1. Patent Office Procedures
Dr. Asha Aggarwal
Ind Swift Laboratories Limited
26th May' Dr.Asha Aggarwal

2. INTRODUCTION
Patent rights are granted by National Patent Offices, and so patent protection for an invention must be sought in each country individually.
The Indian law of patents is enshrined in the Patents Act, The Act seeks to provide for legal protection for inventions. The rights granted under the Act, are operative in the whole of India.
26th May' Dr.Asha Aggarwal

3. Object of patent law The object of the patent law is to provide:
a statutory right to owner of the patent for a certain period of time to stop others from using, selling or working out his invention, and exploit it commercially
to disclose the invention and practice that invention and make it work thus encourage scientific research and new technology,
to stimulate new inventions of commercial utility and
to pass invention into public domain after the expiry of the fixed period of the monopoly.
26th May' Dr.Asha Aggarwal

4. BENEFITS Stop re-inventing the wheel Know what is already patented
Patent α Collaboration/ Money / Fame/ Name/ etc………
26th May' Dr.Asha Aggarwal

5. Grant for a patent
To get a patent grant, the first most step is to file a patent application.
Who can file a patent application?
Where to file a patent application?
How to file a patent application?
26th May' Dr.Asha Aggarwal

6. Who can file Patent Application
In India [Section 6 and 134]
The application can be filed either alone or jointly:
By any person claiming to be true and first inventor(s)
By any person being the assignee of person claiming to be true and first inventor(s)
( proof of assignment has to be submitted along with the application )
By the legal representative of any deceased person or assignee
26th May' Dr.Asha Aggarwal

7. Where to file patent application
The appropriate office of the patent office shall be the head office of the patent office or the branch office as the case may be within whose territorial limits …
Residence of applicant or Domicile; or
His the place of business; or
The place where the invention actually originated.
If the applicant has no business or domicile in India, the address for service in India is given by such applicant
26th May' Dr.Asha Aggarwal

8. Regional Patent office’s Jurisdiction
Territorial Jurisdiction
Patent Office Branch, Chennai
The States of Andhra Pradesh, Karnataka, Kerala, Tamil Nadu and the Union Territories of Pondicherry and Lakshadweep
Patent Office Branch Mumbai
The States of Maharashtra, Gujarat, Madhya Pradesh, Goa and Chhattisgarh and the Union Territories of Daman and Diu & Dadra and Nagar Haveli.
Patent Office Branch,
New Delhi
The States of Haryana, Himachal Pradesh, Jammu and Kashmir, Punjab, Rajasthan, Uttar Pradesh, Uttaranchal, Delhi and the Union Territory of Chandigarh.
Patent Office, HO
Kolkata
The rest of India
26th May' Dr.Asha Aggarwal

9. How to file a patent application?
Documents can be filed in the patent office
through online( e-filing) or
through post or
can be submitted by hand
26th May' Dr.Asha Aggarwal

10. GENERAL PROCEDURE FOR OBTAINING A PATENT
Filing of patent application
Publication after 18 months
Pre Grant Opposition /Representation by any person.
Request for examination
Examination: Grant or Refusal
Publication of Grant of patent
Post Grant Opposition to grant of patent
Decision By Controller
26th May' Dr.Asha Aggarwal

11. Graphical Representation of Patent Granting Procedure
From 2005
Pre 2005
Patent Application
Patent Application
Examination
Publication
Pre Grant opposition
Application in
order for grant
Examination
Advertisement of acceptance
Of Complete Specification
Application in
Order for Grant
Opposition by
Interested Person
Publication of Grant
Post Grant Opposition
Sealing / Grant
26th May' Dr.Asha Aggarwal

12. Documents required for filing of A Patent Application
1. Covering letter- 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/Provisional specification in Form 2 in duplicate [Section 10; Rule 13]
4. Statement and Undertaking in Form 3 [Section 8; Rule 12];
5. Power of Attorney in Form 26 (in original) (Rule 3.3 (a) (ii)); (if filed through attorney)
6. Declaration of Inventor-ship in Form 5
(only in case of an Indian Application; (Rule 4.17);
7. Certified true copy of the Priority document (in case priority is claimed);
8. Requisite Statutory fees (cheque / DD).
26th May' Dr.Asha Aggarwal

13. SPECIFICATIONS
Provisional specification -a provisional specification is usually filed to establish priority of the invention in case the disclosed invention is only at a conceptual stage and a delay is expected in submitting full and specific description of the invention.
No patent is granted on the basis of a provisional specification.
Complete specification -the complete specification is the document in which all the details of the invention for which patent protection is desired are disclosed
26th May' Dr.Asha Aggarwal

14. Contents of Specification
Title of the invention
Field of the invention
Background of the invention (PRIOR ART)
Object of the invention
Summary of the invention
Brief description of drawings, if any
Detailed description of the invention
Examples
Claims- not required in provisional
Abstract- not required in provisional
26th May' Dr.Asha Aggarwal

15. Provisional Specification…..
It should describe the nature of invention & contain the description of essential features of the invention.
Claims and abstract are not a part of provisional specification
Fees is same as for complete specification
Complete specification must be filed within 12 months from date of filing of provisional application.
26th May' Dr.Asha Aggarwal

16. Complete Specification
Compared with the provisional, the complete specification shall:
a) contain the full description of the invention and its
operation,
b) the best method of making the invention.
c) end with a claim or claims, which are the most
important component in the complete patent
specification. It is the legal operative part which
define and determine the legal protection sought for.
d) be accompanied by an abstract to provide technical
infromation on the invention.
26th May' Dr.Asha Aggarwal

