Mr.R.Muralidharan

KRISHNA & SAURASTRI ASSOCIATES

Indian Patent Prosecution Procedure and Application Details.

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Ministry of commerce & Industry

Department of Industrial Policy & Promotion

Office of Controller General of Patents, Design and Trade Marks

Patent Office kolkata

Patent Office Delhi

Patent Office Mumbai

Patent Office Chennai

Organization Chart – Administration Indian Patent Offices

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Administration Indian Patent Offices Unique system of Patent Administration.

The jurisdiction of Indian Patent Office is geographically

divided into four regions, Northern Region, Western Region including Madhya Pradesh & Chhattisgarh, Southern Region and Eastern Region, due to the natural circumstances such as size of the population and existing infrastructure limitation.

Four independent Offices, Single register.

Independent examination.

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PATENT PROSECUTION IN INDIA

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EXAMINATION Examination happens only after publication of the application. The Applicant has to request for Examination within 48 months from the priority date. Request for early examination is possible before the Indian Patent Office by additional fee payment.

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Examination involves:

(i) Ascertaining (a) Novelty (by Prior Art Search) (b) Utility (c) Inventive Step (d) Statutory Subject Matter (e) Application Formalities (ii) Issue of First Examination Report

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GRANT The applicant files response to the FER within 6

months. Amendments can be made by way of: (i) Correction (ii) Disclaimer (iii)Explanation If the response is satisfactory, the Examiner

recommends Grant and the Controller Grants Patent for the invention.

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Criteria for Patentability

NUNS Test • Novelty (New) requirement

• Useful (Industrial Applicability)

• Non-obviousness (Inventive step)

• Statutory Regulation (Patent Law)

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In India, the subject matter is Novel (new)

only if it is not 1. Published

2. Claimed

3. Publicly used

before filing a patent application.

If the subject matter is not novel (new),

patent will not be granted.

Understanding “Novelty” (New) criteria

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“Published” means the subject matter is

already available in

Textbooks

Newspapers

Lectures

Product Demo & exhibitions

Internet

Patent Databases

Understanding “Publication”

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Other publications include: Electronic databases Journals

Magazines

Conference proceedings

Technical disclosure bulletins

Research materials and publications

Understanding “Publication”

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Understanding “Publication” Publication through a government approved body does not destroy novelty.

List of government approved bodies is not known from the Indian Patent Act.

One year filing grace period is provided from the date of publication before government approved bodies.

This provision helps those people who have already published their invention and still want to get patent.

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ILLUSTRATION - FAQ Mr. A has filed a patent application on a new dust bin last week in

India. Mr. B has filed a patent application this week for the same dust bin in India?

1. Who will get patent grant? Mr.A or Mr.B 2. If Mr.B launches the dust bin first in the market, does it make a

difference in Grant of patent? 3. If Mr.A and Mr.B had filed the patent on the same date, who will get

patent? 4. Whether Mr. A can file a patent application in USA after filing in

India? 5. If both Mr.A and Mr.B had copied the dust bin design from China

Bazaar, then who gets the patent? 6. Mr.A has already a patent in India. Can Mr.B apply in USA? 7. Why do I need to file in various jurisdictions?

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Disclaimer

VIEWS EXPRESSED AND ERRORS, IF ANY ARE ATTRIBUTABLE TO THE AUTHOR –

IF YOU RELY ON THE ABOVE VIEWS WITHOUT A PERSONALIZED OPINION, AND IF YOU HAVE BENEFITS, YOU ARE FREE KEEP IT FOR YOURSELF WITHOUT EVEN AN ACKNOWLEDGEMENT !!

IF YOU RELY ON THE ABOVE VIEWS, SOME OF IT MAY BE WRONG AND SUFFER LOSES AND YOU SUE ME FOR NEGLIGENCE, I RESERVE not only MY RIGHTS TO RECOVER COSTS(!) but also raise new bill on you for relying upon these views!!

This presentation is primary meant for instructional use. Not for

Publication. The ownership of the TM & copyrighted material (especially cartoons) appearing in the presentation is acknowledged. Thanks to the Cartoonists, a dull presentation receives an interesting touch.

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What is Form 1?

Should this Form necessarily contain the signatures of the Inventors and

the Applicant?

If an employee invents a new technology who should be the

Applicant for Patent?

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What is Form 1?…..(contd)

• If an invention originates in the course of Contract of Employment (in the absence of a contract to the contrary) the technology vests with the employer and he should be shown to be Applicant for Patent.

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What is Form 1?…..(contd)

• Form 1 need not have the signature of Inventors for the initial filing. If the initial filing is made without the signature of the inventors, subsequently, Form 1 duly signed by the inventor must be lodged with the Patent Office within 6 months of the Application.

