icar guidelines for filing patent application

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ICAR Guidelines for filing Patent Application

- 2

January, 2002

Correct Citation: ICAR. 2001. ICAR Guidelines for filing patent applications. ICAR, New Delhi. 36p.

Compiled under the Guidance of Dr. Mangala Rai, Deputy Director General (Crop Science) by:

Dr. Sudhir Kochhar, Assistant Director General (IPR) Acting Charge, and Principal Scientist (Plant Breeding),

Crop Science Division, ICAR, Krishi Bhavan, New Delhi 110001.

This bulletin streamlines and updates the earlier information provided in the Internet on ICAR Initiatives on

Protection of Intellectual Property and the Guidelines for filing patent applications circulated by the IPR Section. The

contributions made by Dr. J.P.Mishra and Dr. S.Bala Ravi, former ADGs (IPR) in these earlier documents are

acknowledged.

Definitions: For the purpose of this document 'person' means any natural or legal person, which includes an

institution; and 'scientist' means any concerned employee of the Council eligible for filing a patent application.

Copies can be had from:

Business Manager,

Directorate of Information and Publications of Agriculture (DIPA),

ICAR, Krishi Anusandhan Bhavan,

K.S.Krishnan Marg, New Delhi 110012.

Published by the Director, Directorate of Information and Publications of Agriculture (DIPA), ICAR, Krishi

Anusandhan Bhavan, New Delhi 110012.


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Index

Item Page

Foreword 4

Preface 5

ICAR Guidelines for Filing Patent 7

What Can/Cant be Patented 8

What to Know and Consider Before Filing Patent Application 10

Some Important Dos and Donts 13

Some Important Steps/Milestones in Patenting 15

Annexure 1 - Form 1: THE PATENTS ACT 1970 (39 OF 1970)APPLICATION FOR GRANT OF A PATENT

28

Annexure 2 - Form 2: THE PATENT ACT, 1970 (39 OF 1970)

COMPLETE SPECIFICATION

32

Table 1: Some Important Sites For Patent Search and Seeking Other

IPR Related Information

33

Table 2: List of Authorities Receiving Patent Office Publications on

the Condition That They May be Seen by The Public, Free of

Charge

34


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FOREWORD

Development and improvement of technologies have been the main focus of agricultural research and

education in the country for nearly five decades in the post independence India. The advances madein the development of improved crop varieties and animal breeds, packages of crop and animal

husbandry, tools, equipment and farm power machinery, dairy science and technology, inland and

high sea fisheries, post harvest processing and value addition, in which the ICAR has played a

significant role, brought in phenomenal improvements in national agricultural production. The

council has served as the lighthouse for free exchange of genetic material and technology with the

rest of the world, respecting the global interdependence for food and agriculture. Increased

productivity, improved technology, extension efforts and linkages have been our watchword due to

which growth in production has been tremendous while keeping in view the simultaneous increase in

population. Despite several droughts, floods, and unpredictable rains, the country has emerged from

the state of net importer to marginal exporter in food commodities due to concerted efforts in

research, education, policy planning and implementation, which led to consistent growth inproduction.

No doubt, the national agriculture has advanced in terms of technology and practices but the mind set

for protection and commercialisation of technology was hardly there. However, with the emerging

intellectual property rights regimes under new and upcoming legislations, in conformity with the

global developments and inter-governmental agreements, there is an urgent need to understand and

analyse the situation to suitably change our attitude towards protecting the intellectual property

developed in the ICAR and SAU systems for not only commercial gains but also to support further

research and development in agriculture. It is the duty of all ICAR scientists and technical officers to

make best efforts to compete and excel in their respective areas so as to bring credits to their own

names and that of the Council. They should also give importance to systematic protection of the

intellectual property developed by them during the entire period of their service whether in the ICAR

laboratories/fields or in collaboration with other partners having the ICAR funded projects.

I am happy that this set of guidelines has been developed by updating and refining the earlier

circulated information for the use of ICAR scientists. I urge all ICAR institutes, bureaus, project

directorates, national research centres, project coordinators and krishi vigyan kendras to take note of

this publication and make maximum use of the same for the benefit of the scientists, the ICAR and

the nation in the emerging era of globalisation and the growing importance to IPR. Often our clients

are farmers who have no capacity to understand and utilize potential technologies; therefore, we also

need to be judicious in balancing agricultural technologies.

I complement Dr. Mangala Rai, Deputy Director General (Crop Science), and Dr. Sudhir Kochhar,Principal Scientist & Acting ADG (IPR) for having given priority to organise the information and

timely bring out this document.

Sd/-

(PANJAB SINGH)Secretary Department of Agricultural Research & Education

& Director General, Indian Council of Agricultural Research,

Ministry of Agriculture, Krishi Bhavan, New Delhi 110 001

December 24, 2001


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PREFACE

Despite several unparalleled and exemplary achievements made in the field of agriculture in

India since Independence, there is a consistent need to maintain food security and growth inproduction so that the future challenges are duly met. One of such challenges, which is likely to

grow in unpredictable proportions in the near future, is the understanding of, orientation for, and

the application of intellectual property protection under different forms of intellectual property

rights and as per different IPR orsui generis legislations being in effect in the country from time

to time.

The national laws on Patents, Trademarks and Copyrights are already in effect, although these

are undergoing further amendments in harmony with the national requirements and/or

international commitments. Further, legislations on Geographical Indications and Protection of

Plant Varieties and Farmers Rights have also been enacted, which await

development/notification of respective subordinate Acts of Rules and Procedures for theirenforcement.

The Patents Act 1970 has been in force for quite a long time in the country and it was amended

for the first time in 1999 to harmonise with some of the requirements of the Trade Related

Intellectual Property Rights (TRIPs) Agreement of the World Trade Organisation (WTO). This

Act provided for patent protection mainly to processes for the development of agricultural

chemicals and the agricultural tools and equipment per se but did not recognise methods of

agriculture and horticulture, microorganisms, other life forms and also products derived from

chemical/biochemical processes as the patentable subject matter. Therefore, patenting of

technology in the ICAR set up was a low-key affair.

