Patent Cooperation Treaty or PCT is an important treaty, concluded in 1970. The uniqueness of PCT stems from the fact that it provides a unified procedure for filing patent applications in its contracting states, earning it the title of “International Application”. As on 1st September 2020, 153 countries are contracting states of PCT (details may be viewed here: https://www.wipo.int/export/sites/www/pct/en/list_states.pdf). PCT is administered by the World Intellectual Property Organization (WIPO), primarily created to promote and protect intellectual property (IP) across the world by cooperating with countries as well as international organizations. Headquartered in Geneva, Switzerland, WIPO began operations on 26th April 1970 when the convention came into force. Key responsibilities of WIPO include extending technical & legal assistance in the area of intellectual property, conducting research on various areas of IPR and ensuring the proper facilitation of international IP protection.
Steps to file PCT Application
PCT is one of the most preferred ways to file patent application in multiple counties. Steps to file PCT application are as below:
Applicant is required to file patent application (provisional or complete application) in his home country first to claim date of priority.
Within 12 months from the date of priority, PCT application shall be filed.
PCT application may be filed directly with International Bureau of WIPO (online) or via a Receiving Office (RO), which ultimately transmits PCT application to International Bureau.
As soon as the PCT application is filed, international phase starts. The application is searched by International Search Authority or ISA at a later point in time and international search report and written opinion is generated. This report is very important as it gives detailed patentability analyses of the invention. The inventor can consider this report and can take a decision regarding the number of countries in which the application must be filed.
Before International Phase ends, i.e., within 30 or 31 months from the date of priority, PCT national phase application, in PCT-contracting states shall be filed. The applicant may chose any number of countries out of 153 contracting states of PCT. The deadline to enter national phase is 30 months in majority of the countries but some countries like India follow a deadline of 31 months from the date of priority.
Advantages of PCT application filing
The main advantages of filing PCT application are as below:
PCT is a unified platform that enables applicants to file their patent application in multiple countries claiming priority from the application filed in their home country’s national office. Please note that the applicant can file patent application via PCT route only in the countries that are member states or contracting states of PCT.
The process of filing PCT application is completely hassle-free. The application may be filed online, requiring the filing of only a single application.
Unlike convention application filing where international application has to be filed within 12 months from the date of priority, PCT allows the applicant a time window of 30 or 31 months from the date of priority to file application in individual countries that are PCT contracting states.
International Search Authority (ISA) gives written opinion on patentability of invention which helps applicant to take right decision with respect to national phase filing.
Myths and facts
Even though PCT is a popular and a convenient way to file patent application in multiple countries, there are a lot of myths surrounding PCT filing, as listed below:
Myth 1: PCT grants patent
Fact: PCT is a patent filing platform and does not grant patents. Patents are granted only by national offices when PCT-national phase application is filed and prosecuted as per national laws of the given country (ies). PCT does not have any authority to grant patents.
Myth 2: PCT filing ensures grant of patent globally
Fact: Filing PCT application does not mean that you have an automatic protection in all contracting states of PCT. Instead, you get protection in the contracting states of PCT only if you file national phase application there and your patent is granted by such national offices.
Myth 3: Foreign attorney files PCT application
Fact: The patent agent of your country is authorised to file PCT application, which means you don’t need a foreign attorney to file PCT application. However, a local attorney belonging to the country in which the PCT is being filed will be required for filing PCT National Phase application in that specific country.
Myth 4: PCT filing fee takes care of all expenses
Fact: Applicants often ask whether they are required to file separate fees at the time of filing PCT national phase application as they have already paid PCT filing fees. The fact is that PCT national phase filing fees is independent of PCT filing fees. The fee that the applicant paid to PCT is only for PCT filing and for generating the search report. When a national phase application is to be filed, applicant needs to pay fees for each country for filing and prosecution of the application.
