PATENT SEARCH

Government of India
Ministry of Science & Technology
Department of Scientific & Industrial Research

Centre for Intellectual Property Rights

Andhra University

National Research Development Corporation Dr Bhavya Manjeera, PhD

NATIONAL RESEARCH DEVELOPMENT CORPORATION, GOVT. OF INDIA
NRDC-Intellectual Property Facilitation Centre
WIPO-Technology & Innovation Support Centre
Centre, AP Innovation Society, Visakhapatnam
Email: [email protected]
 OVERVIEW OF IPR
Legal right What for? How?

Patents New inventions Application and examination

Copyright Original creative or artistic forms Exists automatically

Trade marks Distinctive identification of products or services Registration

Registered designs External appearance Registration

Integrated Circuits Design in topographies Registration

Geographical Indications Unique characteristics Registration

Valuable information not known to the

Confidential Information Reasonable efforts to keep secret
public
Intellectual Property Duration…

RIGHT DURATION

• Trademark – 10 year initial term, Renewable for unlimited additional 10 year terms

• Copyrights – 60 year minimum

- Individual Author: Remainder of the author’s life plus 60 years
- Works made for hire (Works made by an employee for a corporation): at least 95 years
- However, fair dealing or fair use allows specific exceptions to copyright protections. 

• Patents – 20 years, Nonrenewable

• Design – 10 years, renewable for every 5 years. Copyrights on registered design patent for 15 years and renewable.

GI - Geographical Indications of Goods (Registration and Protection) Act, 1999

In force with effect from September 2003

• Plant varieties - The period of protection for field crops is 15 years and for trees and vines is 18 years and for notified varieties it
is 15 years.
- Initially the certificate of registration shall be valid for nine years in the case of trees & vines and six years in the case
of other crops and may be revived and renewed for the remaining period on payment of fees as may be fixed by the
rules.

• Trade Secrets – Perpetual

- For as long as trade secret remains secret
- Loss of trade secret rights can occur if a third party independently develops and patents secret
Patent - Introduction
Guess whether we can patent the following
inventions or not:

PATENT
PROCESS
Publication of a Patent Application
A patent application is published in the Indian patent website after 18th months from the date of filing of the
priority application. The applicant or any interested person can search for the published patent applications or
granted patents in the Patent office site http://ipindia.nic.in/ipirs1/patentsearch.htm to check the status of the
ongoing prosecution. There is no fee payable for the publication of the patent application.
 When a patent application is made public before 18 months from the date of filing, it is called an early publication of patent
application. 

Disadvantages like, chances

Early publication of a patent of pre-grant opposition,
application has advantage to inability to make changes in
help stop competitors, signal the application, and the
to investors, and raising inability to withdraw the
funds against IP application.

The provision for early publication is given under Section 11A(2) of the Indian Patents Act, 1970. Under rule 24A, an applicant
may request the IPO for early publication by filling out Form 9. An additional fee over and above the normal publishing fee must
also be paid.
Examination of a Patent Application
Examination of a patent application is not done automatically. The applicant or any interested third party should file a request for
examination by paying the prescribed fees in order to examine the application. The time period for filing a request for examination
is 48 months from the date of filing the priority application. Request for examination can be filed during the filing of a patent
application; however, the examination of an application is started only after the publication of the application. For a national phase
application, an expressed request for examination can be filed at the time of filing the application in India by paying the prescribed
fees. The application will be treated as withdrawn in case of failure to file the request for examination with the given time period
of 48 months. Extension beyond 48 months is not available in India. Examination is carried out on the basis of the patentability
criteria such as novelty, non-obviousness and industrial applicability.

First Examination Report for Patent Filing

It is the examination report accompanying objections and requirements is sent to an applicant by the controller within six months
from the date of request for examination or date of publication whichever is later. This report of examination is referred to as First
examination report in India. The response to the FER should be made within twelve months. Failure to response within the given
time period will lead to the abandonment of the patent application.

Pre-grant opposition
Any interested person by way of representation can file a pre-grant opposition in the Indian patent office within six months from
the date of publication of the patent application or in case the six months duration is not available then the representation can
be filed till the grant of the patent whichever expires later.

Grounds of opposition:
Opposition can be filed on the grounds of non compliance of patentability requirements such as novelty, obviousness and
industrial applicability, nondisclosure or wrongful mentioning of genetic resources or traditional knowledge and wrongful
obtaining of the invention.
Notice of Allowance or Rejection of a Patent Application
On meeting the requirements and objections issued during the examination, the controller issue a notice of allowance for the
patent application and the patent is granted.

Failure to meet the requirements and objections issued during the examination the application will be rejected. The applicant
or its agent can request for a hearing to the patent office. If the controller is satisfy with the reply of the applicant then the
application will be allowed for grant. On the other hand an adverse decision is made by the controller then the application
will be rejected.

Renewal Fees in Patent Filing System

After the grant of the patent, the applicant is liable to pay the maintenance fee in order to enforce the patent. Renewal fees
are payable every year. The first renewal fee is payable for third year of the patent's life, and must be paid before the patent's
second anniversary. If the patent has not been issued within that period, renewal fees may be accumulated and paid
immediately after the patent is sealed, or within three months of it's recordal in the Register of the Patents.

