CS Professional · Intellectual Property Rights - Law and Practice

Patent Databases and Patent Information System: formula sheet

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Key formulas

Invention: Invention = new product or process + inventive step + capable of industrial application; Section 2(1)(j). Use it to explain why prior art searching tests novelty and inventive step.
Inventive step: Technical advance and/or economic significance + not obvious to a person skilled in the art; Section 2(1)(ja). A search finds the prior art against which obviousness is judged.
New invention: Not anticipated by publication in any document or use, in the country or elsewhere in the world, before the date of filing with complete specification; Section 2(1)(l). The search scope is global.
Information in a patent document: Patent information = bibliographic data + technical disclosure + claims + legal status; A memory aid for answering what information a patent document contains. It is not a statutory formula.
Objectives of granting patents: Encourage invention + working in India + technology transfer and dissemination + public interest + affordable prices; Section 83(a), (c), (d) and (g). Use these to link patent information to policy.
Prior permission for filing abroad: Resident in India: file in India first, at least six weeks before filing outside India, unless Controller's written permit is obtained; Section 39(1). Also requires that no secrecy direction under Section 35(1) is in force, or that all such directions are revoked. It does not apply if the application was first filed abroad by a person resident outside India (Section 39(3)).
Prior art scope under section 13(2): Anticipation by publication in India or elsewhere, before the date of filing of the complete specification; The examiner's search is not limited to Indian documents.
Section 13(4) disclaimer: Examination and search ≠ warranty of validity; no Central Government liability; Use this when asked whether a search guarantees a valid patent.
Foreign filing by residents (section 39): Indian application at least 6 weeks earlier + no section 35(1) direction in force (or revoked), or a written permit from the Controller; Defence or atomic energy inventions need the Central Government's prior consent before a permit.
Multiple priorities (section 137): One application within 12 months from the earliest basic application; priority date = date matter first disclosed; Helps you read patent families in databases.
IPC symbol structure: Section (letter) + Class (2 digits) + Subclass (letter) + Main group / Subgroup (numbers); Example: A61K 9/00. A = section, 61 = class, K = subclass, 9/00 = main group. A subgroup follows the slash with digits other than 00.
IPC sections: A Human Necessities | B Operations and Transporting | C Chemistry and Metallurgy | D Textiles and Paper | E Fixed Constructions | F Mechanical Engineering, Lighting, Heating, Weapons | G Physics | H Electricity; Eight sections in all. Learn them in order A to H.
IPC hierarchy: Section → Class → Subclass → Main group → Subgroup; Moves from broad to narrow technology.
CPC relationship to IPC: CPC = IPC-based structure + finer subdivisions + Section Y; CPC is a joint EPO and USPTO scheme. It is more detailed than IPC but follows the same format.
Term of a patent (for context): 20 years from the date of filing (section 53(1)); for PCT applications designating India, from the international filing date; Classification does not change the term.
Section 153 entitlement: Request to Controller (prescribed manner) + patent or application specified + prescribed matters + prescribed fee = entitled to information; All four elements must be present. The Act leaves the matters, manner and fee to the rules.
Official Journal (s.145): Controller publishes periodically an official journal with information required by the Act or rules; Section 145 was substituted by the 2005 Amendment Act, w.e.f. 1-1-2005.
Register inspection (s.72(1)): Register open to public at all convenient times; certified sealed copies on prescribed fee; Subject to the Act and the rules.
Evidentiary value (s.72(2)): Register = prima facie evidence of matters required or authorised to be entered; Prima facie means it can be rebutted.
Restriction on officers (s.76): No furnishing of information except as the Act requires or authorises, on written direction of the Central Government or Controller, or on court order; This balances public access with confidentiality.
Rule-making (s.159): Central Government makes rules by notification, after previous publication; Fees, forms, register maintenance and inspection times are rule matters. Previous publication can be dispensed with if compliance is practically not possible.
Section 146(1): notice-based demand: Written notice by Controller → reply within 2 months (or further time allowed); Applies at any time during the continuance of the patent, to a patentee or a licensee, exclusive or otherwise.
Section 146(2): standing duty: Every patentee and licensee → statements on commercial working in India → at prescribed intervals, not less than six months apart; Manner and form are prescribed by rules. The Act sets only the floor on the interval.
Section 146(3): publication: Controller may publish information received under 146(1) or 146(2); Publication is in the prescribed manner. It is a power, not a duty.
Section 122(1): fine: Refusal or failure to furnish information under s.146 → fine up to ₹10 lakh; Also covers failure to give the Central Government information required under section 100(5).
Section 122(2): false information: False information, known or believed false → imprisonment up to 6 months, or fine, or both; The person must know or have reason to believe it is false, or not believe it to be true.
Who is bound: Officer or employee in the patent office; The restriction is on the office staff, not on applicants or the public.
Three prohibited acts (Section 76): (a) furnish information on a matter dealt with under the Act; (b) prepare or assist in preparing a document to be lodged in the patent office; (c) conduct a search in the office records; Each is a separate prohibition. Cover all three in an answer.
Three exceptions: Required or authorised by the Act; OR written direction of the Central Government or the Controller; OR order of a court; Direction must be in writing. The words "or Appellate Board" were omitted by Act 33 of 2021.
Matter covered: A matter being, or has been, dealt with under the Act; Covers pending and past matters.
Related rule (Section 75): No officer or employee may acquire any right or interest in a patent issued by that office during appointment, except by inheritance or bequest; Linked conflict-of-interest rule.
Public access (Section 153): Request to the Controller in the prescribed manner + prescribed fee = entitled to information on prescribed matters; Shows the lawful route to information.

