International patent requirements procedure under patent co-operation treaty system and costs &rights and responsibility of patentee

1. INTERNATIONAL PATENT REQUIREMENTS
PROCEDURE UNDER PCT SYSTEM AND COSTS
AND
RIGHTS AND RESPONSIBILITIES OF A PATENTEE
UNDER THE GUIDENCE OF PRESENTED BY
Mrs.Dr.V.NARMADA GUNTI.SHASHIKANTH
M.Pharm, Ph.D. M.PHARMACY 1ST YEAR
ASSISTANT PROFESSOR PHARMACEUTICAL ANALYSIS
DEPARTMENT OF PHARMACY
UNIVERSITY COLLEGE OF TECHNOLOGY,OU

2. CONTENTS
 Introduction
 Intellectual property Rights
 Patent and types
 Patent co-operation treaty
 Conditions for grant of patent
 Documents required for a pct international application filing
 Phases of pct application
 Second option of foreign filings –paris convention application
 Third option for foreign filings-direct filing outside india
 Costs for international patenting
 Rights of patentees
 Rights in respect of patent granted
 DUTIES OF PATENTEE
 References

3. 1.INTRODUCTION:
1.1 INTELLECTUAL PROPERTY IS NOTHING BUT YOUR IDEA OR SKILL
Your Idea May Be :
New molecule
New product (cell ,tablet,laptop,computer)
New dosage form( Tablet,Capsule,Patch,Suspension,Ointment)
New method of manufacture
New symbol
New Design of Product (new Design of Car,Chair,New Packing Style)
Poem,
Written matter (Book)
Story(Film Story)
New Name (Brand Name –(SONY,DELL)
Any Thing New….New……New…..new…..

4. 1.2 INTELLECTUAL PROPERTY
• Definition: intellectual property is a property that arises from thes human intellect.
It is a product of human creation.
• it is an intangible( cannot touch )from of property.
• It is a personal property.
• Intellectual Property Rights(IPR) is defined as a right given over a creation of the mind and to exclusively
Exploit it for a certain period of time.
• It is given in the form of certificate.
• The person who got ‘right’ is known as ‘patentee’’, ‘Innovator’ or ‘IPR holder.’

5. I have an innovation ….How do I protect in the market???
if your idea is….. Go for……IPR Tools….
• New product Product patent
• New process Process patent
• Written matter/paragraph/ Copy rights
film story/song/poem
• New symbol/logo/film Trade mark
name etc…
• New design of equipment Industrial design

6. 1.3 DEFINATION OF PATENT:
• Patent is an exclusive right granted by a country to the owner of an invention to make,use,manufacture,
Sale,marketing,or to export his invention ,under certain condition stipulated in the law.
• Patent is granted in the form of certificate for disclosing his invention.
• Patent is valid for limited period of time.
(approximately 20 years).
1.4 TYPES OF PATENTS:
There are three types of patents are there:
1. Utility patents: may be granted to anyone who invents or discovers any new and useful process, machines,
article of manufacture, or composition of matter, or any new and useful improvement there of;
2. design patents: may be granted to anyone who invents a new original and ornamental design for an article of
manufacture; and
3. Plant patents: may be granted to anyone who invents or discovers and asexually reproduces any distinct and
new variety of plant.

8. 1.5 Pententable subject matter
• Human necessities: Foodstuff, Tobacco, personal or domestic article, health and
amusement.
• Performing operations and transporting: Separating,mixing,shaping ,printing and
transporting.
• Chemistry and metallurgy.
• Textiles and paper.
Items not patentable
• Genes,DNA sequances
• Invention causing disruption of public damage & environment damage(Ak 47 guns,Bombs)

9. 1.6 Items not patentable
• Discovery of scientific principles
• Invention injurious to health
• Method of agricultural & horticulture
• Atomic energy

10. 1.7 Conditions for grant of a patent
 PatentApplication Must be Filed
 Invention must be New (Novel) and Involve on Invention Step (Non Obvious)
 Invention must be “IndustrialApplicable”
drawing),sufficiently to enable performance of the Inventions
 Application must define the patent right sought in patent claims that fairly based on what is
described
Who can file International patent Application?

11. 2.0 PATENT CO-OPERATION TREATY
 International patent law treaty administered by world intellectual property
organization (WIPO) in geneva, switzerland, concluded in 1970.
 Legal Agreement between different countries.153 contracting members are part of
WIPO.
 Patent Application filed under the PCT is called International or PCT Application.
OBJECTIVE
Streamline initial filing process, making it simple and affordable to file patent
application in member countries

12. 2.1 DOCUMENTS REQUIRED FOR A PCT
INTERNATIONAL APPLICATION FILING
 PCT Request (Form PCT/RO/101)
 A standard form generally used to meet some of the requirements set forth in PCT Article
11.
 When filing via EFS-Web, the request may be filed in one of two different formats; 1.
Conventional format and 2. PCT-Safe Easy format.
1) The request may be filed via EFS-web in conventional format by uploading the pdf format
of the request (Form PCT/RO/101, which includes the last sheet-EFS-web ).
2) Alternatively, the request may be filed via EFS-Web in PCT-Safe easy format by uploading
a zip file containing the request which is created using the PCT-safe easy mode software.
NOTE : The request does not need to be signed in order to obtain an international filing date .
The receiving office will invite the applicant to correct the defect by sending an invitation
to correct.

