PATENT FILLING PROCESSCASES

NATIONALPCT

Prepared by: Prof. Anil K. Gupta, Joshi, A. and Chandak V. S. 2005.

PATENT APPLICATION CAN BE MADE AS

• PCT Application (115 members)• Convention Application

(Paris Convention Countries)• National Application

– Provisional Specification – Complete Specification (within 12 months time no extension

allowed after 2005 amendment)

 

Patents : Regional officesWestern region MumbaiSouthern ChenaiNorthern New DelhiEast Kolkotta

 GI ChennaiTrademark All regional offices plus the Trademark applications can be submitted at respective TM office in different states 

PLACE OF FILLING PATENT APPLICATIONS IN INDIA

SPECIFICATION

• Title of the Invention

• Abstract (In provisional Specification, Abstract may be omitted)

• Field of Invention

• Summary of the Invention:

• Prior Art – Patent Prior art

– Non-patent Prior art

• Detailed description of the Invention-disadvantages associated with the prior art, advantages and objects of the invention

• Drawings

• Claims (In provision Specification Claims may be omitted)

How to make an Application

• Form 1 in duplicate • Form 2 in duplicate (Disclosure of the invention

i.e Specification)• Other relevant Form such as Form 3, 5, 26

(Depending upon the nature on application: Sample forms attached)

• Relevant Drawings (wherever necessary)

Form 1THE PATENTS ACT, 1970

(39 of 1970)APPLICATION FOR GRANT OF A PATENT(See sections 5(2), 7, 54 and 135; rule 39)

 1.I, ………………………………………………… An Indian citizen 2. (a) hereby declare -that I am in possession of an invention titled: “……………………….” (b) that the provisional specification and /or Complete Specification relating to this invention is filed with this application. (c) that there is no lawful ground of objection to the grant of a patent to me.3. I further declare that the inventor for the said invention is (a)    …………………………………………………………………….4. I, claim the priority from the application(s) filed in convention countries, particulars of which are as follows: ……………………………………5. I state that the said invention is an improvement in or modification of the invention, the particulars of which are as follows and of which we are the patentee. ………………………………………… 6. I state that the application is divided out of our application, the particulars of which are given below and pray that this application deemed to have been filed on ____________ under section 16 of the Act. ………………………………………….. 7. That I am the true and first inventor. 8. That our address for service in India is as follows: …………………………..9 I am the true and first inventor for this invention declare that the applicant(s) herein is the innovator himself. …………………………………………………__ _______________________ (sign) …………………………………………… 10. That to the best of my knowledge, information and belief the fact and matters stated herein are correct and that there is no lawful ground of objection to the grant of patent to us on this application.11. Followings are the attachment with the application:(a)    Provisional specification / Complete Specification in triplicate.(b)   Statement of undertaking Form 3(c)    Authorization letter POA We request that a patent may be granted to us for the said invention Dated this ………. day of ……….. 2005

Form – 2 

THE PATENTS ACT, 1970     

PROVISIONALSPECIFICATION / Complete Specification(SECTION 10)

   

“………………………………………………………………….”.    

………………………………….………………………….,

…………………..,Gujarat State, IndiaAn Indian company duly registered and incorporated under

Company’s Act, 1956.

Note: Along with the complete specification

 

 

 

 

The following specification particularly describes and ascertains the nature of the invention and the manner in which it is to be performed: -

FORM 3 THE PATENTS ACT, 1970

(39 of 1970) 

STATEMENT AND UNDERTAKING UNDER SECTION 8[See rule 13]

 We, ……………………………………………………………………………………………………………………………. (i). that we who have made this application alone for the same invention application(s) for patent in the other countries, the particulars of which are given below : 

Name of the country

Date ofAppl.

ApplicationNo.

Status of the application

Date ofPublication

Date ofGrant.

           

  (ii). that the rights in the application have been assigned to none.  (iii). that we undertake that upto the date of acceptance of the complete specification by the controller, We would keep the

controller informed in writing the details regarding corresponding applications for patents filed outside India within three months from the date of filing of such application.

  Dated this ……………………….. 

  (Agent for Applicant)

  To,The Controller of PatentsThe Patent Office ***In case of foreign application /sec 8

(STAMP PAPER Rs.………….depending up the stamp duty)   

Form 26 

The Patents Act 1970Power of Authority

  I,………………………….. (b) ……………………………………………………………………………..Indian citizen,

Indian, hereby authorize ……………………………………………………..all Advocates and Registered Patent Agent all of……………………………………, (India), Indian, jointly and severally, to act on my behalf in connection with for securing from the Government of India letter patents under the above mentioned Act in respect of an invention titled “………………………………” and in all matters and proceeding before the Controller of Patents or the Government of India in connection therewith or incidental thereto including renewal thereof, or of the application, specification or any other document filed in respect thereof, restoration thereof, registration of any license, mortgage, assignment, transfer or other interest in respect thereof, or of change in our name, address or address for service and in general to do all acts of things [including appointment of a substitute or substitutes] as the said agent[s] may deem necessary or expedient and request that all notices, requisitions and communications relating thereto may be sent to such agent/s at the above address.

I, hereby revoke previous authorisations, if any made, in respect same matter or proceedings . I, hereby assent to the action already taken by the said person in the above-matter.

 Dated this ……..day of ……….2005 Signature …………………… (……………………………….)

