The procedure to file patent applications in India begins by drafting a comprehensive patent application with strong patent claims. The initial patent application is filed with the patent office as per the requirements of the patent law.
The patent rights are secured in multiple countries by filing international patent application as per the Patent Cooperation treaty (PCT). In use, the PCT provides a unified patent procedure to file the same patent application in each of the PCT member states.
China is a major jurisdiction when it comes to patent filings. It has been reported recently that in 2018 China accounted for almost half the number of total patent applications filed worldwide. The patent procedure in China is similar to the patent process in India, with certain differences.
The most important steps during patent prosecution in China, include, patent filing, patent publication, patent examination, patent opposition and patent grant or patent rejection. In India, the patent prosecution consists of only a single phase comprising of several steps.
However, in China, patent prosecution is divided into two distinct stages, including, formalities/preliminary patent examination stage and substantive patent examination stage, wherein a patent application can enter in the substantive examination stage only when it first passes the formalities/preliminary patent examination stage. During preliminary examination the application is checked for any obvious and substantial flaws/ defects; proper filing documents and fees; and whether the invention falls within the patentable subject matter. The applicant is required to correct the defect(s) (if any) within the specified time limit. If the application passes through the preliminary examination then it is published, else it is rejected (Article 34 of Patent Law of the People’s Republic of China, 1984 r/w Rule 44).
Applicant can make request for publication earlier than 18 months (early publication); SIPO shall publish such application immediately (Article 34 of Patent Law of the People’s Republic of China, 1984 r/w Rule 46). An applicant, who is not satisfied by the decision of rejection of patent application by SIPO, can make application for re-examination of the application to the Patent Re-examination Board (PRB) after paying the prescribed fee. The re-examination of the application remains restricted to the grounds and evidences upon which the decision of application rejection was based (Article 41 of Patent Law of the People’s Republic of China, 1984 r/w Rule 60-64).
With regards to the duty to disclose information regarding foreign applications in China, the applicants are required to disclose information regarding equivalent foreign patent applications as per the local patent law. However, regulations in India in this context seem to be much more severe and hard to comply with. SIPO requires only the copies of priority search/ examination reports to be submitted.
Whereas, in India as per the Section 8, the applicant is required to submit “detailed particulars” related to equivalent foreign application at the Indian Patent Office, irrespective of whether such information is material to patentability or not. In China failure to comply with this provision is not a ground of patent revocation after the patent grant.
As per the patent law, post-grant opposition mechanism is available, wherein currently, the only way to challenge a granted patent in China is through the post-grant invalidation procedure (Articles 45-47 of Patent Law of the People’s Republic of China, 1984). Any individual or entity may submit request to the Patent Re-examination Board (PRB) to declare a patent invalid on the ground that such patent does not conform to the conditions for granting patent rights under the law. Requests for invalidation can be filed in writing at any time after the grant of a patent.
According to the implementing regulations of the Chinese patent law, after publication of a patent application any person can submit observations at SIPO regarding non-conformity of the application with the provisions of the Patent Law. The observations can be submitted until the date of announcing the grant of the patent (Rule 48 of Patent Law of the People’s Republic of China, 1984). Third party observations are admissible for invention patents only and not for utility model patents.
To complete the patent process, patent applicants seek the assistance of a patent attorney. Patent attorneys work with clients under a law firm structure or as individual practitioners. Various patent services provided by the patent attorneys include client counseling, managing patent preparation and prosecution, rendering legal opinions with respect to patentability, patent validity and freedom to operate; advising on intellectual property aspects of agreements, and, as needed, supporting patent litigation, due diligence reviews and intellectual property-related transactional work covering patent licensing and patent valuation reports.
Law Office of Patent Attorney Rahul Dev offers high value software patent drafting and patent due diligence services to clients by using proprietary and efficiently proven process along with a fixed fee costs, for performing comprehensive patent investigations and providing clients with strong patent reports for decision making.
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Advocate Rahul Dev is a Patent Attorney & International Business Lawyer practicing Technology, Intellectual Property & Corporate Laws. He is reachable at rd (at) patentbusinesslawyer (dot) com & @rdpatentlawyer on Twitter.
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