Myth 5: With PCT, National Phase application may be filed in any country
Fact: By filing PCT application, national phase application can only be filed in PCT contracting states. Before considering PCT filing, it is highly recommended to look into list of PCT contracting states on the official website of WIPO to ensure that the countries where you desire to file application is a contracting state of PCT.
Even though PCT is a popular and convenient way to file international application, all pros and cons shall be weighed carefully before opting for PCT route.
A Patent agent as defined under Section 2(n) of the India Patent Act, 1970 is a person who has passed Indian Patent Agent Examination and is registered under section 126 of the Indian Patent Act as a patent agent. Patent agent is involved in drafting filing, and prosecution of the patent application before the controller on behalf of the person who wish to file a patent. Patent agent has to be authorized by the inventor to act on his behalf by executing power of attorney in his name. Patent agent is person who has written and passed patent agent exam and registered himself as a patent agent. Doing this, his name is entered in the Register of Patent Agents by the Controller.
Who can be a patent agent?
The qualifications to become a Patent agent are as follows:
He should be a citizen of India;
He have completed the age of 21;
He should have completed a degree in either Science, Engineering or Technology from any university established under law for the time being in force in the territory of India or should possess such other equivalent qualifications as specified by the Central Government; In this regard, final year students can also apply as long as they can produce their degree certificate with all the marks card within 2 months from the date of announcement of patent agent examination results;
He should have either passed the qualifying examination prescribed for the purpose or should have functioned either as an examiner or discharged the functions of the Controller under section 73 or both, for a total period not less than 10 years provided that, at time of making the application for registration he has ceased to hold any such capacity; &
He should have paid the prescribed fees.
Indian Patent Agent Examination
Only a person meeting the qualification provided under Section 126 of the Act shall apply for the Indian patent agent examination. The applicant should select the center of his convenience to write the exam which is usually conducted in 5 cities that is, Mumbai, Delhi, Nagpur, Chennai and Kolkata. The Indian patent agent examination, generally, is conducted once every year and the examination consist of:
Written Exam: The written exam, conducted by the office of the Controller of patents comprises of:
Paper I (100 marks)
Paper II (100 marks)
The Paper I will have both Objective and Descriptive type questions and is based on the Patent Act and Rules.
Paper II will have questions related to drafting, interpretation of patent specifications and other descriptive questions from Patent Act and PCT.
A candidate is required to score a minimum of 50 marks in each paper to pass the examination. Therefore, to qualify, the person should be thorough with the acts, rules, practice and procedures of patenting.
Viva voce: Candidates who pass in Paper I and II are called for Viva and it is conducted for 50 marks. The questions that are generally asked are based on IPR and more specifically patent law provisions related to the technical field of the candidate. For a person to qualify as a patent agent, he should secure an overall 60% aggregate of the total marks. The amendment in relation to the scores requires to be qualified were made after 2012, Delhi High court decision in the case of, Anvitha Singh v. Union of India wherein the rule prescribing a minimum 50 per cent marks in the viva-voce part of the patent agent examination was struck down thereby giving less weight to it.
The result of the examination is usually announced after two months of conducting the examination. The results are announced on the official website of Office of Controller General of Patents.
Rights of a Patent Agent
Rights of a Patent agents are described under section 127 of The Patents Act 1970. These rights are as follows:
(a) to practice before the Controller; and
(b) to prepare all documents, transact all business and discharge such other functions as may be prescribed in connection with any proceeding before the Controller under this Act.
Indian Patent Agent is authorized to draft, file, prosecute patent and design application in India and PCT.
How to prepare for Indian Patent Agent Exam
In order to prepare for the exam, you need following:
Indian Patent Act 1970. You must be thorough with all sections, rules, fee and forms of Indian Patent Act 1970. The manual of patent office practice and procedure is very useful to understand various provisions of the Act.
