EXPRESS AND EXPEDITE PATENT EXAMINATION IN INDIA

In India, an application for patent only goes through examination when a request for such examination is made to the Controller of Patents within a period of 48 months from the date of filing of that patent application, or from the date of priority of the first mentioned patent application, or within a span of 6 months from the date of filing of a further patent application such as a Divisional Application, whichever is later.

PCT National Phase Application in India

In case of a PCT (Patent Corporation Treaty) National phase application, an express request, along with a prescribed fee according to Rule 20(4)(ii) of the Patents Rules, 2003 (as amended), for examination can be made before the expiry of 31 months from the priority date of the said PCT national phase application. Once the express request has been made, the Controller is required to pass on that application to an examiner, and the examiner is then required to summarize and prepare an examination report within 1 month but not exceeding three months.

India’s federal Ministry of Commerce and Industry {Department of Industrial Policy and Promotion} in 2016 introduced new provisions under the Patents Rules, 2003, which permits a patent application to move out of turn for a faster prosecution. According to the new provisions the Indian Patent Office (IPO) are progressing applications out of turn for the examination if a request for expedited examination for an application along with the prescribed fees filed under Rule 24C of the Patents Rules, 2003 (as amended).

Expedited Patent Examination

However, the provision for expedited examination is only available to, startups and applicants who have designated “India” in their respective PCT applications, as an International Searching Authority (ISA) or International Preliminary Examining Authority (IPEA). Therefore, selecting India as ISA in a PCT application can be favorable for the Applicants to expedite grant process of corresponding PCT national phase Indian application. Under the expedited examination, the examiner is obligatory to give the First Examination Report (FER) within 1 month but not exceeding 2 months from the date of reference of the application to the Examiner for examination by the Controller, and further, the final disposal of the application is to be taken within 3 months of filing of response to the First Examination Report.

In India, patent offices initiated the expedited examination process in 2016 and, using this expedited examination process, many startups in India, including Optimus Pharma Pvt. Ltd., a Hyderabad based company, were able to get the patents granted within a record time of almost 10 months. The startup got a patent process of Apixaban, an anti-coagulant, in record time of almost 4 months under the expedited examination process. Such diminution in time will for sure help in cost efficiencies related to the management of a patent application up to their grant.

To provide the high demand of request for expedited examination of patent applications, IPO has also recently employed more than 250 patent examiners, affecting a substantial increase in the number of existing patent examiners. With this increase in the number of employed patent examiners, the period of ordinary patent examination is substantially declined to 2-3 years, which used to be almost 6-7 years and sometimes even more.

International Patent Applications filed in India under National Phase before the Indian Patent Office

A PCT international patent application under the Patent Cooperation Treaty can be filed before the Indian Patent Office before the expiry of 31 months from the priority date of the patent application. The complete patent specification should be filed along with Form 1.

In case, the language of the international patent application is in any other foreign language other than English, it has to be translated in English and the translated English copy has to be duly verified by the patent applicant or the person duly authorised by him that the contents thereof are correct and complete.

The patent translation of the international application should include the following details:

i. the patent description;
ii. the patent claims as filed;
iii. any text matter of the drawings;
iv. the patent abstract; and
v. in case the applicant has not elected India and if the claims have been amended under Article 19, then the amended claims together with any statement filed under the said Article;
vi. in case the patent applicant has elected India and any amendments to the description, the patent claims and text matter of the drawings that are annexed to the international preliminary examination report.

Advantage to Foreign Entities Filing Patents under PCT & entering India in National Phase

The patent attorney can file express patent examination request in Form 18 / Form-18A along with the fee specified in first schedule, at any time before thirty one months from the priority date.

Frequently Asked Questions by Inventors’ Worldwide

What is the Cost of filing patents in India?
What is patentable under the Indian Patent Act?
What are the different Patent filing options available?
What is the Patent filing procedure in India?
What is the Patent process time-line?
How long does it take to Get a Patent granted in India?
Are software inventions patentable in India?
What is the jurisdiction of a software patent?
Is creating a prototype necessary before filing for patents? Should I apply for patent before publishing?
Are business methods patentable in India?
How to conduct a patent search for my invention?
Is my invention already invented?
When should I apply for a patent?
Can I file for a patent outside India, without filing in India?
Why should I determine if I have freedom to operate for my technology before launching it in market?
Should I apply for a patent in my individual capacity or in my companies name?
When will my patent application be examined by the patent examiner?
Does a patent give me the right to use my invention?

