Processofpatentfilling

STEPS OF PATENT FILLING
Presented by:
Yogeshvar tyagi
M. pharm (pharmaceutics)

28-04-2017 2
A Patent is a set of exclusive rights granted to a
person (patentee) for a period of time in exchange of the
regulated, public disclosure of certain details of a device,
method, procress or composition of matter which is new,
inventive and useful or industrially applicable.
The exclusive Rights granted a patentee is right to
prevent others from making, using, selling, offering to sell
or importing the claimed invention.
Patentee has to comply with Other laws and regulations
to make use or sell the invention themselves.

PATENT FILING PROCEDURE
• 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 6: Amendment of objections by the applicant
• Step 7: Grant of Patent
• Step 8: Renewal fees
28-04-2017 3

Step 1: Filing of Patent Application
1. Covering indicating the list of documents;
2. Application for Grant of Patent in Form 1 [section 7, 54 & 135 and
Rule 20(1)] in duplicate;
3. Complete specification in Form 2 in duplicate [Section 10; Rule 13];
comprising
• Description
• Claims
• Drawing (if any)
• Abstract
4. Statement and Undertaking in Form 3 in duplicate [Section 8; Rule
12];
5. Power of Attorney in Form 26 (in original)(Rule 3.3 (a)(ii));
6. Declaration of Inventorship in Form 5 in duplicate (only in case of
an Indian Application;(Rule
4.17);
7. Certified true copy of the Priority document (in case priority is
claimed);28-04-2017 4

Regional Patent office’s Jurisdiction
28-04-2017 6

[Rule 24] A patent application will be published automatically in the official journal
after expiry of 18 months from date of filing or date of priority of the application
containing title, abstract, application no. and name of applicant[s] and inventor[s].
Request for early publication: [Rule 22A] To expedite the process of grant of patent a
request for publication under Section 11(A)(2) can be made in Form 9 any time after
filing of the application.
Upon such request the application will be published in one month from the date of such
request
Statutory Fees:
Step 2: Publication
28-04-2017 7

Step 3: Opposition (if any)
1. Pre grant Opposition [Section 25(1)]
May be filed within 3 months from the date of publication of the
application [sec 25(1); rule 55(1)] OR
Before the grant of patent, whichever is later
Form and Content [Rule 55(1)]:
There is no prescribed form for pre grant opposition however the representation shall
be in writing and
shall comprise of following particulars:
1. Statement regarding opposition;
2. Evidence regarding opposition; (if any)
3. Request for hearing (Optional).
28-04-2017 8

Procedure:
1. The Controller will consider such Representation only when a request for examination
has been filed
2. The Controller shall forward the Representation to the applicant.
3. On the basis of notice of filing the Representation, the applicant shall file his
Statement and Evidence (if any) in support of his application within three months from
the date of the notice.
4. Either party may request the Controller to give them a chance to be heard.
After considering the representation of the opponent and the response of the applicant
and their supporting evidences (if any) and after hearing both the parties (if hearing is
requested), the Controller shall proceed further simultaneously either rejecting the
representation and granting the patent or accepting the representation and refusing the
grant of patent. Ordinarily within one month from the completion of the above
proceedings. [Rule 55(6)]
Appeal:
An applicant can go for an appeal against the decision of the
Controller. Such an appeal can be file before
the Intellectual Property Appellate Board (IPAB), Chennai28-04-2017 9

2. Post grant Opposition
[Section 25(2)] Upon grant of patent any interested person, based on different
grounds may file a post
grant opposition in Form 7 to the Controller against the grant of patent.
Time limit:
[Section 25(2)] Within one year after the grant of a patent.
Form and Content:
1. Notice of opposition shall be in Form 7 (in duplicate) [Rule 55A];
2. Written Statement setting out nature of the interest (in duplicate) [Rule 57];
3. Evidence regarding opposition;
4. Statutory fees;
5. Request for hearing (Optional).
Statutory Fees:
28-04-2017 10

Procedure:
1. On receipt of notice of opposition, the Controller shall, by order, constitute an Opposition
Board
consisting of three members and nominate one of the members as the Chairman of the Board;
2. A copy of Statement and Evidence together with Notice of Opposition shall be delivered to
the
applicant;
3. If the applicant desires to contest the opposition, he shall leave a Reply Statement setting out
fully
the grounds upon which the opposition is contested and evidence within a period of two months
from the date of receipt of the copy of statement and opponent’s evidence.
4. The opponent may within three month from the date of delivery to him of a copy of
applicant’s
reply; leave Evidence in Reply strictly confined to matters in the applicant’s reply and shall
deliver to
the applicant a copy of such evidence.
5. The Opposition Board shall conduct the examination of the notice of opposition along with
documents filed above and submit a Report with reasons on each ground taken in the notice of
opposition with its joint recommendation within three months from the date on which the
document were forwarded to them.
Hearing: [Rule 62]
Appeal
Statutory Fees:
28-04-2017 11

Step 4: Request for Examination
No Request, No Grant
In Form 18[sec 11B; rules 20(4)(ii) and 24B(1)(i)] in duplicate within
period of 48 months from date of filing or priority.
Statutory Fees:
Step 5: First Examination Report
[Section 12; 24B(3)] After proper examination of patent application on the
criteria of novelty, inventiveness and industrial application, the Patent
Examiner will issue a First Examination Report (FER) and will send
along with the application and specification to the applicant or authorized
agent.
28-04-2017 12

Step 6: Amendment of objections by the applicant
The issued FER give an opportunity to the applicant to file a response and
overcome the objections raised by the Examiner.
Time limit: [Rule 24B(4)(iii)] Within 12 months from the date on which the
First Examination Report has been issued to the applicant.
In case of the unjustified response, the Controller has power to refuse the
grant of patent or amended claim[s] or make order for the Division of
Application [Section 15, 16].
28-04-2017 13

Step 7: Grant of Patent
The Controller will grant the application upon overcome the all
objections raised in the FER.
On the grant of a patent the application will be accorded a number,
called serial number in the series of numbers accorded to patents under
the Indian Patents and Designs Act, 1911(2 of 1911).
Step 8: Renewal fees
1. To keep a patent in force, the renewal fees shall be payable at the expiration of
the second year from the date of the patent or of any succeeding year and the
same shall be remitted to the patent office before the expiration of the second or
the succeeding year.
2. While paying the renewal fee, the number and date of the patent concerned
and the year in respect of which the fee is paid shall be quoted.
3. The annual renewal fees payable in respect of two or more years may be paid
in advance.
28-04-2017 14

The period for payment of renewal fees may be extended to a period but not
more than six months if the request for extension in Form 4 with fees
Statutory Fees:
Infringement Proceedings
The patentee may file an action for patent infringement in either a District
Court or a High Court
If a patentee is successful in proving its case of patent infringement, and if
the defendant does not comply with the judgment, a petition for contempt of
court can be filed. Contempt of court is a criminal offense, while patent
infringement is a civil offense
28-04-2017 16

Processofpatentfilling

More Related Content

What's hot (20)

Similar to Processofpatentfilling (20)

Recently uploaded (20)

Processofpatentfilling