européen et du brevet européen délivré sur
la base de cette demande à tous les Etats non parties à la CBE avec lesquels des accords d’extension sont en vigueur à la date du dépôt de la demande.
Cette requête est toutefois réputée retirée si la taxe d’extension n’est pas acquittée en temps utile.
33.1 Es ist derzeit beabsichtigt, die Erstreckungsgebühr(en) für die nebenstehend BA Bosnien und Herzegowina /
angekreuzten Staaten zu entrichten. / Bosnia and Herzegovina /
It is currently intended to pay the extension fee(s) for the states marked Bosnie-Herzégovine
opposite with a cross. /
Il est actuellement envisagé de payer la (les) taxe(s) d’extension pour les ME Montenegro /
Etats dont le nom est coché ci-contre. Montenegro /
Monténégro
Hinweis: Im automatischen Abbuchungsverfahren werden nur für die hier
angekreuzten Staaten Erstreckungsgebühren abgebucht, sofern dem EPA
nicht vor Ablauf der Zahlungsfrist ein anderslautender Auftrag zugeht.
Note: Under the automatic debiting procedure, extension fees will only be
debited for states indicated here, unless the EPO is instructed otherwise
before expiry of the period for payment.
Veuillez noter que dans le cadre de la procédure de prélèvement automatique (Platz für Staaten, mit denen nach Drucklegung dieses Formblatts Erstreckungs-
des taxes d’extension, le compte est débité du montant dû seulement pour abkommen in Kraft treten oder für die am Anmeldetag der früheren Anmeldung
les Etats cochés ici, sauf instruction contraire reçue avant l’expiration Erstreckungsabkommen in Kraft waren (Artikel 76 (1)) / Space for states with
du délai de paiement. which extension agreements enter into force after this form has been printed or
for which extension agreements existed on the date of filing of the earlier
application (Article 76(1)) / Espace prévu pour des Etats à l’égard desquels des
accords d’extension entreront en vigueur après l’impression du présent formulaire
ou étaient en vigueur à la date de dépôt de la demande antérieure (article 76(1)))
34 Biologisches Material / Biological material /

BIOM 1
Matière biologique
34.1 Die Erfindung verwendet und/oder bezieht sich auf biologisches Material, das nach Regel 31 hinterlegt worden ist. /
The invention uses and/or relates to biological material deposited under Rule 31. /
L‘invention utilise et/ou concerne de la matière biologique déposée conformément à la règle 31.
a Die nach Regel 31 (1) c) erforderlichen Angaben, d. h. die Hinterlegungsstelle Seite(n) / page(s) Zeile(n) / line(s) / ligne(s)
und die Eingangsnummer, sind in den technischen Anmeldungsunterlagen
enthalten auf /
The information required under Rule 31(1)(c), i.e. depositary institution and
accession number, is given in the application’s technical documents on /
Les indications visées à la règle 31(1)c), à savoir l‘autorité de dépôt et
le numéro d‘ordre, figurent dans les pièces techniques de la demande
à la / aux
b Ist die Eingangsnummer am Anmeldetag noch nicht bekannt, so sind die Seite(n) / page(s) Zeile(n) / line(s) / ligne(s)
Hinterlegungsstelle und das (die) Bezugszeichen (Nummer, Symbole usw.)
des Hinterlegers in den technischen Anmeldungsunterlagen zu entnehmen auf /
If the accession number is not yet known on the date of filing, for the depositary
institution and the depositor’s identification reference(s) (number, symbols, etc.)
see the application‘s technical documents on /
Si le numéro d’ordre n’est pas encore connu à la date de dépôt, l’autorité Die Angaben werden später mitgeteilt /
de depôt et la (les) référence(s) d‘identification (numéro ou symboles etc.) The information will be submitted later /
du déposant figurent dans les pièces techniques de la demande, à la /aux Les indications visées seront communiquées ultérieurement
EPA/EPO/OEB 1001. 5 01.12
34.2 Die Empfangsbescheinigung(en) der Hinterlegungsstelle / ist (sind) beigefügt. / wird (werden) nachgereicht. /
The receipt(s) of deposit issued by the depositary institution / is (are) enclosed. / will be filed later. / sera (seront)
Le(s) récépissé(s) de dépôt délivré(s) par l’autorité de dépôt est (sont) joint(s). produit(s) ultérieurement.