A patent agent, being atleast gradate in science is a perfect candidate to work in research and innovation-based industries. Based on his scientific degree, he can work in pharmaceutical, biotechnology, manufacturing, automobile, automotive industry as a patent engineer or patent analyst. A patent agent can work in following areas:
Different types of Patent searches like novelty search, technology landscape, invalidation search, EOU (Evidence of use) search etc.
Patent specification drafting, file, prosecution in India and PCT
Handling patent opposition, revocation etc
Being a registered patent agent is helpful for those who want to have long term career in the area of patents. It opens up many more areas to work in, especially patent specification drafting, filing and prosecution.
Origiin has been successfully conducting training sessions to help aspiring candidates qualify the Indian Patent Agent Examination since the year 2009.
Our in-house IP experts have been instrumental in developing a comprehensive study material for the Online Course to prepare for Indian Patent Agent Examination.
Course advantages:
Learn at your own pace and convenience
Illustrations and examples provided for easy learning
Assessment and practice questions at the end of every module
Link to register for the course: https://www.origiin.com/indian-patent-agent-examination/
Some important links:
Official website of Indian Patent Office
https://ipindia.gov.in
Guidelines to apply for exam (forms, fee and procedure)
A patent is one of the most complex legal documents that is techno-legal in nature. Drafting and prosecution of patent needs technical skills as well as thorough knowledge of patent law. There is a provision in the Patents Act for appointment of a Patent Agent by the inventor/applicant to assist him in filing and other modalities in the Patent Office.
A Patent Agent or a patent attorney is person who has the specialized qualifications necessary for representing clients in obtaining patents and acting in all matters and procedures relating to patent law and practice. A Patent Agent may be appointed by the inventor/ applicant to perform various actions before the patent office on behalf of the applicant and in consultation with him.
The term Patent Agent is used differently in different countries. In some jurisdictions, the terms Patent Agent and patent attorney are interchangeable and used as synonym but in others, the latter is generally used only if the person is qualified as a lawyer and additionally is registered as Patent Agent. This means that a patent attorney can not only practice before Indian Patent Office but also is eligible to practice in the Courts. Some jurisdictions also use the term “patent attorney” to include attorneys, who are not admitted to practice before the Patent Office, but who represent parties in patent litigation and other legal matters. Such attorneys may or may not have technical backgrounds.
Registration as a Patent Agent in the register of Patent Agents
An attorney, who is not a Patent Agent, is not admitted to practice before the Patent Office but he may represent parties in patent litigation before Court of law. On the other hand, a Patent Agent may prosecute patent applications but may not be qualified to represent parties in patent litigation. Indian Patent Act, 1970 (Section-132) does not stop an advocate, not being a Patent Agent, from taking part in any hearing before the Controller on behalf of a party who is taking part in any proceeding under the Act.
In India, a person registered to practice before Indian Patent Office (IPO) is called as “Registered Patent Agent” or a “Patent Agent”. Indian Patent Office conducts a qualifying examination for Patent Agent registration twice a year and the candidates qualifying the examination are registered as Patent Agents and are authorized to practice before IPO.
According to the Indian Patents Act, 1970, a Patent Agent is a person who has passed Indian Patent Exam and is registered as a Patent Agent. He is authorized to represent applicants before the Controller of Patents in the preparation, filing, and prosecution of patent applications. In order to become a registered Patent Agent in India, an individual must pass the Patent Agent Examination conducted by the Indian Patent Office and register himself/herself as a Patent Agent. Patent Agents in India play an important role in helping inventors, companies, and organizations register patents in India.
The Indian Patent Agent Examination is a written examination conducted by the Indian Patent Office to test the knowledge of individuals who wish to become registered Patent Agents in India. The examination is designed to test evaluate the candidate’s knowledge of on Indian Patents Act, 1970 and the rules / regulations related to patent practice and procedure in India. Additionally, patent specification drafting and prosecution skills of the candidates are also evaluated.
