Patent Process and Procedure - Presentation by Vinita Radhakrishnan at UPES School of Law

2017 1

www.bananaip.com

MAINTENANCE AND ENFORCEMENT OF PATENT

ISSUE OF PATENT CERTIFICATE

PUBLICATION

GRANT

EXAMINATION (OPINION AND RESPONSE)

REQUEST FOR EXAMINATION

PUBLICATION

FILING

GENERAL PROCEDURE

20 Years

GENERAL PROCEDURE

• Right to Priority

– Previous application

– Multiple application

• Priority Date

– Date of first filing

– Date of foreign filing if foreign application filed earlier

– Date of PCT international application

• Post Dating

EXERCISE

A provisional application was filed disclosing elements A and B

on 6th November 2016. Complete specification was filed

disclosing element A, B, C and D on 6th November 2017

• Can priority be claimed from the 2016 patent?

• What is the priority date for claims claiming elements A and

B?

• What is the priority date for claims claiming elements C and

D?

• What is the priority date for claims claiming A, B, C and D?

March 2014 Confidential 4

EXERCISE

You filed a provisional application on 25th

November 2016 for an invention you made. On

6th November 2017 you realize that you may

need another 2 months effort before you file a

complete.

• What will be the best patent filing strategy?


GENERAL PROCEDURE

• Jurisdiction

– Patent Protection by Geography

– World Patent?

– Regional Patent

– International Patent filings

EXERCISE

• Smurf Tech gets a patent grant in India. Turf

Tech a Japanese company makes the same

product and starts selling. How can Smurf

Tech stop Turf Tech.


EXERCISE

• Smurf Tech files a PCT application. It gets a

Patent grant in India. In the light of this

information, how can it stop Turf Tech from

making its patented product?


GENERAL PROCEDURE

FILING ROUTE

– Direct

– Convention Filing

– PCT Filing

– Regional Filing

IDENTIFY THE FILING ROUTE

1. Smurf Tech files an application in India and Afghanistan on

the 1st Nov, 2016.

2. Smurf Tech files an application in India on 1st Nov, 2016

and files another in United States on 1st Nov, 2017.

1. Smurf Tech files an application in India on 1st Nov, 2016. It

files an international application at the Indian office on 1st

Nov, 2017 and enters United States on 1st May, 2018


Thank You

Confidential 11

Vinita Radhakrishnan

Senior Partner - BananaIP Counsels

Email: [email protected]

Phone: +91 9845837306

2016

2017 12

www.bananaip.com

LAW, REGULATIONS and GUIDELINES

• Patents Act, 1970

– Amended in1999, 2002, 2005

• Patents Rules, 2003

– Amended in 2005, 2006

• MPPP


Appeal

Opposition

Opposition (12 months from grant)

Revocation and Amendment

APPELATE BOARD

Decision of Controller

GRANT

EXAMINATION (ISSUE of FER)

Request for EXAMINATION

PUBLICATION

FILING (PROV/COMPLETE)

• If PS is filed, CS to be filed within 12 months

• Within 18 months of Priority date

• Within 48 months

• All objections to be complied within 12 months

INDIAN PATENT PROCESS

APPLICANT

• First to File!

– Inventor

• True

• First

• Joint Inventors

– Assignee of the Inventor (proof)

• Joint Assignees

– Legal Representative of a deceased inventor

EXERCISE

Anjali invented a solar energy driven mobile phone battery in May

2015. Anjali mentioned this to her twin sister Pranjali on 2nd June

2015. Pranjali filed a patent application in India on 15th June 2015 a

day before Anjali filed her application.

• Whose application is valid?

• What if it was developed independently?

• What if Anjali developed the solar energy part and Pranjali applied

it to battery technology?

• How is the right divided?


FILING MODE

• through online( e-filing) on

www.ipindiaonline.gov.in/online

• through post or

• can be submitted by hand

• What if fee doesn’t get through?

• What if agent signature is missing?


http://www.ipindiaonline.gov.in/online

Details E-filing Physical filing

Natural Person 1600 Additional Page: 160Additional Claim: 320

1750Additional Page: 180Additional Claim: 350

Small Entity 4000Additional Page: 400Additional Claim: 800


Others 8000Additional Page: 800Additional Claim: 1600



FEE DETAILS IN FILING

FILING OFFICES

• Domicile of Applicant/Origin of invention/Place of Service

• Patent offices in India

– Mumbai

• Maharashtra, Gujarat, MP, Goa, Chattisgarh, Diu, Daman, Dadra and Nagar

Haveli

– Chennai

• AP, Karnataka, Kerela, Tamil Nadu, Pondicherry, Lakshadweep

– Delhi

• Haryana, HP, J and K, Punjab, Rajasthan, UP, Uttaranchal, Delhi, Chandigarh

– Kolkata

• Rest of India

EXERCISE

FACT PATTERN:

Spunoff is a mattress company having business presence worldwide. Their Indian corporate office is in Bhopal. Spunoffwishes to file for a patent on a new spine-guard mattress technology invented by their CTO Rajat Mishra who works out of their Bangalore R and D facility and the Lead scientist of the German office Dr. Muller who works out of the Munich research facility. Dr. Muller insists on working with a Delhi based Patent attorney Pranjali Naik whom he met during the Berne IP Summit in Switzerland last year and was very impressed by her grasp of the subject.