5
35 Falls das biologische Material nicht vom Anmelder, sondern von einem
168
Name und Anschrift des Hinterlegers / Name and address of depositor /
Dritten hinterlegt wurde / Nom et adresse du déposant
If the biological material was deposited by a person other than the applicant /
Lorsque la matière biologique a été déposée par une personne autre que
le demandeur
35.1 Ermächtigung nach Regel 31 (1) d) / ist beigefügt / wird nachgereicht /

Authorisation under Rule 31(1)(d) / is attached / will be supplied later /
L’autorisation prévue à la règle 31(1)d) est jointe sera produite ultérieurement
36 Verzicht auf die Verpflichtung des Antragstellers nach Regel 33 (2)

in gesondertem Schriftstück / 
Waiver of the right to an undertaking from the requester pursuant
to Rule 33(2) attached /
Renonciation, sur document distinct, à l’engagement du requérant
au titre de la règle 33(2)
37 Gemäß Regel 32 (1) erklärt der Anmelder hiermit, dass der Zugang zu dem
BIOM 3
in den Feldern 34 und 35 genannten biologischen Material nur durch
Herausgabe einer Probe an einen Sachverständigen hergestellt wird. /
The applicant hereby declares under Rule 32(1) that the biological material
referred to in Sections 34 and 35 is to be made available only by the issue
of a sample to an expert. /
Conformément à la règle 32(1), le demandeur déclare par la présente que
l’accessibilité à la matière biologique mentionnée aux rubriques 34 et 35
ne peut être réalisée que par la remise d’un échantillon à un expert.
38 Nucleotid- und Aminosäuresequenzen /

SEQL 1
Nucleotide and amino acid sequences /
Séquences de nucléotides et d’acides aminés
38.1 Die Beschreibung enthält ein Sequenzprotokoll nach Regel 30 (1). /

The description contains a sequence listing in accordance with
Rule 30(1). /
La description contient un listage de séquences conformément
à la règle 30(1).
38.2 Das Sequenzprotokoll wird in elektronischer Form eingereicht. /

The sequence listing is filed in electronic form. /
Le listage de séquences est déposé sous forme électronique.
38.3 Das Sequenzprotokoll wird auch auf Papier eingereicht. /

The sequence listing is also filed on paper. /
Le listage de séquences est aussi déposé sur papier.
38.4 Soweit das Sequenzprotokoll auch auf Papier eingereicht wird, erklärt der
Anmelder hiermit, dass die Sequenzprotokolle in elektronischer Form und
auf Papier identisch sind. /
If the sequence listing is also filed on paper, the applicant hereby states that
the sequence listings in electronic form and on paper are identical. /
Si le listage de séquences est aussi déposé sur papier, il est déclaré par la pré-
sente que le listage sous forme électronique et celui sur papier sont identiques.
Sonstige Angaben / Further indications /

Indications supplémentaires
39 Zusätzliche Abschriften der im europäischen Recherchenbericht Anzahl der zusätzlichen Sätze von Abschriften /
ASOC
angeführten Schriftstücke werden beantragt. / Number of additional sets of copies /
Additional copies of the documents cited in the European search report Nombre de jeux supplémentaires de copies
are requested. /
Prière de fournir des copies supplémentaires des documents
cités dans le rapport de recherche européenne.
40 Die Rückerstattung der Recherchengebühr gemäß Artikel 9 (2) Gebühren-

ordnung wird beantragt. /
Refund of the search fee under Article 9(2) of the Rules
relating to Fees is requested. /
Le remboursement de la taxe de recherche est demandé en vertu
EPA/EPO/OEB 1001. 6 01.12
de l’article 9(2) du règlement relatif aux taxes.
41 gestrichen / deleted / supprimé

