1. ICAR: its intellectual assets and
ownership
2. Protection of IPR in the ICAR
3. Agricultural technologies and patents
in India
4. Salient features of the Indian Patents
Act in force
5. Salient points to know and consider before filing patent
application
6. Guidelines for filing patent
applications in the ICAR set up
7. Writing a patent document
8. Form 1 and Annexures
9. Form 2
10. Drawing Sheet
11. Some important dos and donts
12. Some important steps/milestones in patenting
13. Application
and other fees
14. Contact for help
List of Tables
1. Some
important Internet Sites for Patent Search
and
other IPR related information
2. List of Authorities receiving Patent
Office Publications on the
condition that they may be seen by
the public, free of charge
About
ICAR
The
Indian Council of Agricultural Research (ICAR), Krishi Bhawan, Dr. Rajendra
Prasad Road, New Delhi 110 001, is a registered body incorporated under the
Registration of Societies Act (Act XXI of 1860). It is at the core of national
agricultural research programmes, concerned with development, growth and
sustainability of agriculture, and caters to quality of life of the Indian
farming community. A network of ICAR institutions in the country primarily aims
at addressing the agricultural research and education needs of
The ICAR also acts as information repository and consultancy provider in the areas of research and education in agriculture, horticulture, natural resource management, animal sciences, dairying, post harvest technology, agricultural engineering, fisheries, agricultural extension, food processing technology, home science, agricultural communication and other related areas. It caters to the human resource development needs in agricultural and allied science across the country in cooperation with various agricultural universities and deemed universities. Funding for agricultural research through grants and specific ad hoc projects in the country constitutes another part of the responsibilities shouldered by the ICAR.
Intellectual Assets of ICAR
The
ICAR, having a strong institutional network and human resource in the country
has provided an exemplary national agricultural research system. The Council
has been recognized as the best agricultural institution at the global level
and awarded the famous King Baudouin International Development Prize. Sitting
at the driving seat of the green, yellow and blue revolutions and as partner in
bringing the white revolution of
Salient achievements in terms of agricultural technologies brought out by the public system research in the country include highly productive and resilient crop varieties and animal breeds, packages of improved crop and animal husbandry, innovative tools, equipment and farm power machinery, improved dairy, poultry and fisheries technologies, post harvest processing, and several novel processes or value added products. Successful application of these technologies in farmers fields in the country has definitely helped in transforming the food and agricultural production scenario from a state of deficit to that of surplus.
In the past, there were hardly any efforts in the first place to protect intellectual property rights on the ICAR technologies despite the fact that the advances made in the agricultural technologies matched/excelled the international standards. For example, a number of improved Indian varieties of several crops have been successfully adapted for cultivation in many countries albeit for public good, without any commercial gains to the developers of these technologies.
Nevertheless, the emerging intellectual property rights regimes required appropriate change in mindset and attitude towards protecting the intellectual property developed in the ICAR institutions/ funded projects. Such protection may be required not only for resource generation through exclusive commercial gains but also to support further research and development in agriculture. It is, therefore, imperative that all ICAR scientists/technical officers understand the scenario and make contributions towards the augmentation of Councils intellectual assets.
Owner/inventorship
Credits
The
ICAR, like any other employer, owns the results of the research carried out and
the technology generated by its scientists/ researchers working in its various
institutions, including the national institutes, bureaus, research centres, and
project directorates. Similarly, the ownership of all tangible results of the
collaborative, ICAR funded projects rests with the Council on logical grounds,
which may be subject to any sharing of credits/ property rights based on prior
written understanding/ agreement with the executing agency. Nevertheless, the
scientist(s)/ researcher(s) concerned with the development of a particular
patentable technology shall be recognized as its true and first inventor(s).
In order to meet the current and emerging scenario on intellectual property rights (IPR), the ICAR has developed a mechanism of filing patent applications from its headquarters. Whereas an Assistant Director General in the Agricultural Engineering Division has been facilitating the process of patenting the ICAR technologies in the past, the regular Intellectual Property Rights Section, headed by the Assistant Director General (Intellectual Property Rights) [ADG (IPR)], was established in the Crop Science Division in October 1998. A few prior patent applications, filed through Agricultural Engineering Division were also consolidated in the IPR Section.
Since the establishment of IPR Section, appropriate guidelines for filing patent applications have been developed/revised and disseminated from time to time through circulation among all ICAR institutions and also the ICAR Home Page at the Internet, http://www.icar.org.in.
