Patent Documentation, Examination and Infringement: formula sheet

Key formulas

Title and description (Section 10(1))

Every specification (provisional or complete) = title indicating subject-matter + description of the invention

Applies to both types. Claims are not mandatory in a provisional specification.

Contents of a complete specification (Section 10(4))

(a) full and particular description + (b) best method + (c) claims + (d) abstract

Remember as: describe, best method, claims, abstract.

Claims test (Section 10(5))

Single invention or single inventive concept + clear and succinct + fairly based on the specification

Three conditions. Quote them in a drafting answer.

Time for complete specification (Section 9(1))

Complete specification within 12 months of filing the application with a provisional specification; otherwise deemed abandoned

Does not apply to a convention application or a PCT application designating India.

Treating a complete specification as provisional (Section 9(3))

Request within 12 months of filing → Controller may direct it to be treated as provisional

Only for applications that are not convention or PCT applications.

Post-dating (Section 9(4))

Request before grant of patent → Controller may cancel provisional specification and post-date the application to the complete specification's filing date

Applies where a complete specification was filed after a provisional one.

Priority date of a claim (Section 11)

Claim fairly based on provisional specification → date of filing of that specification. Otherwise → date of filing of the complete specification (Section 11(6), subject to Section 137)

Claim based partly on two earlier specifications takes the later date (11(3)(b)). A claim with several dates takes the earliest (11(5)).

Later complete specification on an earlier Indian application (Section 11(3A))

Complete specification within 12 months of the earlier application and claim fairly based on it → priority date = date of earlier application

Matter must have been first disclosed in that earlier application.

PCT application designating India (Sections 10(4A), 138(4)-(5))

Title, description, drawings, abstract and claims filed internationally = complete specification; filing date = international filing date

Amendments before the international authorities can be treated as made before the Patent Office if the applicant so desires (Section 138(6)).

General rule of confidentiality

No application is opened to the public for the prescribed period (Section 11A(1))

The Patents Rules prescribe 18 months from the filing date or priority date, whichever is earlier.

Early publication

Request to Controller, in prescribed manner, before the period expires; Controller publishes as soon as possible (Section 11A(2))

Subject to the exceptions in sub-section (3). A prescribed fee and form apply under the Rules.

Applications not published

Secrecy direction under s.35, or abandoned under s.9(1), or withdrawn three months prior to the period (Section 11A(3))

Withdraw at least three months before the period ends to avoid publication.

Secrecy cases

Published after the period or when the direction ceases, whichever is later (Section 11A(4))

Section 36 requires review of the direction every six months.

Contents of publication

Date of application + application number + applicant's name and address + abstract (Section 11A(5))

Specification and drawings can be made available by the patent office on payment of the prescribed fee (11A(6)(b)).

Rights after publication

From publication to grant: like rights as a patentee, but no infringement suit until grant (Section 11A(7))

For section 5(2) applications made before 1 January 2005, rights accrue from grant; only reasonable royalty from certain enterprises, and no infringement proceedings against them.

Bar on earlier publication

No publication before the prescribed period without the applicant's consent (Section 143)

Subject to Chapter VII, which deals with secrecy of inventions relevant for defence.

Rule of Section 11B(1)

No examination without a request by the applicant or any other interested person, in the prescribed manner, within the prescribed period

Manner and period are prescribed by rules, not stated in the section.

Consequence of default, Section 11B(4)

No request within the period ⇒ application treated as withdrawn by the applicant

Applies to the period under sub-section (1) or (3).

Proviso (i) to Section 11B(4)

Applicant may withdraw at any time after filing but before grant, by request in the prescribed manner

Voluntary withdrawal is separate from deemed withdrawal.

Proviso (ii) to Section 11B(4)

Secrecy direction under Section 35 ⇒ request within the prescribed period from the date of revocation of the direction

The time runs from revocation.

Rule-making power, Section 159(2)(id)

Central Government prescribes the manner of the request and the period under Section 11B(1) and (3)

Use this to explain why the section refers to the "prescribed" period.