However, the global developments, such as the enforcement of the CBD and the TRIPs under the

WTO have increased the importance of patents, and protection of IPR by other means, in

agriculture. An Intellectual Property Rights Section was established at the Crop Science Division

in the ICAR to cope up with the need of facilitation for filing patent applications in the ICAR

system, which started functioning with the appointment and joining of an Assistant Director

General (IPR), in October 1998. Earlier to that patent applications were filed by the ICAR

scientists/institutions through ADG (Agricultural Engineering).

Initial efforts were made by the former incumbent ADGs (IPR), Dr. J.P.Mishra and Dr. S.Bala

Ravi, in organising and gearing up the work of patent applications. During the past one year, thiseffort has been further intensified. The institutional capabilities of the Council were enhanced in

IPR matters by the nomination of IPR nodal officers in all ICAR institutes/bureaus/project

directorates/national research centres and charging them with a 3 days training package on

various IPR and WTO related developments and issues. The earlier circulated guidelines for

making patent application ware improved and explained to all nodal officers in practical during

these trainings.

Nevertheless, the need for a systematic, self-explanatory document to guide the filling up and

filing of patent application by all scientists through their assignee {the ICAR/ADG (IPR)} has

been strongly felt. Therefore, a fresh exercise has been made with the purpose to update and

explain all information that would be essentially required by and helpful to those scientists who


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have a patentable technology at hand or those others who are at the final stage of research

experiments that are likely (rather surely) to yield a patentable technology.

The Crop Science Division has recently developed an initial set of information pertaining to theorganisation, facilitation and management of crop science research by the concerned ICAR

institutions under the technical advice/control of the Division, for launching in the Internet by

linking it to the ICAR Home Page. It is planned to attach a soft copy of the present bulletin to the

ICAR Home Page, replacing the old version, besides publishing the bulletin for wider ICAR use.

The contributions made by Dr. Sudhir Kochhar, Acting ADG (IPR) in compiling this needed

information in a simple to understand format are significant and praiseworthy.

It is hoped that all concerned ICAR scientists and technical officers will go through these

guidelines and also ensure making the necessary patent search before deciding to prepare the

patent document and file the patent application through the Council/ADG (IPR).

(MANGALA RAI)

Deputy Director General (Crop Science)

Indian Council of Agricultural Research,

Krishi Bhavan, New Delhi 110 001

December 26, 2001


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ICAR GUIDELINES FOR FILING PATENT APPLICATION

The Indian Council of Agricultural Research (ICAR), Krishi Bhavan, Dr. Rajendra Prasad Road,

New Delhi 110 001, is a registered body incorporated under the Registration of Societies Act

(Act XXI of 1860). As per service rules, the Council owns all results of research carried out by

its employees in the ICAR institutions/laboratories or collaborative, ICAR funded projects

during the entire period of their service. All ICAR scientists are free to apply, individually or

jointly with other scientists, for protection of the intellectual property created/technology

generated by him/her/them as above from the work carried out in the ICAR institutions, or jointly

with other institutions under the projects carried out with the ICAR funding support.

Such patent applications shall, however, be filed through the Council with the obligation that

applicant(s) shall file a Declarationthat ICAR/its authorised signatory in the application under

reference is their assignee.The ICAR has established an Intellectual Property Rights Section in

the Crop Science Division that discharges the functions ofinter alia filing the patent applications

and the Assistant Director General (Intellectual Property Rights) {ADG (IPR)} is the authorised

signatory and the assignee for all patent applications on behalf of the Council.

The primary application form required for filing a patent application to the Controller of Patents

and detailing the specifications and claims, etc., in respect of the invention therein is to be used

mutatismutandis to include an annexure covering the following:

(i) an Undertaking in respect of the bona fides of the invention made to be furnished to the

ICAR by the applicant(s), and

(ii) a Declaration to the effect that the ICAR/the authorised signatory of the Council is

his/her/their assignee.

The application complete in all respects, and only in the given format, copy of which is provided

in this document, should be submitted to the ADG (IPR) 'Through Proper Channel' for


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processing and submission to the Patent Office. The IPR Section will pre-examine the

application and, where applicable and as appropriate, advise the applicants for modification of

the application or making relevant changes therein, make necessary sanction and payment for the

application fee and file the application to the Comptroller of Patents at Patent Office Branch,

New Delhi.

In order to facilitate the process at the level of institutes/bureaus/project directorates/national

research centres, the ICAR has organised/provided specific training during the year 2001 to the

IPR Nodal Officers designated by the ICAR institutions along with one or more additionally

nominated scientist(s). Institutions may involve these nodal officers/scientists at their level forfacilitating the process and thereby enhance/secure protection of the ICARs intellectual

property.

Guidelines to write and file patent applications have been developed for the benefit of all ICAR

scientists/inventors. Those who are considering to file a patent application or those who consider

that their experiments/research are at a stage that can soon yield patentable invention(s) should

go through these guidelines to get an idea of how to initiate and proceed with the writing ofpatent document and filing of the patent application. Specimen copies of the application forms

(Form No. 1 and Form No. 2) modified for official use by all ICAR scientists, including the

annexures with Form No. 1 for an Undertaking in respect of the bona fides of the invention and

an Authorization of the ICAR/ADG (IPR) as their assignee, as per ICAR requirements, are

appended (Annexures 1&2).