Refer the guidelines thoroughly: http://ipindiaonline.gov.in/AgentExam2020/Documents/Guidelines2023.pdf
Click on “Registration for Patent/Trade Marks Agent Examination 2023”. The online
application filing system will be available from 03/01/2023 (12:00 noon) to 31/01/2023
(05:30 PM).
Registration (New Applicant): http://ipindiaonline.gov.in/AgentExam2020/User/frmLogin.aspx
After successful registration, sign in to your account and fill Application Form. Upload scanned copy of coloured photograph, signature in prescribed format, documents of proof of age, citizenship and degree certificate.
Ensure to have correctly entered all the details before clicking on Final submit.
Complete the application by paying the fee online through Make Payment.
Submitted application form and payment details can be viewed any time using Pre-View and Print CBR
The Indian Patent Office does not conduct the exam at fixed regular intervals. The last two exams were conducted in May 2022 and October 2018. However, notification of the exam comes atleast 2 months prior to the date of the examination.
There is minimum qualification, age and nationality prescribed for the candidates, who can write the Indian Patent Agent examination. Eligible candidate shall write and pass the Indian Patent Agent Examination and request the Controller to register him as a registered Patent Agent and finally the Controller adds his name in the Register of Patent Agents.
A person shall be qualified to have his name entered in the register of Patent Agents if he fulfils the following conditions:
He is a citizen of India;
He has completed the age of 21 years;
He has obtained a degree in science, engineering or technology from any university established under law for the time being in force in the territory of India or possesses such other equivalent qualifications as the Central Government may specify in this behalf, and, in addition:
Omitted by Act 15 of 2005.
Has passed the qualifying examination prescribed for the purpose; or
Has for a total period of not less than ten years, functioned either as an examiner or discharged the functions of the Controller under section 73 or both, but ceased to hold any such capacity at the time of making the application for registration.
The exam structure shall consist of the following papers and marks, namely: –
Paper I (Two Hours) – Patent Act and Rules-100 marks, (Nature: Objective type; Multiple Choice Questions)
Paper II (Three Hours) – Drafting and interpretation of Patent specification and other documents (Nature: Descriptive and Viva-Voce) – 100 marks
Viva-Voce: 50 marks
Total: 250 Marks.
Schedule for Viva-Voce examination is announced after the completion of the written exam. Only those candidates who have scored a minimum of 50% marks in each paper will be allowed to appear for Viva-Voce.
Candidates who are eligible for Viva-Voce shall appear at the designated Patent Office (Delhi/Mumbai/Kolkata/Chennai) opted. Candidates who score an aggregate of 60% from Paper-I, Paper-II and Viva-Voce shall be qualified as Patent Agents.
A candidate shall be required to secure a minimum of fifty 50 marks in Paper-I and Paper-II and shall be declared to have passed the examination only if he obtains an aggregate of sixty per cent of the total marks (Aggregate of Paper-I, Paper-II and Viva-Voce)
Examination centre will fall in the city which you selected while filling the form to write exam. Exam will be conducted in some college, about which you will be informed when a hall ticket is issued to you.
After passing the Patent Agent Examination, the successful candidate shall request the Controller to register him as Patent Agent in the Register of Patent Agents.
Every person who desires to be registered as a Patent Agent shall make an application in Form-22 [Application for registration of Patent Agent under rule 109 (i) or 112]. This form is required to be filled and sent only after the Patent Agent examination result has been declared and the person is declared as successful (pass).
The applicant shall furnish the additional information required by the Controller such as attested copy of degree certificate or character certificate. A person desirous to appear in the qualifying examination [Rule 110, Particulars of the qualifying examination for Patent Agents], shall make a request to the Controller along with the fee of 1600 INR after the announcement of Patent Agent examination within the period specified in the announcement.
