Patent attorneys work closely with inventors to ensure a smooth patent registration process. The legal aspects of the patent procedure include patent prosecution wherein the patent office examines the contents of the patent application filed by the inventors. During the patent prosecution process, the patent examiner generally sends the objection by way of patent office action and the patent applicants are required to submit the requisite office action response to the patent office in a timely manner. 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.
Generally, an individual or any other legal entity would decide to file the patent application in multiple countries so as to maximise the benefit out of it. People protect their inventions as patents so that they can leverage it to their advantage. One can do this by a lot of ways such as having the patent protected in multiple countries or by licensing it or assigning it and so on.
For obtaining a patent in multiple countries, they should list out the places where they want to get it protected. While doing so the inventor should also be careful of obtaining patents in their home countries. The patent protection is available to the patent holder where they have filed for the patent protection.
For protecting a patent outside home country, there are two routes through which the patent application can be filed. They are:
Paris Convention Route – The Paris convention was adopted in 1883. This convention allows the patent applicants to file the priority application or the first application. The date on which it is filed becomes the priority date. Within the next 12 months of filing this application, the patent applicant needs to file the application in other countries signatory to the convention, claiming priority from priority application. This is also known as direct filing route.
If this convention would not have existed then the applicant would have to file the application simultaneously in other countries and coordinate their patent filing due at global level. India and almost all the other countries are party to the Paris Convention, therefore it creates an ease of working.
The PCT (Patent Cooperation Treaty) Route – The PCT is also an international treaty administered by WIPO. Almost all the countries signatory to the Paris Convention are also signatory to the PCT. Under this treaty it is also the applicant gets a 12 months time for claiming the priority. Under this treaty an applicant is allowed to file a single application in the home country while protecting rights in other countries as well. The process under PCT route allows an application to delay filing or entering a patent application in another country for upto 30 months. In the process of PCT route the application is filed in the home country patent office which is known as the “Receiving Office” and the filed application is known as the “International Patent Application”. Within the 30 months time frame the applicant would have to enter the International Patent Application in other countries, this is known as the “National Phase Entry”. The application then proceeds according to the normal process in each country after the national phase.
Therefore, the PCT route does not involve a direct route unlike the Paris Convention route. It is possible to file a patent application outside the home country without filing an application in the home country. In this circumstance the applicant would require necessary permissions and can directly file with the International Patent Office with the International Bureau. The rest will proceed as usual and the applicant can decide in which country to file the application.
This is how a patent can be obtained in countries outside India (home country). The applicant can choose either the Paris Convention route or the PCT (Patent Cooperation Treaty) route to obtain a patent in countries other than the home country.
The Patents Act, 2005 suggests that the inventor or his agent/ assignee/ or his legal representative, or his heirs (in case the inventor is deceased) can apply for the patent in the head office of the Patent Office of India. In case the inventor does not belong to the state where the head office is located, they may also search for the branches of the office. The Indian Patent Office has its branches in various states. It is for the convenience of the inventors that multiple branch offices have been opened by the Indian Patent Office.
The headquarters of the Indian Patent office is located at Kolkata and its branch offices are located at Chennai, New Delhi and Mumbai. Since, the number of branch offices are very less in comparison to the number of states in India, these offices have been allotted their own jurisdiction. The jurisdiction to each branch office has been allotted on the basis of their surrounding and neighbouring states. Patent office of Mumbai has been allotted with the state of Maharashtra, Gujarat, Madhya Pradesh, Goa and Chhattisgarh and the Union Territory of Daman and Diu and Dadra and Nagar Haveli. The Patent branch office of Chennai has the jurisdiction over the state of Andhra Pradesh, Karnataka, Kerala, Tamil Nadu, Telangana and the Union territories of Pondicherry and Lakshadweep. The Patent branch office of Delhi has the jurisdiction over the states of Himachal Pradesh, Punjab, Rajasthan, Uttar Pradesh, Delhi and the Union territories of Chandigarh, Jammu and Kashmir and Ladakh. All the states which have not been covered till now are covered under the purview of the headquarters i.e. Patent Office of Kolkata.
The Patents Act is the central legislation that deals with the filing and regulation of the patent applications in India. Patent applications can be filed with the local branch of the Indian Patent Office or at the headquarters depending upon the location of the applicant. There are two kinds of monetary expenses for an applicant to get a patent registered:
There are few steps involved in the registration process. They are as follows:
(i) Step 1 – Disclosure of the Invention – A non-disclosure agreement is signed between the professional and the inventor. Post the signing of this agreement, the details of the invention has to be given in complete to the professional so that he can further act on it.
(ii) Step 2 – Search whether the invention is patentable – This step is where the professional searches for the prior art in the field of invention and figures out whether the invention is patentable or not.