In the ICAR set up, the scientists/ researchers working at any of its institutions may apply, individually or jointly with other scientists/ researchers, for protection of the intellectual property created/ technology generated by them from the work carried out in the institution where they are working, or jointly with other scientists/ institutions under the projects carried out with the ICAR funding support.
In cases of all patentable technologies, the IPR Section shall be the receiving office for the patent application proposals and the ADG (IPR) shall be the assignee of all these applications on behalf of the Council. Further, ADG (IPR) is the applicant for all patent applications filed at the patent office and also the Authorized Signatory in the Council for other matters related to patenting as well as licensing of ICAR technologies.
It is imperative that the concerned ICAR scientists/researchers/other staff observe and clearly understand, before making patent applications for the relevant technologies invented by them, the salient features of the Act/Rules presently in force. There is also a need to understand as to how to prepare a proper patent application/document, particularly the avoidable common mistakes and gaps, so that time taken in scrutiny/pre-examination of applications by the IPR Section before filing at the patent office is minimized.
An attempt is being made to provide inter alia salient
description of the revised Patents Act and its implementation that may be
particularly relevant to patenting of inventions (technologies) in the ICAR set
up. It is worth observing the increased
relevance and importance of protecting patentable technologies in the new/yet
emerging IPR regime. The scientists/ researchers in the ICAR set up may now
like to take initiative in submitting complete applications for the protection
of relevant technologies developed by them. Alternately, they may submit
provisional applications for the cases where they expect that the results will
be available and they can file complete application within a period of twelve
months.
Patenting of new, inventive and industrially useful
technologies in the ICAR set up, which mainly comprised methods and products of
agriculture, horticulture, farm animals and fisheries, remained a low-key
affair in the previous patents regime in the country for obvious reasons. The
Patents Act, 1970 had been in force in
In so far as results of agricultural research were concerned, patents could be applied for mainly the agricultural tools and machinery or the processes for the development of agricultural chemicals. However, methods of agriculture or horticulture, microorganisms, other life forms like plant varieties, strains/breeds of animals, fish or birds as well as products derived from chemical/biochemical processes, and any processes 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 as such did not constitute the patentable subject matter under the previous patent regime.
The Patents Act, 1970 has
undergone two amendments, in 1999 and 2002. The Amended Act along with The Patents
Rules, 2003 is presently in force with effect from
The Patents
(Amendment) Act, 2002 along with the Patents Rules, 2003 came into force, with
effect from
The foremost salient feature of the amended Act is that all
existing patents in India, and also those ceased patents which are restorable
(under Section 60 of the Act), shall now have a term of 20 years from their
date of granting irrespective of the term period for which these were
respectively granted earlier. Thus, for example, the Patent No. 183679 dated 15
January 1998 on A new bed for mushroom cultivation by utilising biogas waste
slurry and straw for improved mushroom cultivation from National Institute for
Research on Jute and Allied Fibre Technology (ICAR), Kolkata, which was granted
for a term of 14 years from 15 January 1998 and sealed on 16 February 2001
(from the date of granting), shall now be effective as per the Amended Act in
force up to 14 January 2018 instead of same date up to 2112. This, however,
also implies payment of annual maintenance fees for the extended period and
also making other formalities, if any, as may be required at the Patent Office
under the new Rules. Further, in case any patent has ceased on or after
In the amended Act, "Invention" is interpreted as a new product or process involving inventive step and capable of industrial application. However, restriction for grant of a product patent continues to be there under section 5 for the substances intended for use, or capable of being used, as food, or as medicine or drug.
Food, in this context, will cover only the food for human consumption. Such restriction also continues for patenting of substances prepared or produced by chemical processes, including the biochemical, biotechnological or microbiological processes. Some additional clarifications have been made in terms of the patentable processes. Now, it will be possible to patent a new method or process of testing during the process of manufacture. Also, a process for curative, prophylactic, diagnostic, therapeutic or other treatment of plants (to render them free from diseases and pests) shall now be patentable contrary to similar processes for animals and human beings that are still given up as non-patentable under section 3(i) of the amended Patents Act.
