Patent agent examination query

Decision is pending on borrowers appeal before DRT regarding possession & proclamation of sale as well as under valuation of property by the Bank-- (of agri as well Industrial N.A. land)- can the Bank later declare auction of only N.A land pending decision of the DRT on the borrowers appeal, without releasing agri land to borrower or fresh notice to the borrowers.

 

Chapter VI creates an exception to the otherwise mandatory requirement of absolute novelty of the invention before filing/priority. Let us analyze the facts in the light of this chapter.

 

1. Rahman Roshan privately shared the invention with his brother in Feb ’10 (even though there was no written Non-Disclosure Agreement between RR and his brother, but we will assume confidentially obligation on his Brother as the invention was disclosed to him in confidence i.e., privately)

 

2. RR publicly conducted trial in Mar ’10 (exception created by Sec 32 can reasonably be expected to be applied considering the nature of the invention)

 

3. RR exhibited his invention in Singapore in Jul ’10 (it may not be possible for RR to claim the benefit of Sec 31 considering the facts mentioned above)

 

4. RR’s Brother published the invention in Aug ’10 and RR files PA in Sep ’10 and CS in Jan ’11 (we can assume that the publication was without RR consent and an application was filed by RR within a reasonable time after the publication, so we can extend the benefit of Sec 29)

 

Is there a probability of this invention receiving grant of patent? I tend to arrive at the answer in a negative. Even though facts 1, 2, & 4 are in favour of RR, but fact no. 3 can destroy novelty as the benefit of section 31 is not extended.  

 

I hope it helps.

Thanks a lot

Dear All,

If a provisional application is filed on 01/03/2012 and cannot file a complete specification by 01/03/2013. The options will be

1) Postdating the provisional but confirm if it is more than 6 months.

2) Are there further options?

The patent office Manual has the following to state about your queries.

https://ipindia.nic.in/ipr/patent/manual/HTML%20AND%20PDF/Manual%20of%20Patent%20Office%20Practice%20and%20Procedure%20-%20html/Chapter%205.htm#Provisional_Specification

 

An application accompanying a provisional specification is deemed to be abandoned if no complete specification is filed within twelve months from the date of filing of the provisional specification. However, the applicant has an option to post-date the provisional specification under Section 17, before the expiry of twelve months from the date of filing. Such request for post-dating shall not be allowed after the expiry of twelve months from the date of application. Such abandoned applications are not published.

 

Once abandoned for reasons mentioned above, no priority can be claimed from such application, for any other application such as divisional application etc. 

 

And as per Sec 17 controller can postdate the application not beyond 6 months.

There are no further options in my understanding, except filing a fresh application.

 

I have my own understanding of Sec9 which slightly differs from what the patent office manual seems to advocate, but I would not go into the details of my interpretation at this stage.

 

This does not constitute legal advice.

Thank you.

As far as i understand the patent will not be granted. the invention has been published in one of journal before applying for the patent . Section 25 clearly states that if an invention is published in any document (patent or non patent ) prior to the priority date then it cannot be patented . Readers please comment on this !!!!

Dear sir,

 

As per section 29

A prior publication of an invention before its priority date will not be deemed as anticipation, if the patentee or the applicant proves that the matter was obtained from him or the inventor or assignor, and that the publication was done without their knowledge, and the application for patent was therefore made immediately after learning that the publication had happened.

As per the above section, RR still has a chance to get a patent for his invention.

Kindly correct / confirm

Dear sir,

Also as per section 31 RR can file a patent within one year from the exhibition opening date

kinldy clarify 

Sorry for my earlier post. that one is not correct. here is the complete answer: I would suggest Mr Rehamna Roshan to proceed with the application as prescribed by patent office. His patent is liable to be be granted provided it is novel. His patent cannot be anticipated on any of the facts mentioned by him. Let us look at the facts as to why application cannot be anticipated on the facts mentioned : 1. Private conversation (oral disclosure) : Feb 2010 2. Trial : March 2010 3. Display in exhibition : 2nd july 2010 4. Publication in jouranl : August 2010 5. Provisional Application : Sep 2010 (priority date) As per point number 1 (oral disclosure of invention) , the patent act does not consider private disclouser as the ground for anticipation. • Trials are part of invention process so this does not form the ground for anticipation. • According to section 31 of patent act, the display of invention in any exhibition will not form a ground for anticipation provided application for patent is filed before expiry of 12 months from date of display of invention in exhibition. As mentioned in facts exhibition took palce on 2nd july 2010 and application for patent was filed on sep 2010 so the time elapsed in between is 2 months which is less than 12 months limit. • According to section 29 Publication of invention in journal on Aug 2010 will also not form a ground for anticipation if Mr Rehman Roshan prooves that the information published in the journal was originally obtained from him and was published without his consent. However it must be noted here that if there is any party who is using the invention commercially then Mr Rehman roshan will have to proove that invention was being used commercially only after his disclouser at exhibition or publication in journal, and that too without his consent. •

 

I fail to understand how RR will be able to get patent grant. RR can claim the benefit of Sec 31 only when the central govt has extended such benefit to the exhibition in Singapore. From the facts mentioned in the question there is no indication that central govt extended the benefit of sec 31 to the exhibition in Singapore (this is what I observed in my point no. 3 earlier).

 

Even though he can claim the benefit under sec 29, and for public trial under sec 32 considering the nature of the invention, but it will not rescue RR as Sec 31 will go against his chances of seeking patent protection.

Yes, only with the central Govt authorization.

 

Thank you