WHAT CAN/CANT BE PATENTED

Patent grants are accorded by the Patent Office, Govt. of India for any invention on any one of

the following five subjects provided the invention is new in the global sense, non-obvious in

the sense that it involves an inventive step, and useful in respect of its industrial applicability:

1. a machine/device

2. a process


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3. a product/article

4. composition of matter

5. any improvement of any of above

Patents are not granted in India in respect of the following:

(i) claims which are frivolous, or contrary to well established natural law,

(ii) any invention, the primary or intended use or commercial exploitation of which

could be contrary to law or morality or which causes serious prejudice to humans,

(iii) the mere discovery of a scientific principle or the formulation of an abstracttheory,

(iv) mere discovery of any new property or new use for a known substance or of the

mere use of a known process, medicine or apparatus, unless such known process

results in a new product or employs at least one new variant,

(v) substance obtained by a mere admixture resulting only in aggregation of

properties of the components thereof or a process for producing such substance,

and(vi) mere arrangement or re-arrangement or duplication of known devices each

functioning independently of one another in a known way.

Further, it may be expressly noted that the Indian law also does not provide for patenting

for following subjects:

(i) Method of agriculture or horticulture, or

(ii) Any process for medicinal, surgical, curative, prophylactic or other treatment of

animals or plants to render them free of diseases or to increase their economic

value or that of their products, or

(iii) Plant varieties, strains of animals or birds, or microorganismsper se.

Nevertheless, intellectual property protection for plant varieties is provided for under the

Protection of Plant Varieties and Farmers Rights Act, 2001 and some other protectable


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subjects can be covered under Geographical Indications, Trademarks, Copyrights, Designs, etc.,

as per the respective Acts. Case-to-case basis clearance of the Council may be sought for filing

applications in all these cases, as and when applicable.

WHAT TO KNOW AND CONSIDER BEFORE FILING PATENT APPLICATION

Patent

A patent is one of the forms of Intellectual Property Rights. It is granted by a country

government to a person or persons for an invention, which is new, non-obvious and useful, inlieu ofdisclosing it in a patent document. It is a qualified right for a limited period of time and

also limited to the territorial jurisdiction of the country. The authority to determine whether a

patent should be granted or not in a particular case in India is vested in the Controller of Patents.

The patent entitles the right-holder to exclusively produce/import, use or sell the said invention

or give licence to other(s) to produce/import, use or sell that invention. However, it is up to the

patent holder to enforce this right once a patent is sealed (granted). When the term of a patentexpires, the subject of the patent becomes a matter of public domain.

One must remember that a patent does not give its holder the automatic right to produce/import,

use or sell a given invention but allows to prevent others from doing so. For producing/importing

and using or selling the invention, the right-holder must follow the country's law on the subject

or the concerned regulatory and administrative channels for the respective approvals for import,

commerce and trade, as the case may be and as appropriate.

One should also note that the patent applications must be filed within one year of the invention

having been publicly known anywhere in the world or first sold in the country. One may file a

provisional patent application as per rules. This will allow delay up to one year in filing the

complete patent application for but entitle to claim the date of filing of the provisional

application as priority date of the said invention.


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Basic provisions

Patenting is regulated by the Patents Act, 1970 and the Patents (Amendment) Act, 1999. The

former is presently in vogue.

A patent shall be granted by the Controller of Patents for an invention disclosed in the prescribed

application form when there is no opposition to it or in case an opposition is made to the patent

office in a prescribed format, along with a prescribed fee, within a specified time period, the

same is satisfactorily countered. Application for seeking grant of patent can be filed by any

person (individually or jointly with any other person) claiming to be the true and first inventor(s)

of the invention, or his/her/their assignee or legal representative, in case the person is deceased

and was entitled to make such application immediately before death.

Rules and Procedures subordinate to the Principal Act are prescribed in the Patents Rules,

1972, which include different forms in its Schedule II, such as, a form for the application,

another for specifications and claims, and others for requesting for priority date determination,

opposition, request for sealing of patent, licensing, etc. For the purpose of filing the patent

application, as provided under Section 10 of Indian Patents Act, 1970, and Section 8 and the

Schedule II of the Patents Rules 1972, two forms have been mainly prescribed. These are, Form

No. 1 for making request for grant of patent, and Form No. 2 for providing description of

inter alia specifications and claims in respect of the invention. Further, the same set of forms for

filing the patent application, namely, Form No. 1 and Form No. 2, are also applicable under

the Patents (Amendment) Act, 1999 according to the GOI Gazette notification of June 1999.

As already made clear, these primary application forms are used mutatis mutandis for filing

applications by the ICAR scientists (Annexure 1&2).

It is pertinent to note that although till now neither patent nor other forms of intellectual

property rights are granted in India for products of chemical engineering, industrial

biochemistry, biotechnology or any life forms (plants, animals, and micro-organisms), except for


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plant varieties as per the "Protection of Plant Varieties and Farmers' Rights Act, 2001", the

further amendment in the Patents Act or enactment and enforcement of any other relevant Act

may provide protection of industrial products and microorganisms, which is not being ruled out.

Patent Document

A patent application is also known as a Patent Document, which aims to disclose to the others,

ordinarily familiar with the art/area of invention, as to how to reconstruct the invention and thus

encourage R&D. It is a Techno-Legal Document and must be understood and filled in literal

sense of a legal application that is being made to secure technical claims. The application mustqualify for the basic criteria in respect of the invention. Accordingly, Noveltymeans that the

invention should not be a known prior art anywhere in the world; nor such a claim be in place

anywhere, in any patent application in any country, until the date of filing of the application to

the Patent Office. A patent search on the Internet and by other search tools by the applicant(s) is

desirable. For this purpose, to facilitate patent search and acquire other IPR related

information/knowledge, a list of selected Internet sites is provided in Table 1 in the end part of

this document. However, during examination of the application the Patent Office will alsoascertain novelty by ruling out the existence of prior art.

