Upload
bananaip-counsels
View
140
Download
0
Embed Size (px)
Citation preview
MAINTENANCE AND ENFORCEMENT OF PATENT
ISSUE OF PATENT CERTIFICATE
PUBLICATION
GRANT
EXAMINATION (OPINION AND RESPONSE)
REQUEST FOR EXAMINATION
PUBLICATION
FILING
GENERAL PROCEDURE
20 Years
GENERAL PROCEDURE
• Right to Priority
– Previous application
– Multiple application
• Priority Date
– Date of first filing
– Date of foreign filing if foreign application filed earlier
– Date of PCT international application
• Post Dating
EXERCISE
A provisional application was filed disclosing elements A and B
on 6th November 2016. Complete specification was filed
disclosing element A, B, C and D on 6th November 2017
• Can priority be claimed from the 2016 patent?
• What is the priority date for claims claiming elements A and
B?
• What is the priority date for claims claiming elements C and
D?
• What is the priority date for claims claiming A, B, C and D?
March 2014 Confidential 4
EXERCISE
You filed a provisional application on 25th
November 2016 for an invention you made. On
6th November 2017 you realize that you may
need another 2 months effort before you file a
complete.
• What will be the best patent filing strategy?
March 2014 Confidential 5
GENERAL PROCEDURE
• Jurisdiction
– Patent Protection by Geography
– World Patent?
– Regional Patent
– International Patent filings
EXERCISE
• Smurf Tech gets a patent grant in India. Turf
Tech a Japanese company makes the same
product and starts selling. How can Smurf
Tech stop Turf Tech.
March 2014 Confidential 7
EXERCISE
• Smurf Tech files a PCT application. It gets a
Patent grant in India. In the light of this
information, how can it stop Turf Tech from
making its patented product?
March 2014 Confidential 8
IDENTIFY THE FILING ROUTE
1. Smurf Tech files an application in India and Afghanistan on
the 1st Nov, 2016.
2. Smurf Tech files an application in India on 1st Nov, 2016
and files another in United States on 1st Nov, 2017.
1. Smurf Tech files an application in India on 1st Nov, 2016. It
files an international application at the Indian office on 1st
Nov, 2017 and enters United States on 1st May, 2018
March 2014 Confidential 10
Thank You
Confidential 11
Vinita Radhakrishnan
Senior Partner - BananaIP Counsels
Email: [email protected]
Phone: +91 9845837306
2016
LAW, REGULATIONS and GUIDELINES
• Patents Act, 1970
– Amended in1999, 2002, 2005
• Patents Rules, 2003
– Amended in 2005, 2006
• MPPP
March 2014 Confidential 14
Appeal
Opposition
Opposition (12 months from grant)
Revocation and Amendment
APPELATE BOARD
Decision of Controller
GRANT
EXAMINATION (ISSUE of FER)
Request for EXAMINATION
PUBLICATION
FILING (PROV/COMPLETE)
• If PS is filed, CS to be filed within 12 months
• Within 18 months of Priority date
• Within 48 months
• All objections to be complied within 12 months
INDIAN PATENT PROCESS
APPLICANT
• First to File!
– Inventor
• True
• First
• Joint Inventors
– Assignee of the Inventor (proof)
• Joint Assignees
– Legal Representative of a deceased inventor
EXERCISE
Anjali invented a solar energy driven mobile phone battery in May
2015. Anjali mentioned this to her twin sister Pranjali on 2nd June
2015. Pranjali filed a patent application in India on 15th June 2015 a
day before Anjali filed her application.
• Whose application is valid?
• What if it was developed independently?
• What if Anjali developed the solar energy part and Pranjali applied
it to battery technology?
• How is the right divided?
March 2014 Confidential 16
FILING MODE
• through online( e-filing) on
www.ipindiaonline.gov.in/online
• through post or
• can be submitted by hand
• What if fee doesn’t get through?
• What if agent signature is missing?
March 2014 Confidential 17
Details E-filing Physical filing
Natural Person 1600 Additional Page: 160Additional Claim: 320
1750Additional Page: 180Additional Claim: 350
Small Entity 4000Additional Page: 400Additional Claim: 800
4400Additional Page: 440Additional Claim: 880
Others 8000Additional Page: 800Additional Claim: 1600
8800Additional Page: 880Additional Claim: 1750
March 2014 Confidential 18
FEE DETAILS IN FILING
FILING OFFICES
• Domicile of Applicant/Origin of invention/Place of Service
• Patent offices in India
– Mumbai
• Maharashtra, Gujarat, MP, Goa, Chattisgarh, Diu, Daman, Dadra and Nagar
Haveli
– Chennai
• AP, Karnataka, Kerela, Tamil Nadu, Pondicherry, Lakshadweep
– Delhi
• Haryana, HP, J and K, Punjab, Rajasthan, UP, Uttaranchal, Delhi, Chandigarh
– Kolkata
• Rest of India
EXERCISE
FACT PATTERN:
Spunoff is a mattress company having business presence worldwide. Their Indian corporate office is in Bhopal. Spunoffwishes to file for a patent on a new spine-guard mattress technology invented by their CTO Rajat Mishra who works out of their Bangalore R and D facility and the Lead scientist of the German office Dr. Muller who works out of the Munich research facility. Dr. Muller insists on working with a Delhi based Patent attorney Pranjali Naik whom he met during the Berne IP Summit in Switzerland last year and was very impressed by her grasp of the subject.
