STAGES FROM FILING TO GRANT OF A PATENT
HOW TO FILE A PATENT APPLICATION
• Documents
can be filed in the patent office
• through
post or
• can
be submitted by hand
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
DOCUMENTS REQUIRED
FOR FILING OF A PATENT APPLICATION
1.
Covering
letter- indicating the list of documents;
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).
SPECIFICATIONS
• Provisional
specification:
• a
provisional specification is usually filed to establish priority of the
invention in case the disclosed invention is only at a conceptual stage and a
delay is expected in submitting full and specific description of the invention.
• No
patent is granted on the basis of a provisional specification.
• Complete
specification:
• the
complete specification is the document in which all the details of the
invention for which patent protection is desired are disclosed
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
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.
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 information on the invention.
•
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.
STATUTORY FEES
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.
COMPLETE TO
PROVISIONAL
• 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.
POST DATING
• 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.
PUBLICATION
• [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.
• 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
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
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.
• 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
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
FIRST EXAMINATION
REPORT
• 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.
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].
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).
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
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
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.
DOCUMENTS REQUIRED
FOR FILING
• Covering
letter indicating list of documents:
• Request
• Complete specification in triplicate
• Abstract- in triplicate
• Fees- transmittal fees
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
SEARCH AUTHORITIES
ALONG WITH FEE
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