It may also be noted that to qualify for the grant of a patent, the invention needs not to be a

completely new one in the sense that it can even be a step ahead of or have incremental progress

over an existing invention. For example, an invention to improve an existing electric bulb by

replacing the filament with a new alloy and a neutral gas to achieve higher brightness and/or

longer bulb life, or a bioinoculator with improved and efficient aeration unit to increase the

availability of viable inoculum for longer duration, would each qualify for a patent claim. Also,

the invention needs not to be essentially a major one; it may be a simple one but novel. It must be

borne in mind that a revelation of any publication or information in public domain or application

on the invention having been filed prior to this filing date anywhere by anyone shall lose claim of

novelty and hence render the application invalid.


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Non-obvious or involving an inventive stepmeans that the invention would not appear

obvious to any person having ordinary skill or knowledge in the area of invention; rather the

invention must have been a result of the patentees(s) own innovation. Utility of the invention

is judged from the point of view of its industrial applicability. The invention must not be merely

new and non-obvious but it should have a function, which can be applied, in the commercial

sense and from the point of view of public benefit too. For example, it may help in reducing

drudgery, time used, checking or de-polluting a pollutant produced, cost involved or saving

foreign exchange by replacing an imported product/device/part, etc. In addition to meeting these

essential criteria, the invention or its commercialisation should not hurt public morality, and it

should not be against national interest or capable of injuring the human health or environment.

Scientists are advised to be well informed about their area of invention while preparing a Patent

Document since they would be better judges, next only to the Patent Office, of the qualification

of their patent claim.

SOME IMPORTANT DOS AND DONTS

Maintain a complete secrecy of invention before filing the patent application. It is also advised

not to publish the invention for further 12 months from the date of filing the application nor to

publicise or take the invention/subject to public domain. While conducting research leading to

the patentable invention, adequate work records must be maintained. It should be possible to re-

construct on time scale as to when the work related to the invention was conceived, when it was

actually started, when the inventive step was reached and when it was first successfully

demonstrated in the laboratory. Data may be assembled, organised and analysed, if necessary,

and the results worked out as usual on the research/experiment elucidating the invention.

Similarly, drawings may be made and photographs taken, wherever necessary and as appropriate,

to effectively document the claims of invention.

The research must be done in a simplistic manner so that it appears to be just a routine. Data,

however, must be recorded and maintained diligently. Becoming conspicuous in the mid-course

of research would possibly catch the attention of some probable competitor or offender. This


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precaution would be necessary till the patent application is admitted by the patent office and

thereby priority date of invention is ensured.

A good background on the subject area of invention must be gained, particularly about the

inventions from the subject area already and anywhere patented, if any. This would help in

considering whether the results of present study/experiment qualify for a patent on the basis of

these guidelines or not. In case this satisfies the qualification of the invention for a patent, and a

patent search is reasonably made to fortify the claim, the conclusion is that there is a patentable

invention. At this stage, be ready to prepare the patent document and file the patent application in

the modified Forms 1&2 prescribed by the ICAR and appended herewith at Annexures 1&2.While preparing and submitting the application ensure the following points:

Must give Declaration in respect of bona fides of the research carried out by you and

meeting the essential criteria for a patent.

Must complete the application in all respects in three original copies (with original

signatures of inventors and witnesses on each application).

Must Assign the invention to the ICAR/ADG (IPR).

Must move the application Through Proper Channel (Through Director/Project Director

of respective institute/bureau/project directorate/national research centre).

Note: The ICAR institutions must agree with the bona fides of the research carried out, and the

undertaking in the application; and, also ensure that the claimant applicant(s) have declared

ICAR/ADG (IPR) as their assignee.

It is advised to file a Provisional Application in cases where the results of research are well

anticipated but not actually known or data not yet analysed or photographs or figures are not

ready to be appended with the application. It is not necessary to write Claims in the provisional

application. An application is to be submitted as provisional only when its filing is felt urgent in

view of a possible threat of losing priority date from a similar claim likely to be put up by

another claimant/group on the same/similar invention.


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Once a Provisional Application is filed it is obligatory to file the Complete Application within a

period of 12 months, without late fee, to maintain its Priority Date. The complete application

must furnish Complete Specifications, Claims, and Drawings/Figures. Also, the

description/claims in the complete application have to be such that there is no significant

deviation from the provisional application.

The applicants must understand that the patent application is a Techno-Legal document, which

may often need improvement in presentation/style of the technical content, particularly in the

claims but, at the same time acquiring priority date is necessary to secure the claims in the

subsequent complete application and the patent to be granted. Hence, they should comply withthe Councils advice to improve/amend their application within the stipulated period of 12

months once a Provisional Application is recommended and submitted by the ADG (IPR) to the

Patent Office against a Complete Application prepared and forwarded by the

scientist(s)/institution.

It is desirable to seek assistance of Patent Attorney for preparing patent document, particularly

in cases where there is export potential or the patent is likely to have high commercial stakes,including in other countries. With new areas of agriculture opening up for patenting and other

forms of intellectual property protection, a system to this effect to secure and protect the ICARs

intellectual property will be gradually developed and guidelines provided. Till then approval of

the Council may be sought on case-to-case basis.

SOME IMPORTANT STEPS/MILESTONES IN PATENTING

1. Filing Patent Application

(a) Provisional Application (entitles for Priority Date for patent claims

even when the complete application is filed subsequently)

(b) Complete Application (within 12 months of filing the provisional

application + 4 months with late fee)

2. Examination of Patent Application


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(a) Possible return; resubmission within 12 months with necessary

modifications/ changes, or

(b) Abandon

(c) Issuance of Notice to the Applicant (ADG-IPR). Communicating to the

respective institution/scientist(s)

3. Advertisement of Acceptance of Application in GOI Gazette, Part III: Section 2

4. Public Inspection of the Gazette free of charge (See Table 2)

5. Opposition (4 months time with prescribed fee)

6. Notice of Opposition to the Applicant

7. Filing Counter to the Opposition8. Dispute Resolution (Inventors record-keeping, Patent Attorney, Potential to

continue litigation in High Court, etc.)