It may be clearly
understood that the invention, which are still not patentable under the new
Act/Rules include those contrary to public order/morality or also those
prejudicial to human/ animal/ plant life or health or to the environment. Also,
plants and animals, in whole or any
part thereof, including seeds, varieties and species and also essentially
biological processes for their production and propagation are not patentable
even under the second amendment Act. This exception, however, does not apply to
biological materials like microorganisms.
In order seek patent on microorganisms, it will be required to deposit the biological material(s) mentioned in the specification at a notified repository at the time of filing the patent application. In this context, the Microbial Type Culture Collection and Gene Bank (MTCC), {located in the Institute of Microbial Technology (IMTECH), Chandigarh}, has been notified as the Authorized Depository Institution in the country vide Gazette of India Notification dated 20.5.2003, Part II, Section 3 sub-section (ii). As per the amended Act, it will be required to disclose the source and geographical origin of the biological material used in invention. This information can be presented in the specifications, i.e., Form 2 of the patent document.
Further, a
presentation of information, and also an invention, which in effect is
traditional knowledge or an aggregation of or duplication of known properties
of traditionally known component(s) are not patentable as per the Act in force.
It may also be observed that Section 39 concerning filing of
patent applications outside
Contrary to the previous practice, which has been stopped, no filing intimation will be published in the Gazette of India soon after the patent applications have been filed. Now, patents will be published in the Gazette of India Part II, Section 3, just after 18 months from the date of filing/priority.
This will, of course, not hold true for patents in which a secrecy direction is given under Section 35 of the Act. At this point of time, patents will be open for public on payment of fees to the Patent Office.
In the patent regime just entered in force, a non-disclosure
or wrongly mentioned source of geographical origin of biological material used for
invention can become a ground of opposition of the patent application under
Section 25 as well as ground of revocation under Section 64 of the Patents
(Amendment) Act, 2002. Similarly, the grounds for opposition or revocation will
also include anticipation having regard to the knowledge (related to the
invention) available with in any local or indigenous community in
Opposition Proceedings under Section 25 have been simplified and shortened. Now it is not compulsory to fix any hearing. But, if the applicant does not file reply statement and evidence, the application will be deemed to have been abandoned.
As per the Patent Rules, 2003, a new system for examination
of patent applications has been introduced under Section 12 of the Act. Such
examination for any patent application will not be automatically done any more.
Rather, a request for examination on Form 19 would essentially have to be made
and the prescribed fee will have to be paid to the Patent Office. The patent
applications will then be examined in serial order in which the request for
examination is filed. This is applicable for all the patent applications in
which First Examination Report has not been issued by the Patent Office on or
before
A new provision has been introduced for filing request for
examination. Such a request can now be made not only by the applicant but also
by any other interested person. Thus, interested parsons, including the
potential or actual infringers, can now approach patent office for examination
of application for a speedy decision on the grant or disallowing the patent. It
may be particularly noted that in case the application has been filed before
the commencement of this Act, the request shall be made within a period of 12
months from the date of commencement of the Act, i.e.,
Under the new rules, now in force, there is also another provision that the applicant may withdraw his application at any point of time before the patent has been granted. But once the First Examination Report has been issued by the patent office in respect of any application, then it must be put in order for acceptance under Section 21 within 12 months. Earlier, the time for putting the application in order for acceptance was 15 months, extendible up to 18 months.
In case of granted patents, the renewal fees, which become due because of late grant of patent, can now be paid within 9 months from the date of recordal by taking an extension on Form 4 and payment of extension of time fee. Thus, the provision for extension of time can be availed for a period up to 6 months.
There is a substantial reduction in the charges to be made by the patent office, i.e., from Rs. 10/- to Rs. 4/- per page, for supplying the photocopies of the available documents. Similarly, the charges for making amendments in name, address, nationality, and address for service have been considerably reduced from Rs. 1000/- to Rs. 200/- for natural persons and from Rs. 6000/- to Rs. 500/- for other than natural persons either alone or jointly with natural persons. Form 13 may be used to avail these services.
In the new system enforced under Patents (Amendment) Act, 2002, the patent applications and other documents are required to be filed only in duplicate. This, however, shall not hold good for applications to be made for the convention countries under Patent Cooperation Treaty (PCT). Further, documents can now be filed as one soft copy (in electronic form) and another hard copy (in paper form). It may also be worthwhile to note that the fees required to be paid on documents can now be paid within one month from its date of filing.