Quick revision

Patent information helps check novelty, avoid infringement and track competitors.
Databases store patent records; search tools help you find them; classification narrows the search by technology field.
Section 153: on a prescribed request and fee, a person is entitled to information on prescribed matters about a specified patent or application.
Section 146(1): the Controller may, during the patent's life, require a patentee or licensee by written notice to give information on commercial working in India.
Section 146(1) time limit: two months from the notice date, or such further time as the Controller allows.
Section 146(2): every patentee and licensee must furnish working statements at prescribed intervals, not less than six months.
Section 146(3): the Controller may publish the information received, in the prescribed manner.
Section 122(1): refusing or failing to furnish section 146 information is punishable with fine up to ten lakh rupees.
Section 122(2): knowingly false information is punishable with imprisonment up to six months, or fine, or both.
Section 76: officers and employees of the patent office must not furnish information, assist in preparing documents or conduct record searches, except as the Act, a written Government or Controller direction, or a court order allows.
Section 75: patent office staff cannot acquire any right or interest in patents issued by that office during their appointment, except by inheritance or bequest.

Common mistakes

Treating the abstract as the scope of protection. Fix: State that the claims define what is protected. The abstract and bibliographic data help you find and identify the document.
Limiting a prior art search to Indian patents. Fix: Quote Section 2(1)(l): novelty is lost by publication or use in the country or elsewhere in the world. Search foreign patents and non-patent literature as well.
Treating one database as complete. Fix: Say that coverage varies and a proper search uses several databases and classification codes.
Saying a clear search proves the patent is valid. Fix: Cite section 13(4): examination and investigation do not warrant validity.
Saying CPC is administered by WIPO. Fix: Remember: IPC is WIPO's. CPC is the joint scheme of the EPO and USPTO.
Listing the wrong number of IPC sections or mixing up letters. Fix: Learn all eight, A to H, with a memory line for each. Check against the list in this page.
Saying the information is free of cost. Fix: Always write 'subject to payment of the prescribed fee'.
Stating specific fee amounts or forms from memory. Fix: Say the manner, matters and fee are 'prescribed' by rules under s.159. Do not invent figures.
Saying only the patentee must supply information. Fix: Write 'patentee or licensee, exclusive or otherwise' every time.
Treating the two-month limit as fixed. Fix: Add 'or such further time as the Controller may allow'.

Exam tips

Structure answers as provision, analysis, conclusion. Even a short note should link patent information to a use and a decision.
Always separate bibliographic data, technical content, claims and legal status. Examiners reward clear classification.
When a case names a company and a product, state the exact search you would run and what you would look for in results.
Cite Section 2(1)(j), (ja), (l) and Section 83 accurately. Do not add section numbers you are unsure of.
Because the elective is open book, mark the definitions and Section 83 in your copy so you can quote them quickly.
Name the database and its operator, and state its main use in one line.
Always add the legal hook: section 13 for searches, section 39 for foreign filing.
In case questions, follow provision, analysis of facts, conclusion.