PATENT FILLING PROCESS CASES

1. PATENT FILLING PROCESSCASES NATIONALPCT Prepared by: Prof. Anil K. Gupta, Joshi, A. and Chandak V. S. 2005.

2. 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)

3. PLACE OF FILLING PATENT APPLICATIONS IN INDIA Patents :Regional offices Western region Mumbai Southern Chenai Northern New Delhi East Kolkotta  GI Chennai Trademark All regional offices plus the Trademark applications can be submitted at respective TM office in different states

4. 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)

6. 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)

7. Form 1 THE 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

8. Form – 2 THE PATENTS ACT, 1970 PROVISIONALSPECIFICATION / Complete Specification (SECTION 10) “………………………………………………………………….”. …………………………………. …………………………., …………………..,Gujarat State, India An 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: -

9. FORM 3 THE PATENTS ACT, 1970 (39 of 1970) Name of the country Date of Appl. Application No. Status of the application Date of Publication Date of Grant. 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 : (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 Patents The Patent Office ***In case of foreign application /sec 8

10. (STAMP PAPER Rs.………….depending up the stamp duty) Form 26 The Patents Act 1970 Power 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 …………………… (……………………………….) To The Controller of Patents, Patent Office at:

11. FEE Structure (IPO) Sr. Process As per the ordinance 2005 Fees (INR) Individual Entity 1. 1000 100/page 200/claim 4000 400/page 800/claim 2. Substantial examination 2500 10000 3. Patent Renewal fees 1-5 yrs 6-10 yrs 11-15 yrs 16-20 yrs 500 1500 3000 5000 2000 6000 12000 20000 • Filling application (Max.30 pages) Total (Approx.) 49000 196000 • Exceeding 30 pages • Exceeding 10 claims

12. 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

13. PCT APPLICATION

14. HOW TO MAKE AN PCT APPLICATION PCT application may be made directly to International Bureau (IB) or Receiving office (RO) as per the convenience of the applicant. orPCT 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.

15. PCT • Filing Of International Application to Receiving office and /or International Bureau: • Elements of International Application: • ØRequest • ØDescription • ØClaim / claims • ØOne or more drawings wherever required • Abstract

16. ABBREVATIONS RO : Receiving Office IA : International Application IB : International Bureau ISA : International search Authority ISR : International Search Report WO : Written Opinion IPE : International Preliminary Examination IPEA : International Preliminary Examining Authority IPRP : International Preliminary Report on Patenability DO : Designated office EO : Elected office

18. Steps involved after making the application: ØEstablishment of the International Search Report (31 months from the date of filing / priority whichever of the following expires last) ØPublication of International Application along with search report. (18 months) ØCommunication of the search report by IB to Regional office on request. Optional International preliminary Search report by one of the International Search Authority

19. National Phase II(PCT) Entering of National Phase (Regional Application) ØFiling of the regional fee where the applicant wants to obtain patent. ØFurnished translation of the document wherever required and represent by Attorney ØAll local compliance should be made as per the national level application once the PCT application enter the phase II.

20. 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.

21. PCT FEE STRUCTURE

22. TRADITIONAL v/s PCT

23. THE END

24. 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

25. 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

26. Patenting Procedure • Regular Patent Application • Filing • Publication • Examination: office action • Amendment: modified claims or a defense of claims • Abandonment • Continuation in Part • Maintenance

27. 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

28. Filing Mechanisms • PCT Filing: centralized procedure for convention countries • EPO Filing: centralized procedure for Western European countries • National patent office: for each country individually

29. 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

30. 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