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Patent Filing

Patent Filing

Provisional Filing

  • A provisional application can be filed for an invention for which a substantial amount of progress has been made, but is not yet complete.
  • A provisional application reserves a priority date for a corresponding complete application filed within 12 months of the filing of the provisional application.
  • One or more provisional applications can be filed corresponding to a complete application, with the date of filing of the earliest provisional being deemed as the date of filing of the corresponding complete application.
  • A provisional application is never examined and is deemed to be abandoned if no corresponding complete application is filed within the period of 12 months from the date of filing of the provisional application.
  • A provisional application may however be post-dated to a date no later than six months from the date of filing, if so requested within a non-extendable period of 12 months from the date of filing.

Complete Filing

  • The complete specification is a techno-legal document illustrating and precisely claiming the concept in the document. Grant of Patent, Enforceability of patent and Licensing of patent solely depends on the quality of content of the complete specification. A poorly drafted complete specification may give others your invention on platter to enjoy free of cost, whereas well thought drafted complete specification empower you to restrict others from using your concept without your consent.
  • Complete specification must be filed within 12 months from the date of filing of provisional application

PCT Filing

A PCT international application may be filed by an Indian applicant after receiving foreign filing permission under section 39 of the Patents Act 1970, or after six weeks and within twelve months of the filing of a patent application in India.

Receiving Office

  • A PCT international application may be filed in India as either Indian Patent Office or International Bureau as receiving office.
  • A PCT international application may be made in any one of the languages accepted by the receiving office.
  • For Indian Patent Office as receiving office, the PCT international application may be filed in Hindi or English. However, the PCT international application in Hindi should be filed with a verified English translation.

Contents of the PCT international Application

  • A request (Form RO101) made in paper or electronic form.
  • A description.
  • One or more claims
  • One or more drawings (if required)
  • An abstract.

Contents of the request

  • A petition that the PCT international application be processed according to the PCT.
  • A title of the invention.
  • Declaration of inventorship.
  • Details of priority.
  • Designation of jurisdictions in which the applicant wishes to seek protection.
  • Indication of a competent International Search Authority (ISA).

List of competent ISAs for an Indian Applicant

  • Indian Patent Office (IN)
  • Austrian Patent Office (AT)
  • Australian Patent Office (AU)
  • European Patent Office (EP)
  • China Intellectual Property Office (CN)
  • United States Patent and Trademark Office (US)
  • Swedish Patent Office (SE)

Fee

A PCT international application is accompanied generally accompanied by three types of fee:

  • An international filing fee
  • A search fee
  • A transmittal fee

Detailed schedule of fee can be found on WIPO’s website as given by link below.

 (https://www.wipo.int/export/sites/www/pct/en/fees.pdf)

Convention Filing

An application filed by an applicant in the Patent Office, claiming priority date based on a similar application filed in one of the convention countries is referred as convention application. The applicant is required to file the application in the Patent Office (India) within 12 months from the date of earliest priority application in the convention country.

Every convention application should contain:

  1. A complete specification
  2. An abstract
  3. Date of filing of the first foreign patent application and the corresponding convention country.
  4. Declaration that no other foreign patent application was filed before the date, as provided, of the first foreign patent application.
  5. Any claims in respect to developments/additions to the invention after the filing of the last foreign patent application.
  6. Any other document (including the priority document), in respect of one or more foreign patent applications filed by the applicant in Patent Office of the convention countries, should be provided within 3 months from the date of communication by the controller. However, if the document is in a foreign language other than English, a verified English translation of the document should be provided.

A set of forms is also required to be filed at the time of filing only by electronic transmission duly authenticated, including scanned copies of original documents. The original documents should be submitted to the Patent Office within 15 days from the date of filing or submitting that document electronically. Form-1, form-2, form-3, form-5 must be filed at the time of filing the patent application. Form-9, form-18 and form 26 are optional at the time of filing the complete specification and may be filed after filing the complete application. Form-3 is filed when the patent application is filed in other countries also for the same invention and form-26 is filed when the patent application is filed through an agent.

Forms to be filed:

Form 1: Application for grant of patent

Form 2: Provisional/ Complete Specification

Form 3: Statement and undertaking under section 8

Form 5: Declaration as to inventorship

Form 18: Request/ express request for examination of application for patent

Form 26: Form of authorization of a patent agent/ or any person in a matter or a proceeding under the act

One application may be made by any or all of the persons (applicant, assignee or legal representative of the applicant) for two or more applications (cognate) in one or more convention countries, within twelve months from the date on which the earlier or earliest of those applications was made.

The fee for filing of the convention application varies as per requested services and status of the applicant (natural individual, start-up, small entity, other than small entity). Further, 10% additional fee is payable when the patent application is filed through physical mode i.e. in hard copy format. The detailed breakup of the fee can be obtained from a fee schedule published by the Patent Office

Multi Country Filing

It is possible to “extend” the protection claimed in your invention (subject matter of the patent application filed at Indian Patent Office) in other jurisdictions, such as the USA, Europe, Australia, Japan, China, Korea etc. and/or any other jurisdiction of interest. The options which are available to you and may be explored are as follows:

A. Convention application

India is a signatory to the Paris Convention since 1998 and any application filed under the (Indian) Patents Act (the Act) may be considered as “basic application”. A convention application may be made in a convention country (there are 176 countries which have acceded to the Paris Convention) on the basis of a basic application within twelve months. The convention application enjoys the priority date of the complete specification of the basic application. A convention application receives the same treatment as if filed by a national of that particular country. In case a patent is granted to the convention application, the patentee has the same protection and the legal remedies against any infringement as provided to a national of that particular country.

B.  Patent Cooperation Treaty (PCT) application

The PCT is an international patent law treaty which came into force in 1970. India became a member of this treaty in 1998 (PCT has 150 members). The purpose of PCT is to provide an integrated platform for filing patent application/s in each of its member state/s by filing a single application (international or PCT application). After filing a patent application in India, before the expiry of 12 months from the date of filing, a PCT application can be filed with the International Bureau (IB) of World Intellectual Property Organization (WIPO) or at the Indian Patent Office as Receiving Office. After filing an international application, the applicant has to file national or regional application/s in member state/s within 30/31 months from the date of priority. Each national or regional application is processed and examined by the local patent office in accordance with the respective patent laws. 

It is pertinent to mention that the PCT application does not provide “international patent protection”, as there is no such provision. 

C. Preferred course ofaction 

The PCT application provides additional time (18/19 months) to the applicant to deliberate over the countries of interest. The convention application is preferred in case the claimed invention is desired to be protected in up to 5 countries as it is cost effective. Of course, convention applications are useful if the applicant has already shortlisted the countries of interest. Irrespective of the route adopted to extend protection, filing of complete specification is a prerequisite.

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