(iii) Step 3 – Decision to file an application for the patent – This step is one of the most crucial beginning stages of filing an application for grant of patent. In this step, after searching whether the invention is patentable or not, a decision is made as to whether a patent application has to be made or not. This decision revolves around the provisions of the patent act which determines whether the invention is patentable in the first place itself.
(iv) Step 4 – Drafting of the Patent – One of the most crucial steps of patent application is the drafting of the patent application. The candidate can chose to draft the application on his own or take help from the professional patent agents or attorneys.
(v) Step 5 – Filing of the Patent Application – Before filing the patent application, the applicant must be satisfied with the scope and contents of the application. This is to ensure that there is no confusion in what he wants to convey to the examiner about his invention. After the drafting process, once the applicant is satisfied, the application can be filed with the patent office. Depending upon the kind of patent application, the patent form needs to be filed before the appropriate forum.
(vi) Step 6 – Request for Examination of the Application – When the patent application is filed, the application is examined by the controller of the patent. If the applicant requires speedy examination then an application has to be submitted to the controller for speedy examination i.e. within 48 months stating the reasons for the same.
(vii) Step 7 – Replying to the objections raised (if any) – the draft of the patent applicant is completely assessed and examined at this stage. If there are any objections raised, then the inventor has to prove that the invention is capable of being patentable.
(viii) Step 8 – Getting the Grant of the Patent application – Once the objections are replied to and the examiner is satisfied that the invention of the applicant fulfils all conditions for grant of patent. Patent is then granted to the applicant.
(ix) Step 9 – Renewal of Patent – Once a patent is granted and is inn force, it can be renewed after 20 years of the filing of patent application.
Cost of obtaining a patent in India may not be fixed. It will all depend on certain factors.
The overall cost of obtaining a patent can be divided into two parts i.e. to the patent office and to the professional or the patent service provider. Since the later cannot be determined because it depends upon the choice and preferences of the applicant. Therefore the data below represents the statutory fees.
The statutory fees are largely dependent on who the applicant is. The Patent Office categorizes the applicants in 4 categories.
a) Natural Person
c) Other than natural person – Small entity
d) Other than natural person – others except small entity
The Fees for Grant of Patent Application (mandatory)
a) The fees for grant of patent application in case of natural persons and startup is INR 1600
b) The fees for grant of patent application in case of small entity is INR 4000
c) The fees for grant of patent application in case of others except small entity is INR 8000
The fees for Request for Early Publication (optional)
The fees for request for early application by natural persons/startup is INR 2500
The fees for request for early application by small entity is INR 6250
The fees for request for early application by other except small entity is INR 12500
The Fees for Request for Examination of Patent application (mandatory)
The fees for request for examination of a patent application by natural persons/startup is INR 4000
The fees for request for examination of a patent application by small entity is INR 10,000
The fees for request for examination of a patent application by entities other than small entities is INR 20,000
For every extra sheet over 30 sheets
The fees for every extra sheet over 30 sheet for natural persons/ startups is INR 160/sheet
The fees for every extra sheet over 30 sheet for small entity is INR 400/sheet
The fees for every extra sheet over 30 sheet for entities other than small entity is INR 800/sheet
For every extra claim over 10 claims
The fees for every extra claim over 10 claims for natural persons/startup is INR 320/claim
The fees for every extra claim over 10 claims for small entities is INR 800/claim
The fees for every extra claim over 10 claims for entities other than small entities is INR 1600/claim
In India, a patent is protected for a period of twenty (20) years from the date of filing of application. The calculation of these twenty years begins from the date of filing of application irrespective of provisional or complete specifications. However if an applicant has filed the patent application under the PCT, the period of protection is twenty (20) years from the priority date rather than the date of filing.
After the process of filing is completed, one needs to ensure that renewal of the patent is also done regularly and unceasingly. The patent can be renewed after the lifetime of the patent i.e. 20 years. The renewal fees of a patent have to be submitted to the patent office before the expiry of the lifetime of the patent. The renewal fees for instance is payable at the expiration of the 2nd year from the date of the patent and each succeeding year. Advance payment of renewal fees can also be made as per the Indian Patents Act. Before the payment of the renewal fees the patentee has to provide the relevant patent number, date of the patent and the year in respect of which the renewal fees is being paid for making the renewal request.
In case there is a patent in addition, no additional renewal fees are required to be paid and the schedule for the payment of such patent remains the same as of the main patent. If the additional patent becomes an independent patent then the guidelines for independent normal patent has to be followed. In case the patentee has forgotten or by any chance not paid the renewal fees, an extension of upto 6 months is provided. If the patentee fails to make such payment within the extended time period then the patent ceases to exist and is passed on to the public domain.
Therefore, the renewal process for patents in India is that the renewal fees should be paid before the beginning of every succeeding year. However this period is also extendable upto 6 months along with the prescribed penalty fees.
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).
Foreign Patent Applications
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.
We provide comprehensive Patent and Trademark legal services via our global network to create valuable patent portfolios and resolve complex patent disputes by providing patent litigation support services.
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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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