Patent: Patent Process by Somashekar Ramakrishna at NLSIU, Bangalore - BananaIP

PATENT PROCESSPATENT PROCESS

BySomashekar

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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


Filing

Types of Application

Domestic Application

Convention Application

International Application

National Stage Application


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


Filing

Applicants

True and First Inventor

Assignee of the inventor

Legal representative of the deceased person


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?


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?


Publication

Notice to Public (18 months from the priority date)

Rights start from the date of publication

Request for early publication


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


Examination

First Examination report from the Examiner within 6 months from the date of request

Response from the Applicant within 12 months


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


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))


Grant

3-4 years from the date of filing

To be renewed every year after 2 years from the grant date


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


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)


THANK YOU.

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Patent: Patent Process by Somashekar Ramakrishna at NLSIU, Bangalore - BananaIP

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