9. Decision on Patent

10. Application for Sealing with prescribed fee

11. Sealing of the Patent

12. Registration of the Patent/Patent Grant

13. Maintenance of patent with prescribed fee

APPLICATION FORM

As earlier made clear, to file a patent application from the ICAR System must use only the

modified Form No. 1 along with Annexure for Undertaking and Declaration in respect of the

invention and the assignee, respectively, and Form No. 2 for specifications and claims. These

forms are appended with this document at Annexures 1&2.

HOW TO WRITE A PATENT DOCUMENT

APPLICATION

Patent application can be filed either as PROVISIONAL APPLICATION or COMPLETE

APPLICATION.


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The Application Form (Form No. 1) does not have the word PROVISIONAL or COMPLETE

printed on it. Therefore, in case where a provisional application is to be filed, add a prefix

PROVISIONAL to the title of the application so that it may be modified to read as

PROVISIONAL APPLICATION FOR GRANT OF A PATENT.

Changes may also have to be made in the body of the application by replacing the word

Complete Specification with Provisional Specification in Column 2.b). In this context, it must

be noted that the Form No. 2 has COMPLETE SPECIFICATION printed on it. Therefore, in

case where a provisional application is to be filed, replace the word COMPLETE withPROVISIONAL to read as PROVISIONAL SPECIFICATION.

FORM NO. 1 (MODIFIED FOR USE BY ALL ICAR SCIENTISTS)

There are 11 columns in all in Form No. 1. These have to be carefully filled up by strictly

following the instructions, without introducing subjective changes by the claimants. Each patent

application requires three original copies. Each copy should bear the original signatures of allclaimant inventors.

Column 1 is self-explanatory.

Column 2(a) requires filling of Title of the invention. In case the application being filed is

provisional, the same title (or a title without substantive changes) has to be filled in the Complete

Application, which may be filed subsequently.

In Column 2(b) match the word Complete or Provisional as per the application being filed. Thus,

in case the application is provisional, the word Complete has to be replaced with Provisional.

Column 2(c) is self-explanatory. For the official purposes of the ICAR, this affirmative statement

has to be supported with the Declaration given at the Annexure of Form No. 1.


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Column 3 is self-explanatory but it has to be filled orthodoxically. For example, if there are more

than one claimant inventors in the application, the names, addresses and nationality of each one

of them have to be mentioned separately as required under the Column. In particular, care may

be taken that even if all inventors belong to the same institute and location, the address and

nationality have to be typed/printed separately against the names of each individual.

Column 4 is applicable only if application for the same patent had already been filed in any of

the foreign countries that are members of the Patent Cooperation Treaty (PCT). When no such

application was filed earlier, the column should be filled with "NIL".

Column 5 is applicable only for those inventions, for which a patent already exists or an

application is already made. In case the invention under the application is a modification of an

existing patent or related to a Prior Art, it should be clearly indicated under this column with

complete reference(s) and/or the number of the relevant patent.

Column 6 is self-explanatory but need not be filled by the claimants. However, such a claim may

be mentioned in the forwarding letter. It will be filled at the ICAR/IPR Section on verification ofrecords.

Columns 7 and 8 are self-explanatory and need no filling up.

Column 9 is self-explanatory. Fill up the details of individual claimant inventors, as required in

Column 3, with name, address, and nationality. Put up signatures of each inventor against the

individual's particulars. Must note that each patent application requires three copies and each of

these copies should bear the original signature of all claimants.

Column 10 is self-explanatory and does not require any filling up.

Column 11 relates to the details of application and its enclosures. Again, the application must be

in three original sets, including the enclosures.


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Fill up the column 11 (a) with THREE COPIES. Each of the three sets of application, including

the drawings and priority documents, has to be in original. In case the application is provisional,

replace the word Complete with Provisional under this column.

In case the application is accompanied with drawings, fill up the column 11 (b) with THREE

COPIES. Alternatively, if there are no drawings, then fill up this column with NIL.

Priority documents under the column 11 (c) are required only when a Complete Application is

filed subsequent to a provisional application. When such priority document is accompanied, this

column has to be filled up with THREE COPIES. Otherwise fill up with NIL.

With respect to column 11 (d), the Power of Authority refers to the assignment of application in

favour of ICAR/ADG (IPR) in case of all ICAR applications. It has to be filled as per Annexure

in the modified Form No. 1, which must be used by all ICAR scientists. Hence, fill up this

column with THREE COPIES.

The necessary payment of the Application Fee is made by the ICAR/IPR Section. Hence, column11 (e) will be filled up for the particulars of the Demand Draft by the IPR Section at the ICAR

HQ.

The date line provided as the last line may be filled by the applicant(s). Nevertheless, it must be

noted that irrespective of the date shown here the valid date of filing of the application for the

purpose of Priority Date shall be the actual date of filing by the IPR Section to the Patent Office

Branch, New Delhi vis--vis the receipt of the application at the said Patent Office Branch.

ANNEXURE

The modified Form No. 1 has the Annexure prescribed by the ICAR for all ICAR claimants. This

embodies an Undertaking for the bona fides of the research leading to the patent application and

a Declaration for the assignee by the claimant(s).


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UNDERTAKING

The Undertaking is addressed to ADG (IPR). Here, the title of the invention has to be mentioned

under column (i). By signing the Undertaking the scientist(s) is/are understood to have made 5

declarations, as stated at serial numbers ii) to vi), in respect of their invention mentioned at serial

number i) in this undertaking. All claimants have to type in their individual names and affix

signatures at specified place below the Undertaking. As mentioned above, each of the three sets

of application (Form No. 1) must have Annexure with original signature(s).

