Patent Procedure and filing strategy

By

Vikram Pratap Singh Thakur

© 2010 BananaIP Counsels

Agenda

Indian Patent procedure

PCT procedure

2

Indian Patent Procedure

3

Pre filing and Filing requirements

Place of application

Persons entitled to apply

Type of specifications

Contents of application (provisional or

complete)

Types of application

Priority date

Documents4

Place of application

Patent offices

Territorial jurisdiction

Mumbai The states of Gujarat, Maharashtra, Madhya Pradesh, Goa, Chhattisgarh, The Union Territories of Daman and Diu and Dadra and Nagar Haveli.

Delhi The states of Haryana, Himachal Pradesh, Jammu and Kashmir, Punjab, Rajasthan, Uttar Pradesh, Uttranchal, National capital territory of Delhi and the union territory of Chandigarh.

Chennai The states of Andhra Pradesh, Karnataka , Kerala, Tamil Nadu and the union territories of Pondicherry and Lakshadweep.

Kolkata (head office)

Rest of India

5

Persons entitled to apply

True and first inventor of the

invention

Assignee

Legal representative

6

Type of specifications

Provisional specification Describe nature of invention Contain description of essential features claims not necessary details of the manner in which it to be

performed not necessary

Complete specification Include details

7

Advantage of provisional specification

Priority

Disclose to third party for funding

Explore commercial feasibility

Decide to continue the application

Decide countries of interest

8

Contents of specification

Title (P) Abstract (P) Written Description (P) Drawings (where necessary) Sample or Model (if required by the

examiner) Enablement and Best Mode Claims Deposit (Microorganisms)

9

Various types of applications in India

Ordinary application

Convention application

PCT international application

PCT National phase application

Application for Patent of addition

Divisional Application10

Priority Date

Date of first filing

Date of foreign filing if foreign

application filed earlier

Date of PCT international application

Concept of priority date11

Documents to be submitted at the time of filing

Form 1 - Application for the grant of patent. Form 2 - Provisional or Complete

Specification. Form 3 - Statement and undertaking by the

applicant. Form 5 - Declaration as to inventorship. Form 26 - Authorization of patent agent or

any other person. (if filed through an agent) Priority document details have to be filed for

a Convention application. Proof of right if the application is made by the

assignee. Death Certificate of deceased - Legal

Representative.

12

Publication

Date of publication Open for public inspection Rights of patentee start Circumstances when publication not

done Secrecy directions Abandoned – non filing of complete spec Withdrawn

Early publication Rights start early

13

Publication after 18 months (e.g.)

14

Examination

Request for examination Formal examination

verifying the propriety and correctness of all documents

verifying the patentability First Examination Report (FER) Amendments

15

Grant

Order for grant

Grant

Publication

Rights of patentees can be enforced

16

Publication of granted patents (e.g.)

17

Opposition

Pre-grant

Before grant

Post-grant

1 year from grant

18

PCT Applications

19

Patent filing outside India

Convention route

Patent Cooperation Treaty route

20

Convention route

Disadvantages

Less Decision time

Translation fee

Attorney fee

21

First filing

0 12Country filings

PCT route

Unified procedure for filing patent applications

Administered by WIPO Entered into force in 1978 with 18

contracting states 2010 (January) – 142 contracting

states India joined PCT on 07.12.98

22

PCT route (cont…)

Advantages Time Cost Effort

23

Phases

International phase

National phase

24

International phase

Filing – RO or IB

Search report

Patentability opinion

Publication

Preliminary examination

Patentability report

25

National phase

National patent procedure

National fees

Translation if required

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Convention filing Vs. PCT filing

CONVENTION

No preliminary level help as the filings are directly done in each countries

Filing is costly and involves a lot of effort

Country selection in 12 months

PCT

Help from the search report for deciding to continue and spend resources

Saves time and effort

Country selection may vary ordinarily between 20 to 31 months

27

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