Date post: | 25-Jan-2017 |
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Basics of Patent Basics of Patent ProcessProcess
BySomashekar Ramakrishna
BananaIP Counsels
Patent ProcessPatent Process•Filing •Publication•Examination•Pre-Grant Opposition•Grant•Post-Grant Opposition
FilingFiling
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
FilingFiling
Filing Routes Direct Filing (PS or CS)
Foreign Filing (Direct Foreign-PS with FFP/CS with FFP)
PCT (CS)
FilingFiling
Applicants
◦True and First Inventor
◦Assignee of the inventor
◦Legal representative of the deceased person
FilingFiling
• 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
PublicationPublication
Notice to Public (18 months from the priority date)
Rights start from the date of publication
Request for early publication
ExaminationExamination
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
ExaminationExamination
First Examination report from the Examiner within 6 months from the date of request
Response from the Applicant within 12 months
Pre-Grant OppositionPre-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
Pre-Grant OppositionPre-Grant Opposition
Grounds◦Wrongful obtainment ◦Invention in public domain◦No sufficient disclosure◦Failure to disclose the information
corresponding to foreign application◦Failure to file convention application within 12
months and so on…. (section 25 (1))
GrantGrant
3-4 years from the date of filing
To be renewed every year after 2 years from the grant date
Post-Grant OppositionPost-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 corresponding to foreign
application◦ Failure to file convention application within 12 months and so on…. (section 25 (2))
Other conceptsOther concepts
• Statement of undertaking• Divisional application• Patent of addition• Working of Patents
Exercise 1Exercise 1
A Complete Specification was filed on January 1, 2016. ◦When should a request for examination be filed
for the complete specification?◦Who can file for the request for examination?
Exercise 2Exercise 2
Example: Provisional specification was filed disclosing elements A
B and C on January 25, 2015. Complete specification will be filed on January 25, 2016 disclosing elements D and E along with elements A,B and C.
1. Can the complete specification claim priority from provisional specification?
2. What is the priority date of a claim claiming elements A B and C?
3. What is the priority date of a claim claiming elements D and E?
4. What is the priority date of a claim claiming elements A, B, C, D and E?
Exercise 3Exercise 3
Raghu and Menon are into manufacturing of SPMs. Menon has developed a Coffee bean crusher and has applied for a patent. Raghu recently developed a coffee dispensing machine integrated with crusher (not Menon’s coffee bean crusher). Menon has approached Raghu’s clients and is persuading Raghu’s clients to not purchase coffee machines from Raghu as Menon has a patent on coffee machines. Raghu’s business has taken a hit and he has come to you. What is your advise to Raghu?
Raghu feels that the crusher developed by Menon may not be new (Menon’s patent application is published). What would be the best strategy?
Filing in India
Was the filing a complete or a provisional?
File the complete specification (12 months)
Provisional
Complete
Publishing (18 months*)
Request for examination (48 months)
Examination Report (24 months**)
Examiner decision (36 months) (grant/refusal)
Indian Patent Process
Provisional Filing in India First Filing in India Request for a foreign filing permit
Filing in Convention country12 months
6 weeks
21 days
Publishing (18 months)
Examination Report
Examiner decision (grant/refusal)
Was the filing a complete or a provisional?
File the complete specification (12 months)
Provisional
Complete
Filing in Convention country
Provisional Filing in India First Filing in India Request for a foreign filing permit
PCT filing12 months*
6 weeks
21 days
Publishing (18 months)Search Report** (16 months)
Do you want to respond to
search report?No
Yes
Do you want to proceed to
examination stage?
No
Yes
File an informal response (2 months from report/18 months – whichever is
later)
A
File a demand + response*** (19 months) B
PCT Patent Process
Examiner Opinion
B
Enter into National Phase (20/30/31 months)
A
Due process in each of the National phase countries
PCT Patent Process (Cont’d)
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