A twelve-month priority date of filing, where applicable, will be available to all PCT applications filed in the Patent Office. Further, provision for allowing Paris Convention Priority has been extended to group or union of countries or inter governmental organizations. This implies that the 12-month priority will be available as well to the applications filed in European Patent Office (EPO), AIRPO, OAPI and EAPO.
A patent is one of the
forms of Intellectual Property Rights. It is granted by a country government to
person(s), whether natural persons or legal entities, for an invention, which
is new, non-obvious and useful, in lieu
of its disclosure 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
The patent entitles the right-holder to exclusively produce/ import, use or sell the 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 patent expires, 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 preventing 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.
Patenting is regulated in
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.
The application must qualify for the basic criteria in respect of the invention. Accordingly, Novelty means 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 also ascertain novelty by ruling out the existence of prior art.
It may also be noted that in order to qualify for a patent grant, the invention needs not to be a completely new one. For example, it may be even just a step ahead of, or have incremental progress over, an existing invention. To cite an example, an invention of a bioinoculator with improved and efficient aeration unit to increase the availability of viable inoculum for longer duration, would 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.
Non-obvious or involving an inventive step means 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 commercialization should not hurt public order or 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 judge for the qualification of
their patent claim, next only to the Patent Office.
Proposals
All ICAR scientists/ researchers who have invented patentable
technologies, whether individually or jointly with other scientists from the
work carried out in the ICAR institutions or under the projects carried out
with the ICAR funding support in other institutions, should make applications
for the protection of intellectual property right. The application proposals
should be made through proper channel (through the Director/ Project Director
of the concerned ICAR institution). Steps will then be taken up at the ICAR HQ
to process and file the relevant applications. These steps will include
scrutiny of the applications, suggesting for amendments/ corrections/ revision
to be done by the concerned scientists/ institutions where necessary and other
procedural formalities for the filing of the application at the Patents Office
Branch,
The
patent application should be submitted to the Assistant Director General (IPR),
ICAR, Krishi Bhawan,
Forms
For
ready reference, this publication includes the modified Form 1 and Form 2,
which should be used for making patent applications in the ICAR system. All inventors/
claimants from the ICAR institutions/ funded projects must use only these
modified forms. The outline of Forms 1 and 2 has been appropriately modified so
as to meet the essential pre-requisites as explained above. Broadly, the
modified forms comply with the requirements of the Patents Rules, 2003. No
substantial changes have been made in the original columns of Form 1 and Form
2, except for pre-filling of columns 1 and 8 of Form 1 with the required
addresses (of ICAR) for a ready reference. The additions are, however, made in
the annexure to include the Undertaking and Declaration by the inventors
(employees/funded persons) submitted to the Council (employer/funding agency)
as part of the patent document.
The
points made above are being further specifically elaborated. Please note that
for filing an ICARs patent application to the Controller of Patents, the
primary application form (Form 1) shall have an annexure covering the following
two pre-requisites:
(i)
an Undertaking and Declaration by the inventor(s) to be furnished to
the ICAR in respect of the bona fides of and further developments
related to the invention, and
(ii)
a Declaration by the inventor(s) in the presence of two witnesses to
the effect that the ICAR/the authorised signatory of the Council, i.e., ADG
(IPR), is his/her/their assignee.
Thus, only the
modified Forms 1 and 2, as provided in this publication must be used. Invariably, the patent applications
may be filed with Complete Specifications and Claims. However, where relevant
and appropriate, provisional applications can also be filed as per Patents
Rules in force. For example, in cases where results of a particular research/
experiment are well anticipated but the authentic information is expected to be
collected/ collated in due course, one may apply for filing a provisional
patent application. This will allow delayed filing of complete patent
application, including the Complete Specifications, Claims and Drawings, if
any, up to one year from the date of filing the provisional application. At the
same time, the date on which the provisional application has been filed will
continue to be the priority date in respect of the invention for its
consideration by the patent office for grant of patent. The Provisional and
Complete Applications will have to be appropriately designated/ marked on the
body of Forms 1 and 2 as per the guidelines
being provided for filling individual columns of Forms 1 and 2, and annexures,
in detail in the subsequent part.
