A Presentation on 'Indian Patent Process and Prosecution" by Dr. Kalyan C. Kankanala

Indian Patent Process

ByDr. Kalyan Kankanala

kalyan@brainleague.comwww.brainleague.com

BLOG: www.sinapseblog.com

Filing

Place Applications Provisional and Complete Applicant

Filing Strategy Time of filing Purpose of filing Subject matter of application Provisional Vs. Complete

Application Foreign/PCT application

Example Invention is in the field of Optical Fibers. Inventor’s Description of the technology and the invention

PreformMandrel/Core rod

Precursors

Example Contd..

2nd Layer

1st LayerHole

Cross-section of the preform.

Example Contd..

1ST INVENTION: simultaneous sintering and collapsing

Example Contd…

2ND INVENTION: Opaque glass tube which is used during drawing of the optical fiber preform and which is non permeable to IR radiations and heat.

Opaque tube

Preform

Heating element

Optical fiber

Furnace

Example Contd…

Example Contd…..

Your advice on filing strategy 1. Your client is an independent inventor.

He is waiting for funding.

2. Your client is a billion dollar company

Priorty Date Filing Foreign priorty PCT priorty

Example

April 24, 2010- Provisional specification disclosing elements A, B and C.

April 22, 2011- Complete Specification with elements A, B, C , D and E

Can the complete specification claim priority from provisional specification?

Example

April 24, 2010- Provisional disclosing elements A, B and C.

September 24, 2010- Provisional Specification disclosing elements D and E

April 22, 2011- Complete Specification with elements A, B, C , D and E

Can the complete specification claim priority from provisional specification?

Example

April 24, 2010- Provisional specification filed in the United States

September 24, 2010- Provisional Specification filed in Canada

Can a complete specification be filed in India claiming priority from any of the provisional specifications?

Example September 22, 2008- Provisional

specification filed in India September 22, 2009- PCT application

filed in India. Today the client comes to your for filing

a National Stage application in India.

Publication

Notice to public Date of publication Rights start

Examination Request for Examination First Examination Report Response to FERs Hearing

Example First Examination Report: Prior

Art Rejection

Example Claim 1

An apparatus for drawing an optical fiber, said apparatus comprising:

a furnace …. for heating a preform;

a suspension means for suspending said preform and ,a handle adapted to secure a top end of thepreform…..,

wherein said top end of the preform is provided with

a tubular member;

said tubular member covers the top end of said perform and at least a portion of said handle and extends towards a suspension means along the handle.

Example Examiner’s 1st rejection (First Examination

Report)Feed Rod

Example Amendment in Response to the Examiner’s rejection

An apparatus for drawing an optical fiber, said apparatus comprising: a furnace …. for heating a preform;

a suspension means for suspending said preform and ,a handle adapted to secure a top end of the preform…..,

whereinsaid top end of the preform is provided with a tubular member; and

said tubular member covers the top end of said perform and at least a portion of said handle and extends towards a suspension means along the handle; and

said tubular member is opaque and is non-permeable to infrared radiations.

Example Contd….. (Examiner’s Second Rejection)

Example Contd… Interview with the Examiner to

convince him on the patentability of the claim.

Grant Ready for grant Fee Grant Publish

Opposition Pregrant Post grant Grounds

Conclusion Scope of the invention Prosecution History Litigation

Thank You.

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