Condition on Patent application

From Advocatespedia, The Law Encyclopedia
Jump to: navigation, search
A patent, is a license granting an individual the sole right to an invention, idea, or discovery. If an individual has patented an invention, other individuals are not allowed to make, use, sell, or own such invention, idea, or discover (that is, unless the inventor gives such individuals permission to do so).
Condition on Patent application
Author‎Riti Rashmi
Published on20 August 2019
EditorFaiyaz Khalid
Last Updates14/05/2019

A patent application is a request submitted to a patent office which contain’s the inventor’s request for his/her invention to be patented. [1]

For example, an individual (usually a person majoring in the sciences) discovers a new species of an animal, he/she may request the discovery to be patented in order to be recognized as the sole owner of such discovery.


In order for your invention to be patentable, it must meet certain conditions. The invention must be new, inventive and industrially applicable. In order to be eligible for patent protection an invention must fall within the scope of patentable subject matter. Patentable subject matter is established by statue and is usually defined in term of exception of patentability the general rule being patent protection shall be available for invention in all field of technology( Article 27.1 of the TRIPS Agreement). [2]


There are majorly six types of patent applications in India:


An ordinary application is a type of patent application filed at the Patent Office in which there is no priority is claimed or an application that is made without any reference to any other application under process in the office is called an ordinary application. It can also be stated that in an ordinary application the filing date and the priority date are same. An ordinary application shall be accompanied with a complete specification and claims. The timeline for the progression of an ordinary application is calculated from date of filing of the ordinary application at Indian patent office.


A patent application that is first filed in a convention country and then within the 12 months from date of priority of the application so made in the convention country is filed in India is known as convention patent application. Basically a convention application is the patent application which has already been filed in a country other than India, and now the application for the same invention is being made in India. In order to get convention application status, the applicant is required to file the application in the Indian Patent Office within 12 months from the date of first filing of a similar application in the convention country along with complete specifications.


A PCT Application is a type of patent application that is essentially governed by the Patent Cooperation Treaty, and can be filed upto 142 countries. A PCT Application allows you to claim your priority in multiple countries and it also gives a time period of 30 and 31 months from the international filing date or priority date to enter into each of the country and claim a protection in every country where the applicant is desirous of protecting its invention. A PCT Application shall be filed within 30 months from the international filing date or priority date whichever is earlier in India. A PCT application can be filed with complete specifications only.

PCT NATIONAL PHASE APPLICATION When an international application is made according to PCT designating India, an applicant can file the national phase application in India within 31 months from the international filing date or the priority date (whichever is earlier).

In case the applicant has filed an ordinary application in India first and now wish to file PCT application he/she must file the PCT within 12 months from the date of filing of the Ordinary Application in India.


When you have already file for a patent application and now you came across a new improvement of modification for the same invention, you can go ahead for patent of addition if the invention does not involve a substantial inventive step. The patent of addition can be filed anytime after filing the main patent or along with the main patent and it will only be granted after the grant of main patent. The major advantage of filing for patent of addition is that you are not required to pay separate renewal fee for the patent of addition during the term of the main patent and it expires along with the main patent.


A patent is granted only for single patent therefore, in case a patent application claims more than one invention the applicant is required to claim or file for a separate patent application that is known as divisional patent application. As the divisional patent application arises from the parent application hence it has the same priority date as that of parent patent application.


Depending on the geographical area there are several rules or guidelines regarding patent applications which one need to follow.

• Assign a title or name for your invention (or discovery).

• Provide a few statements regarding the background of your invention or the field it belongs to.

• Give a detailed description of your invention. Write the description of your invention (or discovery) in a manner that can be easily understood. Explain the technical terms clearly.

• Write in a clear and precise format. Different patent offices prefer different format of patent applications. Others may also be concerned about the smallest details, such as margins, paper quality and size, among others. Abide by the rules of the patent office you are currently applying your patent to.

• Attach a few drawings to prove your claims. In most cases, people prefer drawings which are not colored in order to clearly emphasize the details (e.g. lines, marks, etc).

• Indicate specifics. For an invention, for example application , one needs to indicate the size, length, width, function, and other specifics regarding the invention.

• Assign numbers to each figure (diagrams, illustrations, pictures) and each part of the figure. This is for easy identification and description of each figure and part.

• Indicate how your invention is unique to other inventions. Provide instructions on how to use the invention. You may also include a description as to how your invention can be useful in the society as a whole .

Section 6 of the Act provides that an application for a patent for an invention may be made by any of the following persons either alone or jointly with another:

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 of any deceased person who immediately before his death was entitled to make such an application.

As per Section 2(1)(y), “true and first Inventor” does not include either the first importer of an invention into India or a person to whom an invention is first communicated from outside India.

The applicant should disclose the name, address and nationality of the true and first applicant.

Assignee can be a natural person or other than natural person like registered company, research organization, educational institute or Government (S.2 (1)(s)). Assignee includes assignee of the assignee also (S. 2(1)(ab)). ‘Proof of right’ to apply such as assignment deed should be submitted by the assignee.

Legal representative means a person who in law represents the estate of a deceased person (S.2 (1)(k)). In such a case, they should file death certificate etc. as proof of right. In case of a convention application, the legal representative or assignee of the applicant in the Convention Country can also file a Patent Application in India.

Form of Application

Section 7: deals with form of application requires every application for a patent to be made for one invention only. Where the application is made by virtue of an assignment of the right to apply for a patent for the invention, there shall be furnished with the application proof of the right to make the

Application. . But it is not possible to bifurcate a patent and state that it relates to the substance and the other to the process. In order to have a complete patent, the specifications and the claims must be clearly and distinctly mentioned as in the case of [Imperial Chemical Industries Ltd. v. Controller General of Patents, designs& Trade Mark & Another AIR 1978 Cal.77.]

Every international application under the Patent Cooperation Treaty (PCT) for a patent, as may be filed designating India shall be deemed to be an application under the Act, if a corresponding application has also been filed before Controller in India. The filing date of such application and its complete specification processed by patent office as designated office or elected office shall be the international filing date accorded under the PCT. Section 7(4) provides that every such application, not being a convention application or an application filed under PCT designating India, shall be accompanied by a provisional or a complete specification.

Mention should be made that obtaining patents can be a long and expensive process. Fortunately for inventors several countries in 1970 decided to simplify the process for protecting patents around the world by creating the Patent Cooperation Treaty (PCT). Under the Patent Cooperation Treaty, inventors can submit just one international application which is valid in any or all of the more than 120 countries that are members of this Treaty. Inventors may apply for a patent either in all the member countries of PCT or in selected group of countries. Only inventors who are citizens or residents of the member countries of the PCT can use this easier system to file international patent applications.

Example to understand which items can be patented and which can’t:

Imagine that you have invented a bicycle generator. Can you get a patent for your invention? Yes, if your bicycle generator is completely new, meaning not known anywhere in the world. It must also differ significantly from the generators that are known, and generate electricity every time it is used. Which aspects of your invention can be patentable?


A new generator (the technical solution)

Use of the generator on a bicycle

A method of manufacturing the gen


The mathematical formula for how the generator produces electricity

A scheme for how to sell the generator
  2. for a patent
  3. ] of patent