Transcript Patent Filing Procedures

PATENT FILING
NATIONAL/INTERNATIONAL
at
Pharmexcil, Ahmedabad
26th July, 2012
by
Andreya
Fernandes
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Gopakumar Nair Associates
Patent Filing, Why?
 Claim ownership
 Monopoly : Right to exclude others
 Sell / License / Assign
 Invention is made public
 Encourages further Innovation
 Enforcement: Sue for infringement
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Who Can Apply For Patent
Section 6 and Section 134
Either alone or jointly
 True and first inventor
 True and first inventor’s assignee
 Legal representative of deceased true and
first inventor or his/her assignee.
True and first inventor does not include
 first importer of an invention into India or
 a person to whom an invention is first
communicated from outside India
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Jurisdiction
Rule 5. Address for servicea) Place of residence, domicile or business of the
applicant (first mentioned applicant in the case of
joint applicants)
b) Place from where the invention actually originated.
c) Address for service in India given by the applicant
when he has no place of business or domicile in
India.
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Filing of Patent Application
 When to file : Earliest – as provisional (First-to-File)
 Provisional Specification (Form 2)
- To establish PRIORITY DATE / establish
ownership
early
 Complete Specification (Form 2)
- To be filed within 12 months of filing of Provisional
Application (Section 9 (1))
- Claim fairly based on matter disclosed in Provisional
Application (Section 11(2))
- Cognate Applications (Section 9(2))
- Post Dating (Section 9(4))
 Appln for Grant of Patent (Form 1)
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- Section 7, 54, 135 r/w Rule 20(1)
Complete Specification
Form 2 - Section 10 r/w Rule 13
 Title
 Technical Field
 Background and Prior Art
 Current Problem / Drawback / Gap
 Solution to the problem/ Improvement
 Summary of Invention
 Detailed Description
 Experiments/Trials/Examples
 Claims
 Abstract
 Drawings, if any.
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 Patent Specification - Techno-legal doc
 Contents of Specification (Section 10)
 (Section 10(4))
 Unity Of Invention - Single Inventive Concept
 Clarity of Disclosure - State Clearly And
Distinctly The Nature And Limits Of
The Claims
 Best Method - Examples etc
 Sufficiency Of Disclosure - Claims should be
supported by Written Description.
 Biological Material - Geographical Origin
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Pre / Post Grant Opposition & Revocation
 Receiving Office - Delhi, Kolkata, Chennai, Mumbai.
 Language of Filing - English or Hindi
 Forms (2nd Schedule)
 1 (Application for Grant of Patent), Proof of Right
 2 (Complete or Provisional Appln),
 3 (Statement & Undertaking u/s 8 ),
 5 (Declaration As to Inventorship) &
 26 (Power of Attorney)
 18 (Request for Examination)
 Fees (1st Schedule) (Section 142 r/w Rule 7)
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Ratio of Fees – 1 : 4 (Natural Person : Others)
 Publication of Patent Application
– Section 11-A r/w Rule 24
– Early Publication: Section 11 (A)(ii) r/w Rule 24 in Form 9
 Request for Examination
– Section 11-B r/w Rule 24-B in Form 18
– Express Examination - entered through PCT route
 Examination of Application
– Section 12 & Section 13 r/w Rule 24-B(2) & (3)
 Time for putting appln in order for grant
– Section 21 r/w Rule 24-B(4)
 Grant or Refuse or Abandoned
– Section 43, Section 15
9
– Opposition / Revocation
Permission For Making
Application Outside India
 Section 39 r/w Rule 71(1) in Form 25.
 Residents not to apply for patents outside India
without prior permission.
 Make application after 6 weeks have elapsed.
 Invention relates to defence purpose or atomic
energy.
 Controller shall dispose after 21 days from the date
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of filing such request.
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Patent Prosecution In India
Optional:
Early Publication in
Form 9 + Request
for Examination in
Form 18
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Fees
Ratio of Fees – 1:4 (Natural Person:Other than Natural Person)
A few examples :
Natural
person
Others
Patent Application- Form 1 & 2
Rs.1000
Rs.4000
Request for early publication
Rs.2500
Rs.10000
Rs.2500
Rs.10000
Rs.500
Rs.1500
Rs.3000
Rs.5000
Rs.2000
Rs.6000
Rs.12000
Rs.20000
(optional)
Request for Examination
Maintenance Fee (each year)
3rd to 6th years
7th to 10th years
11th to 15th years
16th to 20th years
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Types Of Patent
 Ordinary Application – Complete Appln
 Convention Application (Section 135 - Section 139
r/w Rule 17 to Rule 23)
 PCT International Application (-do-)
 PCT National Phase Application
 Patent of Addition (Section 54 – Section 56)
 Divisional Application (Section 16)
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Patent Filing Strategies
 Only National Filing
 Only Convention filing (US / EU etc.)