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.

Global Blockchain Lawyers (www.GlobalBlockchainLawyers.com) is a digital platform to discuss legal issues, latest technology and legal developments, and applicable laws in the dynamic field of Digital Currency, Blockchain, Bitcoin, Cryptocurrency and raising capital through the sale of tokens or coins (ICO or Initial Coin Offerings).

Blockchain ecosystem in India is evolving at a rapid pace and a proactive legal approach is required by blockchain lawyers in India to understand the complex nature of applicable laws and regulations.

Patent Strategy

Innovative intellectual property comprising strong and enforceable patents with well drafted patent claims can be created in a cost-effective manner by engaging with an experienced patent attorney and technology business lawyer. A strongly formulated patent strategy acts as an invaluable asset during technology and product development, as has been proven time and again by innovative companies worldwide.

ITPAS (Ideas to Patents and Strategy), is an innovative business program to create and bring new products to markets across the globe, as reported by New York Time News. By expediting the process of creating valuable patents, global inventors and innovative business owners can define the title and ownership of creative business models, which can further be patented across multiple jurisdictions (US, Europe, Asia Pacific), subject to the patent eligibility criteria.

Importance of Patents

Historically, patents have added immense value to technology based products, thereby increasing revenues and creating healthy competition in the industry. For example, a new product may be launched with a first-to-market advantage, which can easily be replicated and knocked off the shelves by the competitors. Therefore, without appropriate patent protection, the revenue of original product owner may reduce. On the contrary, by drafting and filing strong patent applications, the original product owner can stop third parties from infringing upon its patents and further exploit licensing revenues from a strong patent portfolio.

Benefits of Patents

Patent laws across multiple jurisdictions include marking requirement in one form or another, which requires the patent applicants and patent owners to mark the product as “Patent Pending” or “Patented”. In case of physical products, patent number or registered design number can be stamped or marked. In essence, such marking requirements provide additional advantages to patent owners as these act as a supplementary marketing tool for the companies.

Software Patent FAQs:

How to Patent an Idea

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General Patent FAQs:

Journey of my blog from LinkedIn to 30+ news portals

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

Flagship Speaking Engagements

Featured Publications

Patent Attorney in New York

Top rated and highly experienced patent lawyers in New York can be found by searching USPTO database or by reviewing patent law firms comprising patent attorneys (patent agents) registered to practice before USPTO. Inventors in New York can personally interview multiple patent lawyers before selecting the patent attorney best suited to address their needs. Clients can also explore cities in the vicinity of New York, including, Brooklyn, Cedarhurst, Elizabeth, Garden City, Flushing, Bronx, Jamaica, Staten Island, Hackensack etc. and can also research patent attorneys practicing related areas, like Intellectual Property, Copyrights, Trademarks, Trade Secrets, Cyber Laws, Technology Laws, and the like.

Technology Development in New York

As it is well known, New York is the financial, business, trademark, and fashion focal point of the world, and hence, many global businesses and financial corporations are headquartered there. New York is a great place to launch innovative products due to the tech savvy residents. Recently, it was reported that a mobile application has been launched to apply for Food Stamps in New York. It is well known that about 1.7 million people in New York City receive food stamps and to qualify, they must produce dozens of documents to prove their eligibility, including birth certificates, pay stubs, leases and children’s school records. It is really problematic to gather, copy and bring the documents to a social services office, and then wait to be seen by a worker. New York city’s welfare agency, the Human Resources Administration, plans to ease this step with the help of a new cellphone app, wherein those seeking food stamps can take pictures of the required documents with their phones and upload the photos to the mobile application.

Mobile based payments using smartphone applications and handheld devices has resulted in a striving competition between financial institutions (banks), technology corporations (Apple, Google, Samsung) and startups (PayPal, PayTM, MobiKwik). Consequently, number of patents filed in FinTech sector have increased exponentially across the globe indicating strong propagation of innovative FinTech solutions worldwide.

patent lawyer india USPTO Malaysia

As per views of FinTech patent experts, patent attorneys, corporate law firms and technology lawyers, extensive investment has been done in the research and development (R&D) to bring new technology and products to the market across the globe. FinTech patents have been filed in aplenty by both tech startups and conventional financial institutions (financial service firms, banks etc.).