6
42 Automatischer Abbuchungsauftrag /
Automatic debit order /
169 DECA
Ordre de prélèvement automatique
(nur möglich für Inhaber von beim EPA geführten laufenden Konten) /
(for EPO deposit account holders only) / (possibilité offerte uniquement
aux titulaires de comptes courants ouverts auprès de l’OEB)
Das EPA wird hiermit beauftragt, fällig werdende Gebühren und Auslagen Nummer des laufenden Kontos / Deposit account number /
nach Maßgabe der Vorschriften über das automatische Abbuchungsverfahren Numéro du compte courant
vom nebenstehenden laufenden Konto abzubuchen. /
The EPO is hereby authorised, under the Arrangements for the automatic
debiting procedure, to debit from the deposit account opposite any fees and 
costs falling due. /
Par la présente, il est demandé à l’OEB de prélever du compte courant
ci-contre les taxes et frais venant à échéance, conformément à la Name des Kontoinhabers / Account holder’s name /
réglementation relative à la procédure de prélèvement automatique. Nom du titulaire du compte
43 Etwaige Rückzahlungen sollen auf das nebenstehende beim EPA geführte Nummer des laufenden Kontos /
DEPA
laufende Konto erfolgen. / Deposit account number / Numéro du compte courant
Any refunds should be made to the EPO deposit account opposite. /
Les remboursements éventuels doivent être effectués sur le compte courant
ci-contre ouvert auprès de l’OEB.
Name des Kontoinhabers / Account holder’s name /

Nom du titulaire du compte
44 Die vorgeschriebene Liste über die diesem Antrag beigefügten Unterlagen

ergibt sich aus der vorbereiteten Empfangsbescheinigung (Seite 8 dieses
Antrags). /
The prescribed list of documents enclosed with this request is shown on the
prepared receipt (page 8 of this request). /
La liste prescrite des documents joints à la présente requête figure sur le
récépissé préétabli (page 8 de la présente requête).
45 Für Angestellte nach Artikel 133 (3) Satz 1 mit allgemeiner Vollmacht / Nummer / Number / Numéro
For employees under Article 133(3), first sentence, having a general
authorisation /
Pour les employés mentionnés à l’article 133(3), 1ere phrase, munis d’un
pouvoir général
46 Unterschrift(en) des (der) Anmelder(s) oder Vertreter(s) Ort / Place / Lieu

Name des (der) Unterzeichneten bitte in Druckschrift wiederholen und
bei juristischen Personen die Stellung des (der) Unterzeichneten
innerhalb der Gesellschaft angeben. /
Signature(s) of applicant(s) or representative(s)
Under signature please print name and, in the case of legal persons,
position within the company. / Datum / Date
Signature(s) du (des) demandeur(s) ou du (des) mandataire(s)
Prière d’indiquer en caractères d’imprimerie le ou les noms des signataires
ainsi que, s’il s’agit d’une personne morale, la position occupée au sein de
celle-ci par le ou les signataires.
Unterschrift(en) / Signature(s)
EPA/EPO/OEB 1001. 7 01.12

