This presentation outline the patent prosecution in INDIA, U.S & Europe

1. THE PATENT
PROSECUTION
SYSTEM OF INDIA, US
AND EUROPE
ABHISHEK MISHRA
ID:2016SA84025
M.TECH-PHARMACEUTICAL OPERATIONS &
MANAGEMENT

2. Introduction
In the legal world, prosecution generally refers to the plaintiff's side of litigation. However, patent
prosecution is the process of writing and filing patent application and pursuing protection for the
patent application with the patent office.
Broadly, patent prosecution can be split into pre-grant prosecution, which involves negotiation with
a patent office for the grant of a patent, and post-grant prosecution, which involves issues such as
post-grant amendment and opposition.
Patent prosecution is distinct from patent litigation, which describes legal action relating to
the infringement of patents.

4. INDIAN PATENT PROSECUTION
SYSTEM
Step 1: Filing of Patent Application
Step 2: Publication
Step 3: Opposition (if any)
Step 4: Request for Examination
Step 5: First Examination Report
Step 7: Grant of Patent
8. Post grant Opposition

5. Criteria for Patentability across
different Territories
INDIAN PATENT OFFICE
(IPO)
• Patent must be non-obvious & novel
• Before filing the patent can not be disclosed
to public
• Only invention, process & new product
(composition) which has industrial
application can be patented
• Patent will not granted for way of doing
some e.g. particular way of doing business
can not be patented
United States Patent Office
(USPTO)
• Patent must be non-obvious & novel
• Before filing patent can be disclosed for
public comment but patent must be filed
with in 12 months of public disclosure
• Only invention, process & new product
(composition) which has industrial
application can be patented
• Way doing something for e.g. particular way
of doing business can also be patented
European Patent Office (EPO)
• Patent must be non-obvious & novel
• Can not be disclosed publicly before filing
the patent, if disclosed to public before
patent filing patent will not be granted
• Only invention, process & new product
(composition) which has industrial
application can be patented
• Patent not granted for way of doing
something doe e.g. particular way of doing
business can not be patented

6. Patent Prosecution SystemIPO(IndianPatentOffice)
• Step 1
• Filing Patent application
• Must be novel & non
obvious
• Step 2
• Publication after 18 months
or request for early
publication
• Step 3
• Pre-grant Opposition if any
• 3 months from publication
or before grant
USPTO(UnitedStates
PatentOffice)
• Step 1
• Determine type of Patent
• Design or Plant or Utility
patent
• Step 2
• Filing of application
• Provision or nonprovisional
• Step 3
• Determine application
processing fee
• Apply for customer no. &
digital certificate
EPO(EuropeanPatent
Office)
• Step 1
• Filing Patent application
• English, French & German
official language
• Step 2
• Filing & formalities
examination
• If claims not filed file with in
2 months
• Step 3
• Search together with a
preliminary opinion on
patentability
• Search Report to be made

7. Patent Prosecution System..Cont..IPO(IndianPatentOffice)
• Step 4
• Request for examination
• No request no examination
• Must be with in 48 months
• Step 5
• First examination report
• Patent examiner issues FER
• Step 6
• Amendment of objection by
applicant
• File a response & overcome
objection with 12 months
USPTO(UnitedStates
PatentOffice)
• Step 4
• USPTO examines application
• Check application status
• Step 5
• Applicant file replies
• Appeal as necessary
• Step 6
• If objection overcome
USPTO send notices for fee
& allowance
EPO(EuropeanPatent
Office)
• Step 4
• Publication of application &
Search report
• Generally published after 18
months
• Step 5
• Substantive examination
• Must be requested with in 6
months from publication
• Step 6
• Grant of European Patent
• Granted only if translation
available in all three official
languages & fees are paid

8. Patent Prosecution System..Cont..IPO(IndianPatentOffice)
• Step 7
• Grant of Patent
• Publication of Grant
• Step 8
• Post grant opposition
• Within 1 year after grant
• Step 9
• Renewal fees
• Must be paid to keep patent
USPTO(UnitedStates
PatentOffice)
• Step 7
• Pay issue fee
• Pay publication fee
• Step 8
• USPTO grants patent
• Within 1 year after grant
• Step 9
• Maintenance fees
• Must be paid to keep patent
EPO(EuropeanPatent
Office)
• Step 7
• Validation in the designated
states
• Individual contracting states
nation patents
• Step 8
• Publication of the patent
• Opposition filing must be
done if any with in9 months
from publishing
• Step 9
• Opposition proceeding if any
• Limitation or revocation
proceedings if any