Preparation of Patent Documents

Introduction

Property is defined as the highest right a man can have to anything and includes rights such as trademarks, copyright, patent etc.[1] In 1883, in the Paris Convention, the Industrial Property Protection was created and later in 1886 in the Berne Convention, the International Copyright Act was passed. On the basis of these conventions, WIPO was started in the year 1960 which became the international organization for the development and understanding of intellectual property rights.[2]

Patent is the mode that provides recognition of scientific development and protect such inventions which have potential for industrial application. Patent is granted to the inventions[3] which are novel, having an inventive step and are capable for industrial application. The invention herein is new when it is not anticipated or used anywhere else in the world.[4] The invention made should involve technical advancement, economic significance and should not be obvious to the person skilled in that art.[5] Additionally this invention should be used for industrial application. The term utility means that the invention practically works for the purpose it is made for.[6]

In India, the patent law is governed by the Patents Act, 1970[7] (the ‘Act’) and Patent Rules[8]. The object of the patent law is to encourage the inventors and see the incentive of rights over their property. The monopoly granted by the law to the inventor over the use, own or sells the method or the product sweeps in the commercial utility of the invention done. The patent is granted for the limited period of time[9] which after the expiry falls into the public domain.[10]

A patent is an official document provided by the Government to the inventor, protecting his rights and excludes others from exploiting the invention made. Therefore, the purpose of the Act and rules is to motivate the inventors by granting them right over their inventions and enhance the scientific research, industrial and technological progress. Patent is a reward to the inventor for disclosing his work to the world. It is necessary to understand the procedure and documents required for the patent application.

Lab Notebooks/ Log Books/ Record Books

These are the documents where the details of patent are stored by the inventor itself. Mostly engineers, scientists, inventors make the entry of their invention process, experiments, results, ideas, tests etc. Patent is granted to the person who files the application first or invents first, the lab book can be a strong persuasion towards the inception of the invention. For instance, the patent of telephone was challenged against Graham Bell. He defended the suit by his lab documents and testimony of his wife that he has the priority over the claimant. Generally the patents are dependent on the questions who and how the invention was done. The documentation of the patent is an essential part as it authenticates the process of invention.

One way to record the invention is in a bound notebook which is consequently numbered, dated,   and bears the signature of the inventor and the witness. It is not a legal document but strong evidence that can be used in the court.

Contents of Lab Notebooks

The lab notebook includes:

• Description of the idea and steps involved in the invention
• Attempts and procedure used for testing the invention
• Sketch, photo or blueprint of the invention
• Test result and conclusion
• Discussions and improvements made consequently

 How Information Is Entered In the Lab Book

The record book provides the chronological events during the course of invention therefore it should be correctly maintained. All entries must be duly dated and in case of any delay, the reason for delay should also be entered. It must be signed by the inventor  regularly /daily. Photos or entries that are printed can be self-attested and chronologically attached to avoid any hindrance. It should also be noted that in case entry is more than of one page it should be continuous.

Witnessing a Lab-Notebook

Notebook entries require to be witnessed by a person who understands the invention. The witness should not be an interested witness and inventor itself cannot be the witness. If the invention is simple mechanism then anyone can be the wittiness but if the invention is technical and requires the special knowledge in that field then the witness should be able to understand and acknowledge the tests and the results of the inventions.

Therefore, a witness should not have conflict of interest but should understand the invention. If called in Court, he must able to testify that he witnessed a particular act or invention on the day signed and witnessed.

Procedure and Filing Application For Patent

The application for patent starts with Form No.1 where an inventor alone or with others can apply for the patent application. He should be a “true and first inventor” of the invention or by the assignee of the person claiming to be true and first inventor or by the legal representative of the person, who before his death, was entitled to make the application.[11] Form no. 1 requires only the introductory part of the inventor and the address of the inventor. For every single invention there can be only one application and there can be no bifurcation with respect to process and substance. The application can be for an additional patent or patent under the Patent Cooperation Treaty. In 1970, the Patent cooperation Treaty was made where the inventors from the member countries could submit only one application for any number of groups.

