1

PATENT FILING NATIONAL/INTERNATIONA

L

atPharmexcil, Ahmedabad26th July, 2012byAndreya FernandesGopakumar Nair Associates

2

Patent Filing, Why?

Claim ownership

Monopoly : Right to exclude others

Sell / License / Assign

Invention is made public

Encourages further Innovation

Enforcement: Sue for infringement

3

Who Can Apply For PatentSection 6 and Section 134 Either alone or jointlyTrue and first inventorTrue and first inventor’s assigneeLegal representative of deceased true and first inventor or his/her assignee.

True and first inventor does not include first importer of an invention into India or a person to whom an invention is first communicated from outside India

4

JurisdictionRule 5. Address for service-a) Place of residence, domicile or business of the applicant (first mentioned applicant in the case of joint applicants)b) Place from where the invention actually originated.c) Address for service in India given by the applicant when he has no place of business or domicile in India.

5

Filing of Patent Application When to file : Earliest – as provisional (First-to-

File) Provisional Specification (Form 2)- To establish PRIORITY DATE / establish early

ownership Complete Specification (Form 2)- To be filed within 12 months of filing of

Provisional Application (Section 9 (1))- Claim fairly based on matter disclosed in

Provisional Application (Section 11(2))- Cognate Applications (Section 9(2))- Post Dating (Section 9(4)) Appln for Grant of Patent (Form 1) - Section 7, 54, 135 r/w Rule 20(1)

6

Complete SpecificationForm 2 - Section 10 r/w Rule 13

Title Technical Field Background and Prior Art Current Problem / Drawback / Gap Solution to the problem/ Improvement Summary of Invention Detailed Description Experiments/Trials/Examples Claims Abstract Drawings, if any.

7

Patent Specification - Techno-legal doc Contents of Specification (Section 10)

(Section 10(4)) Unity Of Invention - Single Inventive

Concept Clarity of Disclosure - State Clearly

And Distinctly The Nature And Limits Of The Claims

Best Method - Examples etc Sufficiency Of Disclosure - Claims

should be supported by Written Description.

Biological Material - Geographical Origin

Pre / Post Grant Opposition & Revocation

8

Receiving Office - Delhi, Kolkata, Chennai, Mumbai.

Language of Filing - English or Hindi Forms (2nd Schedule)

1 (Application for Grant of Patent), Proof of Right

2 (Complete or Provisional Appln), 3 (Statement & Undertaking u/s 8 ), 5 (Declaration As to Inventorship) & 26 (Power of Attorney) 18 (Request for Examination)

Fees (1st Schedule) (Section 142 r/w Rule 7)

Ratio of Fees – 1 : 4 (Natural Person : Others)

9

Publication of Patent Application– Section 11-A r/w Rule 24– Early Publication: Section 11 (A)(ii) r/w Rule 24 in

Form 9 Request for Examination– Section 11-B r/w Rule 24-B in Form 18 – Express Examination - entered through PCT

routeExamination of Application – Section 12 & Section 13 r/w Rule 24-B(2) & (3)

Time for putting appln in order for grant– Section 21 r/w Rule 24-B(4)

Grant or Refuse or Abandoned– Section 43, Section 15– Opposition / Revocation

10

Permission For Making Application Outside India

Section 39 r/w Rule 71(1) in Form 25.Residents not to apply for patents outside

India without prior permission.Make application after 6 weeks have

elapsed. Invention relates to defence purpose or

atomic energy.

Controller shall dispose after 21 days from the date of filing such request.

11

12

Patent Prosecution In India

Optional:Early Publication in Form 9 + Request for Examination in Form 18

13

FeesRatio of Fees – 1:4 (Natural Person:Other than Natural Person)A few examples : Natural Others

person

Patent Application- Form 1 & 2 Rs.1000 Rs.4000Request for early publication Rs.2500 Rs.10000

(optional)Request for Examination Rs.2500 Rs.10000Maintenance Fee (each year)3rd to 6th years    Rs.500 Rs.20007th to 10th years Rs.1500 Rs.600011th to 15th years Rs.3000 Rs.1200016th to 20th years Rs.5000 Rs.20000

14

Types Of Patent

Ordinary Application – Complete Appln Convention Application (Section 135 -

Section 139 r/w Rule 17 to Rule 23)

PCT International Application (-do-)

PCT National Phase Application

Patent of Addition (Section 54 – Section 56)

Divisional Application (Section 16)

15

Patent Filing StrategiesOnly National Filing

Only Convention filing (US / EU etc.)