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What is Form 1?…..(contd)

• If the Applicant is a Company, Form 1 must be signed by the Company Secretary or a Director or any Authorized Signatory who has been specifically authorized to represent the Company by means of a Resolution passed by the Board of Directors of the Company.

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Form 3 (Statement and Undertaking of Foreign Patent Filings).

As per Section 8 of The Patents Act, the Applicant for a Patent must periodically lodge with the Patent Office information regarding the Foreign Patent Applications filed relating to the invention sought to be protected under the Application, in Form 3. As per Rule 12 of Patents Rules, 2003, such information must be lodged within 6 months of the filing of such Foreign Patent Applications

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Form 3….(contd) As per Rule 12 (3) of the Patent Rules, the

Applicant is also obliged to keep the Controller of Patents informed about the status of such Foreign Patent Applications such as the objections raised by the Foreign Patents Offices in respect of Novelty and Patentability of the invention sought to be covered under the corresponding Indian Patent Application within 6 months of receipt of such communication.

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Form 3….(contd) Failure to comply with this obligation is a

good ground for opposition under Section 25 (2) of the Patents Act and a good ground for revoking the patent under Section 64 (m) of Patents Act. It might be possible to condone the delay in filing the information under Rule 138 of the Patent Rules for a period of 1 more month. It is very important to take this obligation seriously and failure to comply with this requirement will render the patent useless.

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Form 5 (Declaration of Inventorship) If and when, a complete specification is filed,

the Applicant must also lodge with the Patent Office, a declaration of inventorship containing therein the names of the inventors. It may so happen that sometimes the provisional specification may not have all the names of the inventors and additional inventors can be added to the application if other people have contributed to the inventive concept after filing the provisional specification.

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Form 5..(contd)

• The consequences of mis-declaration or wrong declaration of inventorship in India is not clear. Considering that the Applicant has a moral right to be identified as an inventor, the violation of this right will provide the inventor a good cause of action to claim ‘statutory damages’. It may not necessarily result in the invalidation.

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Form 5…(contd) • In Japan, in case of commercially successful

patents, the inventor is entitled for a just reward from the fortune that the patent generated for the Applicant. In India, the inventor does not have similar rights. Therefore, it is joked that an inventor is rewarded with the $1000 incentive and given a pink slip at the end of the accounting year.

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Secrecy directions (Sec. 35 of IPA) Sometimes, if the Controller is of the opinion that the invention

covered under the Application will be relevant to defence purposes, or at the instance of the Central Government, Office of the Controller will prohibit the publication of information. These secrecy directions will be reviewed periodically and so long as the secrecy directions are in force, the applications will not mature into a patent.

Violation of the secrecy directions may result in the prosecution

of the Appellant. Suppose the same information contained in the application is published abroad and if such information reaches India, the same is a good ground for the revocation of secrecy directions. If any applicant suffers hardship on account of the continuance of the secrecy directions, then such applicants would be entitled for solatium.

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Indian residents not to apply for foreign patents without permission (Sec. 39 of IPA)

1) If a person who is resident in India comes up with an invention, he must first make an Indian Patent Application and wait for 6 weeks before making corresponding Foreign Patent Applications abroad.

2) If within the 6 weeks period, the Patent Office issues secrecy directions under Sec. 35 (1), the Applicant should refrain from making Foreign Patent Applications.

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Sec. 39 of IPA – Foreign Patent Applications by Indian residents

3) If the application is made by a person resident outside India including an Indian national), then, these provisions will not apply.

4) Alternatively, the Applicant, if he is an

Indian resident can apply for permission to the Controller for filing Foreign Patent Applications and such permissions are normally granted within a week or two.

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Sec. 39 of IPA – Foreign Patent Applications by Indian residents

5) If the invention is relevant for Atomic energy, or

defense purposes, the Controller will not grant the permission without the prior consent of the Central Government. If the Applicant is aggrieved by their decision, he can always file a writ petition under Art. 226 of the Constitution of India.

6) Failure to comply with these provisions will not only result in the revocation of the Patent, but also result in a prosecution in criminal court where the offender may be made to pay a fine or serve a sentence of 2 year imprisonment or both.

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Patent Prosecution Patent application filing

Publication

18 months

Request for Examination (Express Examination Possible)

within 48 months from the date of priority

Issue of Examination Report

within 6 months from the request

Request for Early Publication any time before 18 months

Pre Grant Opposition

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Patent Prosecution (contd.)