Where to File An Application of Patent?

There are four head office(s) where patents can be – Delhi, Chennai, Kolkata and Mumbai. The application is to be filed within the territorial jurisdiction on the basis of domicile, residence or place of business of the inventor or where the invention took place.

Disclosures of Invention

Section 7(4) of the Act directs that while filing an application, the inventor has to disclose the information that provides the invention novelty, inventive step and its utility for industrial purpose, i.e. the application shall be accompanied with specifications. There are two types of specifications (Form No.2)[12] namely:

1. Provisional Specification; and
2. Complete Specification.

Form 2 has to be filled along with Form No.1. It can be either with provisional or complete specification. The first page of the Form 2 contains:

(a) Title of the invention;

(b) Name, address and nationality of each of the applicants for the Patent; and

(c) Preamble to the description.

Provisional Specification

This part of the filing deals with disclosure of the invention which is at its conceptual stage i.e. the full description of the invention is yet to be completed. The provisional specification does not grant any patent right but it forms the earliest ownership right over the invention. This specification has a permanent nature which means that it cannot be amended at any later stage. Provisional Specification is not necessary for the patent application but the complete specification is necessary.

As the provisional specification is received, the Patent Office provides the filing date and application number. In case there are two provisional applications, the complete specification shall include both the provisional specification and the date of filing complete specification will be 12 months from the earliest filed provisional specification. If the applicant fails to file the complete specification, the application shall be deemed to have been abandoned.

Complete Specification

Submission of complete specification along with the application is necessary for patent application. Complete Specification has to be filed within 12 months from the filing of provisional specification. This period can be further extended up to 3 months. The complete specification should be a detailed document describing all the claims regarding invention. It can include drawing, sketch and also the method which a person with ordinary skill of that field can understand. In order to have a complete patent, the specifications and the claims must be clearly and distinctly mentioned.[13]

A complete specification begins with a title – a preamble describing the title of the invention. This specification further includes the details of the inventions. Therefore, the complete specification also mentions the operation or the method by which invention has to be used. The patent is the award given for the special intellect used by the inventor therefore he also has to disclose the best method of using the invention. The next part consists of the claim/claims and lastly the abstract that provides the technical information.[14]

Patent Application and Its Content

A patent application should contain the document that recognizes the invention. Listed below are the documents required to make the complete application:

1. Form No.1 that is the introductory form. Part 1 of the form consists of the date of filing, amount of fee paid, and applicant’s identification no. (allotted by the patent office). Part 2 of the form inquires about the type of application i.e. ordinary, divisional, addition of patent, conventional or (PCT). Part 3 is divided into two sub-parts, the first one deals with applicants name, nationality, residence and address and the second asks for the category of application i.e. natural person or other than natural person i.e. small entity, a company or startup etc. It further deals with the information of the invention, patent agent and lastly certain declarations (as per the part 2 of the form). This part is a right to file the application and proof of such right is in the form of endorsement which is at the end of the form.
2. The next part is Form No.2 which deals with filing of Provisional/complete specification.
3. Form no. 3, as per section 8 of the Act has to be filed within 6 months or along with the application. Form no.3 is a declaration of the joint applicants that the patent application has not been filed outside India.[15]
4. Declaration of inventor ship i.e. Form no. 5 has to be filed along with complete specification but if the request of extension of time (Form no.4) is give by the controller then Form no.5 can be filled within 1 month from the date of filing of application.
5. Form No. 26 is an authorization to the patent agent or any other person in a matter or proceeding under the Act.[16]
6. Every application has to bear the signature of the applicant or authorized person/ Patent Agent along with name and date.
7. The Specification should be self attested/signed by the agent/applicant with date on the last page of the specification. The additional documents like drawing sheets/pictures etc. should bear the signature of an applicant or his agent in the right hand bottom corner.
8. The applicant is required to submit the permission from the National Biodiversity Authority, any time before the grant of the patent if the application is related with biological material obtained from India. The applicant is also required to clearly disclose the source of geographical origin of any biological material used in the specification.