ToThe Controller of Patents,Patent Office at:

Sr. ProcessAs per the ordinance 2005

Fees (INR)

    Individual Entity

1. Filling application (Max.30 pages)

•Exceeding 30 pages•Exceeding 10 claims

1000

100/page200/claim

4000

400/page800/claim

2. Substantial examination 2500 10000

3. Patent Renewal fees1-5 yrs6-10 yrs11-15 yrs16-20 yrs

 

500150030005000

 

20006000

1200020000

  Total (Approx.) 49000 196000

FEE Structure (IPO)

Convention Application:  

“Any country which is a signatory or party or group of countries union of countries or intergovernmental organization which are signatories or parties or parties to an international, regional or bilateral treaty, convention or arrangement to which India is also a signatory or party and which affords to the applicant for patents in India or to citizens of India similar privileges as are granted to their own citizens or citizens to their member countries in respect of the grant of patents and protection of patent rights shall be a convention country or convention countries for the purposes of this Act” (Section 133 Indian Patent Act 1770)

 Convention Application is an international arrangement with any other country outside India which affords the applicant similar privileges that are available to its own citizens. In case of two or more application filed in more than two convention countries, [within twelve (12) months] with respect to one invention the said convention application may hold multiple priority date but the date of priority shall be the date in earlier of earliest application (basic application) had been filed. Further a single application may be made in respect of all such applications within twelve months (12) period. A convention application is made as complete specification and requires submission of the corresponding applications made in other convention countries in which the basic application was made certified by the head of patent of that convention country verified to the satisfaction of the controller

Note:Procedure for filing remains the same as respective national applications

PCT APPLICATION

PCT application may be made directly to

International Bureau (IB) or Receiving office

(RO) as per the convenience of the applicant.

or

PCT application now can be made online by

using PCT SOFT software, by facsimile

transmission (provided the hard copy of the

same reaches IB within specified time)

or

by submitting the documents by hand to IB.

HOW TO MAKE AN PCT APPLICATION

PCT 

•Filing Of International Application to Receiving office and /or International Bureau: 

•Elements of International Application:  

     Request     Description      Claim / claims      One or more drawings wherever required Abstract

ABBREVATIONS

RO : Receiving OfficeIA : International ApplicationIB : International BureauISA : International search AuthorityISR : International Search ReportWO : Written OpinionIPE : International Preliminary ExaminationIPEA : International Preliminary Examining AuthorityIPRP : International Preliminary Report on PatenabilityDO : Designated officeEO : Elected office

Steps involved after making the application:  Establishment of the International Search Report (31 months from the date of filing / priority whichever of the following expires last)Publication of International Application along with search report. (18 months) Communication of the search report by IB to Regional office on request.

OptionalInternational preliminary Search report by one of the International Search Authority

National Phase II(PCT)

 1. Entering of National Phase (Regional Application)      Filing of the regional fee where the applicant wants to obtain

patent.     Furnished translation of the document wherever required and

represent by Attorney     All local compliance should be made as per the national level

application once the PCT application enter the phase II.

Immediate Compliance

• On entering into National Phase the applicant has to further comply with numerous procedure within specified time frame (20 months to be specific for some countries and 30 months for other countries from the date of priority: India 30). The foremost compliance in the National Phase level is the payment of national fee to those national / regional office along with furnishing the translation of the documents wherever required and appoint a representative (if required). The national office then examines the application, grants or refuses the application depending upon the national laws.

PCT FEE STRUCTURE

Transmittal Fee to IB US

$International Filing fee to IB

US

$Search Fee US

$Preliminary examination

fee

87 1211 Depending

upon search

Authorities:

Example:

ISA, US 1000;

AU 942;

EP 2075;

JP 887

Depending up of

the designation

state for

Example

US 600 (USD)

AU 550 (AUD)

EP 1530 (EURO)

TRADITIONAL v/s PCT

THE END

Structure of a Patent Application

• Title – a single sentence giving the nature of the invention

• Abstract – a brief description of the invention, for easy reference

• Background – field of invention and prior art• Summary – objects of the invention and the

advantages of the invention• Written descriptions and drawings – nature,

definition and disclosure of the invention• Claims – specific claims of the invention

Patenting Procedure

• Preparation of invention disclosure

• Provisional Patent Application– Need not include all claims– Must include the complete description– Benefit of early filing date– Lower cost– RPA to be filed within 12 months

Patenting Procedure

• Regular Patent Application– Filing– Publication– Examination: office action– Amendment: modified claims or a defense of

claims– Abandonment

• Continuation in Part• Maintenance

Foreign Filings

• Extends the jurisdiction of the patent

• Considerations for foreign filings– Cost of filing– Probability of grant of patent– Which countries to file the patent in: business

need, presence of manufacturers– Filing strategy

Filing Mechanisms

• PCT Filing: centralized procedure for convention countries

• EPO Filing: centralized procedure for Western European countries

• National patent office: for each country individually

PCT Filing

• File an “international patent application”• International Phase

– International Search Report: report on possible prior art– International Preliminary Examination Report (optional): opinion

on patentability• National Phase

– File application with the designated countries– Processed by the NPO’s individually

• Advantages– Extended Timeline – upto 18 months more– Reliable Patents– Low filing fees– Flexibility and greater chance of success

EPO Filing

• File application with EPO or a relevant NPO• Publishing: after 18 months• Examination: within 6 months• Registration with translated documents• Filing of objections: within 9 months• Advantages

– Cost advantage: for more than 4 countries– Accelerated processing– Credibility due to substantive examination

• Disadvantages– Revocation is across all states– Additional states cannot be added at a later stage