National + Convention Country

National + US + EU

Only PCT

National + PCT

Any or all 146 States as on 14th June, 2012

Any or all 146 States

Patents RIGHTS ARE TERRITORIALPatents RIGHTS ARE TERRITORIAL

16

Delhi Chennai

Kolkata Mumbai

Indian Patent Offices

17

Hierarchical Chart Of The Patent Office

18

Filing PCT International Application

19

Patent Cooperation TreatyPCT stands for Patent Cooperation Treaty.Multilateral TreatyConcluded in Washington in 1970Entered into force in 1978Administered by IB of the WIPOHeadquarters e in Geneva, Switzerland.Started with 18 Contracting States (146

states to date) Filing PCT does not lead to grant of

International Patents

20

Benefits of Filing PCT Int’l Appln1. Provides a unified procedure for filing patent

applications, 2. Leads to International Publication,3. Simple, Efficient and Cost-effective way,4. Facilitates the obtaining of protection for

inventions in any of the member countries,5. Reserves the Patent Rights in Member

States to PCT,6. The International Search Report received at

the 16th month enables the inventor to evaluate chances of patent protection in member states,

7. Upto 20/30/31 months to decide in which countries to pursue National Patent Protection.

21

Receiving Office (RO)International Applications may be filed at

National Patent Office or International Bureau (IB) of WIPO

In India, RO are Mumbai or Chennai or Delhi or Kolkata

22

PCT Requirements1. Prescribed language (Arabic, Chinese, English,

French, German, Japanese, Korean, Portuguese, Russian and Spanish);

2. An International Application (Triplicate) shall contain,• PCT Request Form (RO-101) and• Complete Specification (Non-Provisional

Application) (includes description, one or more claims, one or more drawings (where required), and an abstract)

3. Payment of the prescribed fees.4. Power of Attorney (if required)5. At least one Applicant should be National (Domicile)

or Resident

23

ISAChoose Only One International Searching

Authority (ISA)International Search Fees

(depending upon ISA selected)As of 01/07/2012

ISA Search Fee (US$.)AT (Austria) 2370AU (Australia) 2254CN (China) 329EP (Europe) 2426SE (Sweden) 2426US (USA) 2080

24

PCT Filing System

3022

National phase III

25

International Search Authority

International Search Report contains: Special category of cited documents (A, P, X,

Y…..) Technical areas searched List of relevant prior art Reasons for search not carried out (if

applicable)

Written Opinion contains:– Preliminary opinion on

Novelty Non-obviousness Industrial applicability

26

PCT Lack of Unity of Invention

Only first claim is searched. Specify reasons for lack of unity of invention. Invite payment of additional search fees for the

rest of the claims. Applicant may pay any or all additional fees with or

without a protest (challenging lack of unity of invention).

Failure to pay additional fees will not affect the application; additional inventions will neither be searched nor a written opinion will be issued.

No provisions for filing divisional applications during the international phase.

27

Lack of Unity of Invention Protest before ISA

ISA reviews the protest filed with or without additional fees for search

If ISA concludes that the lack of unity of invention is not justified, the additional search fees are refunded

If ISA concludes that the lack of unity of invention is justified, the protest is denied with detailed reasons

The applicant may request that the text of the protest and the ISA’s decision be notified to the designated offices.

28

Comparison of Chapter I and Chapter II AmendmentsChapter I (Article 19)

Claim amendments only

Filed in response to ISR and Written Opinion of ISA

filed with IB (not ISA)

Published No official fees

Chapter II (Article 34) Description,

drawings and claims can be amended

Filed with the demand or during IPEA examination

filed with IPEANot PublishedOfficial fees

payable

29

PCT- SAFEAdvantagesInstant filing receipt when filed onlineReduced filing costs (printing, copying, mailing and paralegal labor charges)Reduced filing feesReduced paper usage (save a tree!)Filing in XML format renders data better searchable and re-usableAll related software available free of cost from WIPO

30

Thank You!