13. 2.2 Documents which are a part of international
application and where applicable, must be
included with the initial application documents
 a draft description of the invention.
 an indication of the state of the art on which the invention was
based.
 draft drawings, if needed, or instructions for SIB to prepare
drawings.
 name and address of applicant.
 declaration of the inventor.

15. 2.3 PHASES OF PCTAPPLICATION
INTERNATIONAL PRELIMINARY EXAMINATION (Optional)
INTERNATIONAL PUBLICATION
GENERA
TION OF INTERNA
TIONAL SEARCH REPORTAND WRITTEN OPINION
FILING OF PCTAPPLICA
TION

16. 2.4 FILING OF PCTAPPLICATION
 Within 12 months from local application i.e indian filing date
 With National Patent Office (india) or WIPO-Receiving
Office.
 Filed in one language only
 One set of formalities(POA,Priority Document(as DAS code)
&Assignment
 Election of international searching authority (ISA)

17. ELECTION OF ISA
🠶 T
he competent ISA’s are as following:
1. INDIAN PATENT
OFFICE
FEE USD 34
2. AUSTRALIAN PATENT
OFFICE
FEE USD 2091
3. AUSTRIAN PATENT
OFFICE
FEE USD 1580
4. EUROPEAN PATENT
OFFICE
FEE USD 2091
5. CHINESE
INTELLECTUAL
PROPERTYOFFICE
FEE USD 309
6. UNITED STATES
PATENT &
TRADEMARK OFFICE
FEE USD 545
7. SWEDISH PATENT
OFFICE
FEE USD 2091

18. 2. INTERNATIONAL SEARCH REPORT(ISR)AND WRITTEN
OPINION
 ISR with opinion issued within 4 months from PCT filing date
 Statement on Novelty and inventive step.
 Written opinion on whether the invention is patentable; list of cited prior
art
(patent /Non-patent literature)
 Helps applicant to identify whether it is worth while to file national
phase application.
 Applicant may make amendments in the PCT specification
in view of ISR

19. 3. INTERNATIONALPUBLICATION
 Gets published within 18 months from the priority date on
WIPO website.
 World wide publicity of your invention, inventor and
company.

20. 4. INTERNATIONALPRELIMINARY EXAMINATION
 Optional
 To be filed within 22 months from the priority date and 3 months from the
issuance of ISR.
 International Preliminary Examining Authority carries out the examination
and issues a report which is IPER.
 Applicant may make amendments in the PCT specification in view of IPER.

23. Last Step : National Phase Entry ( Foreign Filings)
 To be filed within 30/31 months from earliest priority date with
National office Eg
: USPTO/JPO
 Patent Application shall be filed through local patent
attorney.Translated copy to be provided in case of non- english
filing country ex: china, Japan
 Grant or refusal of patent will be decided by the respective
country’s patent office after conducting proper search/examination.

24. SECOND OPTION OF FOREIGN FILINGS –PARIS CONVENTION
APPLICATION
 The Applicant files an application in home country i.e FirstApplication in India.
 Within 12 months, the applicant can file application in other countries like US,
EP,CN, JP. Claiming priority from the applications filed in the home country
through paris convention route.
 No need to wait for longer period of foreign filings. One can immediately file the
application in other countries.

25. THIRD OPTION FOR FOREIGN FILINGS-DIRECT FILING OUTSIDE INDIA
 An applicant can file a patent application outside india directly i.e without filing in
india.
 Foreign filling permission needs to be filled at the indian patent office on form
25
 After approval applicant can file the application outside india.
4. COSTS PROCEDURE
HOW MUCH DOES IT COST TO GET PATENT IN INDIA?
 There are two elements for cost of getting patent:
 1.The Government fees for Form requests
 2. Professional charges for patent professional patent agent/attorney
 the cost to file a patent is approximately Rs. 55,000 to 1.5 lac
This is assuming that you have patent agent/professional doing novelty search,
patent writing, patent filling and prosecution.

26. Step 1 : Invention Disclosure
 Write down the invention with as much details as possible
 The area and nature of the invention
 Description of the invention what it does
 How does it work
 Similar existing solutions/ products like your invention
 Advantages of your invention over existing solutions including diagrams, sketches .
o Step 2 : Non DisclosureAgreement
 When discussing with patent professionals, supervisors you need to protect the confidentiality or
it by way of signing a NDA by parties to whom you are disclosing the invention.
o Step 3: Is my invention patentable?
 Finding out whether your inventions meets all patentability criteria as per indian patent act?
That is ,Novelty, Non-obvious, Industrial application
 Time:7 days, fees: 12,000 rs to 20,000

27. Step 4: Write and filing patent application
 The patent drafting /patent writing is a specialised skill and requires years of practice
and knowledge of patent law as well as the technical knowledge hence called techno-legal.
 There are two types of patent filing
1. Provisional patent application:
 In case you are at very early stage in the research and development for your invention, It
gives following benefits:
 Secures filling date, priority date12 months of time to file complete specifications
 Low cost
🠶 Time : 7 days,cost:from 15,000 to 25,000; Government fees for application of patent :
Rs.1600.
2.Complete patent application
🠶 The complete patent application includes entire description of the invention, diagrams,
embodiments and claims.
🠶 Time : 15 days; cost : from Rs. 25,000 to 40,000 ; Government fees for application of
patent : Rs.1600.