A Patent Agent in India is authorized to represent individuals and organizations in matters related to obtaining and enforcing patents. Every Patent Agent whose name is entered in the register shall be entitled:
(a) To practice before the Controller during prosecution process such as at the time of opposition to the grant of patent, he can practice before the Controller; and
(b) To prepare all documents, transact all business and discharge such other functions [such as filing of patent, sending request for early publication or examination, reply to examination report, paying renewal fee etc.] as may be prescribed in connection with any proceeding before the Controller under this Act.
Yes, an advocate is eligible to write the Indian Patent Agent Exam if he/she has graduation degree in science. Advocates with BA, LLB or BCom LLB degree are not eligible to write exam. However an advocate, without being a Patent Agent can represent clients in the Court of law in patent litigations.
The Controller shall maintain a register, called “Register of Patent Agents” in which the names, addresses, phone number, fax number, email id and other relevant particulars of all persons qualified to be registered as Patent Agent shall be entered under Section-126 [Qualifications for registration as Patent Agents]. Controller may keep the register of Patent Agents in computer floppies, diskettes or any other electronic form and safeguards appropriately. The names and addresses of persons registered as Patent Agents shall from time to time be published.
The Controller may remove of any person from the register of Patent Agent under certain circumstances.
The Controller may remove the name of any person from the register when he is satisfied, after giving that person a reasonable opportunity of being heard and further inquiry:
That his name has been entered in the register by error on account of misrepresentation or suppression of material fact;
That he has been convicted of any offence and sentenced to a term of imprisonment or has been guilty of misconduct in his professional capacity which in the opinion of the Controller renders him unfit to be kept in the register.
The Controller may on application and on sufficient cause being shown, restore to the register the name of any person removed.
The Controller may, on application and on sufficient cause being shown, restore the name in the register of Patent Agent.
An application for the restoration of the name in the register of Patent Agents shall be made in Form-23[1] [On application for restoration of the name of a person in the register of Patent Agents under rule 117 (1)] within 2 months from the date of such removal.
If the name of a person is restored to the register of Patent Agents, his name shall be continued for a period of one year from the date on which his last annual fee became due.
The restoration of a name to the register of Patent Agents shall be communicated to the Patent Agent and also published on the official website.
In connection with the patent application (s) filed by the Patent Agent, there may be several communications between the Patent Agent and the Controller. However, the Controller may refuse to deal with certain Patent Agents under specific circumstances.
The Controller may refuse to recognize as agent in respect of any business:
Any individual whose name has been removed from the register and not restored.
Any person who has been convicted of an offence under Section-123 [Practice by non-registered Patent Agents].
Any person who is not registered as a Patent Agent but is engaged wholly or mainly in acting as agent in applying for patents in India or elsewhere in the name or for the benefit of the person by whom he is employed.
any company or firm, if any person whom the Controller could refuse to recognize as agent in respect of any business under this Act, is acting as a director or manager of the company or is a partner in the firm.
The Controller shall refuse to recognize as agent in respect of any business, any person who neither resides nor has a place of business in India.
No person shall practice as a Patent Agent or call himself a registered Patent Agent, if he is not registered in the Register of Patent Agent.
No person either alone or in partnership with any other person, shall practice, describe or hold himself out as a Patent Agent, or permit himself to be so described or held out, unless he is registered as a Patent Agent or he and all his partners are registered.
No company or other body corporate shall practice, describe itself or hold itself out as Patent Agents or permit itself to be so described or held out.
Practice as a Patent Agent includes any of the following acts, namely:
Applying for or obtaining patents in India or elsewhere;
Preparing specifications or other documents for the purposes of this Act or of the patent law of any other country;
Giving advice other than of a scientific or technical nature as to the validity of patents or their infringement.
It is not necessary under the patent law to engage a registered Patent Agent for filing an application for patent. The applicant is free to file an application by himself or through the Patent Agent. However, an applicant who is not a resident of India is required to file either through the registered Patent Agent or must give an address for service in India.
No, Patent Office does not make any recommendations regarding selection of a Patent Agent. However, a list of Patent Agents is maintained by the office. This list can also be viewed at Patent Office website. The applicant is free to appoint any Patent Agent from the said list.
