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Your

INSIGHT

into

IP

Patenting Process in India
For Indian Residents

Tarun Kumar Bansal
Director, Sagacious Research March 31, 2009

Patenting Process – India
For Indian Residents
Star (*) marked terms have been described in the next slide

File Provisional* (Optional)
Within 12 Months from Provisional Filing

File Complete Specification* in India
(Filing in other countries/ PCT also done at this step) 18 Months from Priority*

If no provisional was filed and complete specification is the first application – PCT and/or national Filing in other countries can be done within 12 months from filing of Complete Specification Application

Publication
(Option available for Early Publication)

After Publication - Within 48 Months from Priority Date

File Request for Examination Examination Report with Objections
Within 12 Months of receiving the examination report

Iterative Process

File Response to objections by Examiner (+ submit amended application accordingly) Grant/ Rejection
Grant- if all objections/suggestion/oppositions successfully countered /implemented by Applicant Rejection – If any objections were not answered in 12 months upto examiners satisfaction

Within 12 Months from Grant Date

Post Grant opposition

Every year after grant till Expiry

Pay Annual Maintenance
March 31, 2009
Opposition if Successful

Expiry

20 Years from India filing or PCT filing date Slide 2 (whichever is earlier) and/or on non-payment of annual fee © 2009 Sagacious Research. All Rights Reserved.

Prosecution

Some Notes (1/2)
Time required for Grant
• The entire grant process takes a minimum of 2 years (18 months for publication and minimum 6 months for pre-grant opposition after publication and before grant). However, depending on the prosecution and number of objections raised, it may take 4-5 years as well. • However, option of early publication is available to reduce the procedural time

Extensions
• All the replies to the examination reports/ objections needs to be filed within 12 months else application is considered abandoned and cannot be revived • A request for restoration of patent can be filed within 18 months from the date of cessation of patent (due to non-payment of annual renewal fee) along with the prescribed fee

Request for Examination
• If request for examination is not filed within the stipulated time period, first office action is not granted and application is abandoned • Request for examination can be filed either by applicant or any third party Contd…

March 31, 2009

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© 2009 Sagacious Research. All Rights Reserved.

Some Notes (2/2)
Compulsory Licensing link
• After three years from grant date parties may file a request with controller to grant a compulsory license for the given patent on grounds of non-working of patent by the patent holder • Holder gets royalaties (decided by arbitration and/pr set by Govt.)

Foreign Filing Permit (FFP)
• FFP (written permission from controller) is needed to apply for a patent outside India for an invention made by Indian resident • Applicant can do without FFP to file outside India by filing in India first and waiting for six weeks for any secrecy directions from Controller. If no secrecy directions are received within six weeks, applicant can file outside India without FFP

Patent Office Selection
Depending on your domicile, you need to choose one of the four patent offices (Mumbai, Kolkata, Chennai and New Delhi) in India to make your application. You can use the table provide here to make the correct choice

March 31, 2009

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© 2009 Sagacious Research. All Rights Reserved.

Definitions
Provisional Applications
• Filed to secure the priority rights (i.e. to officially ascertain that you have come up with the idea first). • Filed as soon as you have rough draft of your invention and implementation can be done within next 12 months • Do not contain any claims and are easier to draft • provide just the basic details of invention and the novelty without providing much details on implementation part. • Provisional applications are never published and are never granted. These never come to public domain

Complete Specification Applications
• Much enhanced version of the Provisional application to be filed within 12 months from the filing of provisional application (can also be filed directly without a filing provisional) • Considered for examination and grant. • Provide complete implementation details, utility details, best mode of operation, etc for the invention The complete specification application should ensure that anyone operating in the domain of application subject (e.g. mechanical, etc) will be able to perform the invention using details provided in the application.

Priority Date
• Filing date of provisional and/or Complete specification Application (whichever is earlier) • However, If application filed in any other country before filing in India - the filing date in that country Priority date ensures that any invention related documents published after this date are not considered as novelty breaking for the patent application.

March 31, 2009

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© 2009 Sagacious Research. All Rights Reserved.

Interesting Links
• http://ipindia.nic.in/ipr/patent/FAQ_Patent.htm

March 31, 2009

Slide 6
© 2009 Sagacious Research. All Rights Reserved.

Your

INSIGHT

into

IP

Thank You

Tarun Kumar Bansal
Director, Sagacious Research tarun.bansal@sagaciousresearch.com http://www.sagaciousresearch.com Ph. No: +91-931 387 2266