1. At which patent office(s) can they file the patent application and why?

2. They decide to work with Ms. Naik and file application at the Delhi Patent office. Is this valid?

3. If they file the provisional application in Mumbai can they file the complete application in Chennai?

4. After filing in Mumbai, can I change the address for communication to a Bangalore address?


EXERCISE

TYPE OF FILING

• PROVISIONAL FILING

• COMPLETE FILING

• PROVISIONAL TO COMPLETE

• COGNATE FILING

• NATIONAL PHASE FILING


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)

DOCUMENTS

• 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.

FORMALITY EXAMINATION

• Formal requirement

– forms, specification, Inventor and Applicant

details, Fees

• Issue of application number

• Cash Receipt

PUBLICATION

• Notice to public (18 months)

– Journal

• Rights post publication

• Request for early publication (Form 9)


Natural Person 2500 2750

Small Entity 6250 6900

Others 12500 13750


FEE DETAILS IN EARLY PUBLICATION

EXERCISE

• Advait files an application on 1st January 2015.

– Aditya makes Advait’s invention and sells it at a

exhibition on 1st June 2015. What can Advait do?

– Aditya revisits the same conference and sells the

same product on 1st June 2017.


REQUEST FOR EXAMINATION

• RFE (Request for Examination) Form 18

-Who? (Applicant/Interested Party)

-When? (within 48 months of priority)

• Type of RFE

– Normal

– Express (PCT Filling before 31 months deadline)

– Expedite (Start ups/ and PCT ISA/IPEA-

Examination within 3 months of Request)


Natural Person 4000/5600/8000 4400/6150/Not Allowed

Small Entity 10000/14000/25000 11000/15400/ Not Allowed

Others 20000/28000/60000 22000/30800/Not Allowed


FEE DETAILS FOR RFE

EXAMINATION

• Examination Process:

– whether the claimed invention is not prohibited for grant of

patent

– whether the invention meets the criteria of patentability

• Prior art Search and Analysis

– What happens when Examiner misses a prior art?

• FER (within 6 months of RFE)

• Response to FER (12 months from the FER issue date)

• Divisional Application


EXERCISE

A complete specification was filed on January 1,

2016

• When should a Request for examination be

filed?


EXERCISE

A complete specification was filed on January 1,

2016 claiming priority from a provisional filed on

13th March 2016.

• When should a Request for examination be

filed?


EXERCISE

• GenCoin, a company that incubated out of UPES

entrepreneurship cell in 2012 is looking to raise

second level of VC funding. They have applied for

a patent in India and have filed a PCT application

claiming Indian Patent Office as the ISA. However,

they are pursuing the Indian Patent through the

direct filing route. They wish to get a patent in

the next one year. Advise.


PRE GRANT OPPOSITION

• Request to be filed (Form 7)

• When? Anytime before Grant

• Considered if a RFE is filed

• Who? (anyone)

• Statement and Evidence

• Grounds for Opposition (Sec 25(1))

GRANT

• 3 to 4 years from filing date

• Renewals to be done every year after the first 2 years of grant

PUBLICATION OF GRANTED PATENTS

POST GRANT OPPOSITION

• When?

– Within one year of grant

• Who?

– Interested Party

• How?

– Make a request with statement and evidence (Section 25 (2))

OTHER CONCEPTS

• Annuity

• Statement of Undertaking

• Patent of Addition

• Working of Patents

• Revocation

ANNUITY

• Every year after 2 years

– Up to 6 years : Rs. 2,000/ year

– 7-10 years : Rs. 6,000/ year

– 11-15 years : Rs. 12,000/ year

– 16-20 years :Rs. 20,000/ year

STATEMENT OF UNDERTAKING

• Section 8, Form 3

• Information relating to progress of Foreign Application

• On Request by controller

• Non compliance

PATENT of ADDITION (Sec 55)

• Improvements and modification

• Patentability Requirement

• Effect from Main Patent

• Term


WORKING OF PATENT

• Statement of commercial working (Form 27)

• Annual submissions– Has it been worked?

– If not, • why?

• Steps taken to work

– If yes, quantum of value:• Manufactured in India?

• Imported (with country wise details)

– Licensing information


REVOCATION

• Interested Party

• Government

• Counterclaim in an Infringement suit


Thank You

Confidential 45

Vinita Radhakrishnan

Senior Partner - BananaIP Counsels

Email: [email protected]

Phone: +91 9845837306

2016

Patent Process and Procedure - Presentation by Vinita Radhakrishnan at UPES School of Law

Law

Transcript of Patent Process and Procedure - Presentation by Vinita Radhakrishnan at UPES School of Law