No. This is a discussion between the Patent Agent and the applicant. The fee a Patent Agent charges is not determined by the Patent Office. However, the Patent Office has engaged the facilitators to help start-ups submit patent applications and has set a cap on the amount of fee reimbursement that can be paid to the facilitators under the SIPP scheme. You can view the specifics of the programme at https://ipindia.gov.in/.
The term patent agent is used differently in different countries. In some jurisdictions, the terms patent agent and patent attorney are interchangeable and used as synonym but in others, the latter is generally used only if the person is qualified as a lawyer and additionally is registered as patent agent. This means that a patent attorney can not only practice before Indian Patent Office but also is eligible to practice in the Courts. Some jurisdictions also use the term “patent attorney” to include attorneys, who are not admitted to practice before the Patent Office, but who represent parties in patent litigation and other legal matters. Such attorneys may or may not have technical backgrounds.
A Patent Agent can not file trademark application on behalf of his clients. However, an Advocate or a registered trademark agent is authorised to file trademark applications. A Patent Agent is authorised to represent his client to file and prosecute Design applications in India.
Origiin is a Bangalore based legal and IP firm handling work in the area of Patent, Trademark, Copyright, Design, Contracts & Policies, IP Licensing and mergers/acqusition of the companies. Origiin has been training candidates to clear Indian Patent Agent Exam since 2009 and we have brillint content prepared by practicing patent agents and attorneys.
Printed Study material (Edition 8.0)
Module 1: Complete interpretation of Indian patent act, each and every section/rule
Module 2: How to start preparations, PCT, IP conventions, patent drafting, tips to viva question, FAQ
Online course in Udemy
Module 1: Patent Act and Rules, https://www.udemy.com/course/patent-specification-drafting/
Being an Indian Patent Agent is an important credential to possess, particularly for candidates who aspire to build a career in patent prosecution and enforcement in India.
The candidates are required to qualify the Indian Patent Agent Examination, which is conducted annually by the Indian Patent Office (IPO) headquartered in Kolkata with branch offices in Chennai, Delhi and Mumbai.
1. Applying for the Indian Patent Agent Examination
The schedule of the Indian Patent Agent Examination is published by IPO on their official portal at least six months in advance. The aspiring candidates are required to fill an online form which is intended for collecting candidate information such as name, address, nationality, occupation and so on. Additionally, the candidates are required to submit the following documents:
Degree certificate (attested by a Gazetted Officer); and
Marriage certificate (if applicable).
Further, the candidates are required to pay a fee of INR 1600 to register for the examination. Upon submission of the required details, documents and fee within the given time (typically 1-2 months), IPO provides an official receipt which indicates that the candidate has successfully registered for the examination. Subsequently, the candidates receive an admit card from IPO at least 1 month before the date of the examination, wherein the admit card comprises the candidate details and the details regarding the examination centre.
2. Preparing for the Indian Patent Agent Examination
Start early: It is advisable for the candidates to start their preparation at least 6 months prior to the date of the examination. Starting early will give the candidates enough time to be thorough with the Indian Patent Act, 1970, as it is important to note that the goal is not only to qualify the examination but also to acquire an in-depth knowledge of the Indian Patent Act, 1970 which is essential during prosecution and enforcement of patents/ patent applications.
How to study: It is advisable for candidates to have access to a comprehensive interpretation of the Indian Patent Act, 1979 to understand the intended meaning of all sections and rules. Origiin IP Solutions LLP provides a highly comprehensive study material which is divided into 2 separate modules:
Module 1 is an updated version of the Indian Patent Act, 1970 with interpretations and examples for easy understanding. This module prepares one sufficiently well for Paper 1.
Module 2: Guide for drafting patent applications with samples. This module includes International Conventions and Treaties, PCT procedure, Patent Specification Drafting including claim drafting with examples, Tips for viva and Model question papers.
