Patent Agent Exam 2020-2022 question paper set b

Q1. Explain the Importance of Prior art search before filing of Patent Application and Drafting of specification.

Answer:  Any invention to be patentable must fulfill certain patentability criteria i.e. Novelty, Non-Obviousness and utility. Prior art search is performed to mitigate the risk of rejection of patent application. Prior art search helps to identify closest art and define scope of protection, map with the invention and analyze. The process of obtaining patent is an expensive as it’s tied with number of fees i.e. a filing fee, an examination fee and attorney fee.  The novelty and inventive feature of the invention can be clearly identified and further decision to filing the application can be made. Prior art search avoid wasting resources in filing, prosecution and allowing IP budgets to be used judiciously.

Claims of similar invention and application of related invention provides necessary inputs to the inventor to expand or narrow the scope of claim to be patented. Therefore, claims are drafted in broadest way based on prior art listed.

Q2. Suma is a homemaker in rural Karnataka. She has a patent for fish feed formulation. She has been selling the patented product through e-commerce platforms and has got very encouraging feedback from market. Suma has now realized that the addition of 10% by weight of coconut oil into the formulation extends disintegration time for fish pellet in water. Suma knows that addition of coconut oil into the fish feed formulation to extent disintegration is well known in the art. Nevertheless, she approaches you seeking means to protect this improved/modified formulation. How would you advice her?

Answer: Since, Suma knows that addition of coconut oil into the fish feed formulation to extent disintegration is well known in the art. As Per Patent Act, Section 3(e)

“A substance obtained by a mere admixture resulting only in the aggregation of the properties of the components thereof or a process for producing such substance”

 The fish feed food addition of coconut oil into formulation is just an aggregation of properties. Therefore, modified formulation cannot be patented.

Q3. Mr. Gopi, an applicant from Madhya Pradesh, filed a Patent application in his individual capacity along with the request for examination. Patent Office has issued First Examination report (FER) wherein some documents were cited to prove that invention lacks Novelty and inventive step. Gopi now realized that many features of the invention were not disclosed in the specification at the time of the original filing. Gopi asked you to incorporate the missing features in the original specification.

(a) Explain to Gopi the procedure to make voluntary amendments under the patent Act.

(b) Briefly discuss whether Gopi can make use of such provision for voluntary amendments in above scenario.

Answer: Since the specification did not disclosed many features of the invention at the time of the original filing.

(a) Gopi can make amendments under section 57 (1) by filing application (Form 13 with fee 800) in a prescribed manner to the controller. Controller may allow the application for the patent and complete specification. The application shall state the nature of the proposed amendments and full particulars of the reasons.

(b) As per Section 59(1), No amendments of an application for a patent or a complete specification or any document relating thereof shall be allowed except by way of

• Disclaimer: i.e. amendments which limit the scope of the invention.
• Correction: correction of obvious mistake
• Explanation: clarification of the scope of the claim.  

These are permissible amendments that are of nature that amended specification claims or describe matter, which is already in substance disclosed or is in pre-amended specification. Claims should also fall within the scope of at least one claim as before the amendment made. Therefore, Gopi will be allowed to amend specification as per the scope of pre-amended application.  

Q4. An application was filed with a provisional specification (PS) by a MSME in Ladakh. Subsequently, the MSME made further development to the invention disclosed in the PS contributed by Bikram, a citizen of Nepal, who joined the MSME after the provisional, had been filed. The MSME seek your advice-

(a) Whether improvement can be included in the complete specification?

(b) If Bikram can be mentioned as inventor while filing complete specification (CS)?

Answer: Further improvement can be performed under section 54-56.

(a) Section 54 permit grant of a patent of addition or has applied for a patent of the main invention in respect whereof the notification or improvement is claimed. Only the patentee of the main invention is entitled to improve or modify the main invention. Term of the patent of addition or improvement will be same as of main invention.

(b) As per Section 28,

• That the person in respect of or by whom the request or claim is made is the inventor of an invention in respect of which application for a patent has been made, or of a substantial part of that invention; and
• That the application for the patent is a direct consequence of his being the inventor.

Section 28 is only applicable to the letter of patents and describe that if an inventor’s name needs to be mentioned in the letter of patents then before grant grant of the patent, the application and the inventor may request the same on Form 8 with payment of prescribed fee (INR 800).

Section 54 permits the grant of a patent of addition only if the applicant thereof applies or has applied for a patent of the main invention in respect whereof the notification or improvement is claimed. It is obvious therefore that only the patentee of the main invention is entitled to improve or modify the main invention for otherwise it would permit anybody to benefit from it by exploiting the main invention. A stranger to the main invention cannot apply for a patent of addition in respect of any modification or improvement of the main invention.