7
170
Empfangsbescheinigung Liste der diesem Antrag beigefügten Unterlagen – Hiermit wird der Empfang der unten
bezeichneten Dokumente bescheinigt. Wird im Falle der Einreichung der europäischen
Patentanmeldung bei einer nationalen Behörde diese Empfangsbescheinigung vom Euro
Receipt for documents

päischen Patentamt übersandt, so ist sie als Mitteilung gemäß Regel 35 (4) anzusehen
(siehe Feld RENA).
Checklist of enclosed documents – Receipt of the documents indicated below is hereby
Récépissé de documents acknowledged. If this receipt is issued by the European Patent Office and the European
patent application was filed with a national authority, it serves as a communication under
Rule 35(4) (see Section RENA).
Liste des documents annexés à la présente requête – Nous attestons le dépôt des
documents désignés ci-dessous. Si, en cas de dépôt de la demande de brevet européen
auprès d’un service national, l’Office européen des brevets délivre le présent récépissé
de documents, ce récépissé est réputé être la notification visée à la règle 35(4)
(cf. rubrique RENA).
Amtsstempel / Official stamp / Cachet officiel
Tag des Eingangs (Regel 35 (2)) / Date of receipt (Rule 35(2)) /

DREC
Date de réception (règle 35(2))
Anmeldenummer für den Schriftverkehr mit dem EPA; Aktenzeichen für Prioritäts-
erklärungen / Application No. to be used in correspondence with the EPO;
file No. to be used for priority declarations / N° de la demande à utiliser dans la cor-
respondance avec l’OEB ; n° de dépôt à utiliser pour la déclaration de priorité
Tag des Eingangs beim EPA (Regel 35 (4)) / Date of receipt at EPO
RENA
(Rule 35(4)) / Date de réception à l’OEB (règle 35(4))
47 A. Anmeldungsunterlagen und Prioritätsbeleg(e) / Application and priority Blattzahl* /

documents / Pièces de la demande et document(s) de priorité Number of sheets* /
Nombre de feuilles*
1. Beschreibung (ohne Sequenzprotokollteil) / Description (excluding sequence listing part) /
Description (sauf partie réservée au listage des séquences)
Gesamtzahl der Abbildungen* /
Total number of figures* /
2. Patentansprüche / Claims / Revendications
Nombre total de figures*
3. Zeichnung(en) / Drawing(s) / Dessin(s)
4. Sequenzprotokollteil der Beschreibung / Sequence listing part of description / * Die Richtigkeit der Blattzahl und der Gesamtzahl
Partie de la description réservée au listage des séquences der Abbildungen wurde bei Eingang nicht geprüft. /
* No check was made on receipt that the number
5. Zusammenfassung / Abstract / Abrégé of sheets and the total number of figures
indic ated were correct. /
6. Früher eingereichte Anmeldung / Previously filed application / Demande déposée antérieurement * L’exactitude du nombre de feuilles et du nombre
total de figures n’a pas été contrôlée lors du dépôt.
7. Übersetzung der Anmeldungsunterlagen / Translation of the application documents /
Traduction des pièces de la demande
8. Übersetzung der früher eingereichten Anmeldung / Translation of the previously filed

application / Traduction de la demande déposée antérieurement
Anzahl / Number / Nombre*
9. Prioritätsbeleg(e) / Priority document(s) / Document(s) de priorité
10. Übersetzung des (der) Prioritätsbelegs(belege) / Translation of priority document(s) /

Traduction du (des) document(s) de priorité AREF
48 B. Der Anmeldung in der eingereichten Fassung liegen folgende Unterlagen bei: / Zeichen des Anmelders /
This application as filed is accompanied by the items below: / Applicant’s reference /
Les pièces ci-après sont annexées à la présente demande : Référence du demandeur
1. Vollmacht / Authorisation / Pouvoir
2. Allgemeine Vollmacht / General authorisation / Pouvoir général
3. Erfindernennung / Designation of inventor / Désignation de l’inventeur
4. Recherchenergebnisse nach Regel 141 (1) / Search results under Rule 141(1) /
Résultats de la recherche conformément à la règle 141(1)
5. Gebührenzahlungsvordruck (EPA Form 1010) / Voucher for the settlement of fees