17. Complete Specification…..
If applicant mentions a biological material in the specification, which cannot be described in such a way to satisfy clauses a) and b), and
If material is not available to the public, the application shall be completed by depositing the material to the international depository authority,
Deposit of the material shall be made not later than date of filing of patent application.
In India biological material can be submitted at Institute of Microbial Technology (IMTECH), Chandigarh.
26th May' Dr.Asha Aggarwal

18. Statutory Fees: Particular Natural person (Rs)
Other than natural person (Rs)
For filing patent application
1000
4000
For each sheet of specification in addition to 30
100
400
For each claim in addition to 10
200
800
26th May' Dr.Asha Aggarwal

19. Cognate filing
In addition to this, u/s 9(2)- there is a provision that where two or more applications in the name of same applicant are accompanied by provisional specifications in respect of inventions which are cognate or of which one is a modification of another and controller is of the opinion that the whole of such inventions are such as to constitute a single invention and may properly be included in one patent, he may allow one complete specification may be filed in respect of all such provisional applications.
26th May' Dr.Asha Aggarwal

20. Complete to provisional
u/s 9(3)-complete application can be converted to provisional application on request by the applicant to the controller of the patents at any time within twelve months from the date of filing of the application.
26th May' Dr.Asha Aggarwal

21. Post-dating
u/s 9(4)-where a complete specification has been filed in pursuance of an application accompanied by provisional specification, the controller, may, if the applicant so requests, at any time before grant of patent, cancel the provisional specification and post-date the application to the date of filing of the complete specification.
26th May' Dr.Asha Aggarwal

22. Publication
[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].
This way, the world is informed about the fact that a patent can be expected on that particular invention.
Someone else using the invention could then switch to a different technology, or make reservations to pay for a license once the patent is granted.
26th May' Dr.Asha Aggarwal

23. Publication………..
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.
Fees for Request for Early Publication for Natural person is Rs. 2,500
Fees for Request for Early Publication for Other than natural person is Rs. 10,000
26th May' Dr.Asha Aggarwal

24. Importance of Publication
On and from the date of publication of the application for patent and until the date of grant of a patent in respect of such application, the applicant shall have the like privileges and rights as if a patent for the invention has been granted on the date of publication of the application.
The applicant shall not be entitled to institute any proceedings for infringement until the patent has been granted
Right of the patentee in the case of applications filed u/s 5(2) shall accrue from the date of grant of the patent
26th May' Dr.Asha Aggarwal

25. Pre-grant Opposition
[Section 25(1)] Upon publication, but before the grant of patent any person, based on different grounds may file a pre grant opposition, in writing, represent by way of opposition to the Controller against the grant of patent.
However the opposition will be taken by the patent office only after the filing of Request for Examination.
26th May' Dr.Asha Aggarwal

26. Pre-grant Opposition
Time limit: 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.
Fee:
NO FEE
26th May' Dr.Asha Aggarwal

27. 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 for Request for Examination
for Natural person is Rs. 2,500
Statutory Fees for Request for Examination for other than natural person is Rs.10,000
26th May' Dr.Asha Aggarwal

28. First Examination Report
[Section 12; 24B(3)]
After proper examination of patent application, on the criteria of novelty, inventiveness and industrial application, which involves checking all the literature available to it to find documents that describe the invention in part or in whole. In this search, only documents that were published before the date of filing of the application are to be considered. 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.
26th May' Dr.Asha Aggarwal

29. 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, the application should be placed in order of acceptance.
In case of the unjustified response, the Controller has power to refuse the grant of patent or ask for amended claim[s] or make order for the Division of Application [Section 15, 16].
26th May' Dr.Asha Aggarwal

30. 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).
26th May' Dr.Asha Aggarwal

31. 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: Within one year after the grant of a patent.
Statutory Fees for Notice of Opposition for Particular Natural person is Rs.1,500
Statutory Fees for Notice of Opposition for other than natural person is Rs.6,000
26th May' Dr.Asha Aggarwal

32. 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.
26th May' Dr.Asha Aggarwal

33. Fees… Up to 6 years Rs. 2,000/ year 7-10 years Rs. 6,000/ year
26th May' Dr.Asha Aggarwal

34. Fees…
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 for extension in Form 4
for Particular Natural person is Rs.300 per month
Statutory Fees for extension in Form 4 for Other than natural person is Rs.1,200 per month
26th May' Dr.Asha Aggarwal

35. Filing of International application
It is possible to file an international application in India in all patent offices. All these offices act as Receiving Office (RO) for international application.
International application can be filed directly to International Bureau (IB), Geneva, on-line.
26th May' Dr.Asha Aggarwal

36. Documents required for filing
Covering letter indicating list of documents:
Request
Complete specification in triplicate
Abstract- in triplicate
Fees- transmittal fees
26th May' Dr.Asha Aggarwal

37. Fees Payable under PCT Transmittal Fee: Rs. 8000/-
Fee for priority document: Rs. 4000/- each
International Fee: $ 1,184 for 30 pages
Fee for each page in addition to 30 pages: $ 13
Search fee: According to search authority
26th May' Dr.Asha Aggarwal

38. Search Authorities along with fee
Authority
Fee
(in USD) AT
257 AU
1,091 CN
280 EP
2,184 SE
2,164 US
2,080
26th May' Dr.Asha Aggarwal

39. National phase entry First Application Family Application 1212
26th May' Dr.Asha Aggarwal

40. National phase entry
26th May' Dr.Asha Aggarwal

41. National phase entry
26th May' Dr.Asha Aggarwal

42. THANK YOU!
26th May' Dr.Asha Aggarwal