28. Step 5: Publication of the application
 Application is published after 18 months from the filing date.To speed up this process,
optionally an early publications request can be made if you do not wish to wait till the
expiry of 18 months from the date of filing for publishing of patent application.
Step 6 : Request for examination
 The patent application is examined at patent office only after receiving request for
examination that is RFE .Ideally the RFE is filed along with application for the patent. The
official filing fees for which is Rs. 4000 for individual inventor.
 Upon receiving this request the controller gives your application to a patent examiner who
examines the patent application with the different patentability criteria.

29. Step 7: Respond to Objection in examination report ( office action)
 Majority of patent applicants will receive some type of objections based on
examination report. The best thing to do it analyse the examination report with
patent professional and creating a response to the objections raised in the report.
Step 8: Grant of patent
 The application would be placed in order for grant once it is found to be meeting
all patentability requirements.

30. 4. RIGHTS OF PATENTEES:
1. Rights to exploite the patent
 The patentee has aright to prevent third parties,from exploiting the patented invention.
2. Right to grant license.
 The patentee has a power to assign rights or grant license.
3. Rights to surrender.
 The patentee is given the right to surrender the patent by giving notice in prescribed manner to the
controller.
4. Rights to sue for infringement.
 A patentee is given in the rights to institute proceeding for infringement of the patent in the district court.

31. Exclusive rights of
Patentee
agent
licence etc
Make
Use
Exercise
Sell
Distribute
import
The invention in India
5. Rights in respect of patent granted
 In the context, it may be mentioned that the 2002 Amendment Act has amended section 48 of
the principal act by deleting the references to the ‘patents granted before the patents act,1970”
and also to ‘agents and licencees’.
 In case of conditions relating to the exploitation of patents mentioned under section 48 of the
act, the graphical representation may be as follows.

32. 2 Rights granted to patentees in respect of patents granted under the act {section 48 etc.}
Exclusive rights of patentee
In case subject matter of patent is a
product
in case subject matter of patent is a process
X X
 Exclusive right to use
 Exclusive right to offer for sale
 Exclusive right to sell
 Exclusive right to import; or
 Exclusive right to make that product
in India & to prevent third parties
from doing any of the above acts,
without consent
 Exclusive right to use
 Exclusive right to offer for sale
 Exclusive right to sell
 Exclusive right to import the
product obtained directly by that
process in India & to prevent third
parties from doing any of the above
acts without consent

33.  Rights to assign and licence: A patentee is vested with the power to assign, grant licences or to deal
with the patent for a consideration. This is in a case where the patentee himself is not willing to work the
patent. If there are more than one owner of the patent, the co-owner can assign his share of the patent or
grant licences in respect thereof, provided the other co-owner consent and permitted by the controller.
Rights before sealing:
The patentee enjoyed certain rights even before the sealing of the patent also, under section 24 of the
Act. Under this provision, on and from the date of advertisement of the acceptance of a complete
specification and until the date of sealing of patent, the applicant will be entitled to the like privileges
and rights as if a patent for the invention had been sealed on the date of advertisement of acceptance of
the complete specification. However, the applicant will not be entitled to institute any legal proceedings
for infringement until the patent has been sealed.

34. 6. DUTIES OF PATENTEE:
• Duty to disclose the patent : The petitioner must reveal the innovation to society, according to
section 8 of the patent act of 1970.
• Duty to request for examination.
• Duty to respond to objections.
• Duty to clear all objections.
• Duty to pay statutory fees.

35. REFERENCES :
Sagar Kishor Savale and Varsha Kishor Savale,international patenting, world journal of pharmacy
and pharmaceutical sciences , volume 5, issue 6, pg.no:2532.
 https://www.wipo.int/pct/en/
 Patent attorney world wide.com
 Application filing wiposite
 https://en.wikipedia.org/wiki/Patent_Cooperation_Treaty
 https://www.jpo.go.jp/e/system/patent/pct/index.html
 https://www.uspto.gov/patents/apply/applying-online/about-efs-web
 A Book of intellectual property rights and the law by DR. G.B. Reddy’s. pg.no. 219-226.
 Rights and obligation of patentee: a negative right by Abhinav gaur, research associate.
 N.R. Subbaram, what everyone should know about patents, 2nd edition, pharma book syndicate,
17:104(2005)
 Guide to patent information for users in India, patent information system, Nagpur, 7:27
 Mark J. Nulle, are you protected? Some basics of patent, birch, Stewart, kolasch, and birch LLP sept
2003.