The Controller General of Patents, Designs and Trademarks (CGPDTM) of India has issued draft guidelines for search and examination of patent applications.
Issuing the draft guidelines, Patent Controller Chaitanya Prasad said that in order to bring uniformity and consistency in patent examination, a number of guidelines on specific field of science and technology such as Guidelines for processing of patent applications relating to traditional knowledge and biological material; Guidelines for examination of biotechnology applications; and Guidelines for examination of patent applications in the field of pharmaceuticals have been formulated in the recent past. A need is felt that Patent Office should now publish a comprehensive search and examination guidelines which will encompass all areas of technology as well as will reflect the office practice so as to achieve greater transparency in its working procedure.
The object of these guidelines is to assist the Examiners and Controllers in their day-to-day duty. These guidelines therefore should not be construed as an act of rule making, rather in case of any conflict between these guidelines and the Patent Act and Rules, the Act and Rules will prevail.
In the different chapters of these guidelines different ingredients for search and examination have been discussed in details. In the second chapter of the Guidelines, the processing of applications has been described in brief. The processing so explained comprises of steps of application filing, screening and classification, publication, request for examination etc.
The third chapter covers an overview of patent examination vis-à-vis mandate of law comprising scope of examination i.e. different components of formal, substantive examination. This chapter then describes patentability criterion novelty, inventive step, and industrial applicability. For a better understanding, the concepts underlying the patentability criteria have been clarified with reference to the specific examples. Classifying a patent application as per international patent classification is yet another important point which is needed for combining with other important key words while searching the prior arts.
The fourth chapter deals with subject of classification of inventions along with suitable examples for proper classifications as per international patent classifications. Importance and necessity of classification has been discussed in this chapter for a better understanding of the concept underlying classification. In the fifth chapter the searching prior arts for determining novelty and inventive step has been described in details with specific reference to search strategy, databases, methodology, recording, reporting etc.
The sixth chapter covers details of examination standards and detailed examination standard objections. In the subsequent chapters, amendments (types, before/after grant, allowability, clerical error etc.), pre-grant disposal procedure, examination report writing methodology, abandoning, refusal and grant procedure, disposal of post-grant opposition and disposal of post-grant amendments have been explained.
The Patent Controller has invited comments and suggestions from the stakeholders before March 25 this year.