Patent Prosecution

Unicita Consulting also provides patent prosecution services. The established team of patent agents and patent engineers at Unicita serve a wide range of industries and technology domains, for example, mechanical, electronics and communication, chemical, and semiconductor fabrication.

A patent is basically a set of “exclusive rights” granted by the Government for an invention for a limited period of time in consideration of disclosure of the invention by an applicant. A patent holder enjoys exclusive right to prevent a third party from an unauthorized act of making, using, offering for sale, selling or importing the patented product or process within the country during the term of the patent. An invention means any new product or process involving a technical advance and/or economic significance and capable of industrial application.

To be patentable, a person of ordinary skill in the art should not find the invention an obvious variation of an existing product or process. For the above reason, an inventor is encouraged to have a prior art search conducted by a person skilled in the art to identify existing products and/or processes.

Patent Prosecution in India
A person can file a patent application in India through any of the four patent offices in Kolkata (Head Office), Delhi, Mumbai, or Chennai. The patent application passes through the following stages:
A. Filing
B. Publication
C. Examination
D. Opposition
E. Grant

A. Filing
1. Application: An application for a patent can be filed by the true and first inventor. It can also be filed by the assignee or legal representative of the inventor, along with a proof of assignment by the inventor to the assignee. The applicant can be national of any country.

2. Contents of the Form for Patent Application:
An application for patent can be filed either as a provisional specification or a complete specification. A provisional application is generally filed when the inventor is yet to perfect the invention or evaluating the market’s need for his invention. Filing of a provisional specification allows the applicant to get an early application date. A Provisional Specification shall contain:

a. Title
b. Written Description,
c. Drawings, if necessary and
d. Sample or model if required.
The Complete Specification shall contain:

e. Title,
f. Abstract,
g. Written Description,
h. Drawings (Where necessary),
i. Sample or Model (if required by the examiner),
j. Enablement and Best Mode,
k. Claims and
l. Deposit (Microorganisms)
m. Title
Title is generally a word or a phrase and provides a brief description of the invention.

n. Abstract
It is a short paragraph describing the invention or the main embodiment of the invention in a precise manner.

o. Written Description
A written description contains an elaborate description of the invention along with a main embodiment and any additional embodiments. If drawings are included, the written description references the drawings where and when necessary and explains the invention in a clear and comprehensive manner.

p. Drawings (Where necessary)
The written description might be supplemented with drawings, where and when required. The drawings should be clearly labeled and where appropriate, reference numerals should be placed.

q. Sample or Model
On initiative of the inventor or when required by the patent examiner, samples or models might be submitted to the patent office to demonstrate the working of the invention.

r. Enablement and Best Mode
The applicant has to enable his invention in order to allow a person with ordinary skill in the art to make and work the invention. The written description should also include the best mode of working the invention in full clear, concise and exact terms so as to enable any person skilled in the art or science to make use of the invention.

s. Claims
The claims must define the subject matter of the invention for which protection is sought. The claims must be clear and concise and completely supported by the description.

t. Deposit
If the invention is using a biological material, such material should be deposited for the completion of the application when such material is neither available to the public nor can the material be described adequately in the detailed description. Examples of such a material include a microorganism. The deposition shall be made with the International Depository Authority under the Budapest Treaty, on or before the date of filing/priority. The International Depository Authority in India is Microbial Type Culture Collection and Gene Bank (MTCC) – Chandigarh.

3. Priority Date
Priority date is the date of first filing allotted by the patent office to an application. If the inventor files a provisional application and then files a complete specification, the filing date of the provisional application is the priority date. If an application for patent is filed in India based on a foreign application, the priority date is the filing date of the foreign application. Since India follows the “first to file” rule to determine priority, it is important for an inventor to file a provisional or a complete specification before disclosing the invention to the public.

4. Forms to be submitted at the time of filing.
The following forms have to be submitted at the time of filing a patent application:
a. Form 1 - Application for the grant of patent.
b. Form 2 - Provisional or Complete Specification.
c. Form 3 - Statement and undertaking by the applicant.
d. Form 5 - Declaration as to inventorship.
e. Form 26 - Authorization of patent agent or any other person.

B. PUBLICATION
A patent application will be published at the end of eighteen months from the priority date. If the applicant has given a secrecy direction, the application shall be published after the expiry of the prescribed period or when the secrecy direction has ceased to operate. It will also not be published if the application is withdrawn three months before publication date. On publication, specification including drawings and deposits shall be open for public inspection. The rights of the patentee start from the date of publication but they cannot be enforced until after patent grant.

