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The presentation diagrammatically (flow chart) illustrates various steps of Patenting process in India. The presentation also highlights other important considerations and definition of various important terms. For details and/or assistance with patent filing or prosecution in India: Please visit our website at http;//www.sagaciousresearch.com
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Y o u r I N S I G H T i n t o I P
Patenting Process in IndiaFor Indian Residents
Tarun Kumar BansalDirector, Sagacious Research
March 31, 2009
Patenting Process – IndiaFor Indian Residents
File Provisional* (Optional)
File Complete Specification* in India(Filing in other countries/ PCT also done at this step)
File Request for Examination
Publication (Option available for Early Publication)
18 Months from Priority*
After Publication - Within 48 Months
from Priority Date
Within 12 Months from Provisional Filing
If no provisional was filed and complete specification is the first application – PCT and/or national Filing in other countries can be done within 12 months from filing of Complete Specification Application
Star (*) marked terms have been described in the next slide
March 31, 2009 Slide 2
Examination Report with
Objections
File Response to objections by Examiner
(+ submit amended application
accordingly)
Grant/ Rejection
Post Grant opposition
Pay Annual Maintenance
Within 12 Months of receiving the examination report
Within 12 Months from Grant Date
Every year after grant till Expiry
Expiry20 Years from India filing or PCT filing date
(whichever is earlier) and/or on non-payment
of annual feeOpposition if Successful
Grant- if all objections/suggestion/oppositions successfully countered
/implemented by Applicant
Rejection – If any objections were not answered in 12 months upto
examiners satisfaction
Iterative
Process
Pr
os
ec
ut
ion
© 2009 Sagacious Research. All Rights Reserved.
Some Notes (1/2)
Time required for Grant
• The entire grant process takes a minimum of 2 years (18 months for publication and minimum 6 months for pre-grant opposition after
publication and before grant). However, depending on the prosecution and number of objections raised, it may take 4-5 years as well.
• However, option of early publication is available to reduce the procedural time
Extensions
• All the replies to the examination reports/ objections needs to be filed within 12 months else application is considered abandoned and
cannot be revived
• A request for restoration of patent can be filed within 18 months from the date of cessation of patent (due to non-payment of annual
renewal fee) along with the prescribed fee
March 31, 2009
renewal fee) along with the prescribed fee
Request for Examination
• If request for examination is not filed within the stipulated time period, first office action is not granted and application is abandoned
• Request for examination can be filed either by applicant or any third party
Slide 3
© 2009 Sagacious Research. All Rights Reserved.
Contd…
Some Notes (2/2)
Compulsory Licensing link
• After three years from grant date parties may file a request with controller to grant a compulsory license for the given patent on
grounds of non-working of patent by the patent holder
• Holder gets royalaties (decided by arbitration and/pr set by Govt.)
Foreign Filing Permit (FFP)
• FFP (written permission from controller) is needed to apply for a patent outside India for an invention made by Indian resident
• Applicant can do without FFP to file outside India by filing in India first and waiting for six weeks for any secrecy directions from
Controller. If no secrecy directions are received within six weeks, applicant can file outside India without FFP
March 31, 2009
Controller. If no secrecy directions are received within six weeks, applicant can file outside India without FFP
Patent Office Selection
Depending on your domicile, you need to choose one of the four patent offices (Mumbai, Kolkata, Chennai and New Delhi) in India to
make your application. You can use the table provide here to make the correct choice
Slide 4
© 2009 Sagacious Research. All Rights Reserved.
Definitions
Provisional Applications
• Filed to secure the priority rights (i.e. to officially ascertain that you have come up with the idea first).
• Filed as soon as you have rough draft of your invention and implementation can be done within next 12 months
• Do not contain any claims and are easier to draft
• provide just the basic details of invention and the novelty without providing much details on implementation part.
• Provisional applications are never published and are never granted. These never come to public domain
Complete Specification Applications
• Much enhanced version of the Provisional application to be filed within 12 months from the filing of provisional application (can also be
filed directly without a filing provisional)
March 31, 2009
filed directly without a filing provisional)
• Considered for examination and grant.
• Provide complete implementation details, utility details, best mode of operation, etc for the invention
The complete specification application should ensure that anyone operating in the domain of application subject (e.g. mechanical, etc) will
be able to perform the invention using details provided in the application.
Priority Date
• Filing date of provisional and/or Complete specification Application (whichever is earlier)
• However, If application filed in any other country before filing in India - the filing date in that country
Priority date ensures that any invention related documents published after this date are not considered as novelty breaking for the patent
application.
Slide 5
© 2009 Sagacious Research. All Rights Reserved.
Interesting Links
• http://ipindia.nic.in/ipr/patent/FAQ_Patent.htm
March 31, 2009 Slide 6
© 2009 Sagacious Research. All Rights Reserved.
Y o u r I N S I G H T i n t o I P
Thank You
Tarun Kumar BansalDirector, Sagacious Research
[email protected]://www.sagaciousresearch.com
Ph. No: +91-931 387 2266