March 2014 Confidential 20
1. At which patent office(s) can they file the patent application and why?
2. They decide to work with Ms. Naik and file application at the Delhi Patent office. Is this valid?
3. If they file the provisional application in Mumbai can they file the complete application in Chennai?
4. After filing in Mumbai, can I change the address for communication to a Bangalore address?
March 2014 Confidential 21
EXERCISE
TYPE OF FILING
• PROVISIONAL FILING
• COMPLETE FILING
• PROVISIONAL TO COMPLETE
• COGNATE FILING
• NATIONAL PHASE FILING
March 2014 Confidential 22
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)
DOCUMENTS
• 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.
FORMALITY EXAMINATION
• Formal requirement
– forms, specification, Inventor and Applicant
details, Fees
• Issue of application number
• Cash Receipt
PUBLICATION
• Notice to public (18 months)
– Journal
• Rights post publication
• Request for early publication (Form 9)
Details E-filing Physical filing
Natural Person 2500 2750
Small Entity 6250 6900
Others 12500 13750
March 2014 Confidential 27
FEE DETAILS IN EARLY PUBLICATION
EXERCISE
• Advait files an application on 1st January 2015.
– Aditya makes Advait’s invention and sells it at a
exhibition on 1st June 2015. What can Advait do?
– Aditya revisits the same conference and sells the
same product on 1st June 2017.
March 2014 Confidential 28
REQUEST FOR EXAMINATION
• RFE (Request for Examination) Form 18
-Who? (Applicant/Interested Party)
-When? (within 48 months of priority)
• Type of RFE
– Normal
– Express (PCT Filling before 31 months deadline)
– Expedite (Start ups/ and PCT ISA/IPEA-
Examination within 3 months of Request)
Details E-filing Physical filing
Natural Person 4000/5600/8000 4400/6150/Not Allowed
Small Entity 10000/14000/25000 11000/15400/ Not Allowed
Others 20000/28000/60000 22000/30800/Not Allowed
March 2014 Confidential 30
FEE DETAILS FOR RFE
EXAMINATION
• Examination Process:
– whether the claimed invention is not prohibited for grant of
patent
– whether the invention meets the criteria of patentability
• Prior art Search and Analysis
– What happens when Examiner misses a prior art?
• FER (within 6 months of RFE)
• Response to FER (12 months from the FER issue date)
• Divisional Application
March 2014 Confidential 31
EXERCISE
A complete specification was filed on January 1,
2016
• When should a Request for examination be
filed?
March 2014 Confidential 32
EXERCISE
A complete specification was filed on January 1,
2016 claiming priority from a provisional filed on
13th March 2016.
• When should a Request for examination be
filed?
March 2014 Confidential 33
EXERCISE
• GenCoin, a company that incubated out of UPES
entrepreneurship cell in 2012 is looking to raise
second level of VC funding. They have applied for
a patent in India and have filed a PCT application
claiming Indian Patent Office as the ISA. However,
they are pursuing the Indian Patent through the
direct filing route. They wish to get a patent in
the next one year. Advise.
March 2014 Confidential 34
PRE GRANT OPPOSITION
• Request to be filed (Form 7)
• When? Anytime before Grant
• Considered if a RFE is filed
• Who? (anyone)
• Statement and Evidence
• Grounds for Opposition (Sec 25(1))
GRANT
• 3 to 4 years from filing date
• Renewals to be done every year after the first 2 years of grant
POST GRANT OPPOSITION
• When?
– Within one year of grant
• Who?
– Interested Party
• How?
– Make a request with statement and evidence (Section 25 (2))
OTHER CONCEPTS
• Annuity
• Statement of Undertaking
• Patent of Addition
• Working of Patents
• Revocation
ANNUITY
• Every year after 2 years
– 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
STATEMENT OF UNDERTAKING
• Section 8, Form 3
• Information relating to progress of Foreign Application
• On Request by controller
• Non compliance
PATENT of ADDITION (Sec 55)
• Improvements and modification
• Patentability Requirement
• Effect from Main Patent
• Term
March 2014 Confidential 42
WORKING OF PATENT
• Statement of commercial working (Form 27)
• Annual submissions– Has it been worked?
– If not, • why?
• Steps taken to work
– If yes, quantum of value:• Manufactured in India?
• Imported (with country wise details)
– Licensing information
March 2014 Confidential 43
REVOCATION
• Interested Party
• Government
• Counterclaim in an Infringement suit
March 2014 Confidential 44
Thank You
Confidential 45
Vinita Radhakrishnan
Senior Partner - BananaIP Counsels
Email: [email protected]
Phone: +91 9845837306
2016