DECLARATION BY INVENTOR(S)

Following the Undertaking at the annexure mentioned above, there has to be a Declaration as

part of the requirement under the ICAR System. It is self-explanatory and the details must be

filled upfor the name of individual inventor claimant in full with expanded initials and his/her

signatures along with two witnesses. It must be ensured that each set of application contains a

Declaration bearing the original signatures of inventor(s) and witnesses.

It is desirable that the witnesses are the concerned Head of the Division and the Director of the

respective ICAR Institution, unless they are claimants themselves. Rubber stamps should be

preferably affixed below the signatures of the witnesses.

FORM NO. 2 (MODIFIED FOR USE BY ALL ICAR SCIENTISTS)

This form principally covers the details of the invention in respect of specifications, claims and

abstract.

The title of the form may have to be modified as PROVISIONAL SPECIFICATION by

replacing the word COMPLETE with PROVISIONAL in case a provisional application is being

filed. A PROVISIONAL application should be submitted when there is a possibility of

same/similar claim being filed by another person/group engaged in similar research.


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Columns 1 & 2 are self-explanatory, covering title of the invention and particulars of inventors,

respectively. In column 2, the sub-columns 2(a), 2(b), 2(c), etc. on Name, Address and

Nationality of the Applicant(s) have to be repeated as many times as the number of the

Applicants, ensuring that this information is provided separately for each applicant.

Column 3 has to contain patent specifications.


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How to write specifications

Specifications required to be provided under column 3 of the Form No. 2 constitute the most

important techno-legal component of a patent document. Hence, these have to be written with

great care and understanding of the subject.

Specifications should be written in at least three sections, in a pre-formatted style, as follows:

The first section, constituting the first para, should provide a preamble or an introduction to the

invention. As already printed in the form, it starts with the first sentence, The followingspecification (particularly) describes the nature of invention and the manner in which it is to be

performed _ _ _ _ _ _ _ _ _ _ _. This sentence should be followed with a brief but vivid

preambular description of the invention.

The next section should be a separate paragraph with a sub-title, Prior Art. The information

provided under this section must contain all relevant pre-existing information on the topic, either

published or in public knowledge, such as traditional knowledge, etc. This information should becited, to establish the fact, along with relevant references in scientific or other publications or

patents. Citation of references from publications or the existing patents may be made just like in

any scientific paper. This section should also bring out the limitations of the prior art in a manner

that suggests that the invention under application proposes to address such limitations and

improve upon them.

The third section may deal with the details of the invention under the application. Such

description and the style may vary depending on the area/subject matter of the invention.

Nevertheless, the text should comprehensively and unambiguously cover all aspects of the

invention without apparently hiding any critical aspect. The language should be direct, concise

and precise, and matter of fact without fancied expressions.

The details provided under specifications should be sufficient enough to enable a person

reasonably skilled in the art to independently work the invention without the assistance of


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exclusive source of a component used for the inventive process or product, details of engineering

designs, drawings, in the case of mechanical inventions, etc.

Secrecy of know-how is often required to maintain a control over the working of the patented

invention and to ensure continued royalty fees from a licensee. Therefore, great care has to be

taken to discern as to what is essentially the required specification and what essentially

constitutes the know-how. Information on know-how should be avoided in the specifications,

with due judgement of the inventor(s), while taking note that the specifications do not suppress

any critical aspect of the patent, which may later be used for opposition to the patent by

interested persons skilled in the art.

Column 4 of the Application Form 2 (modified) contains Claims to be made in respect of the

patent. As mentioned earlier, the provisional application does not require mention of claims but

the Patent Claims must be included in the Complete Application.

CLAIMS

The first part of the sentence for describing claim(s) is printed on the application form which

reads, I/We claim that _ _ _ _ _ _ _ _ _ _ _ _ _ _. It is required to complete the sentence by

putting up unitary claim(s) in respect of the invention. The claim(s) have to be unitary,

irrespective of the total number of such claims in a patent, because these always relate to the

single invention under application. If more than one claims are made, then each one has to be

serially numbered and set in separate paragraphs, but without breaking the sentence/punctuating

the full stop.

The first claim in any patent is called the 'Principal Claim' and the rest are the 'Subordinate

Claims'.

The principal claim should comprehensively cover the scope and range of invention, defining its

novel as well as other aspects, striking a comparison with the existing state of art, all in precise,

concise and matter of fact language. Highest care has to be taken for writing the patent claim as


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any aspect left out from the claim would not qualify the patent for legal protection on that aspect

whenever the patent is taken to any legal scrutiny even when there is a mention of such aspect

under the specifications.

In a patent document, it is the claim part, which is legally examined and admitted as the prior art

in a court of law. Therefore, it is recommended to seek assistance of a patent attorney for writing

a patent application, particularly the claims part, for good reasons of the importance of the

invention and its legal safety. This feasibility and the availability of patent attorneys for the

purpose may be ascertained by the ICAR institutions as per approval of or in consultation with

the Council/ IPR Section.

Whenever subordinate claims are mentioned in a patent application, the same may be made to

describe certain aspect of the principal/ another subordinate claim. In writing such claims, always

a reference to the principal or the relevant subordinate claim has to be made. It must be borne in

mind that no subordinate claim has to stand alone, without making a reference either to the

principal claim or the preceded subordinate claim.

Scientists who have invented a patentable technology or anticipate the same in near future but are

not familiar with writing a patent document must read various related or unrelated patent

documents so as to familiarise themselves with the expertise, particularly in writing

specifications and claims.

ABSTRACT

Column 5 of Form No. 2 consists of Abstract of the invention. This comprises the last part of a

patent document. The abstract should be set as a separate page and written in a manner as to

reflect a brief description of the invention, including specifications and claims. Preferably, the

text of the abstract should contain 250-300 words.