Scrutiny
On
receipt of duly completed and duly forwarded patent applications from the ICAR
institutions, the IPR Section will scrutinize these applications. Where
applicable and as appropriate, the inventors/ institutions will be advised to
amend/ modify the application or make some relevant changes therein. Only those
applications will be considered for filing at the Patent Office, which are
relevant and qualify the requirements of the Patents Act in vogue. However,
those applications, which might have had some mistakes/ weaknesses in the
beginning but have been appropriately amended/ modified as per suggestions from
the ICAR HQ, may also be appropriately filed at the patent office.
The
IPR Section will seek necessary approval and sanction for payment of the
application fee and file the application with the Controller of Patents, Patent
Office Branch,
In
the process of facilitating/ organizing the protection and safeguarding of the
ICARs intellectual property generated at the institution level, it will be
appropriate that the ICAR institutes/ bureaus/ project directorates/ national
research centres involve designated IPR nodal officers or an IPR management
committee. However, as and when appropriate, case-to-case basis advice/
suggestions may also be obtained from the ICAR HQ.
A patent application is also known as a Patent Document. Writing of patent applications requires a techno-legal frame. The mindset has to be significantly altered from that required for writing research papers. Therefore, it is important that all scientists/ inventors in the ICAR set up carefully read and follow these guidelines for preparing and submission of their patent applications to the best of their advantage. In particular, those scientists/ researchers who are either considering to submit a patent application or 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 of patent document and filing of the patent application.
It is important to be reminded here that for the purpose of enforcement of the Patents Act, the Patent Office may be equated to a civil court and the patent application may be treated as a techno-legal document. Hence, the application and other forms should be filled in properly like the other non-judicial bonds and affidavits and these should not be taken up with a casual approach. Further, these guidelines may be read in conjunction with the specimen copies of the application forms modified as per ICAR requirements as attached for ready reference and official use by all concerned.
Number
of copies
Prepare and submit two copies of application with original signatures of all inventors and witnesses, as applicable, and as described in the subsequent paragraphs. Also, provide separate sets of the drawings and other attachments with each copy of the application. Earlier, each patent application was required to be submitted to the Patents Office in three copies with original signatures of all concerned. The inventors may like to still prepare three (original) copies and keep one such copy with original signatures for their reference purpose. It is relevant to remind here that as per the Patents Rules, 2003, now it is also possible to submit one soft copy (electronic form) of the application together with one hard copy (paper form).
Form
1
The outline of Form 1 has the following printed statement in its title:
FORM 1
THE PATENTS ACT 1970
(39 OF 1970)
APPLICATION FOR GRANT OF A
PATENT
(See section 5(2), 7, 54 and
135; rule 39)
It may be clarified that although the Indian Patents Act has been amended in 1999 and 2002 yet the reference to the principal Act, i.e., the Patents Act, 1970 as printed in Form 1 and other forms, is mandatory and this has to be strictly followed.
Provisional
or Complete Application
As pointed out earlier, a patent application may be submitted either as PROVISIONAL APPLICATION or as COMPLETE APPLICATION. The above outline Form 1, as given under the Patents Rules presently in force, however, reads only as, APPLICATION FOR GRANT OF A PATENT. It does not have the word PROVISIONAL or COMPLETE printed on it. Therefore, while preparing a patent document, in cases where only a provisional application is to be filed in the first place, 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. However, there is no need to separately type the prefix COMPLETE in case of complete applications, which is obvious and otherwise well understood.
Further, the body of the application contains a mention of Complete Specification in Columns 2(b) and 11 (a). The word Complete in these columns is also required to be replaced with Provisional in all cases where a provisional application is being submitted.
Form
1: Column to column
The principal application form (Form 1) has 11 columns in all. Carefully fill up each column by strictly following the guidelines/ instructions. Do not introduce any subjective changes.
Column
1
Column 1 in the outline Form 1 provided in this publication reads as follows:
1. We, Indian Council of Agricultural Research, Krishi Bhawan, Dr. Rajendra Prasad Road, New Delhi 110 001, an Indian registered body incorporated under the Registration of Societies Act (Act XXI of 1860)
It is a self-contained and self-explanatory description. Full name, complete address and other particulars/credentials of the applicant, i.e., ICAR, are already printed. Therefore, no filling up or modification is required in this column.
Column
2
Following is the printed content of Column 2 in the outline Form 1:
2. hereby declare -
a)
that
We are in possession of an invention titled
..
..
.
b)
that
the provisional/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.
Thus, Column 2 requires filling of title of the invention and also expressly specifying whether the application is being submitted as provisional or complete?
