Patent Drafting Services - Patent Drafting Application In India

Theoretically, the inventor can himself draft a patent application. But, as any good inventor who has, in turn, used a good patent drafting professional can vouch for, this is not the recommended course of action for any inventor serious about getting a patent. There is an appreciable difference between regular English writing/Technical writing and the language, form and expression of English involved in the Techno-Legal Disclosure of a patent. It can readily be appreciated that an inventor can describe his/her invention best. Whether that satisfies patentability requirements is a different matter altogether. Most inventors can describe usage of their inventions.

A patent application has to describe in great detail how the invention is ‘enabled’, i.e., how can it be made and used so that a ‘POSITA’ – person ordinarily skilled in the art – can make and use the invention. Further, the invention has to be distinguished from the prior art in terms of structure rather than in terms of function.

While writing the entire patent application is quite challenging, it is the claims that determine the scope of the patent. Writing broader claims than acceptable ones can invite objections based on close arts and writing narrower claims than needed shall prejudice the inventor’s interest if and when infringement occurs. As can be understood from above, it is extremely important to engage a patent professional for patent drafting owing to the stringent technical requirements and that of a fine balance of broad and narrow claims.

Frequently, an inventor describes how useful his invention is without explaining clearly how it actually offers those advantages. For example, if an inventor invented a medicine composition which can cure a patient within 3-4 days of the dosage, rather than the average period of 15 days required by other similar medicines; writing only this would not help anyone in understanding the invention, or the inventor in getting proper protection.

Mostly, inventors describe their invention only to the extent what they have actually done and, consequently, end up writing very ‘narrow’ claims. That is, such claims barely cover their invention, if at all, and can be easily ‘designed around’ by potential infringers. A skilled patent professional, however, can significantly widen the scope of the claims thereby granting much wider protection to the inventor. Another very common mistake committed by inventors is the usage of indefinite terms such as very long, very hot, etc. in claims. Such terms do not stand the test of indefiniteness and a patent claim that fails this test is deemed unpatentable, invalid, and unenforceable.

Indeed a patent specification, and claims therein, is a document containing statements where even a comma put at the ‘wrong’ place can impact the situation dramatically when prosecution/ litigation happens, which is why it is always much better than a patent application be drafted by a patent professional with a good understanding of both the underlying technology and patentability requirements.

As has already been indicated, claims are the most important aspect of a patent application. While drafting a patent application, claims usually are on the last page. As said, the claims are the heart of a patent as they define the limits of exactly what the patent does, and does not, cover. The patent when granted gives the patentee the right to exclude others from making, using, or selling, only those things which are described by the claims (as finally granted).

Writing claims is a fine balancing act. Broad claims have the lure of greater protection but, at the same time, the possibility of more challenges from existing prior arts. Narrower claims raise the fear of an invention easily being ‘designed around’ by others.

A patent professional is well versed in treading this fine line and make the best efforts to get the invention to its maximum protection possible.

The subject matter of the invention has a strong bearing upon this. For instance, while a method of treating human beings is not patentable in India, it is in the US. Again, while the method of treatment of humans is not patentable in India, the instrument used may be patentable. A patent professional is well-versed with such situations and can change application drafting and claiming strategies accordingly.

While the provisional specification has no such requirement, the complete specification has to Indeed it is in the interest of the inventor that the best method is described and appropriately claimed. Else others may just ‘design around’ the invention or the patent application (and the patent when granted) may be open to opposition or revocation.

Traditional knowledge is not patentable in India even though it may be patentable in other countries. Section 3 in India prohibits some inventions from being considered as inventions in India and traditional knowledge falls within that list under Section 3(p). You can refer to the IP India website for viewing this particular provision.

To fully understand this, this system needs to be compared with the first-to-invent system. In The first-to-invent system, whoever invents first gets the patent irrespective of who filed the patent application. In the first-to-file system, irrespective of who invented, whoever files the patent application first gets the patent. For instance, inventor A invents the machine but delays filing a patent application (that can even be a provisional application) for the same.

Meanwhile, inventor B invents the same machine and files a patent application or the same. Thereafter, even if inventor A files a patent application, that filed by inventor B will act as prior art and so prevent inventor A from getting the patent.

The first-to-file system is used in all countries including the United States, which switched to a first-inventor-to-file (FITF) system on March 16, 2013, after the enactment of America Invents Act. Prior to this, the US was following the first-to-invent system. The FITF system, in case of dispute, affords the first inventor a ‘grace period’ to file for his invention after public pre-filing disclosure. However, it is to be noted that such a ‘grace period’ is not granted in other jurisdictions that do not recognize such a period for disclosures made in advance of filing a patent application.

In such a situation, an inventor’s public disclosure of his invention may stand as prior art against his own invention! To avoid such ambiguities, it is strongly recommended that an inventor file at least a provisional application as soon as he is ready with a sufficient description of at least the core idea that he wants to be protected.

Any such admission, either during the drafting of a patent application or during the prosecution phase, qualifies as prior art. This again brings to the fore importance of good patent drafting, as well as appropriate drafting of various replies, etc. during the prosecution phase.

Drawings may be submitted along with a patent application by the applicant himself (on his own cognizance) to further illustrate the invention, whereas drawings may also be needed if they are required to be submitted by the Patents Controller. Drawings can be submitted along with provisional or complete specification.

Patent rights are usually enforced in a court on the initiative of the right owner. In most systems, a court of law has the authority to stop patent infringement. However, the main responsibility for monitoring, identifying, and taking action against infringers of a patent lies with the patent owner.

Once the patent application is filed, the following sequence of events happen:

• The patent office reviews the application to determine if the application relates to national security or atomic energy. If it is so, secrecy directions are issued. Such directions are issued within 6 weeks of the filing.
• The complete application is published after 18 months from the priority date.
• The application is examined and an examination report is issued.
• A response to examination has to be filed within 6 months from the date of issuance of the examination report.
• In case the Controller/Examiner is not convinced by the reply, a hearing notice is issued by the Controller, which hearing needs to be attended and a reply to the hearing notice is to be filed within 15 days from the hearing date, based on which the final decision is taken by the Controller on the instant application.

In India, pure business methods are not patentable as set out under Section 3(k) of Indian Patent Act. They may be patentable under other jurisdictions. You can refer to the IP India website for viewing this particular provision.

Patented or patent granted can be used only after a patent has been granted and not after only filing of application. However, after patent application filing, an inventor can use patent application pending, patent-pending and patent applied unless the patent application has been withdrawn/ refused/ abandoned.