All You Need to Know About Patent Drafting

COVER

Filing a patent can not only transform your idea into an invention but it can also help secure exclusive rights to market or license your invention

Patent drafting is the first step to protecting a great idea. Over the years, countless inventors have demonstrated the power of a single idea to transform the world. Ideas have grown into some of the most celebrated creations in human history. An idea can be worth millions if it is executed well. But, to reap the monetary benefits as an inventor, you would first have to mark your exclusivity over your invention. This is where the subject in question plays an important role. To secure the intellectual property rights to your idea, here’s all you need to know about patent drafting.

But first, what is a patent?

A  patent is defined as an intellectual property right. It is a powerful legal and technical document which gives you the exclusive rights to commercialise your idea. Additionally, it safeguards your ideas and inventions against reproduction, reuse and theft. By applying for a patent, you can ensure that no other entities are able to commercially benefit from your invention.

Patents are typically issued for tangible inventions, involving research and technology. Since most products are generally made up of several different parts, patents are meant to protect those individual technical parts of a product that make it better. For instance, you may be unable to patent a cell-phone, but you can file a patent for the unique application codes, screen technology and even the battery type. To ensure that you, the inventor, are the sole benefactor of your invention, you must complete the patent writing and filing process.

What is Patent Drafting?

Filing for a patent includes a stringent process in which the inventor would have to provide a detailed description of their idea. This description must explain why the idea is original and innovative – chronicling all the necessary facets of the invention that make it so. This process is called patent drafting. It is done to safeguard new inventions and ensure each one is unique.

The role of a patent lawyer or patent professional in the patent writing process

A patent is a legal document. Hence, it must comprise the necessary language and clauses to ensure that your ideas are protected. Since patent lawyers and professionals are well-versed with the different laws governing a nation, including patent laws, it can prove extremely beneficial to collaborate with such an individual during the patent drafting process. However, before you reveal your invention to them, ensure that they sign a Non-Disclosure Agreement (NDA).

Once the NDA is signed, you (and your team) can begin the patent claim drafting process. But you must ensure that your patent lawyer has understood your invention in detail. This means that you have to explain not only the design but also the claims of functionality along with the factors distinguishing your invention from other similar, existing products and processes. Ensuring your legal representative has fully comprehended the details of design is crucial. If they do not, they may not be able to do justice to the patent drafting process – failing which the chances of your patent grant may be denied. Therefore, it is recommended that inventors seek counsel from more experienced patent lawyers.

Patent Drafting: A step by step guide

Once you have your team in place, you can move on to the next step, i.e., drafting the patent meticulously. Here’s a step by step guide on patent drafting.

  1. Check if your invention is patentable

    The first step in the process of patent writing is to check if your invention is indeed patentable. This will require a detailed patentability search to help determine if you have any chance at getting the patent. Ideally, the search should be conducted for patented as well as non-patented references. Undertaking a detailed search of patentability also helps inventors deepen their understanding of the merits of their invention, and whether their chances of claiming the patent exist.

    Moreover, the references discovered before filing the patent can also help you fine-tune your invention and patent application, ensuring you do not file a patent for an already existing intellectual property. That said, this step is entirely optional. While it takes some extra effort in the beginning, it can prove to be a great time (and money) saver later.

  2. Fill out the patent drafting application

    If you’ve made it to the application stage, you need to fill and submit Form 1, also known as the Indian Patent Application Form, along with Form 2, i.e., the patent specification form. Based on which Indian state you are residing in, you’d either have to file a provisional or complete patent application.

    It is recommended that you opt for the provisional application if your invention is still in the development phase, thus blocking the filing date. You get 12 months to file the complete specification, which gives you a lot of time to test your invention and finalise it.

  3. Fill the necessary forms to complete your patent application

    Apart from Form 1 and Form 2 mentioned above, your patent application must be accompanied by several other forms. The forms you provide, depend on whether you’re filing a patent in India as an Indian resident, applying for an international patent or whether you are a foreign applicant filing an application in India for grant of a patent in India. Here are the forms you must submit:

    1. Form 3: Statement of undertaking regarding a foreign application. This form comes under Section 8 and is required only if you have filed a similar patent application in a foreign country.
    2. Form 5: Declaration of the invention. This form should be submitted with the complete patent application.
    3. Form 26: Form authorising a patent lawyer, agent, or professional. You must fill this form only if you’ve opted for professional help in the patent drafting process.
    4. Form 28: Form for small entities and start-ups. You must submit this form only if you are claiming small entity or start-up status for your invention.
    5. Priority Documents: If you intend to claim priority from a foreign application for your patent, and are entering India, you have to provide a few documents to claim priority. For instance, you would need documents proving that you have filed the patent abroad in one or more countries.

    Note: If you’re filling a design the application form should be accompanied by drawings or diagrams, representing the final design

  4. Publication of Patent Application

    Once your application has been filed correctly, the Indian Patent Office publishes it in an official patent journal – typically 18 months after its submission. You have the option to request an early publication by filling Form 9, in which case your application can get published within one month.

    Your rights and privileges as a patent holder begin from the date of publication, which are, however, only valid once the patent is granted. The Indian Patent Office has the discretionary authority not to publish your patent, keeping it a secret under the Patent Act. This could be done if your patent application is incomplete if you request to withdraw from publication or if your invention is considered against national interest.

  5. Examination of the patent

    Upon completion of the patent drafting, the Indian Patent Office is obligated to examine your application thoroughly before granting the patent to you. During this process, your patent is examined based on its merits and the claims made in the patent application. Unlike the publication, which happens automatically, you have to place a request for patent examination by filing Form 18. You can also fast-track your examination application and jump the queue by filing Form 18A, valid only under specific terms and conditions.

    An examiner inspects the patent with relevant background information about the field of your application and scrutinise the application to ensure you’ve complied with the Patent Act rules. Examiners also run a search for similar technologies, thus ascertaining that your invention satisfies the patentability criteria, after which they issue a First Examination Report (FER).

    The FER is issued only if the examiner has any objections to your application, which you need to overcome to receive your patent grant. The entire examination process takes anywhere from 3 to 12 months.

  6. Final decision

    Once the examination and objections process are completed satisfactorily, the Indian Patent Office grants your patent, and published it in the Patent Gazette. Note that the patent lasts for a maximum period of 20 years. You have to pay a renewal fee in order to keep the patent alive for 20 years.

Things to remember about patent drafting

  • Irrespective of whether you’re filing a provisional patent or a complete one, you must pay extra attention in the patent drafting process.
  • Seeking professional assistance in the claim drafting process can prove to be a worthy investment
  • Ensure all forms are filled completely and appropriately, with no false claims, leading to disqualification
  • You may grant Power of Attorney to an India resident to aid you, especially if you are a foreign national filing an application for a grant of patent in India

There is no doubt that the entire process from drafting the patent to it being granted can be a lengthy one. However, it will feel worth the effort once your patent certificate arrives. While patent drafting requires an investment of time and money, it can indeed secure the future of both invention and inventor.

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