 National + Convention Country
 National + US + EU
 Only PCT
Any or all 146 States
as on 14th June, 2012
 National + PCT
Any or all 146 States
Patents RIGHTS ARE TERRITORIAL
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Indian Patent Offices
Delhi
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Kolkata
Chennai
Mumbai
Hierarchical Chart Of The
Patent Office
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Filing PCT
International
Application
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Patent Cooperation Treaty
PCT stands for Patent Cooperation Treaty.
Multilateral Treaty
Concluded in Washington in 1970
Entered into force in 1978
Administered by IB of the WIPO
Headquarters e in Geneva, Switzerland.
Started with 18 Contracting States (146 states to
date)
Filing PCT does not lead to grant of
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International Patents
Benefits of Filing PCT Int’l Appln
1. Provides a unified procedure for filing patent
applications,
2. Leads to International Publication,
3. Simple, Efficient and Cost-effective way,
4. Facilitates the obtaining of protection for
inventions in any of the member countries,
5. Reserves the Patent Rights in Member States to
PCT,
6. The International Search Report received at the
16th month enables the inventor to evaluate
chances of patent protection in member states,
7. Upto 20/30/31 months to decide in which
countries to pursue National Patent Protection.
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Receiving Office (RO)
International Applications may be
filed at
 National Patent Office or
 International Bureau (IB) of WIPO
In India, RO are




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Mumbai or
Chennai or
Delhi or
Kolkata
PCT Requirements
1. Prescribed language (Arabic, Chinese, English, French,
German, Japanese, Korean, Portuguese, Russian and
Spanish);
2. An International Application (Triplicate) shall contain,
• PCT Request Form (RO-101) and
• Complete Specification (Non-Provisional Application)
(includes description, one or more claims, one or more
drawings (where required), and an abstract)
3. Payment of the prescribed fees.
4. Power of Attorney (if required)
5. At least one Applicant should be National (Domicile) or
Resident
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ISA
 Choose Only One International Searching
Authority (ISA)
International Search Fees
(depending upon ISA selected)
As of 01/07/2012
ISA
AT (Austria)
AU (Australia)
CN (China)
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Search Fee (US$.)
2370
2254
329
EP (Europe)
2426
SE (Sweden)
2426
US (USA)
2080
PCT Filing System
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National phase III
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International Search
Authority
International Search Report contains:
 Special category of cited documents (A, P, X, Y…..)
 Technical areas searched
 List of relevant prior art
 Reasons for search not carried out (if applicable)
Written Opinion contains:
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– Preliminary opinion on
 Novelty
 Non-obviousness
 Industrial applicability
PCT
Lack of Unity of Invention
 Only first claim is searched.
 Specify reasons for lack of unity of invention.
 Invite payment of additional search fees for the rest of the
claims.
 Applicant may pay any or all additional fees with or
without a protest (challenging lack of unity of invention).
 Failure to pay additional fees will not affect the application;
additional inventions will neither be searched nor a written
opinion will be issued.
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 No provisions for filing divisional applications during the
international phase.
Lack of Unity of Invention
Protest before ISA
 ISA reviews the protest filed with or without
additional fees for search
 If ISA concludes that the lack of unity of invention is
not justified, the additional search fees are refunded
 If ISA concludes that the lack of unity of invention is
justified, the protest is denied with detailed reasons
 The applicant may request that the text of the protest
and the ISA’s decision be notified to the designated
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offices.
Comparison of Chapter I and
Chapter II Amendments
Chapter I (Article 19)
 Claim amendments
only
 Filed in response to
ISR and Written
Opinion of ISA
 filed with IB (not ISA)
 Published
 No official fees
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Chapter II (Article 34)
 Description,
drawings and claims
can be amended
 Filed with the
demand or during
IPEA examination
 filed with IPEA
 Not Published
 Official fees payable
PCT- SAFE
Advantages
 Instant filing receipt when filed online
 Reduced filing costs (printing, copying,
mailing and paralegal labor charges)
 Reduced filing fees
 Reduced paper usage (save a tree!)
 Filing in XML format renders data better
searchable and re-usable
 All related software available free of cost
from WIPO
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Thank You!
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