This module prepares one sufficiently well for Paper 2.
One can order these modules online from here: https://origiin.com/patent-agent-exam-training-2/
Pro tip: The examination pattern was revised in the year 2018 and hence, it is advisable to refer to the new examination format.
Smart tools/aids: In this context, smart tools/aids refer to simple methods to make the learning process more efficient. Flash cards is one such aid which has proved to be highly useful for candidates during their preparation. Candidates may assign one card per section with relevant rules under the section, wherein repeated reference to the flash cards help in better retention of the contents present in the flash cards.
Pro tip: Candidates may make the flash cards as visually attractive as possible for better retention of information.
Revision: Understanding the various sections and rules of the Indian Patents Act, 1970 is extremely important, however, it is more important to go revise the sections and rules at least two or three times before appearing for the Indian Patent Agent Examination given the vastness of the Act (herein, Act refers to the Indian Patent Act, 1970).
Drafting techniques: A thorough understanding of the different sections of a patent specification is essential for acing Paper 2 of the Indian Patent Agent Examination. The candidates must have a good understanding of the anatomy of the patent specification and the scope of disclosure under each section of the specification.
Module 2 of the study material provided by Origiin IP Solutions LLP is recommended to gain an understanding of the nuances for drafting a patent specification as per the guidelines of the Indian Patent Office (IPO).
Mock tests: Once the candidates feel they have the requisite knowledge of the Indian Patent Act, 1970, it is important to appear for mock tests to validate the acquired knowledge. For this purpose, the candidates may download Paper 1 and Paper 2 from the year 2018 from the official IPO website and answer the questions within the suggested time (I.e., 2 hours for Paper 1 and 3 hours for Paper 2).
Fill the gaps: After the mock test, the candidates are required to evaluate their answers with the answer key provided by IPO on their official website. This will provide the candidates a clear idea on the areas which require more attention so that the candidates can go back to those areas and revise further to ensure their preparation is comprehensive.
R&R: On the day before the examination, candidates are advised to rest well and keep their mind calm so that they can orient their mind for the examination and avoid last minute jitters.
Pro tip: Use the flash cards to recollect all sections and rules
3. Day of the examination
Candidates are required to carry their admit cards to the examination venue. The examination commences with Paper 1 which is an objective assessment for 100 marks, wherein Paper 1 mainly tests the candidate’s knowledge on the Indian Patent Act, 1970. Subsequently, the candidate is required to appear for Paper 2 which is a subjective assessment for 100 marks, wherein Paper 2 mainly tests the candidate’s knowledge on drafting a patent specification.
4. Viva-voce
The candidates who qualify Paper 1 and Paper 2 are required to attend Viva-voce (50 marks) at the designated patent office, wherein the panel of examiners at IPO ask several application-specific/scenario-based questions to the candidates to gauge the candidate’s ability to correlate the scenario with relevant sections of the act and provide appropriate responses by quoting the relevant sections of the act.
Pro-tip: Revisit the flash cards & the act before appearing for viva-voce for refreshing the memory on all sections and rules of the Act.
The above-mentioned tips/strategies for acing the Indian Patent Agent Examination are suggestive in nature and are provided based on experience.
The aspiring candidates who intend to appear for the Indian Patent Agent Examination in 2023, may write to us on info@origiin.com for further information regarding the suggested study materials and support.
The most significant aspect of a patent specification is unquestionably the patent claim. A patent claim concisely defines what the invention claims and what is to be protected. In other words, patent claims specify the scope of the invention. Every patent application must have carefully phrased claims, as claims are very important in litigation. Notably, a claim is typically phrased as a codified statement of technical facts indicating the extent of the invention claimed to be protected. A patent claim specifies the novel characteristics in the patent application that the inventor wishes to protect.
Anatomy of a Patent Claim
A patent claim comprises three essential parts: the preamble, transitional phrases, and the body of the claim.