Requirements for Patent Application

The documentation of the patent with respect to drafting mandates professional skill. The application of patent is reviewed over the years by business partners, patent examiners, judges etc. and therefore it has to be meticulously drafted. The application also comprises of the background, summary, claims, abstract, descriptions, drawings.

The background of the invention is the introduction of the invention that provides the imaginary expectation of the invention. The summary section is the brief analysis and overview of the invention. The drawing and the detailed description provide the answer as to how the invention is made and why it is to be patentable. Claims describe the grounds to grant protection on invention. Lastly, the abstract is the idea of the invention for which the patent has to be granted.

The patent completely rests on dates. The inventor and patent agent need to be very conscious about the dates. The claim of protection is against all the third parties in the world who are in the field of inventions for which patent is filed. Therefore the patent agent should make all the endeavors to file the application as quickly as possible. Since the work of application is time barred, the agents have to reschedule the filing time and again. The agents after filing the application should make a file containing all the documents submitted to the patent office along with the fee receipts. If the patent office does not provide the proper filing date then the patent agent has the original mail deposit receipt from the post office that has the date of deposit. The patent agent has to ensure that all provisional documents in the file are chronologically arranged so that the applicant’s rights are protected and crucial dates are observed.

For filing in other countries that are members to the Paris Convention, the application time is one year after the national filing date. If the applicant seeks protection from the countries not party to the Paris Convention, then the agent has to understand the rules and regulation of that country. Since the patent agent is not authorized to directly appear in the foreign patent offices, he may need assistance of a foreign associate attorney. There are several models for such interaction. In cases where the patent agent who filed the original application takes all the decisions on the basis of the where the foreign associate sends him the information regarding the local rules and regulations is known as “hands off” model. On the other had when the patent agent is only the approver of the steps taken by the foreign associate then it is a “hands on” model.

Obtaining Invention Disclosure from Inventors

The patent agent and the inventors have different approaches to communicate. Some inventers need guidance for patent filing while some inventers may have administrative units to make the disclosures. The inventor should provide the Invention Disclosure Form and supporting documents to the agent. The agent will review, inquire and wherever necessary, ask for additional disclosures. The agent should be well aware of the invention, dates and confirm no pending bar dates over any application.

Identifying Patentable Inventions

After all the disclosures the other necessary step is to identify the patentable details of the invention. It is not necessary that the invention is about novelty but all the non-patentable details should also be verified. The agent should also check as to what makes the invention patentable.

Understanding the Invention

The patent agent needs to understand the invention as he has to draft the application with least limitation over the claim. During the specification, the patent agent has to bear in mind that it is he who discloses all the patentable aspects and thus should be done in a manner that is easily understood by a person related to that field. The patent agent may have in depth knowledge of the invention but he should ensure that there are no missing gaps in the specification. Adequate flow of links should confirm that any substitute of missing material should be in compliance with spirit of the invention.

Typical Parts of Patent Application

All the parts of the application are typical including the title of the invention. The title of the invention should neither be very descriptive nor narrow. The title should be such that it discloses the subject matter and gives the relation of invention and the field it is related to. The name of the inventor or inventors should be correctly listed after the title. The important aspect while making the application should be to keep in mind as to the people who are going to review it and thus should be easily be comprehensible to them.

Claims

The primary object of patent is to secure the right and claim over the invention. The patent agent carves out the claims with the inventor which subsequently also helps in understanding the invention. It is advised that the claims should be drafted prior to the specifications as this will make the agent the well aware of the specific claims, terms and reason of the invention. The claims form an important part of the application in determining whether the invention is patentable or not.

