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)

THANK YOUFor further information contact

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