Patent Office Procedures

26th May'09 Dr.Asha Aggarwal

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Patent Office Procedures Dr. Asha Aggarwal

Ind Swift Laboratories Limited


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INTRODUCTION

Patent rights are granted by National Patent Offices, and so patent protection for an invention must be sought in each country individually.

The Indian law of patents is enshrined in the Patents Act, 1970. The Act seeks to provide for legal protection for inventions. The rights granted under the Act, are operative in the whole of India.


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Object of patent law

The object of the patent law is to provide:

a statutory right to owner of the patent for a certain period of time to stop others from using, selling or working out his invention, and exploit it commercially

to disclose the invention and practice that invention and make it work thus encourage scientific research and new technology,

to stimulate new inventions of commercial utility and to pass invention into public domain after the expiry of the

fixed period of the monopoly.


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BENEFITS

Stop re-inventing the wheel Know what is already patented

Patent α Collaboration/ Money / Fame/ Name/ etc………


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Grant for a patent

To get a patent grant, the first most step is to file a patent application.

Who can file a patent application? Where to file a patent application? How to file a patent application?


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Who can file Patent Application

In India [Section 6 and 134] The application can be filed either alone or jointly:

By any person claiming to be true and first inventor(s) By any person being the assignee of person claiming

to be true and first inventor(s) ( proof of assignment has to be submitted along with

the application ) By the legal representative of any deceased person or

assignee


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Where to file patent application

The appropriate office of the patent office shall be the head office of the patent office or the branch office as the case may be within whose territorial limits …

Residence of applicant or Domicile; or His the place of business; or The place where the invention actually originated.

If the applicant has no business or domicile in India, the address for service in India is given by such applicant


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Regional Patent office’s Jurisdiction

Office Territorial JurisdictionPatent Office Branch, Chennai

The States of Andhra Pradesh, Karnataka, Kerala, Tamil Nadu and the Union Territories of Pondicherry and Lakshadweep

Patent Office Branch Mumbai

The States of Maharashtra, Gujarat, Madhya Pradesh, Goa and Chhattisgarh and the Union Territories of Daman and Diu & Dadra and Nagar Haveli.

Patent Office Branch,

New Delhi

The States of Haryana, Himachal Pradesh, Jammu and Kashmir, Punjab, Rajasthan, Uttar Pradesh, Uttaranchal, Delhi and the Union Territory of Chandigarh.

Patent Office, HO

Kolkata

The rest of India


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How to file a patent application?

Documents can be filed in the patent office

through online( e-filing) or www.ipindiaonline.gov.in/online through post or can be submitted by hand

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


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GENERAL PROCEDURE FOR OBTAINING A PATENT

Filing of patent application Publication after 18 months Pre Grant Opposition /Representation by any person. Request for examination Examination: Grant or Refusal Publication of Grant of patent Post Grant Opposition to grant of patent Decision By Controller


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Pre 2005

Patent Application

Examination

Application in order for grant

Advertisement of acceptance Of Complete Specification

Opposition by Interested Person

Sealing / Grant

From 2005

Patent Application

Publication

Examination

Application in Order for Grant

Publication of Grant

Post Grant Opposition

Pre Grant opposition


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Documents required for filing of A Patent Application

1. Covering letter- indicating the list of documents;2. Application for Grant of Patent in Form 1 [section 7, 54 & 135 and

Rule 20(1)] in duplicate;3. Complete/Provisional specification in Form 2 in duplicate [Section

10; Rule 13]4. Statement and Undertaking in Form 3 [Section 8; Rule 12];5. Power of Attorney in Form 26 (in original) (Rule 3.3 (a) (ii)); (if filed

through attorney)6. Declaration of Inventor-ship in Form 5 (only in case of an Indian Application; (Rule 4.17);7. Certified true copy of the Priority document (in case priority is

claimed);8. Requisite Statutory fees (cheque / DD).


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SPECIFICATIONSSPECIFICATIONS

Provisional specificationProvisional specification -a provisional specification is -a provisional specification is usually filed to establish priority of the invention in case usually filed to establish priority of the invention in case the disclosed invention is only at a conceptual stage and the disclosed invention is only at a conceptual stage and a delay is expected in submitting full and specific a delay is expected in submitting full and specific description of the invention. description of the invention. No patent is granted on the basis of a provisional No patent is granted on the basis of a provisional specification.specification.

Complete specificationComplete specification -the complete specification is -the complete specification is the document in which all the details of the invention for the document in which all the details of the invention for which patent protection is desired are disclosedwhich patent protection is desired are disclosed


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Contents of Specification

Title of the invention Field of the invention Background of the invention (PRIOR ART) Object of the invention Summary of the invention Brief description of drawings, if any Detailed description of the invention Examples Claims- not required in provisional

Abstract- not required in provisional


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Provisional Specification…..

It should describe the nature of invention & contain the description of essential features of the invention.

Claims and abstract are not a part of provisional specification

Fees is same as for complete specification Complete specification must be filed within 12 months

from date of filing of provisional application.


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Complete Specification

Compared with the provisional, the complete specification shall:

a) contain the full description of the invention and its operation, b) the best method of making the invention. c) end with a claim or claims, which are the most important component in the complete patent specification. It is the legal operative part which define and determine the legal protection sought for. d) be accompanied by an abstract to provide technical infromation on the invention.


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Complete Specification…..

If applicant mentions a biological material in the specification, which cannot be described in such a way to satisfy clauses a) and b), and

If material is not available to the public, the application shall be completed by depositing the material to the international depository authority,

Deposit of the material shall be made not later than date of filing of patent application.

In India biological material can be submitted at Institute of Microbial Technology (IMTECH), Chandigarh.


