PATENT PROCESS

By Somashekar Brain League IP Services www.sinapseblog.com www.onlineipcourses.com

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Agenda
Filing
Publication Examination Pre-Grant Opposition Grant Post-Grant Opposition

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Filing
Patent Application
Form of Application Provisional Application (Provisional Specification + Filing documents) Non Provisional/Complete Application (Complete specification + Filing documents)

Priority Date- filing date of the first application in a chain of applications

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Filing
Types of Application
Domestic Application Convention Application International Application National Stage Application
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Filing
Patent Offices
Mumbai Patent Office- States of Maharashtra,

Gujarat, MadhyaPradesh, Goa, Chattisgarh, Diu Daman, Dadra and Nagar Haveli Chennai Patent Office- States of Andhra Pradesh, Karnataka, Tamil Nadu, Pondicherry and Lakshadweep Delhi Patent Office- States of Haryana, Himachal
Pradesh, Jammu and Kashmir, Punjab, Rajasthan, Uttar Pradesh, Uttaranchal, Delhi, Chandigarh Kolkata Patent Office- Rest of India

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Filing
Applicants
True and First Inventor Assignee of the inventor

Legal representative of the deceased person

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Example
April 05, 2010-Provisional specification disclosing elements A, B and C

April 05, 2011-Complete Specification disclosing and claiming A, B, C, D and E

Can the complete specification claim priority from the provisional specification?
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Example
April 05, 2010-Provisional specification disclosing elements A, B and C September 05, 2010- Provisional specification disclosing elements D and E

April 08, 2011-Complete Specification disclosing and claiming A, B, C, D and E

Can the complete specification claim priority from both provisional specifications?

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Example
December 05 2010-provisional specification filed in the US April 05, 2011-proviosnal specification filed in Canada Can a complete specification claiming priority from any of the applications be filed in India today?
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Publication
Notice to Public (18 months from the priority date) Rights start from the date of publication
Request for early publication

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Examination
Proper request must be filed
By the Applicant By the interested person (person engaged in or in

promoting, research in the field of the invention)

Time limit- 48 months from priority date

Formality check
Prior Art search and analysis by the Examiner
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Examination
First Examination report from the Examiner within 6 months from the date of request Response from the Applicant within 12 months

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Pre-Grant Opposition
Should be filed after the application has been published and before grant Will be considered only when Request for Examination is filed May be filed by any person
Should include statement and evidence
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Pre-Grant Opposition
Grounds
Wrongful obtainment Invention in public domain

No sufficient disclosure
Failure to disclose the information as to

corresponding foreign application Failure to file convention application within 12 months and so on. (section 25 (1))
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Grant
3-4 years from the date of filing
To be renewed every year after 2 years from

the grant date

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Post-Grant Opposition
Should be filed within one year from the grant of patent Must be filed by an interested person Grounds

Wrongful obtainment Invention in public domain No sufficient disclosure Failure to disclose the information as to corresponding foreign application Failure to file convention application within 12 months and so on. (section 25 (2))
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Filing in India

Provisional

Was the filing a complete or a provisional? Complete Request for examination (48 months) Publishing (18 months*)

File the complete specification (12 months)

Examination Report (24 months**)

Examiner decision (36 months) (grant/refusal) Indian Patent Process

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Provisional Filing in India

First Filing in India 6 weeks

Request for a foreign filing permit

21 days

12 months

Filing in Convention country

Provisional

Was the filing a complete or a provisional? Complete

File the complete specification (12 months)

Publishing (18 months)

Examination Report

Examiner decision (grant/refusal)

Filing in Convention country

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Provisional Filing in India

First Filing in India 6 weeks

Request for a foreign filing permit

21 days

12 months*

PCT filing

Search Report** (16 months)

Publishing (18 months)

No

Do you want to respond to search report? Yes Do you want to proceed to examination stage? Yes File a demand + response*** (19 months)

File an informal response (2 months from report/18 months whichever is later) No

PCT Patent Process

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Examiner Opinion A

Enter into National Phase (20/30/31 months)

Due process in each of the National phase countries

PCT Patent Process (Contd)

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THANK YOU. For further information contact rsshekar@brainleague.com and/or visit www.sinapseblog.com www.onlineipcourses.com

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