Tag: prior art

What is provisional and non provisional patent? How long does a non provisional patent last? How much does it cost to file a non provisional patent? What are the 3 types of patents?

Non- Provisional Patent Drafting

A non-provisional patent draft is a techno-legal document describing the invention in-depth and discloses the best method of carrying out the invention. Thus, also known as a complete patent application.

It is directly filed before the patent office by either a patent agent or an inventor where the inventor wishes to protect the invention.

A Complete specification / non-provisional  specification can be filed with either of the following two options:

1. Direct filing – Complete specification is filed directly before the Indian Patent office without filing any corresponding provisional specification.

2. Subsequent filing-

  • The complete specification is filed subsequently after filing a corresponding provisional specification within 12 months of the provisional application.
  • Using the PCT route

Analogy of Complete specification:

  1. Title
  2. Preamble to the invention
  3. Technical field of the invention
  4. Background of the invention
  5. Objects of the invention
  6. Statement of the invention
  7. Brief description of the drawings
  8. Detailed description of the invention
  9. Claims
  10. Abstract

Our Strategy

  • Thorough understanding of the invention disclosure form

  • Marking the important elements of the invention

  • Discussing with the inventor.

  • Claim Drafting

Incorporation of all the embodiments and illustrations Claim Enablement

First Set of claim preparation

Review and suggestions by the inventor

Incorporating the Inventor’s inputsSending to the inventor for the review for approval

Repeating step 2,3 and 4 till client’s approval

Final claims prepared after the final client approval.

  • Drafting Specification

Incorporation of all embodiments and illustrations

Claim Enablement

  • Sending the complete draft for multiple reviews.

  • Seeking an attorney review ( if applicable)

  • Sending the patent draft to the client

  • Incorporating suggestions from the client/ attorney

  • Preparing the final draft.

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Mosaicing Indian Patent Law

As per the Indian Patents Act 1970, an invention is patentable when it satisfies the following criteria:

  1. It is novel

  2. It has an inventive step or it must be non-obvious

  3. It has Industrial applicability

  4. It doesn’t fall under section 3 and 4 of the Patents Act 1970.

A person skilled in the art accesses methodologies for evaluating inventive step based patent laws.

Mosaicing provides the patent examiner to evaluate inventive step in light of two or more pieces of prior art information in combination, provided that a person skilled in the relevant art could reasonably have been expected to combine such information.

‘Prior Art’ is any “state of knowledge existing before the priority date of the claimed application.” Inventive step is always determined in relation to any matter published in any document anywhere in the world or any use before the priority date of the claim.

Mosaicing of prior art documents is permissible in the determination of the inventive step.

IPO guidelines for mosaicing:

  1. Mosaicing of prior art documents is not followed in the determination of novelty

  2. The cumulative effect of the disclosures cannot be taken into consideration nor can the lack of novelty be established by forming a mosaic of elements taken from several documents. This may be done only when arguing obviousness.

Case Law: In OA/8/2009/PT/CH [250/2012] IPAB held – “to defeat novelty, the appellant should show that an earlier document, disclosed all that the patentee is seeking to patent. And that each limitation of the claimed invention is found in a single prior art reference. The appellant has not done this. So the attack on novelty is rejected.”

A mosaic of extracts culled from several documents has not been accepted as constituting a relevant anticipation (Decision of the Controller (1942) Re. Patent Application No. 27709).

A ‘mosaic’ of separate steps, each known in manufacture, is not sufficient to constitute ‘anticipation’ as to warrant the refusal of grant of a patent, though they may have a bearing upon the question of quantum of ingenuity which arises when a court is called upon to consider whether there is ‘subject matter’ for a patent in the invention (Decision of the Deputy Controller (1946) Re. Patent Application No. 32384.)

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