Reply to Examination Report

Grant

Post Grant Opposition

within 12 months from the date of grant of patent

Renewals

compliance within 12 months from the date of issue of examination report

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Opposition Procedure

Pre Grant Opposition Under Section 25(1) Post Grant Opposition Under Section 25(2) Revocation before IPAB

Counter claim of invalidity in any Infringement

case

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Pre-Grant Opposition- Procedure 18 months publication Opposition By way of Representation by Anyone Request for Examination Notice to Applicant Applicant’s reply to the Notice

Within 6 months of the first publication or at anytime before grant

Considered only after the Applicant files for Request for Examination

Within three months from date of notice

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Pre-Grant Opposition- Procedure (Contd.)

Consideration of Applicant’s reply Satisfactory Not Satisfactory Grant Amendment Suggested Hearing Rejection

Within one month from the above submission

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Post Grant Opposition

Notification of Grant Notice of Opposition Constitution of Opposition Board Reply statement and evidence by applicant Reply by Opponent Hearing

Within 2 months from date of date of receipt of copy of written statement

Within 1 month from the date of receipt of copy of applicant’s reply statement

Within 12 months from date of notification

With written statements and evidence

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EXAMINATION PROCEDURE

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Is there an automatic right to Publication and Examination once a Complete Specification is Lodged?

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No, the Applicant has to specifically request for Examination after the publication of the Specification in the Patent Office Gazette, by paying prescribed fee. If the Examination is not requested within 48 Months of the Priority Date, the Application will be deemed to have been abandoned.

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Can this examination be expedited? When does the publication take place?

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Normally, publication of the application is done 18 months after the lodging of the complete specification. An applicant can request for examination only after publication. Request for expedited publication can be made in Form 9 by paying the prescribed fee of Rs. 2,500/- for individuals and Rs. 10,000 for companies.

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Thereafter, request for examination has to be made in Form 19 (Second Schedule) with a prescribed fee oft Rs. 2,500/- for individuals and Rs. 10,000/- for companies. The Express Examination Reports are possible on further payment of official fee of Rs. 1,000/- for individuals and Rs. 4,000/- for companies.

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What should we do after the issuance of First Examination Report?

• Usually, the First Examination Report will comprise many objections from the Payment Office as to why the Patent application will not be allowed. The initial Response to the First Examination Report would have to be sent within 4 months of the receipt of report and all the requirements of the Report would have to be complied with within 1 Year from the date of the First Examination Report.

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What should we do after…(contd)

• In between, the Patent Office may issue

further Official Actions if warranted by circumstances.

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Is it possible to amend the Patent Specification once filed? • The Patents Act, 1970 contemplates 2

types of amendments. After the receipt of the First Examination Report, amendments may be made to comply with the requirements of the Report.

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Is it possible to amend……(contd)

• These are involuntary amendments made at the instance of the Patent Office and the same can be done free of cost. In addition, voluntary amendments are also possible during anytime by filing Form 13 on payment of the prescribed fee.

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Is it possible to amend……(contd)

• Voluntary amendments can be made either before or after the grant of the Patent. However, amendments cannot be made for the purpose of increasing the scope of the claims or for incorporating additional disclosure.

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Is it possible to amend……(contd)

• The prescribed fee for amendment before grant is Rs. 500/- for individuals and Rs. 2,000/- for companies. The prescribed fee for amendment after grant is Rs. 1,000/- for individuals and Rs. 4,000/- for companies.

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Is it possible to amend……(contd)

• Minor amendments for changing the name, address of the applicant and address for service can be effected on payment of reduced fee of Rs. 200 for individuals and Rs. 800/- for companies.

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What happens if the requirements of the First Examination Report (FER) is not complied within the stipulated time? Will the applicant have a right of hearing and appeal?

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What happens if the requirements….(contd)

• If the requirements of the FER are not completed within the stipulated time, the application is deemed to have been abandoned.

• In case of abandonment, the Controller does not pass any speaking order but merely informs the applicant that the application has been abandoned.

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What happens if the requirements….(contd)

• In such a case, the applicant does not have any right of appeal, but the aggrieved applicant can either file a Review Petition under Rule 130 of the Patent Rules before the Controller of the Patent or file a Writ petition under Art.226 of the Constitution.

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What happens if the requirements….(contd)

• Under the Patents Act, there is no automatic right of hearing before the rejection of the Patent application. An applicant if is very keen to have an oral hearing, he must specifically request for hearing in writing.

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What happens if the requirements….(contd)

• If the Controller rejects the application, even after hearing, the applicant can file an appeal within 90 days to the Intellectual Property Appellate Tribunal (IPAT) within 90 days of the order of rejection.

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Thank You for the patient hearing…… Any Questions???

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