Date of payment of Renewal fees is measured from the date of the patent. Six months' grace is available with Extension fee.
No renewal fees are payable on patents of addition, unless the original patent is revoked and the patent of addition is
converted into an independent patent; renewal fees then become payable for the remainder of the term of the main patent.
Failure to pay the renewal fee will be taken as voluntary abandonment and any act of infringement will not be counted during
the lapse period of a patent. Abandonment and any act of infringement will not be counted during the lapse period of a
patent.
PATENTS
‘Quid pro quo’ (means a favour for a favour - exchange
of goods or services) is a widely used phrase that
accurately sums up the fundamental principle of trade
and commerce –principle relevant to inventor. Usually
quid is dollar or currency or trade & quo is rights on
research or patents.

Robotic Water Craft

FACT SHEET – HOW TO SEARCH FOR PATENT/RELEVANT PUBLICATION
Commercial Patent Databases Readily Available:
1. Dialog - http://www.dialog.com/
2. PatBase - http://minesoft.com/patbase.asp
3. Questal - http://www.questel.orbit.com/
4. STN - http://www.cas.org/support/stngen/index.html
5. Thomson Innovation - www.thomsoninnovation.com
6. Total Patent - http://lexisnexis.com/ip/totalpatent/
7. WIPS - http://wipsglobal.com
8. Clarivate Derwent Innovation –
https://clarivate.com/derwent/solutions/derwent-innovation/
 Patent Search & Patentability
• The goal of the patent search is to inform you, the
inventor, about patentability.

• The PATENT SEARCH informs a Patent Attorney to

help them provide you, the inventor, a LEGAL
OPINION as to the potential rights that may be
achieved if a patent application were sought.

• Lastly, it is with the Legal Opinion that you can then

form a BUSINESS DECISION as to whether the risk
of investment into the patent application will be worth
it.
 GOOGLE PATENT : A Definitive Guide for Patent Searching

• Google Patents Simple Search: On accessing the website,

patents.google.com the user is provided with the following interface:

The above interface is the “Simple Search” interface. In this search bar, one can type the publication
number of a certain patent application, or one can perform a general search on a particular technology.
 Google Patents Search

Searching Medical Claim retrieves results Click Options icon to access Advanced Patent Search

28
Case Study: WIPO & Espacenet
 DATABASES : DIFFERENCES
Patents
• Free of charge
• Commercial
Scientific & Technical Journals
• Open Access
• Subscription
Search Strategy
• Keywords
• Patent Classification, indexing, etc.
• Search tools
 What information is presented in a patent document ?????
• Patent documents are structured in 3 parts
• The first (front) page presents general information about
the patent: -
- The title;
- A summary of the invention;
- The name of the inventors;
- The name of the patent assignee (= patent owner or
patent applicant); - Several dates (priority, publication,
etc.);
- Several numbers (publication number, priority number,
etc.);
- The legal status of the document (patent application,
granted patent, etc.);
- The designated states (states in which protection has
been asked for);
- Drawing.
• The technical description - beginning on the second
page of the document. It presents a description that can
cover more than one page, which includes the technical
problem which the invention solves, the state of the art,
as well as a technical description of the invention.

• A third part includes the drawings, the claims

(that provide a clear description of what is legally
protected) and possibly a search report (see
image).
 Where to search for patent information ?????
• The easiest way to retrieve patent-related information is to use online databases.

• The information presented in databases can take different forms. We can find databases including the full text of patent
documents, but also databases presenting a “summary” of them. The latter generally present the information contained on the
patents’ first page (possibly enriched with additional information), called the bibliographic reference.

• Those databases are respectively called full-text databases and bibliographic databases.

• It is worth noting that databases can also be classified according to the type of information that they include: technical or legal. Indeed,
apart from the legal information that is already included in patent documents, additional databases including information related to the
legal status of the patent, the payment of fees and owners and representatives, are also available.

• The most common way used to retrieve patent-related information is the use of bibliographic databases. For easy retrieval, producers of
databases generally add information such as internal codes or keywords describing the subject treated in the original document.
Bibliographic data
Bibliographic data

Publication number

Application number
Bibliographic data

Publication number

Application number

Priority number
Bibliographic data

Publication date

Filing date

Priority date
Bibliographic data

Applicant

Inventor
Bibliographic data

Classification
Bibliographic data

Designated states
Description (specification)

• Describes how the invention works (addresses a particular technical problem)

• Provides background information on this problem
• Indicates other known solutions to the problem ("prior art")
Claims

• Define the scope of protection sought by the applicant

Fields
Fields: Field codes
Fields: Field codes
TECHNOLOGY TRANSFER PROCEDURE (STAGE WISE FLOWCHART FORMAT)
NATIONAL RESEARCH DEVELOPMENT CORPORATION
(An Enterprise of DSIR, Ministry of Science & Technology , Govt. of India)

FOR FURTHER DETAILS

Dr. P. Bhavya Manjeera

NRDC-IPFC&TISC, Visakhapatnam
NATIONAL RESEARCH DEVELOPMENT
CORPORATION
(An Enterprise of Department of Scientific and Industrial
Research, Ministry of Science and Technology, Govt. of India)