Patent Procedure and Filing Strategy

516 views

Published on

Patent Procedure and Filing Strategy

Published in: Law
0 Comments
2 Likes
Statistics
Notes
  • Be the first to comment

No Downloads
Views
Total views
516
On SlideShare
0
From Embeds
0
Number of Embeds
12
Actions
Shares
0
Downloads
54
Comments
0
Likes
2
Embeds 0
No embeds

No notes for slide

Patent Procedure and Filing Strategy

  1. 1. By Vikram Pratap Singh Thakur © 2010 BananaIP Counsels
  2. 2.  Indian Patent procedure  PCT procedure 2
  3. 3. 3
  4. 4.  Place of application  Persons entitled to apply  Type of specifications  Contents of application (provisional or complete)  Types of application  Priority date  Documents 4
  5. 5. Patent offices Territorial jurisdiction Mumbai The states of Gujarat, Maharashtra, Madhya Pradesh, Goa, Chhattisgarh, The Union Territories of Daman and Diu and Dadra and Nagar Haveli. Delhi The states of Haryana, Himachal Pradesh, Jammu and Kashmir, Punjab, Rajasthan, Uttar Pradesh, Uttranchal, National capital territory of Delhi and the union territory of Chandigarh. Chennai The states of Andhra Pradesh, Karnataka , Kerala, Tamil Nadu and the union territories of Pondicherry and Lakshadweep. Kolkata (head office) Rest of India 5
  6. 6.  True and first inventor of the invention  Assignee  Legal representative 6
  7. 7.  Provisional specification  Describe nature of invention  Contain description of essential features  claims not necessary  details of the manner in which it to be performed not necessary  Complete specification  Include details 7
  8. 8.  Priority  Disclose to third party for funding  Explore commercial feasibility  Decide to continue the application  Decide countries of interest 8
  9. 9.  Title (P)  Abstract (P)  Written Description (P)  Drawings (where necessary)  Sample or Model (if required by the examiner)  Enablement and Best Mode  Claims  Deposit (Microorganisms) 9
  10. 10.  Ordinary application  Convention application  PCT international application  PCT National phase application  Application for Patent of addition  DivisionalApplication 10
  11. 11.  Date of first filing  Date of foreign filing if foreign application filed earlier  Date of PCT international application  Concept of priority date 11
  12. 12.  Form 1 - Application for the grant of patent.  Form 2 - Provisional or Complete Specification.  Form 3 - Statement and undertaking by the applicant.  Form 5 - Declaration as to inventorship.  Form 26 - Authorization of patent agent or any other person. (if filed through an agent)  Priority document details have to be filed for a Convention application.  Proof of right if the application is made by the assignee.  Death Certificate of deceased - Legal Representative. 12
  13. 13.  Date of publication  Open for public inspection  Rights of patentee start  Circumstances when publication not done  Secrecy directions  Abandoned – non filing of complete spec  Withdrawn  Early publication  Rights start early 13
  14. 14. 14
  15. 15.  Request for examination  Formal examination  verifying the propriety and correctness of all documents  verifying the patentability  First Examination Report (FER)  Amendments 15
  16. 16.  Order for grant  Grant  Publication  Rights of patentees can be enforced 16
  17. 17. 17
  18. 18.  Pre-grant  Before grant  Post-grant  1 year from grant 18
  19. 19. 19
  20. 20.  Convention route  PatentCooperationTreaty route 20
  21. 21.  Disadvantages  Less Decision time  Translation fee  Attorney fee 21 First filing 0 12 Country filings
  22. 22.  Unified procedure for filing patent applications  Administered byWIPO  Entered into force in 1978 with 18 contracting states  2010 (January) – 142 contracting states  India joined PCT on 07.12.98 22
  23. 23.  Advantages  Time  Cost  Effort 23
  24. 24.  International phase  National phase 24
  25. 25.  Filing – RO or IB  Search report  Patentability opinion  Publication  Preliminary examination  Patentability report 25
  26. 26.  National patent procedure  National fees  Translation if required 26
  27. 27. CONVENTION  No preliminary level help as the filings are directly done in each countries  Filing is costly and involves a lot of effort  Country selection in 12 months PCT  Help from the search report for deciding to continue and spend resources  Saves time and effort  Country selection may vary ordinarily between 20 to 31 months 27
  28. 28. For more information, please visit Website: www.bananaIP.com Blog: www.bananaip.com/sinapse-blog 28© 2010 BananaIP Counsels

×