Link to Section 12(1)

Request made ⇒ Controller refers the application to an examiner at the earliest

The examiner reports on compliance, grounds of objection, Section 13 search results and prescribed matters.

Trigger for referral

Request for examination under s.11B (sub-s.(1) or (3)) → Controller refers application to examiner at the earliest

Without a valid request, Section 12 does not begin.

Matters in the examiner's report (s.12(1))

(a) compliance with Act and rules; (b) lawful ground of objection to grant; (c) result of s.13 investigation; (d) any other prescribed matter

Learn as four heads. Head (c) links to Section 13.

Time for the examiner's report (s.12(2))

Examiner shall ordinarily report within such period as may be prescribed

The Act does not fix the number of days. The period is in the Patents Rules. Do not quote the old eighteen-month period as current law.

Scope of Section 13 search

s.13(1): Indian specifications (a) published before filing date, (b) with earlier priority/filing date but published on or after it; s.13(2): publication in India or elsewhere in other documents before filing date

Section 13(3): an amended specification before grant is examined and investigated in the same way.

Controller's duty on adverse report (s.14)

Adverse report or amendment needed → communicate gist of objections as expeditiously as possible → hearing if applicant so requires within prescribed period

The hearing is on request. The time limit for reply and hearing request is in the rules.

No warranty of validity (s.13(4))

Examination and investigation ≠ warranty of validity; no liability on Central Government or officers

Useful conclusion line in any answer on the effect of examination.

Pre-grant opposition: who and when

Any person; after publication of application, before grant (s. 25(1))

Made in writing to the Controller. The opponent is heard only if he requests a hearing.

Post-grant opposition: who and when

Person interested; after grant, before one year from publication of grant (s. 25(2))

Notice of opposition in the prescribed manner. Time runs from publication of grant, not the date of grant.

Post-grant procedure

Notice → Controller notifies patentee → Opposition Board → recommendation → hearing → order (s. 25(3), (4))

The Board only recommends. The Controller decides.

Controller's possible orders

Maintain, or amend, or revoke the patent (s. 25(4))

If amended, the patent stands amended accordingly (s. 25(6)).

Closed list of grounds

Clauses (a) to (k), 'but on no other ground'

Both routes use the same eleven grounds, with small wording changes for granted patents.

Evidence limit in post-grant

For grounds (d) and (e) of s. 25(2), ignore personal document, secret trial or secret use (s. 25(5))

Applies only to post-grant opposition on public use and obviousness.

Restoration of lapsed patent

Opposition only on: failure to pay renewal fee was not unintentional, or undue delay in applying (s. 61(1))

Do not mix with section 25 grounds.

Court with jurisdiction

Infringement suit → not below a district court; with revocation counter-claim → High Court

Section 104. The suit and the counter-claim go to the High Court together.

Reliefs available

Injunction + (damages OR account of profits) + seizure, forfeiture or destruction of infringing goods

Section 108. The plaintiff chooses one of damages or account of profits. Destruction is without compensation.

Innocent infringer

No damages or account of profits if defendant proves no awareness and no reasonable grounds to believe the patent existed

Section 111(1). Injunction is still available under Section 111(4). The label "patented" without the patent number is not enough to show awareness.

Exclusive licensee

Exclusive licensee may sue for infringement after the date of licence; patentee joined as plaintiff or added as defendant

Section 109. The added patentee is not liable for costs unless he appears and takes part.

Partially valid specification

Valid claim infringed → relief; if invalid claim not framed in good faith with reasonable skill → injunction only

Section 114. If the invalid claim was framed in good faith, full relief is available, subject to court discretion on costs and date of damages.

Groundless threats

Aggrieved person may seek declaration + injunction + damages

Section 106. Mere notification of the existence of a patent is not a threat.

Section 107(1)

Any ground of revocation under section 64 = ground of defence in an infringement suit

The defendant can challenge validity of the patent within the infringement suit.

Section 107(2)

Making, using, importing a machine, apparatus or article, using a process, or importing, using or distributing a medicine or drug in accordance with section 47 conditions = defence

State the section 47 link; do not invent its clauses.