PAYMENT OF PATENT REGISTRATION AND OTHER FEES


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The ICAR/IPR Section will accord sanction and make necessary payment of application fee and

other charges from the Headquarters for patenting of all inventions as per the applications

submitted by the ICAR institutions and the patentable inventions arising from ICAR supported

research projects located outside ICAR institutions with the obligation on the part of the

claimants that in all such cases, the ICAR/ADG (IPR) shall be the authorised signatory of the

ICAR on the patent application and the claimant inventor(s) declare him/her as their assignee.

CONTACT FOR HELP

The ICAR scientists are advised to consult the IPR Nodal Officers from their respectiveinstitution or another ICAR institution located in the vicinity/same town/city. Nevertheless, for

any further help, such as, deciding whether the subject is patentable or not or whether provisional

application should be filed or not or seeking any clarification regarding writing of patent

application/ preparation of patent document etc., they may contact:

Assistant Director General (IPR),

Indian Council of Agricultural Research,Krishi Bhavan, New Delhi - 110 001.

Phone: 011-3387516; 011-3388991/478; ICAR EPABX Ask for Extension for ADG (IPR).

Fax: 011-3387293

Email: [email protected] Attention: ADG (IPR).


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FORM 1

THE PATENTS ACT 1970

(39 OF 1970)

APPLICATION FOR GRANT OF A PATENT(See Section 5(2), 7,54 and 135 and 33 F)

1. We, Indian Council of Agricultural Research, Krishi Bhavan, Dr. Rajendra Prasad Road,

New Delhi 110 001, an Indian registered body incorporated under the Registration of

Societies Act (Act XXI of 1860)

2. hereby declare -

a) that we are in possession of an invention titled

.

b) that the Complete Specification relating to this invention is filed with this

application.

c) that there is no lawful ground of objection to the grant of a patent to us.

3. We further declare that the following are the inventor(s) of the said invention; the address

and nationality have been indicated against the name of each inventor:

i)____________________________________________________________________

(name) (address) (nationality)

ii)___________________________________________________________________


iii)__________________________________________________________________


4. We claim the priority from the application(s) filed in convention countries, particulars of

which are as follows:

5. We state that the said invention is an improvement in or modification of the invention,

the particulars of which are as follows:

6. We state that the application is divided out of our application, the particulars of which are

given below and pray that this application deemed to have been filed on

under section 16 of the Act .

7. That we are the assignee of the true and first inventor(s).

8. That our address for service in India is as follows:

The Assistant Director General,

(Intellectual Property Rights),


Krishi Bhavan, Dr. Rajendra Prasad Road,

New Delhi 110 001.


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Annexure

The Assistant Director General,

(Intellectual Property Rights),ICAR, Krishi Bhavan,

New Delhi 110 001.

Subject: Undertaking and Declaration in regard to Invention made by the undersigned.

In regard to the invention made by me/us, I/We have requested our Director to forward

the proposal for filing application for Patent. In this connection we reiterate the following facts:

i) The title of our invention is

ii) The invention made by us is completely new and is on account of inventive steps

taken by us. It has not been published.iii) There is no lawful ground of objection to the grant of patent in respect of our

invention.

iv) I/We have perused the available literature on the subject and I/We confirm that

no invention has been made by any person of the type mentioned an item no(I)

above.

v) I/We undertake to keep you posted of developments in regard to

correspondence/business discussion if any, pertaining to the above mentioned

invention, in future.

vi) I/We give below the declaration for assignment of rights to ICAR.

2. In view of the above facts, I/We request you to kindly expedite the filing of the

application.

Yours faithfully,

Name(s) of Inventor(s)

1. Name (Signature)

2. Name (Signature)

3. Name (Signature)

4.


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FORM 2

THE PATENT ACT, 1970

(39 OF 1970)

COMPLETE SPECIFICATION(See Section 10)

1. Title of Invention:

2. (a) Name of Inventor:

Address of Inventor:

Nationality of Inventor:

(b) Name of Inventor:

Address of Inventor:

Nationality of Inventor:

3. The following specification (particularly) describes the nature of invention and the

manner in which it is to be performed

4. I/We claim

Dated this day of 2001.

Signature( )

5. Abstract of the invention

To

The Controller of Patents,

The Patent Office,

Delhi


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Table 2: List of Authorities receiving Patent Office Publications on the

condition that they may be seen by the public, free of charge

All publications including printed specifications are deposited for free inspection at the followingplaces:

ANDHRA PRADESH

The Director, Regional Research Laboratory, Hyderabad.Hyderabad

The Librarian, State Central Library, Hyderabad.

Waltair The Registrar, Andhra University, Waltair, Andhra Pradesh.

Warangal The Principal, Regional Engineering College, P.O. Kazipet, Warangal, A.P.

ASSAM

Jorhat The Director, Regional Research Laboratory, Jorhat, AssamBIHAR

Patna The Director of Industries, Patna, Bihar.

DELHI

Joint Adviser (Patents), CSIR, Patents Unit, Insdoc Building, 14, Satsang

Vihar Marg, Special Institutional Area, New Delhi 110 067.

The Director General, National Productivity Council, Institutional Area, Lodi

Road, New Delhi 110 003.

The Director, Inventions Promotion Board, Anusandhan Vikas, 20-22,

Zamroodpur Community Centre, Kailash Colony Extension New Delhi 48.

The Director, National Physical Laboratory of India, New Delhi 110 012.

New Delhi

The Secretary, National Research Development Corporation of India,

Anusandhan Vikas, 20-22, Zamroodpur Community Centre, Kailash Colony

Extension, New Delhi 110 048.

GUJARAT

Baroda The Assistant Director of Industries (Chem), Industrial Research Laboratory,

Baroda Science College Compound, Baroda 2, Gujarat.