(EPO Form 1010) / Bordereau de règlement de taxes (OEB Form 1010)
6. Elektronischer Datenträger für Sequenzprotokoll / Electronic data carrier for sequence listing /
Support électronique de données pour listage des séquences
EPA/EPO/OEB 1001. 8 01.12
7. Zusatzblatt / Additional sheet / Feuille supplémentaire
8. Sonstige Unterlagen (bitte hier spezifizieren) / Other documents (please specify here) /
Autres documents (veuillez préciser)
49 C. Exemplare dieser Empfangsbescheinigung (bitte zutreffende Zahl ankreuzen) / 3

Copies of this receipt for documents (please mark appropriate number with a cross) / Einreichung direkt beim EPA / Direct filing with the EPO /
Dépôt direct auprès de l’OEB
Exemplaires du présent récépissé de documents (veuillez cocher le chiffre correspondant) 4
Einreichung bei einer nationalen Behörde / Filing with
a national authority / Dépôt auprès d’un service national
8

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Basic Patent Law and

All Copyrights are held by

Indian Institute of Patent and Trademark Attorney, Delhi

Indian Institute of Patent and Trademark Attorney

PATENT SYSTEM IN INDIA ............................................................................................................. 3

PATENT CORPORATION TREATY .............................................................................................. 32

EUROPEAN PATENT SYSTEM ...................................................................................................... 63

UNDERSTANDING PATENT LANGUAGE.................................................................................... 72

ANNEXURE 1 – INDIAN PATENT FORMS………………………………………………………………...106

ANNEXURE 2 – US PATENT FORMS…………………………………………………………………………158

ANNEXURE 3 – EUROPEAN PATENT FORMS…………………………………………………………..163

Indian Institute of Patent and Trademark Attorney

Patent System in India

Indian Institute of Patent and Trademark Attorney

Exclusive rights of the patentee

Patent is a set of exclusive rights granted by a state (national government) to an inventor or

He can also grant license to other(s) to use the patented property.

He can also assign such property to any other(s).

The criteria for an invention to be patentable are –

(i) It must be novel

(ii) It must have an inventive step; and

(iii) It must be capable of industrial application.

Indian Institute of Patent and Trademark Attorney

An invention should contain inventive step – technically advance or economic advance or

PATENTS OFFICE ADMINISTRATION

Indian Institute of Patent and Trademark Attorney

 Residence of applicant or domicile; or

Territorial Jurisdiction Patent Office Branch

Definitions and Interpretation

Assignee is the company / university / bank / investor into research.

Section 2-"Capable of industrial application", in relation to an invention, means that the

Indian Institute of Patent and Trademark Attorney

Non Patentable Inventions are governed by section 3 and section 4.

1. An invention which is frivolous or which claims anything obviously contrary to well

A machine purports to produce perpetual motion,

A machine alleged to be giving output without any input.

2. An invention the primary or intended use or commercial exploitation of which could be

Inventions, the established or intended use or commercial exploitation of which is

Indian Institute of Patent and Trademark Attorney

3. The mere discovery of a scientific principle or the formulation of an abstract theory or

Indian Institute of Patent and Trademark Attorney

to be patentable an improvement on something known before or a combination of different

Indian Institute of Patent and Trademark Attorney

Persons who are entitled to apply for patent

(c) By the legal representative

Indian Institute of Patent and Trademark Attorney

Patent filing in India

Let see how patent filing procedure works in India.

Now, what is priority date?

Patent Drafting will be discussed further in this book.

Indian Institute of Patent and Trademark Attorney

Publication with contain complete detail of the invention.

b) Prior publication / prior claiming

c) Prior claiming in India

d) Prior public knowledge or public use in India

e) Obviousness and lack of inventive step

f) Not an invention or the invention not patentable

g) Insufficient description of the invention

h) Failure to disclose information or furnishing false information relating to Foreign filing

i) Convention application not filed within the prescribed time

j) Incorrect mention of source/geographical origin of biological material

k) Invention anticipated with regard to traditional knowledge of any community, anywhere in