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Preparation of an application
Our patent filing/ patent prosecution process typically start with interviewing the inventor to understand the nature of the invention and help clarify its novel features. Practitioners need to ascertain what is already known to people familiar with the general field of the invention—such already-known material is termed the prior art, and to obtain drawings and written notes regarding the features of the invention and the background. In order to find the prior art we do prior art / patentability search
During this initial phase, sometimes termed "patent preparation", our Lawyers may also seek to determine precisely who contributed to the making of the invention. An incorrect listing of inventors may incurably invalidate any patent that might result from an application, though you have the option of correcting such errors within one year from filing. Our Lawyers may also seek to find out whether any publications, offers for sale, or other such public disclosures of the invention were made. Under the laws or regulations of some international jurisdictions, public disclosures or offers to sell an invention prior to filing an application for a patent may prevent the issuance of the patent. This may be important in a PCT application
After drafting an application for patent, and reviewing it twice for the strength of the claims and further checking for the regulatory compliance, etc our Lawyers will files the patent application with the patent office. Usually, our Lawyers seeks to file the application as soon as possible, to get the benefit of the "first-to-file rule" where ever such rules applies.
Filing an application
Most patent applications have at least two components, including a general, written description of the invention and at least one "embodiment" concerning the invention , and a set of "claims," written in a special style that defines exactly what the applicant regards as the particular features of his or her invention. These claims are used to distinguish the invention from the existing prior art, and are compared by the patent office to the prior art before issuing a patent. Patent applications may include a drawing or set of drawings, to facilitate the understanding of the invention. In some cases patent models or prototypes may also be submitted to demonstrate the operation of the invention. In applications involving genetics, samples of genetic material or DNA sequences may be required.
The patent application is filed with the following documents
Application for grant of patent in Form 1;
Form 2 accompanied by two copies of the complete patent specification;
Two sets of the drawing figures, if any, one set of which should be in thick A-4 size white sheets;
Duly stamped power of attorney in Form 26 authorizing the agent;
Declaration of the inventorship signed by the applicant in Form 5;
Priority documents, if any, if not in English, English translation thereof;
The Statement and Undertaking regarding corresponding foreign filings in Form 3; and
Proof for the applicant’s right to apply for patent.
To obtain a lodgment date, what is required is:
Name and address of the applicant;
Name(s) and addresse(s) of the Inventor(s); and
The priority details.
Search and examination
The search and examination phases constitute the main part of the prosecution of a patent application leading to grant or refusal. A search is conducted by the patent office for any prior art that is relevant to the application and the results of that search are notified to the applicant in a search report. Generally the examiner conducting the search indicates in what aspect the documents cited are relevant (novelty, inventive step, background) and to what claims they are relevant. The materials searched usually cover all published patent applications and technical publications. The patent office can provide a preliminary, non-binding, opinion on patentability, to indicate to the applicant its views on the patentability and let the applicant decide how to proceed at an early stage.
The search report is typically published with the patent application, 18 months after the earliest priority date, or if it is not available at that time it is published once it is available.
The examination of patent applications may either be conducted at the same time as the search (as in the US, where a search report is not issued), or at a later date after the Applicant has requested examination (as, for example, under the EPC). All patent applications will be published in the official gazette on the expiry of 18 months from the date of filing or the date of priority whichever is earlier. Applications wherein a secrecy direction is given under section 35 will not be published.
Once the application is published any person can file a representation opposing the grant of patent. All such representations will be considered by the patent office at the time or examination of the application done when a request for examination of the application is filed.
Examination is the process by which a patent office determines whether a patent application meets the requirements for granting a patent. The process involves considering whether the invention is novel and inventive, whether the invention is in an excluded area and whether the application complies with the various formalities of the relevant patent law. The request for examination must be filed after the publication of the application but within 36 months from the date of priority or date of filing. Patent Office will issue the First Examination Report after the examination. The Applicant must respond to the objections raised by the Examiner within the prescribed time. All procedural compliances must be met within 3 months from the date of receipt of the First Examination Report, or as may be prescribed. All substantive objections raised by the Examiner must be removed or addressed and the application must be re-filed to put the application in order for grant within 6 months from the date of the First Examination Report. The applicant may respond to the objections by arguing in support of the application, or making amendments to the application to bring it in conformity. Alternatively, if the examiner's objections are valid and cannot be overcome, the application may be abandoned. An extension of time upto 3 months is available. However, this extension can be availed only before the expiry of said 6 months period and in circumstances beyond the control of the applicant.
Once the patent office is satisfied that the applicant has complies with all the requirements under the Patents Act and the Patents Rules, the Patent Office will issue a notice regarding Intimation of Grant. Thereafter, the Letters Patent is be issued to the applicant.
The patent granted will remain open for objection by interested parties for 12 months from the date of publication of the patent in the Patent Journal.
A renewal fee or a maintenance fee is to be paid at the expiration of two years from the date of the grand and every succeeding years for 20 years. A patent becomes ineffective if the renewal fee is not paid in time.
If the examiner and the applicant cannot reach agreement regarding the patentability of the application, the applicant may file an appeal to the appellate authority, asserting that his patent application was wrongly rejected. For such an appeal to be successful, the applicant must prove that the patent office was incorrect in applying the law, interpreting the claims on the patent application, or interpreting and applying of the prior art vis a vis the patent application. If the appeal is successful, the appellate authority may order that a patent be issued based on the application, or that the patent office correct its examination of the application if the patent office is found to have been incorrect. Otherwise, if the applicant is not found convincing, the rejection of the patent application may be upheld.
Generally, an applicant is free to abandon his or her patent application at any time, and may "disclaim" his or her patent even after the patent is issued. Such abandonment may occur during the prosecution process, such as when the applicant is unable to convince the patent office to withdraw a rejection of his or her patent application. Further, abandonment is often held to have occurred if the applicant fails to respond within a certain time period to an office action issued by the patent office, or if the applicant specifically expresses his or her intention to abandon the application.
Following abandonment, an applicant is usually barred from later seeking patent protection for the same subject matter which was earlier abandoned by the applicant.