Post on 18-Feb-2017
PATENT PROCESSPATENT PROCESS
BySomashekar
BananaIP Counselswww.sinapseblog.com
www.onlineipcourses.com
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Agenda
Filing Publication Examination Pre-Grant Opposition Grant Post-Grant Opposition
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Filing
Patent Application Form of Application
Provisional Application (Provisional Specification + Filing documents)
Non Provisional/Complete Application (Complete specification + Filing documents)
Priority Date- filing date of the first application in a chain of applications
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Filing
Types of Application
Domestic Application
Convention Application
International Application
National Stage Application
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Filing• Patent Offices• Mumbai Patent Office- States of Maharashtra,
Gujarat, MadhyaPradesh, Goa, Chattisgarh, Diu Daman, Dadra and Nagar Haveli
• Chennai Patent Office- States of Andhra Pradesh, Karnataka, Tamil Nadu, Pondicherry and Lakshadweep
• Delhi Patent Office- States of Haryana, Himachal Pradesh, Jammu and Kashmir, Punjab, Rajasthan, Uttar Pradesh, Uttaranchal, Delhi, Chandigarh
• Kolkata Patent Office- Rest of India
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Filing
Applicants
True and First Inventor
Assignee of the inventor
Legal representative of the deceased person
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ExampleApril 05, 2010-Provisional specification
disclosing elements A, B and C
April 05, 2011-Complete Specification disclosing and claiming A, B, C, D and E
Can the complete specification claim priority from the provisional specification?
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ExampleApril 05, 2010-Provisional specification disclosing elements A, B and C
September 05, 2010- Provisional specification disclosing elements D and E
April 08, 2011-Complete Specification disclosing and claiming A, B, C, D and E
Can the complete specification claim priority from both provisional specifications?
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ExampleDecember 05 2010-provisional specification filed in the US
April 05, 2011-proviosnal specification filed in Canada
Can a complete specification claiming priority from any of the applications be filed in India today?
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Publication
Notice to Public (18 months from the priority date)
Rights start from the date of publication
Request for early publication
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Examination
• Proper request must be filed– By the Applicant– By the interested person (person engaged in or in
promoting, research in the field of the invention)
• Time limit- 48 months from priority date
• Formality check
• Prior Art search and analysis by the Examiner
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Examination
First Examination report from the Examiner within 6 months from the date of request
Response from the Applicant within 12 months
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Pre-Grant Opposition
• Should be filed after the application has been published and before grant
• Will be considered only when Request for Examination is filed
• May be filed by any person
• Should include statement and evidence
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Pre-Grant Opposition
Grounds Wrongful obtainment Invention in public domain No sufficient disclosure Failure to disclose the information as to
corresponding foreign application Failure to file convention application
within 12 months and so on…. (section 25 (1))
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Grant
3-4 years from the date of filing
To be renewed every year after 2 years from the grant date
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Post-Grant Opposition
• Should be filed within one year from the grant of patent
• Must be filed by an interested person• Grounds
– Wrongful obtainment – Invention in public domain– No sufficient disclosure– Failure to disclose the information as to
corresponding foreign application– Failure to file convention application within 12
months and so on…. (section 25 (2))
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Filing in India
Was the filing a complete or a provisional?
File the complete specification (12 months)
Provisional
Complete
Publishing (18 months*)
Request for examination (48 months)
Examination Report (24 months**)
Examiner decision (36 months) (grant/refusal)
Indian Patent Process
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Provisional Filing in India First Filing in India Request for a foreign filing permit
Filing in Convention country12 months
6 weeks
21 days
Publishing (18 months)
Examination Report
Examiner decision (grant/refusal)
Was the filing a complete or a provisional?
File the complete specification (12 months)
Provisional
Complete
Filing in Convention country 18Copyright- Brain League IP Services Pvt. Ltd Now BananaIP., 2011
Provisional Filing in India First Filing in India Request for a foreign filing permit
PCT filing12 months*
6 weeks
21 days
Publishing (18 months)Search Report** (16 months)
Do you want to respond to
search report?No
Yes
Do you want to proceed to
examination stage?
No
Yes
File an informal response (2 months from report/18 months – whichever is
later)
A
File a demand + response*** (19 months) B
PCT Patent Process19Copyright- Brain League IP Services Pvt. Ltd Now BananaIP., 2011
Examiner Opinion
B
Enter into National Phase (20/30/31 months)
A
Due process in each of the National phase countries
PCT Patent Process (Cont’d)
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