PATENT PROSECUTION & FILING
Patent filing
Who can file
Inventors
Assignee
Legal Representative
Where to file
Jurisdiction
Chennai
Kolkata
Delhi
Mumbai
How to file
Forms and fees
Types of patent application
Ordinary application
Foreign applications
Convention application
PCT
Complete; Provisional
Extension applications
Divisional
Addition
Who can file patent application
Section 6 – Persons entitled to apply for patents
Persons entitled to apply for patents
(2) An application under sub-section (1) may be made by any of the persons referred to therein either alone or jointly with any other person.
Where to file patent application
Office | Territorial Jurisdiction | ||
Patent Mumbai | Office | Branch, | The States of Maharashtra, Gujarat, Madhya Pradesh, Goa and Chhattisgarh and the Union Territories of Daman and Diu & Dadra and Nagar Haveli |
Patent Chennai | Office | Branch, | The States of Andhra Pradesh, Karnataka, Kerala, Tamil Nadu, Telangana and the Union Territories of Pondicherry and Lakshadweep |
Patent Office Branch, New Delhi | The States of Haryana, Himachal Pradesh, Punjab, Rajasthan, Uttar Pradesh, Utarakhand, Delhi and the Union Territory of Chandigarh, Jammu and Kashmir and Ladakh. | ||
Patent Office, Kolkata | The rest of India. | ||
How to file patent application
Form | Details | Section/ Rule | Significance |
1 | Application for Grant of Patent | Section 7, | For all types of applications |
2 | Provisional/Complete Specification | Section 10; Rule 13 | Claims |
3 | Statement and Undertaking Under Section 8 | Section 8; Rule 12 | Chemtura V/S Union of India |
5 | Declaration as to Inventorship | Section 10 [6] Rule 13 | |
6 | Request for change in patent application | Section 20 | To be done before grant of patent. Useful during assignment of Rights |
26 | Authorization of a Patent Agent/Or any Person in a Matter or Proceeding Under The Act | Section 127, 132 Rule 135 | Power of attorney |
27 | Stats of patent - commercialization | Section 146 | CL in case of non-availability of patent |
SAMPLE FORM 1
Form 2
FORM 3
FORM 5: Declaration as to Inventorship
FORM 6
FORM 26
FORM 27
STAGES - FILING TO GRANT OF PATENT
PUBLICATION OF APPLICATION
REQUEST FOR EXAMINATION
GRANT OF PATENT
3rd Party Representation
Revocation/Amendment
OPPOSITION
FILING OF APPLICATION
PROVNL. / COMPLETE
Decision of Controller
EXAMINATION-ISSUE OF FER
Appeal
Appellate Board
Obtaining a patent
File an application for patent
With one of the patent offices based on territorial jurisdiction of the place of office or residence of the applicant /agent
Pay the required fee
Information concerning application form and details of fee available at www.ipindia.nic.in
Guidelines for applicants also available on this website
Formality Check
An Examiner checks the formal requirements before accepting the application and the fee – this is done immediately
Issue of application number and the cash receipt – this is done the same day
In case of receipt of application by post, cash receipt, application number is sent by post within 2-3 days
Publication
Application is kept secret for a period of 18 months from the date of filing
In 19th month, the application is published in the official journal – this journal is made available on the website weekly
Applicant has an option to get his application published before 18 months also
In that case, application is published within one month of the request
Request for Examination
Application is examined on request
Request for examination can be made either by the applicant or by a third party
A period of 48 months, from the date of filing, is available for making request for examination
Examination
Application is sent to an Examiner within 1 month from the date of request for examination
Examiner undertakes examination w.r.t.
whether the claimed invention is not prohibited for grant of patent
whether the invention meets the criteria of patentability
Issue of FER
A period of 1 to 3 months is available to Examiner to submit the report to the Controller
1 month’s time available to Controller to vet the Examiner’s report
First Examination Report (FER) containing gist of the objections is issued within 6 months from the date of filing of request
Response from the Applicant
12 months’ time, from the date of issue of FER, is available to the applicant to meet the objections
If objections are met, grant of patent is approved by the Controller – within a period of 1 month
Pre-grant Opposition
After publication, an opposition can be filed within a period of 6 months
Opportunity of hearing the opponent is also available
Examination of Pre-grant Opposition
Opposition (documents) is sent to the applicant
A period of 3 months is allowed for receipt of response
Consideration of �Pre-grant Opposition
After examining the opposition and the submissions made during the hearing, Controller may
Either reject the opposition and grant the patent
Or accept the opposition and modify/reject the patent application
This is to be done within a period of 1 month from the date of completion of opposition proceedings
Grant of a Patent
A certificate of patent is issued within 7 days
Grant of patent is published in the official journal
STAGES - FILING TO GRANT OF PATENT
PUBLICATION OF APPLICATION
REQUEST FOR EXAMINATION
GRANT OF PATENT
3rd Party Representation
Revocation/Amendment
OPPOSITION
FILING OF APPLICATION
PROVNL. / COMPLETE
Decision of Controller
EXAMINATION-ISSUE OF FER
Appeal
Appellate Board
Renewal Fee
To be paid within 3+6 months from date of recording in the register [sec 142 (4) ]
No fee for 1st and 2nd year
Renewal fee, on yearly basis, is required to be paid for 3rd to 20th for keeping the patent in force
Delay upto six months from due date permissible on payment of fee for extension of time
Patent lapses if renewal fee is not paid within the prescribed period
Patent E-filing requirements
History Of IP Licensing
IP Lifecycle
INVENTION
PROTECTION
COMMERCIALIZATION
Technology Transfer process
IDEA
CONCEPT DEVELOPMENT
PROTOTYPE
PRELIMINARY TESTING
Proof of concept and technical feasibility
IN-SITU TESTING
Proof of scalability and quality
COMMERCIALLY VIABLE PROTOTYPE
DISCLOSURE
Define application, Benefits, and Value
INITIAL MARKET SCREENING
EVALUATION
Explore Opportunity, Define end user
COMMERCIAL STRATEGY
IP Protection
MARKET ENGAGMENT
Awareness, Value validation, Co-development
COMMERCIAL AGREEMENT
Technology Development
Commercialisation
Cutting Edge innovation available for exploitation via licencing, co- development, Spin-outs, joint venture
Technology Transfer process
Academics
IDF
Assess
TT
Support
Business Plan
Approval
Dean ‘s Approval
Research
IP
Protection
Assign IP
Route to commercialisation
JV or
Spin Out
Licence
Commercial Feasibility
Funding
and Tech.
Dev.
What is a license?
An official document that shows that permission has been given to do, own or use something
LICENSE IS A PERMISSION
Why License?
Sharing Risk:
Revenue Generation:
Increasing Market Penetration
Reducing Costs
Saving Time
Collaboration
License In or License Out
What can you License?
⮚
Patents and Patent applications
⮚
Know-How
⮚
Trademarks
⮚
Copyrights clear system of ownership
License Agreement
Key headings
Definitions
Recitals
Grant of license
Confidentiality
Payments
Ip
Liability
Termination
Warranties & liabilities
General
Grant of license
Level of exclusivity
Field
Territory
Sub-licenses
Activities
Specific exclusions
Royalties
Royalty on sales
Tiered royalties
Stacked royalties
Reach-through” royalties
Lump sum fees
Signing fee
Payment by instalments
Offset sunk costs
Strategy and License management
NEGOTIATION
POST LICENSE SUPPORT