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
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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
26
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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