1. 1 PATENT FILING NATIONAL/INTERNATIONAL at Pharmexcil, Ahmedabad 26 th July, 2012 by Andreya Fernandes Gopakumar Nair Associates

2. 2 Patent Filing, Why?  Claim ownership  Monopoly : Right to exclude others  Sell / License / Assign  Invention is made public  Encourages further Innovation  Enforcement: Sue for infringement

3. 3 Who Can Apply For Patent Section 6 and Section 134 Either alone or jointly True and first inventor True and first inventor’s assignee Legal representative of deceased true and first inventor or his/her assignee. True and first inventor does not include  first importer of an invention into India or  a person to whom an invention is first communicated from outside India

4. 4 Jurisdiction Rule 5. Address for service- a) Place of residence, domicile or business of the applicant (first mentioned applicant in the case of joint applicants) b) Place from where the invention actually originated. c) Address for service in India given by the applicant when he has no place of business or domicile in India.

5. 5 Filing of Patent Application  When to file : Earliest – as provisional (First-to-File)  Provisional Specification (Form 2) Provisional Specification - To establish PRIORITY DATE / establish early ownership  Complete Specification (Form 2) - To be filed within 12 months of filing of Provisional Application (Section 9 (1)) -Claim fairly based on matter disclosed in Provisional Application (Section 11(2)) -Cognate Applications (Section 9(2)) -Post Dating (Section 9(4))  Appln for Grant of Patent (Form 1) - Section 7, 54, 135 r/w Rule 20(1)

6. 6 Complete Specification Form 2 - Section 10 r/w Rule 13  Title  Technical Field  Background and Prior Art  Current Problem / Drawback / Gap  Solution to the problem/ Improvement  Summary of Invention  Detailed Description  Experiments/Trials/Examples  Claims  Abstract  Drawings, if any.

7. 7  Patent Specification - Techno-legal doc  Contents of Specification (Section 10) (Section 10(4)) Unity Of Invention - Single Inventive Concept Clarity of Disclosure - State Clearly And Distinctly The Nature And Limits Of The Claims Best Method - Examples etc Sufficiency Of Disclosure - Claims should be supported by Written Description. Biological Material - Geographical Origin Pre / Post Grant Opposition & Revocation

8. 8  Receiving Office - Delhi, Kolkata, Chennai, Mumbai.  Language of Filing - English or Hindi  Forms (2nd Schedule) 1 (Application for Grant of Patent), Proof of Right 1 (Application for Grant of Patent), 2 (Complete or Provisional Appln), 3 (Statement & Undertaking u/s 8 ), 5 (Declaration As to Inventorship) & 5 (Declaration As to Inventorship) 26 (Power of Attorney) 18 (Request for Examination)  Fees (1st Schedule) (Section 142 r/w Rule 7) Ratio of Fees – 1 : 4 (Natural Person : Others)

9. 9  Publication of Patent Application – Section 11-A r/w Rule 24 – Early Publication: Section 11 (A)(ii) r/w Rule 24 in Form 9  Request for Examination – Section 11-B r/w Rule 24-B in Form 18 – Express Examination - entered through PCT route  Examination of Application – Section 12 & Section 13 r/w Rule 24-B(2) & (3)  Time for putting appln in order for grant – Section 21 r/w Rule 24-B(4)  Grant or Refuse or Abandoned – Section 43, Section 15 – Opposition / Revocation

10. 10 Permission For Making Application Outside India  Section 39 r/w Rule 71(1) in Form 25.  Residents not to apply for patents outside India without prior permission.  Make application after 6 weeks have elapsed.  Invention relates to defence purpose or atomic energy.  Controller shall dispose after 21 days from the date of filing such request.

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12. 12 Patent Prosecution In India Optional: Early Publication in Form 9 + Request for Examination in Form 18

13. 13 Fees Ratio of Fees – 1:4 (Natural Person:Other than Natural Person) A few examples : Natural Others person Patent Application- Form 1 & 2 Rs.1000 Rs.4000 Request for early publication Rs.2500 Rs.10000 (optional) Request for Examination Rs.2500 Rs.10000 Maintenance Fee (each year) 3rd to 6th years Rs.500 Rs.2000 7th to 10th years Rs.1500 Rs.6000 11th to 15th years Rs.3000 Rs.12000 16th to 20th years Rs.5000 Rs.20000

