HOW TO FILE A PATENT APPLICATION
• Documents can be filed in the patent office
• through online( e-filing) www.ipindiaonline.gov.in/online or
• 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).
• 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
• Claims- not required in provisional
• Abstract- not required in provisional
• 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.
• 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.
• 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.
• 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.
• [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
• 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.
• 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
• 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:
• 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