Bhavnagar The Director, Central Salt and Marine Chemicals Research Institute,

Bhavnagar

JAMMU & KASHMIR

Jammu The Director, Industrial Survey Section, Regional Research Laboratory,

Canal Road, Jammu Tavi 180 001.

JHARKHAND

Ranchi The Deputy Manager (M), Engineering Department (HMBP), Heavy

Machine Building Plant, Heavy Engineering Corporation Ltd. Doarva,

Ranchi


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KARNATAKA

Bangalore The Director, Indian Institute of Science, Bangalore.

Mysore The Director, Central Food Technological Research Institute, Mysore.KERALA

Thiruanantha-

puram

University Librarian, Kerala University Library, University of Kerala,

Thiruananthapuram, Kerala 695 001.

Cochin The University Librarian, Cochin University Library, Cochin 682 022.

MADHYA PRADESH

Jabalpur The Principal, Government Engineering College, Jabalpur, Madhya Pradesh.

MAHARASHTRA

The Secretary, Mahratta Chamber of Commerce & Industry, Tilak Road,Pune 411 002.

Pune

The Director, National Chemical Laboratory of India, Pune 411 003

The Director, Indian Institute of Technology, Powai, Mumbai.Mumbai

The Director, Department of Chemical Technology, Matunga, Mumbai.

MEGHALAYA

The Deputy Director (Commercial Intelligence), Directorate of Industries,

(Assam, Shillong, Meghalaya)

Shillong

The Vice-chancellor, North Eastern Hill University, Lower Lacbauniera,

Shillong

ORISSA

Bhubneshwar The Director, Regional Research Laboratory, Bhubneshwar, Orissa.

Cuttack The Librarian, Kanika Library, Renenshaw College, Cuttack 2, Orissa.

PUNJAB

Ludhiana The Scientist-in-charge, Merario (Mechanical Engineering Research &

Development Organisation), Hill Road, Ludhiana 141 005.

RAJASTHAN

Jaipur The Director of Industries & Supplies, Jaipur, Rajasthan.

TAMIL NADU

Annamalai

Nagar

The Librarian, Annamalai University Library, Annamalai Nagar P.O. South

Arcot Distt. Tamil Nadu.

The Director, Record Office, Egnore, Chennai.

The Director, Central Leather Research Institute, Chennai.

Chennai

The Librarian, Central Library, Indian Institute of Technology, Madras, IIT,

P.O. Chennai 600 036.

Karaikudi The Director, Central Electro-Chemical Research Institute, Karaikudi, T.N.


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UTTAR PRADESH

Allahabad The Director, Sheila Dhar, Institute of Soil Science, University of Allahabad,

2-d. Beli Road, Allahabad.

Kanpur The Principal, Harcourt Buttler Technological Institutes, Kanpur, U.P.

The Librarian, Amiruddaula Public Library, Lucknow, U.P.

Senior Librarian, National Botanical Research Institute, Rana Pratap Marg,

Lucknow 226 001.

Lucknow

The Director, Central Drug Research Institute, Documentation & Library

Services, Division NICDAP, P.O. Box. No. 173, Lucknow 220 001.

Varanasi The Director, Institute of Technology, Banaras Hindu University, Varanasi.

UTTRANCHAL

Dehra Dun The President, Forest Research Institute Colleges, Dehra Dun

Head, Library, Indian Institute of Petroleum IIP. P.O. Dehradun

Hardwar The Librarian, Central Technical Library, Bharat Heavy Electronics Ltd.

Heavy Electrical Equipment Plant, Rani Pur, Hardwar 249 403

WEST BENGAL

Kolkata The Secretary, Council of the University, College of Science & Technology,

92, Upper Circular Road, Kolkata 700 009.

Durgapur The Director, Central Mechanical Engg. Research Institute, Mahatma Gandhi

Avenue, Durgapur 9, West Bengal.

Howarh The Principal, Bengal Engineering College, Shibpur, Howrah.

Kharagpur The Director, Indian Institute of Technology, P.O. Kharagpur Technology,

Kharagpur, West Bengal.

Foreign Countries

GERMANY

Munich The President, German Patent Office, Javobrek, Brukan Strasst, 12,800

Munich

USA

Washington The Commissioner of Patents, The Patent Office, Washington, DC, USA

All publications other than printed specification are deposited for free inspection at the following

places:

U.K.

London Office of the High Commission of India, India House, Alawitch, London,

VCP, England.


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The British Library, Science Reference Library, 25, Southampton Building,

Chancerry Lane, London Wc. 2 A IAV.

All publications of Patent Office are also deposited at the following addresses on exchange basis:

AUSTRALIA

Woden ACT The Librarian, Patent Office Library, P.O. Box 200, Woden ACT, Australia

2606.

CZECH REPUBLIC

Pragul Urad Propatety a Vynalezy, Vachavske Nam, 19, Pragul, Czech Republic.

GERMANY

Munich Biblotnek des Deutschen patentants, Eweibruckenstresse 12, D-8009,

Munchen 2, Fedaral Republic of Germany

Berlin Office for Inventions & Patents of the GDR, Mohrenstrasse 378, Post Office

1285, 1086, Berlin.

NEITHERLANDS

Rijswijk Netherlands Patent Office, Documentation Department, 2. Patentalaan

Rijswijk, Netherlands.

POLAND

Poland The Polish Peoples Republic Uraad Patentowy Polshiej, Rzeczynospolitej

Ludowej, Werezawa 68, A1, Niepodieglosci 186, Poland.

RUSSIA

Moscow The All Union Patent & Technical Library, Brezhkovskaja, Naberegnaja, 24,

121857, Moscow, Russia.

For any further information please contact:

Assistant Director General (IPR),


Krishi Bhavan, New Delhi - 110001Phone: 011-3387516 or 011-3388991 Ext. 478, Fax: 011-3387293,

Email: [email protected], Attention: ADG (IPR)

icar guidelines for filing patent application

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