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Statutory Fees:

Particular Natural person

(Rs)

Other than natural person (Rs)

For filing patent application 1000 4000

For each sheet of specification in addition to 30

100 400

For each claim in addition to 10 200 800


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Cognate filing

In addition to this, u/s 9(2)- there is a provision that where two or more applications in the name of same applicant are accompanied by provisional specifications in respect of inventions which are cognate or of which one is a modification of another and controller is of the opinion that the whole of such inventions are such as to constitute a single invention and may properly be included in one patent, he may allow one complete specification may be filed in respect of all such provisional applications.


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u/s 9(3)-complete application can be converted to provisional application on request by the applicant to the controller of the patents at any time within twelve months from the date of filing of the application.

Complete to provisional


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u/s 9(4)-where a complete specification has been filed in pursuance of an application accompanied by provisional specification, the controller, may, if the applicant so requests, at any time before grant of patent, cancel the provisional specification and post-date the application to the date of filing of the complete specification.

Post-dating


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[Rule 24] A patent application will be published automatically in the official journal after expiry of 18 months from date of filing or date of priority of the application containing title, abstract, application no. and name of applicant[s] and inventor[s].

This way, the world is informed about the fact that a

patent can be expected on that particular invention. Someone else using the invention could then switch to

a different technology, or make reservations to pay for a license once the patent is granted.

Publication


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Publication………..

Request for early publication: [Rule 22A] To expedite the process of grant of patent a request for publication under Section 11(A)(2) can be made in Form 9 any time after filing of the application. Upon such request, the application will be published in one month from the date of such request.

Fees for Request for Early Publication for Natural person is Rs. 2,500

Fees for Request for Early Publication for Other than natural person is Rs. 10,000


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Importance of Publication

On and from the date of publication of the application for patent and until the date of grant of a patent in respect of such application, the applicant shall have the like privileges and rights as if a patent for the invention has been granted on the date of publication of the application.

The applicant shall not be entitled to institute any proceedings for infringement until the patent has been granted

Right of the patentee in the case of applications filed u/s 5(2) shall accrue from the date of grant of the patent


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Pre-grant Opposition

[Section 25(1)] Upon publication, but before the grant of patent any person, based on different grounds may file a pre grant opposition, in writing, represent by way of opposition to the Controller against the grant of patent.

However the opposition will be taken by the patent office only after the filing of Request for Examination.


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Time limit: May be filed within 3 months from the date of publication of the application [sec 25(1); rule 55(1)] OR Before the grant of patent, whichever is later.

Fee:NO FEE

Pre-grant Opposition


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Request for Examination

No Request, No Grant

In Form 18 [sec. 11B; rules 20(4)(ii) and 24B(1)(i)] in duplicate within period of 48 months from date of filing or priority.

Statutory Fees for Request for Examination

for Natural person is Rs. 2,500 Statutory Fees for Request for Examination for other than

natural person is Rs.10,000


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First Examination Report

[Section 12; 24B(3)]

After proper examination of patent application, on the criteria of novelty, inventiveness and industrial application, which involves checking all the literature available to it to find documents that describe the invention in part or in whole. In this search, only documents that were published before the date of filing of the application are to be considered. The Patent Examiner will issue a First Examination Report (FER) and will send along with the application and specification to the applicant or authorized agent.


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Amendment of objections by the applicant

The issued FER give an opportunity to the applicant to file a response and overcome the objections raised by the Examiner.

Time limit: [Rule 24B(4)(iii)] Within 12 months from the date on which the First Examination Report has been issued to the applicant, the application should be placed in order of acceptance.

In case of the unjustified response, the Controller has power to refuse the grant of patent or ask for amended claim[s] or make order for the Division of Application [Section 15, 16].


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Grant of Patent

The Controller will grant the application upon overcome the all objections raised in the FER.

On the grant of a patent the application will be accorded a number, called serial number in the series of numbers accorded to patents under the Indian Patents and Designs Act, 1911(2 of 1911).


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Post grant Opposition

[Section 25(2)] Upon grant of patent, any interested person, based on different grounds may file a post grant opposition in Form 7 to the Controller against the grant of patent.

Time limit: Within one year after the grant of a patent.

Statutory Fees for Notice of Opposition for Particular Natural person is Rs.1,500

Statutory Fees for Notice of Opposition for other than natural person is Rs.6,000


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Renewal fees

1.To keep a patent in force, the renewal fees shall be payable at the expiration of the second year from the date of the patent or of any succeeding year and the same shall be remitted to the patent office before the expiration of the second or the succeeding year.

2. While paying the renewal fee, the number and date of the patent concerned and the year in respect of which the fee is paid shall be quoted.

3. The annual renewal fees payable in respect of two or more years may be paid in advance.


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Fees…

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


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Fees…

The period for payment of renewal fees may be extended to a period but not more than six months if the request for extension in Form 4 with fees.

Statutory Fees for extension in Form 4 for Particular Natural person is Rs.300 per month Statutory Fees for extension in Form 4 for Other than

natural person is Rs.1,200 per month


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Filing of International application

It is possible to file an international application in India in all patent offices. All these offices act as Receiving Office (RO) for international application.

International application can be filed directly to International Bureau (IB), Geneva, on-line.


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Documents required for filing

Covering letter indicating list of documents:

Request

Complete specification in triplicate

Abstract- in triplicate

Fees- transmittal fees


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Fees Payable under PCT

Transmittal Fee: Rs. 8000/- Fee for priority document: Rs. 4000/- each International Fee: $ 1,184 for 30 pages Fee for each page in addition to 30 pages: $ 13 Search fee: According to search authority


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Search Authorities along with fee

SearchAuthority

Fee (in USD)

AT 257

AU 1,091

CN 280

EP 2,184

SE 2,164

US 2,080


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National phase entry

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First Application Family Application


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THANK YOU!