Preamble: This section specifies the type of invention for which the patent is being applied, such as a method, process, apparatus etc. The preamble should always be consistent with the title of the invention. For example, if the applicant wishes to patent a method/assembly/system, the preamble will begin like, “A method for…”
Transitional Phrases: The transitional phrases indicates whether the claim is restricted to the elements stated or whether it may apply to products or processes that have other elements. In other words, they are typically the statements that convey the idea that the claim is either limited to the items specified or encompasses more procedures with additional attributes. Some examples of transitional phrase are, comprising of, wherein, consisting of etc.
Body: This section of the claim includes all constraints and aspects of the claim and illustrates their relationship.
Preamble Transitional Phrase Body of the Claim
A bed sheet tensioning device comprising [a resilient strap with releasable fasteners at each end thereof, each of the releasable fasteners being adapted to fasten the strap to the cloth material of a bed sheet by gripping the cloth material without any part of the fasteners being included on the cloth material]
Different types of patent claims
Types of claims based on drafting
Independent Claims: Due to their ability to precisely define the distinguishing quality, they are also referred to as “primary claims.”. Independent claims are “stand-alone” claims that do not refer to any other claim. Independent claim includes a preamble and all the details required to describe the invention. The first claim, generally stands alone, establishes the level of protection that the invention is claiming. To prevent possible infringers from evading the independent claim in any way, independent claims are often more expansive than dependent claims.
Dependent claims: These claims are so called because they relate back to a prior independent or dependent claim, thereby limiting the applicability of the earlier claims. The scope of dependent claims is generally less than that of the claim upon which they are based such as independent claim. It occasionally might include well-known characteristics, even minor details and optional innovative elements of the invention.
Types of claims based on invention field
Jepson claims: The preamble of a Jepson claim describes a prior art statement, which is followed by claims that represent an improvement over the prior art. In an overview, it elaborates on the point of the invention’s uniqueness in comparison to previous art in a specific domain. Jepson claims are the most common in US patent law.
Markush claims: A Markush claim is a type of claim that is used to prevent the creation of new claims. A Markush claim allows a patent drafter to select a specific element of the invention from a group of features that all share some common characteristics.
Swiss-type claim: This type of claim is used when a previously unknown compound or substance is to be patented for a new medicinal use. In other words, this is a resurrected claim format intended to include the first, second, or subsequent medical utilisation of a well-known composition or substance.
Types of claims based on invention
Product claim: A product or apparatus claim addresses an invention’s structure or functionality. A product claim, for example, can define the components of a new device, the structure of an electrical device, or the functional components of an equipment.
Process claim: A process or method claim describes how you do something, such as perform a task, develop a product, or process the data. For example, the manner you process specific materials to form a product, encode and decode data within a particular context, or perform image recognition using an imaging system are all examples of processes which may be described with a process claim. Software and corporate approaches also fall into the process claim category.
Types of Claims based on structure
Composition claims: These claims are frequently made when an innovation relates to the elemental composition of any component or material.
Mean-plus-function claims: These claims make no reference to the precise design of the invention. Further, the mean plus function claims provides instructions on how to carry out the desired function. In a mean-plus-function claim, the element in the claim can be expressed in terms of the steps necessary to carry out a function. Additionally, the scope of these claims is broad enough to encompass all the components or structures described in the application.
Patent claims are perhaps the most significant aspect of any patent application. As a matter of fact, when drafting a patent claim, the patent drafter should always consider taking extra care and attention. The more precisely the patent claim is documented, the easier it is to defend the invention against potential infringers. The technical aspects of the invention should be stated as thoroughly as possible in the claims. Drafting a patent is a challenging task, and failure to do so properly can arise in a delay in grant, or even rejection. To avoid such disruptions, one should seek the advice/assistance of patent experts to attain a thorough understanding of preparing claims that provide better protection.
By: Dr. Paridhi Malhotra
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