14. 14 Types Of Patent  Ordinary Application – Complete Appln  Convention Application (Section 135 - Section 139 r/w Rule 17 to Rule 23)  PCT International Application (-do-) PCT International Application  PCT National Phase Application PCT National Phase Application  Patent of Addition (Section 54 – Section 56) Patent of Addition  Divisional Application (Section 16)Divisional Application

15. 15 Patent Filing Strategies  Only National Filing  Only Convention filing (US / EU etc.)  National + Convention Country  National + US + EU  Only PCT  National + PCT Any or all 146 States as on 14 th June, 2012 Any or all 146 States Patents RIGHTS ARE TERRITORIAL

16. 16 Delhi Chennai Kolkata Mumbai Indian Patent Offices

17. 17 Hierarchical Chart Of The Patent Office

18. 18 Filing PCT International Application

19. 19 Patent Cooperation Treaty  PCT stands for Patent Cooperation Treaty.  Multilateral Treaty  Concluded in Washington in 1970  Entered into force in 1978  Administered by IB of the WIPO  Headquarters e in Geneva, Switzerland.  Started with 18 Contracting States (146 states to date) Filing PCT does not lead to grant of International Patents

20. 20 Benefits of Filing PCT Int’l Appln 1.Provides a unified procedure for filing patent applications, 2.Leads to International Publication, 3.Simple, Efficient and Cost-effective way, 4.Facilitates the obtaining of protection for inventions in any of the member countries, 5.Reserves the Patent Rights in Member States to PCT, 6.The International Search Report received at the 16 th month enables the inventor to evaluate chances of patent protection in member states, 7.Upto 20/30/31 months to decide in which countries to pursue National Patent Protection.

21. 21 Receiving Office (RO) International Applications may be filed at National Patent Office or International Bureau (IB) of WIPO In India, RO are Mumbai or Chennai or Delhi or Kolkata

22. 22 PCT Requirements 1. Prescribed language (Arabic, Chinese, English, French, German, Japanese, Korean, Portuguese, Russian and Spanish); 2. An International Application (Triplicate) shall contain, PCT Request Form (RO-101) and PCT Request Form (RO-101) Complete Specification (Non-Provisional Application) (includes description, one or more claims, one or more drawings (where required), and an abstract) 3. Payment of the prescribed fees. 4. Power of Attorney (if required) 5.At least one Applicant should be National (Domicile) or Resident

23. 23 ISA  Choose Only One International Searching Authority (ISA) International Search Fees (depending upon ISA selected) As of 01/07/2012 ISASearch Fee (US$.) AT (Austria)2370 AU (Australia) 2254 CN (China) 329 EP (Europe) 2426 SE (Sweden) 2426 US (USA) 2080

24. 24 PCT Filing System 30 22 National phase III

25. 25 International Search Authority International Search Report International Search Report contains: Special category of cited documents (A, P, X, Y…..) Technical areas searched List of relevant prior art Reasons for search not carried out (if applicable) Written Opinion Written Opinion contains: – Preliminary opinion on Novelty Non-obviousness Industrial applicability

26. 26 PCT Lack of Unity of Invention  Only first claim is searched.  Specify reasons for lack of unity of invention.  Invite payment of additional search fees for the rest of the claims.  Applicant may pay any or all additional fees with or without a protest (challenging lack of unity of invention).  Failure to pay additional fees will not affect the application; additional inventions will neither be searched nor a written opinion will be issued.  No provisions for filing divisional applications during the international phase.

27. 27 Lack of Unity of Invention Protest before ISA  ISA reviews the protest filed with or without additional fees for search  If ISA concludes that the lack of unity of invention is not justified, the additional search fees are refunded  If ISA concludes that the lack of unity of invention is justified, the protest is denied with detailed reasons  The applicant may request that the text of the protest and the ISA’s decision be notified to the designated offices.

28. 28 Comparison of Chapter I and Chapter II Amendments Chapter I (Article 19)  Claim amendments only  Filed in response to ISR and Written Opinion of ISA  filed with IB (not ISA)  Published  No official fees Chapter II (Article 34)  Description, drawings and claims can be amended  Filed with the demand or during IPEA examination  filed with IPEA  Not Published  Official fees payable

29. 29 PCT- SAFE Advantages  Instant filing receipt when filed online  Reduced filing costs (printing, copying, mailing and paralegal labor charges)  Reduced filing fees  Reduced paper usage (save a tree!)  Filing in XML format renders data better searchable and re-usable  All related software available free of cost from WIPO

30. 30 Thank You!