C. EXAMINATION
1. Request for Examination
The process of examination starts with a request for examination. The request has to be made within 36 months from the date of priority or filing, whichever is earlier. However, if secrecy directions have been given for the application, the request can be made six months after the directions are revoked or thirty six months from the date of priority or filing, if that date is later.

2. Examination
On receiving the request, the controller shall direct the patent application to the Examiner for examination. The examiner is usually skilled in the art to which the patent application pertains. The examiner makes a formal examination by verifying the format and correctness of all documents filed with the application. Next, the examiner verifies the patentability of the subject matter recited in the claims. For example, if the claims recite a new feature comprising a set of instructions (program) designed to control a known computer to cause it to perform desired operations, without special adoption or modification of its hardware or organization, then no matter whether claimed as “a computer arranged to operate etc” or as “a method of operating a computer”, etc., the claim is not patentable and hence excluded from patentability. After confirming that the application falls within the scope of patentable subject matter, the examiner conducts a prior art search to check if there is prior art, which anticipates the invention claimed. Next, the examiner verifies the existence of inventive step, Industrial application, and Enablement and Best mode. The findings of the examiner are listed in a document called “the examination report”. If the examination report requires an action by the nventor, the controller sends the examination report to the inventor and gives him an opportunity to correct any defects or reply to the Examiner. The inventor is usually given 1 year from the issuance of the first examination report to close the prosecution of the application. An application can be rejected if the inventor fails to overcome the examiner’s rejection.

D. OPPOSITION
1. Pre-grant Opposition
Any person can file an opposition for grant of patent after the application has been published. Opposition may be filed on any of the following grounds:
a) Wrongfully obtainin.
b) Prior publication / prior claimin g
c) Prior claiming in India
d) Prior public knowledge or public use in India
e) Obviousness and lack of inventive step
f) Not an invention or the invention not patentable
g) Insufficient description of the invention
h) Failure to disclose information or furnishing false information relating to foreign filing
i) Convention application not filed within the prescribed time
j) Incorrect mention of source/geographical origin of biological material
k) Invention anticipated with regard to traditional knowledge of any.

2. Post-grant Opposition
Any person can file an opposition within a period of twelve months after the grant of a patent. It can be filed based on the following grounds:
a) Wrongfully obtaining
b) Prior publication / prior claiming
c) Prior claiming in India
d) Prior public knowledge or public use in India
e) Obviousness and lack of inventive step
f) Not an invention or the invention not patentable
g) Insufficient description of the invention
h) Failure to disclose information or furnishing false information relating to foreign filing
i) Convention application not filed within the prescribed time
j) Incorrect mention of source/geographical origin of biological material
k) Invention anticipated with regard to traditional knowledge of any community, anywhere in the world.
A pre grant opposition can be filed by any person, by way of a written representation. However, a post grant opposition can be filed only by a person interested, for example, a person engaged in, or in promoting, research in the same field as that to which the invention relates. The “person interested may provide a notice of opposition to the controller general of patents in the prescribed manner.

3. Process of Opposition
On receiving a notice of opposition, the controller of patents notifies the patentee. The controller then constitutes an Opposition board to deal with the opposition. The Opposition board decides the issues after hearing to both the parties. The patent may be invalidated, its scope narrowed by way of amendments or remain unchanged. If amendments are required, they have to be made within the prescribed period in order to maintain the patent.

E. GRANT
If the application satisfies all the requirements of the patent act, the application is said to be in order for grant. The controller of patents will mail an order of grant to the applicant along with a chart showing the maintenance fees and their due dates. A granted patent shall be published in the official gazette and shall be open for public inspection. A granted patent gives the patent holder the following exclusive rights:

a) Where the subject matter of the patent is a product, the exclusive right provides the applicant to prevent third parties, who do not have his consent, from the act of making, using, offering for sale, selling or importing for those purposes that product in India;
(b) Where the subject matter of the patent is a process, the exclusive right to prevent third parties, who do not have his consent, from the act of using that process, and from the act of using, offering for sale, selling or importing for those purposes the product obtained directly by that process in India. However, the Indian government can make use of the patent for its own purposes or for distributing an invention relating to medicine to hospitals. Furthermore, Educational institutions and research institutes can utilize the patent for educational and research purposes.



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