Drafting Specifications

This is the most essential part of the claim and application as the disclosures made in the specification gives the explanation about the invention. Sometimes the term “detailed description” and “specifications” are used interchangeably. The specifications must contain all the details necessary like drawings, sketch and explanation to specific parts. The agent must ensure that all the technical details required for the patent are disclosed. This part of the application cannot be amended at the later stage and hence has to be drafted with due care and caution. The patent agent must include any unclaimed part of the invention in the claim. The agent while drafting, must avoid using terms which gives narrow interpretation and preferably use terms that give specific information about the invention. For eg. The (name of the part of invention) embodied in invention should be used in drafting.

Therefore an agent should be focused on:

• The language, law and interpretation of the drafting;
• The fact that the application must disclose all the material provided by the inventors;
• Provide enough articulation on invention that an ordinary prudent man of that field is able to execute the invention; and
• Sufficient explanation and depth to the claims, which could be narrowed during patent prosecution.

Drawings

Drawings are the other essential part of the application. Wherever possible the drawing must be able to clarify and explain the part of the invention. Every part of the invention that is represented in drawing should be allotted a reference number. The list of the drawing should be mentioned in the application and must have a heading elucidating that the drawing is for the purpose of illustration of one or more embodiment.

Background

This section of the application deals with the pre-existing art relating to the invention. In the European system, the background section discloses the previous art during the examination, whereas in the US patent system prior art is mentioned on the cover of patent itself.

A very crisp technical disclosure of the pre-existing art should be mentioned with short details of the shortcomings. The background should be written in such a manner that it does not provide the solution but the analysis of the prior art used before invention.

Abstract and Summary

A very clear, articulated description of the invention should be given in least number of words. The summary is not necessary in all jurisdictions however some agents prefer to write the summary to highlight the most relevant part of the invention that is part of the claim. This approach provides the advantage of writing the claims in few words and making the claim clear for the readers. This should be the last part of the application and must not be the in-depth explanation of the invention.

Conclusion

The patents are the rights given to the inventor by the government for the labor and intellect of the inventor. Such rights are to be claimed and procedure for claiming such rights should be wisely followed. The patent agent plays a vital role in securing patent for the inventors. All the important aspects like data, documentation, and drafting needs the professional guidance which should be rightly exercised with all the endeavors to get the invention patentable.

References:

[1] R.C. Cooper v. Union of India, 1970 AIR 564.

[2] Prabu S. Lakshmana et al, Intellectual Property Rights and its development in India, Pharma Times, 2012.

[3] Raj Prakash v. Mangat Ram Choudhary, R 1978 Del. 1.

[4] The Patents Act, 1970, No. 39, Acts of Parliament, 1970 (India), § 2(l).

[5] The Patents Act, 1970, No. 39, Acts of Parliament, 1970 (India), § 2(J)(a).

[6] Lakhapati Rai  v. Srikissen Dass, (1919) ILR 61 All 68.

[7] The Patents Act, 1970, No. 39, Acts of Parliament, 1970 (India).

[8] The Patents Rule, 2003.

[9] The Patents Act, 1970, No. 39, Acts of Parliament, 1970 (India), § 53.

[10] Bishwanath Prasad Radhey Shyam v. H.M. Industries, AIR 1982 SC 1444.

[11] The Patents Act, 1970, No. 39, Acts of Parliament, 1970 (India), § 2(1)(y).

[12] The Patents Rule, 2003, Rule 13.

[13] Imperial Chemical Industries Ltd. v. Controller General of Patents, designs & Trade Mark, AIR 1978 Cal.77.

[14] The Patents Act, 1970, No. 39, Acts of Parliament, 1970 (India), § 10.

[15] The Patents Rule, 2003, Rule 12.

[16] The Patents Act, 1970, No. 39, Acts of Parliament, 1970 (India), § 127 & 132; The Patents Rule, 2003, Rule 135.