Patent Procedure and filing strategy

By
Vikram Pratap Singh Thakur
Brain League IP Services Pvt. Ltd.

© 2010 Brain League IP Services Pvt. Ltd.

Agenda

 Indian Patent procedure

 PCT procedure

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Indian Patent Procedure

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Pre filing and Filing requirements

 Place of application

 Persons entitled to apply

 Type of specifications

 Contents of application (provisional or complete)

 Types of application

 Priority date

 Documents
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Place of application
Patent Territorial jurisdiction
offices
Mumbai The states of Gujarat, Maharashtra, Madhya
Pradesh, Goa, Chhattisgarh, The Union
Territories of Daman and Diu and Dadra and
Nagar Haveli.
Delhi The states of Haryana, Himachal Pradesh,
Jammu and Kashmir, Punjab, Rajasthan,
Uttar Pradesh, Uttranchal, National capital
territory of Delhi and the union territory of
Chandigarh.
Chennai The states of Andhra Pradesh, Karnataka ,
Kerala, Tamil Nadu and the union territories
of Pondicherry and Lakshadweep.
Kolkata Rest of India
(head office)
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Persons entitled to apply

 True and first inventor of the invention

 Assignee

 Legal representative

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Type of specifications

 Provisional specification
 Describe nature of invention
 Contain description of essential features
 claims not necessary
 details of the manner in which it to be performed
not necessary

 Complete specification
 Include details
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Advantage of provisional specification

 Priority

 Disclose to third party for funding

 Explore commercial feasibility

 Decide to continue the application

 Decide countries of interest

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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)
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Various types of applications in India

 Ordinary application

 Convention application

 PCT international application

 PCT National phase application

 Application for Patent of addition

 Divisional Application
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Priority Date

 Date of first filing

 Date of foreign filing if foreign application

filed earlier
 Date of PCT international application

 Concept of priority date

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Documents to be submitted at
the time of filing
 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.

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Publication

 Date of publication
 Open for public inspection
 Rights of patentee start
 Circumstances when publication not done
 Secrecy directions
 Abandoned – non filing of complete spec
 Withdrawn
 Early publication
 Rights start early
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Publication after 18 months (e.g.)

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Examination

 Request for examination

 Formal examination
 verifying the propriety and correctness of all
documents
 verifying the patentability
 First Examination Report (FER)
 Amendments

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Grant

 Order for grant

 Grant

 Publication

 Rights of patentees can be enforced

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Publication of granted patents (e.g.)

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Opposition

 Pre-grant

 Before grant

 Post-grant

 1 year from grant

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PCT Applications

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Patent filing outside India

 Convention route

 Patent Cooperation Treaty route

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Convention route

First filing
Country filings
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 Disadvantages

 Less Decision time

 Translation fee

 Attorney fee

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PCT route

 Unified procedure for filing patent

applications
 Administered by WIPO
 Entered into force in 1978 with 18 contracting
states
 2010 (January) – 142 contracting states
 India joined PCT on 07.12.98

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PCT route (cont…)

 Advantages
 Time
 Cost
 Effort

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Phases

 International phase

 National phase

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International phase

 Filing – RO or IB

 Search report

 Patentability opinion

 Publication

 Preliminary examination

 Patentability report
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National phase

 National patent procedure

 National fees

 Translation if required

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Convention filing Vs. PCT filing
CONVENTION
 No preliminary level help
as the filings are directly
done in each countries
 Filing is costly and involves
a lot of effort
 Country selection in 12
months
PCT
 Help from the search
report for deciding to
continue and spend
resources
 Saves time and effort
 Country selection may vary
ordinarily between 20 to 31
months
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