1. Patent Search/Prior Art search:
A search or a prior art search is a preliminary process before filing/applying for a patent. Before such a right is granted, there is a rigorous check on whether the process or product is inventive/ novel. The search tells you whether other patents have already been issued that may disclose or suggest your invention.
2. Patent Drafting:
Patent Drafting is an art. Patent drafting is the process of writing the description and claims with regard to your application. We get the details of the invention via an invention disclosure form from the inventor where we collect information on the invention which helps our attorneys to draft the patent application which highlights the claims of the inventor. The draft includes the title of the invention, a background of the invention, inventor/s details, claims regarding the invention, drawing, and pictures, detailed description of the invention and declarations. Drafting a patent specification is a highly skilled job, which can be only performed by persons who have both technical as well as patent law expertise.
3. Patent Filing:
To file a patent application, a set of forms have to be submitted to the patent office. The forms can be submitted online on http://www.ipindia.gov.in/. You can either file a provisional patent or a complete specification.
4. Provisional Patent:
Provisional applications are generally filed at a stage where the invention is not fully complete. Therefore, filing a provisional application allows the applicant to get an early application date. A complete specification has to be filed within 12 months from the date of filing the provisional application.
Requirements of a provisional patent:
- A provisional patent application has to be submitted via Form 1 and Form 2 which should contain the Title of the invention, Name, Address, and Nationality of the applicants and preamble to the description.
- The Title of the invention has to clearly indicate the subject matter to which the invention belongs
- Drawings/photos wherever required
- Claims cannot be included in the provisional patent as the purpose of filing a provisional patent is to get a priority date.
- A complete specification has to be filed within 12 months of filing the provisional application failing which the application will be abandoned.
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5. Complete Application:
An application filed in the Patent Office without claiming any priority of application made in a convention country or without any reference to any other application under process in the office is called a complete/ordinary application. An ordinary application must be accompanied by a complete specification and claims.
Requirements:
- Complete specification must fully describe the invention, its operation or use and the method in which it will perform. It should contain claim/s the scope of the invention.
- An abstract to provide technical information about the invention
- Power of Attorney to the Patent agent in the form of Form 26
- Form 3 must be filed along with the application or within 6 months of filing the application
- Form 28 along with a proof of small entity status if filed under small entity/startup.
6. Publication of the Patent application:
Publication of the application is a critical step in the Patent process as the applicant’s rights start from publication date. Typically, the application is published in the Official Patent Office Journal automatically after 18 months from the date of filing of the application or the priority date, whichever is earlier. Only complete applications are published, whereas the provisional applications unless filed as a complete specification within 12 months are neither published nor examined by the Patent Office.
There is a provision for early publication under Section 11A (2) of the Indian Patents Act, 1970, which states that “The applicant may, in the prescribed manner, request the Controller to publish his application at any time before the expiry of the period by filing a Form 9 and paying requisite fees.
7. Request for Examination:
Request for examination is a mandatory step in the process and missing the deadline will result in the application being marked as withdrawn by the Patent Office. If the request for examination is made within the prescribed time limit, the Indian Patent office takes up the application for examination. Request for Examination can be filed within a period of 48 months from the priority date (date of first filing of the invention, can be provisional patent or complete patent / non-provisional patent) or date of filing of the patent application whichever is earlier. This has to be filed via Form 18 by paying requisite fees.
8. Issuance of Examination Report
Examination Report would be issued by the Patent Office any time after the Request for examination is filed. An examiner prepares a report of examination after examining the application and sends it to the controller. The Controller considers the report of the examiner and gist of objections if any is sent to the applicant in the form of a report – First Examination Report (FER).
Most common Objections raised by the Controller:
- The invention lacks novelty, inventive step and/or industrial applicability
- The subject matter of the invention is relating to a category, which is “Not an invention” as per Section 3 or Section 4 Patents Act, 1970.
- The claims are not written correctly and do not articulate the elements of the invention clearly
- The claims are inconsistent with the specification.
- The claims are not clear and described ambiguously
- The claims describe more than one invention
- There is a non-fulfillment of any other requirement under the Act.
9. Examination Report Reply:
A reply to the examination report has to be drafted very meticulously as it may jeopardize the application. If the objection is procedural then you have no choice but to comply by taking corrective actions. If the objection is technical then it can be countered by arguments and citing previous case laws and if any amendment in the claims is required. In case the objection is with respect to Novelty and obviousness, the technical differentiation with respect to prior art needs to be brought out.
10. Hearing with the Controller:
If the submissions to Examination report are not accepted by the Patent Office, then they will give an opportunity of being heard. The Agent on behalf of the applicant would appear before the Controller and would try to substantiate the patentability of the invention. Post hearing written submissions have to be made based on the outcome of hearing.
11. Grant of Patent:
After the above steps, the patent application will proceed to Acceptance or Rejection.