Launch of new and innovative smartphone applications (mobile apps) in financial technology sector indicates a dynamic shift in consumer behavior while availing financial services across broad range of sectors, such as, for example, banking, investment management, insurance, lending, digital and mobile payments, capital markets, credit risk assessment, financial advisory, accounting, taxation etc.

Analysis of FinTech patent landscape reveals that major patent filers are from US, China, UK and Europe, while leading patent players include traditional financial institutions like Visa, Mastercard, Bank of America, Barclays, Vodafone etc, and technology companies like Facebook, Apple and Google.

After reviewing relevant patent classifications, it can be determined that most of the innovations for which FinTech patents are filed include customer identity verification, biometrics, digital currencies, cryptocurrency, mobile applications, mobile apps, mobile platform, cloud computing, blockchain, Internet of things (IoT), artificial intelligence (AI), big data, P2P transfer, mobile wallets, and the like.

What are Blockchain and Bitcoin?

Blockchain is world’s leading software platform for digital assets that includes a decentralized digital database to facilitate secure online transactions. Multiple legal issues can impact the Blockchain technology at present and in near future. With regards to cryptocurrencies like bitcoins, Blockchain provides a safe digital ledger for the bitcoin network. Hence, bitcoin can be termed as a digital currency (cryptocurrency) experiment resulting from Blockchain innovation. In May 2017, bitcoin surged to record high of $2900.

In coming years, majority of banks and financial institutions will use Blockchain technology for commercial contracts and transactions. For example, Dubai Blockchain Strategy aims to establish a roadmap for issuing all government documents on Blockchain by 2020.

This has led to inception of another term, “Internet of Agreements”, which implies use of technology to deliver machine-to-machine handling of agreements for international business transactions. Accordingly, Blockchain is bound to impact technology solutions for banks, insurance companies and financial corporations.

Bitcoin Laws – Role of Bitcoin Lawyer

Bitcoin’s evolution from Blockchain technology has resulted in certain laws and regulations, however, case laws and regulations for virtual currency (digital currency) are emerging with time as no fixed laws exist at present. Consequently, entrepreneurs, fintech startups and businesses have to focus on compliance, money laundering regulations, etc.

Blockchain Laws – Role of Blockchain Lawyer

Applications can be used to determine ownership, chain of transactions, authentication, identity validation, digital evidence and discovery. Accordingly, multiple legal issues can arise pertaining to data security, criminal activity, prevention of theft, black marketing, malware, money laundering, data privacy, protection and infringement of intellectual property rights, including, software patents, mobile app patents, hardware patents, bitcoin patents, fintech patents, Blockchain patents, copyrights, trademarks and design patents.

What is a patent?

Patent is a legal right granted by government for an invention. The patent rights are granted to inventors and applicants for 20 years from the date of the filing of first patent application. The right granted to patent owners is a negative right, which implies that the patent owner has the exclusive right to prevent patent infringement, i.e. to stop third parties from making, using, selling, offering for sale and/or importing any product or technology protected by the claims of the patent.

What are patent claims?

A patent application includes multiple elements, and patent claims form the heart of the patent invention as legal protection is granted for features included in the patent claims. Generally, patent claims are drafted by experienced patent attorney to describe the invention being protected. To ensure that patents are registered after passing the legal eligibility test of patentability, patent attorneys ensure that the claims are drafted in a manner such as to describe an invention that is new, useful and non-obvious in view of the “prior art”, wherein prior art refers to all the public knowledge and inventions that existed before the filing date of the patent application.

What does a patent protect?

A patent protects the functionality of an invention, which is extremely crucial in case of technology solutions embodied over Internet by way of handheld devices, such as, smartphones and tablets. In case of mobile app patents, execution of novel applications across the communication network can be protected by way of patents by focusing on a combination of software and hardware implemented aspects of the invention, which are written in the requisite details in the patent description along with a strong set of patent claims drafted thoroughly by the patent lawyer.

Why are patents important for technology companies?

Patents form a valuable component of a company’s intangible assets and investors consider patents as true strength of innovative technology companies. Patents signify that companies have strong and defensible business model that cannot be easily replicated by the competitors. A proactive and well formulated patent strategy results in robust investment prospects for early stage technology companies and tech startups.