Section 107A(a)

Making, constructing, using, selling or importing solely for uses reasonably related to development and submission of information required under law (India or abroad) = not infringement

The word 'solely' is the test. Commercial sale for profit falls outside.

Section 107A(b)

Importing patented products from a person duly authorised under the law to produce and sell or distribute = not infringement

Authorisation is under the law of the producing country, not necessarily by the patentee.

Section 111(1)

No damages or account of profits if defendant proves that at the date of infringement he was not aware and had no reasonable grounds for believing the patent existed

Injunction is still available under section 111(4). The word 'patented' without the patent number does not fix awareness.

Section 104 proviso

Counter-claim for revocation by defendant = suit and counter-claim transferred to the High Court

Suit is heard in a district court or above; revocation counter-claim moves it to the High Court.

Quick revision

• Section 11B(1): no examination unless a request is made in the prescribed manner and period, by the applicant or any other interested person.
• Section 11B(4): no request in time means the application is treated as withdrawn.
• Section 11B proviso: the applicant may withdraw at any time before grant.
• Where a secrecy direction under section 35 applies, the request may be made within the prescribed period from its revocation.
• Section 12: the Controller refers the application to an examiner after a request is made.
• The examiner reports on compliance, lawful grounds of objection, section 13 investigations and other prescribed matters.
• Section 57: the Controller will not decide an amendment application while an infringement suit or a High Court revocation proceeding is pending.
• Section 78: the Controller may correct clerical errors on request or on his own, after notice and a hearing in the latter case.
• Section 106: a person threatened with infringement proceedings may seek a declaration, an injunction and damages; merely notifying that a patent exists is not a threat.
• Section 107(1): every ground of revocation under section 64 is available as a defence.
• Section 107(2): conditions in section 47 are a defence for making, using, importing or distributing certain articles, processes or medicines.
• Section 111: no damages or account of profits against a defendant who proves he was unaware, with no reasonable grounds to believe the patent existed; the court can still grant an injunction.

Common mistakes

• Saying a provisional specification must contain claims. Fix: Section 10(4)(c) requires claims only for a complete specification. A provisional specification needs a title and a description.
• Giving the priority date of every claim as the filing date of the application. Fix: Check each claim. A claim fairly based on the provisional gets the provisional's date. A claim that adds new matter gets the complete specification's date.
• Counting 18 months only from the filing date even when priority is claimed. Fix: Always check for a basic application in a convention country (section 135) and take the earlier date.
• Saying the applicant can sue for infringement as soon as the application is published. Fix: Write both: rights like a patentee from publication, but no infringement proceedings until the patent is granted.
• Writing that only the applicant can file the request. Fix: Quote the words "the applicant or any other interested person" from Section 11B(1).
• Stating a specific number of months as the time limit in the section. Fix: Say the period is prescribed. Attribute it to the rules made under Section 159(2)(id).
• Saying the examiner decides whether the patent is granted or refused. Fix: Write that the examiner only reports to the Controller. The Controller considers the report and disposes of the application.
• Quoting 'eighteen months' as the time for the examiner's report. Fix: Write that the examiner reports ordinarily within the period prescribed. The 2005 amendment replaced the eighteen-month period.
• Saying only a person interested can file a pre-grant opposition. Fix: Remember: pre-grant means 'any person'; post-grant means 'any person interested'.
• Counting the one-year period from the date of grant. Fix: Write: before expiry of one year from the date of publication of grant.

Exam tips

• Learn Section 10 as a list. Examiners often ask for the contents of a complete specification as a short note.
• In comparison questions, set provisional against complete on purpose, claims, time limit and effect on priority. Keep it to four or five rows.
• For date problems, work out each claim separately and show the 12-month calculation in a line.
• Quote the Section 10(5) test in drafting questions. Then apply it claim by claim to the facts.
• Remember the exclusion for convention and PCT applications whenever you cite Section 9(1) or (3).
• Begin every answer with Section 11A and say the period is 'prescribed', then name the 18-month Rules period.
• In case questions, write the date calculation explicitly; examiners reward the working.
• Always pair 'rights from publication' with 'no suit until grant'. Marks are often lost on the proviso.