Fill the title of the invention in Column 2(a). It is important to observe that any substantive changes should not be made in the title of the invention in the provisional and complete applications, where these are required to be successively filed. Thus, in case the application is being submitted as a provisional application, and it has been given a title, xxxx xxxx xxxx, then the subsequent Complete Application, which may be filed for the same invention, must have the same or substantially the same title.
In Column 2(b), the mention of Complete Application or Provisional Application should appear duly and in accordance with the actual status of application being submitted. Thus, in case the application is to be filed as provisional in the first place, the word complete must be deleted. Similarly, in case the application is to be filed as complete application, the word provisional must be deleted.
Column 2(c) is self-contained and self-explanatory. However, it must be clearly understood that for the official purposes in the ICAR, this affirmative statement is implied only on the basis of the statement given in item (iii) of the signed Declaration made by inventor(s) in the Annexure of Form 1.
Column
3
Column 3 in the outline Form 1 reads as follows:
3. further declare that the
inventor(s) of the said invention are
i)
(name) (address) (nationality)
ii)
...
(name) (address) (nationality)
iii)
..
(name) (address) (nationality)
It is self-explanatory and it covers the particulars of inventor(s) staking claim for a patent. However, it must be orthodoxically filled as per format, without using the term ditto or -do- or for any duplicate item. For example, if there are more than one inventors in a patent application, insert the name in full (expanded form/no abbreviations) with family or principal name in the beginning, address (complete address, including postal code, state and/or country) and nationality of each one of the claimant/inventor or claimants/inventors separately. In particular, care should be taken that even if all inventors belong to the same ICAR institution and posted at the same location, their address has to be typed/ printed separately against the names of each individual. Similarly, the nationality must be mentioned separately against each name even if all were Indians.
Add to or remove sub-columns (i) to (iii) depending upon the total number of inventors staking their claim for the patent.
Column
4
Column 4 concerns claiming of priority date of filing in cases where another application for the same invention has already been filed in any country, which is member of Paris Convention or the Patent Cooperation Treaty (PCT). It reads as follows:
4. We claim the priority from the application(s) filed in convention
countries, particulars of which are as follows:
Thus, Column 4 is applicable only if application for the same patent had already been filed as indicated above. Where applicable, give the following particulars for each of the application filed in convention country/countries - name of the country, application number, date of application, applicant in convention country, and title of the invention in convention country. In case of a positive information in this column, the following statement should also be added, and declare that the above application or each of the above applications was the first application in a convention country/countries in respect of my/our invention. However, where no such application has been filed earlier, the information to be filled in the column 4 is "NIL".
Column
5
Column 5 in the outline Form 1 concerns information related to incremental or modified inventions. It reads 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 and of which I/we are
the applicant/patentee:
..
Thus, Column 5 is applicable only for those inventions, for which an application is already made or a patent already exists. In case the invention under the application is an improvement in or a modification of an invention, clearly indicate under this column application number or patent number and date of application or date of patent.
For ICAR reference, however, give complete information in this column, where applicable, including the patent number, title of patent, applicant, inventor(s), date of grant, or the title of the relevant patent application, the application number, applicant, inventor(s), and its date of filing, etc.
Column
6
Column 6 relates to disclosure of earlier application from which the present application has been prepared as divided application, where applicable. The outline contents of this column are the following:
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.
Column 6 is self-explanatory. In cases where the patent application is actually a divided application out of an earlier application, give application number including published serial number, if any, and date of filing of provisional specification and/or complete specification. The Council/ IPR Section shall, however, verify the records and where applicable this column will be appropriately filled by the IPR Section before filing at the Patent Office. It is, therefore, important that a soft copy on floppy is also provided by all concerned at the time of submitting their patent application.
Columns
7 & 8
Columns 7 and 8 concern the declaration/ information related to applicant, which is required to be furnished to the Patent Office. The ICAR/ ADG (IPR) is obviously the applicant in all patent applications being filed from the ICAR set up at the Patent Office, being the assignee for all patent applications and the authorized signatory of the ICAR. Therefore, the contents of Columns 7 and 8, as given below, have already been printed in the outline Form 1. These contents are self-contained and self-explanatory. Thus, there is no need to fill up these columns.
