Provisional patent application is filed when the invention is not fully ready. A well drafted provisional patent provides patent pending rights to establish inventorship and patent ownership as patent office follows first to file approach to determine the true inventor of a patent covering new idea or product.
Formulating a sound patent strategy for your technology driven company is very important in the current era. Across the globe, the in-house patent counsels, heads of research departments, tech based start-ups and inventors file a preliminary patent application for their invention / idea before the patent office and is known as provisional patent application.
A reciprocity application is submitted to the Controller along with a copy of the design application filed in the Convention Country. This copy must be suitably certified by the Official Chief or Head of the Organization where it was primarily filed.
If the priority document was not filed with the application, the same can be filed within an additional period of three months. This extension is sought through Form 18 along with the prescribed fee.
Every reciprocity application must be made within 6 months from the date on which the primary application was filed in the convention country. Apart from the submission of the reciprocity application itself, the applicant is required to submit 4 copies of the representations of the design and proof of the original proprietor of the design in the primary application that is duly certified by the Official Chief or Head of the organization in which it was filed.
The Controller is required to contemplate the report of the Examiner on registration of a design as applied to an article. If it can be registered, the registration certificate is issued and sent to the applicant at the earliest. Upon consideration, if the Controller realizes that the application has objections and requires amendments, a statement of objections is notified to the applicant by the Controller.
If the applicant does not observe the objections or fails to apply for a hearing within 3 months from the date of notification of statement, the application shall be considered withdrawn. The period for removal of objections does not surpass 6 months from the date of applying.
However, the said period can be extended for an additional period not surpassing 3 months given that a request under Form 18 is filed before the end of the 6 months.
Under Form 18 wherein the applicant seeks the extension of time for filing priority documents under Rule 15 and 18 of the Design Rules, 2001, they must pay the prescribed fee depending on their nature. If the claimant is a natural person, the fee payable is INR 200, per month.
Where the applicant is other than a natural person the fee payable for a small entity is INR 400, per month and for others except a small entity is INR 800 per month.
The extension of the time for submitting a priority document gives an applicant the benefit of the doubt that any delay in obtaining such documentation will not harm their application in India. Form 18 requires the applicant to provide the Controller with the quote number and year of the application of the design registered in the other convention country, with the reason of the delay in submitting the same.
Our team of advanced patent attorneys assists clients with patent searches, drafting patent applications, and patent (intellectual property) agreements, including licensing and non-disclosure agreements.
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.
Quoted in and contributed to 50+ national & international publications (Bloomberg, FirstPost, SwissInfo, Outlook Money, Yahoo News, Times of India, Economic Times, Business Standard, Quartz, Global Legal Post, International Bar Association, LawAsia, BioSpectrum Asia, Digital News Asia, e27, Leaders Speak, Entrepreneur India, VCCircle, AutoTech).
Regularly invited to speak at international & national platforms (conferences, TV channels, seminars, corporate trainings, government workshops) on technology, patents, business strategy, legal developments, leadership & management.
Working closely with patent attorneys along with international law firms with significant experience with lawyers in Asia Pacific providing services to clients in US and Europe. Flagship services include international patent and trademark filings, patent services in India and global patent consulting services.
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