7. That We are the assignee of the true and first inventor(s).
8. That our address for
service in
The Assistant Director General,
(Intellectual Property Rights),
Indian Council of Agricultural Research,
Krishi Bhawan,
Phone: +91-11-23388991 EPABX
FAX: +91-11-23387293
Column
9
Column 9 of the outline Form 1 covers declaration of assignment of the invention in favour of the Council/ ADG (IPR) (being their employer/ authorized signatory of the employer, as already made clear) by all the True and First Inventors staking claim for the patent. It reads as follows:
9. Following declaration was given by the inventor(s) in the
convention country:
I/We, the true and first inventor(s) for the invention declare that the
applicant(s) herein are my/our assignee
i)
..
(name) (address) (nationality) (Signature)
ii)
.
(name) (address) (nationality) (Signature)
iii)
(name) (address) (nationality) (Signature)
The contents of the Column 9 are also self-explanatory and, like the case in column 3, these should be filled up orthodoxically. Mention the details of individual claimants/ inventors with their name (in full form), address, and nationality in each case in the same order as in case of column 3. Further, like in column 3, add or remove sub-columns (i) to (iii) depending upon the total number of inventors who may stake claim for this patent.
It is important to observe and comply with that since Column 9 covers a declaration, which is a legal matter, each inventor must put up his/ her signatures against the individual's particulars. Remember that name must be written only in full form and no abbreviation for the first and middle name should be used.
Also, it should be clearly noted that each copy of patent application, whether required for submission to the patent office or for retaining as referral copy, must bear the original signatures of all the inventors/claimants.
Column
10
Column 10 covers a statutory statement/declaration, read as follows, which is made by the applicant {ADG (IPR)} to the Patent Office at the time of filing the application.
10. That to the best of our knowledge, information and belief the fact
and matters stated herein are correct and that there is no lawful ground of
objection to the grant of patent to us on this application.
Thus the contents of Column 10 are self-explanatory and it does not require any filling up. Nevertheless, the inventors/claimants must bear in mind, while making the patent document, the importance and relevance of this column and, therefore, they must ascertain the technical validity of the contents in this application.
Column
11
Column 11 relates to the details of attachments/ enclosures made with the application. It has 5 mandatory sub-columns with the following contents:
11. Following are the attachments with the application:
a)
Complete
Specification (2 copies)
b)
Drawings
(2 copies)
c)
Priority
document(s)
d)
Statement
and Undertaking on Form-3
e)
Power
of authority
f)
..
g)
.
h)
..
i)
Fee
Rs. 3000/- (Rupees three thousands only) in cash/ cheque/ bank draft bearing no
.
dt
. on
..
Bank
.
Column 11(a) already has a mention of (2 copies), indicating that two copies of the application, with original signatures of all concerned, have to be submitted. Further, under this sub-column, the word Complete must be replaced with Provisional in case the application being submitted is provisional.
In Column 11(b), indicate (n X 2 copies) against Drawings where n represents the number of drawings enclosed in the application. However, where the application is not accompanied with drawings, indicate NIL in this column.
Making an entry in Column 11(c) will be relevant only when a Complete Application is filed subsequent to a provisional application. Thus, depending upon whether the application is being submitted following an already filed provisional application or not, enter (2 copies) or NIL, respectively, against Priority documents in this column.
With respect to column 11(d), the Power of Authority in case of all ICAR applications refers to the assignment of application in favour of ICAR/ ADG (IPR). It must be furnished by all inventors/ claimants as per Annexure in the modified Form 1. Hence, this column is already filled up with the required statement, i.e., (2 copies).
Do not fill up Column 11(e). The necessary sanction and payment of the Application Fee is made by the ICAR HQ/ IPR Section. Hence, information pertaining to this column will be filled up by the IPR Section at the ICAR HQ. The amount of fee (Rs.3000/-) is pre-filled and the particulars of the Cheque, including number, date, and the issuing bank shall be added.
End
part
A final statement preceding the date line reads as follows, which is self-contained and self-explanatory.
We request that a patent may
be granted to us for the said invention.
Further, the last line in Form 1 is provided as the date line, as follows:
Dated
this
day of
2003
The IPR Section will fill the day and the month in this column
at the time of filing the application to the Patent Office. 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, where applicable, shall be
the date of receipt of the application at the Patent Office Branch,
In the end, there is space for signatures by the applicant. ADG (IPR), being the Authorised signatory for the Council, shall affix his signatures. Type the name of the incumbent ADG (IPR) in parenthesis below the place for signatures.