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Freedom to Operate FTO Search – Salient features:

  • 10+ Years of Business, 125+ Full Time Searchers, 30+ Tech Areas, 800+ Freedom to Operate Searches / month.
  • Multi-lingual (16+ Languages) capabilities covering 100+ Countries.
  • Wide patent and non-patent literature coverage (scientific literature, journal articles, conference papers, TKDL library and many more).
  • Search results support the clearance of your products, technologies, or processes
  • Multiple variants to match your budget and completeness requirements.
  • Searches and manual analysis conducted by subject matter experts, reports includes expert comments on each prior-art.
  • Conducting patent infringement risk assessments and uncovering licensing needs.

Patentability Searches

The YPT Advantage:

  • YPT is a Team of 225+ technology/industry experts who speak inventor`s language and having deep understanding of Indian and Global patent laws.
  • YPT has unique understanding of global and industry wide IP best practices as it has supported 1,000+ clients from 45+ countries in multiple technology areas ranging from complex subject matters in life sciences/engineering/ICT to simple household inventions.
  • Ethics is #1 priority at YPT and we will never misguide you and always be frugal with your resources.
  • YPT believes in delivering business benefit from your patent and walk with you on-the-ground to make it happen.
  • YPT has a good network within all four branches of Indian Patent Office for expedited and accurate information/ processing.

About Your Patent Team (YPT)

Your Patent Team (YPT) is an exclusive group of world leading technology/industry experts with deep understanding of global patent laws. YPT team of 125+ experts cover variety of tech areas including Pharmaceutical, Chemical, Mechanical, Electrical, Biotechnology, Electronics, Telecommunication, Software, Information Technology and more. YPT serves clients in over 45 countries and is one of the very few organizations who understand global IP best practices to the core. YPT utilizes this expertise to advise our clients to help them get world class advise and IP protection. Further, with vast global network and work volumes, YPT not only ensures that you get the strongest and broadest protection, but makes sure that you get at the optimum costs. Again, YPT is one of the only organizations in the world where work does not stop at clients getting the IP protection but where experts walk with the client till they are able to get returns from their IP protection. YPT is trusted alike by industry associations (like FICCI, PHD Chamber of Commerce, FISME, etc), Government Departments and Ministries (like Department of Science and Technology), Fortune 500 companies, SMEs, Universities, Start-ups, Foreign Law Firms, and Individual Inventors in India and abroad. We have presence in 90+ jurisdictions to help our clients get best protections worldwide.

Why Choose YPT?

  • Your Patent Team (YPT) is an exclusive group of world leading patent attorneys who are technology/industry experts with deep understanding of global patent laws. YPT team of 125+ experts cover variety of tech areas including Pharmaceutical, Chemical, Mechanical, Electrical, Biotechnology, Electronics, Telecommunication, Software, Information Technology and more.
  • YPT serves clients in over 45 countries and is one of the very few organizations from India who understand global patent best practices to the core. YPT utilizes this expertise to advise clients so they get world class advise and patent protection.
  • With vast global network and work volumes, YPT not only ensures that you get the strongest and broadest patent protection globally, but makes sure that you get this at the optimum costs.
  • YPT is one of the only organizations in the world where work does not stop at clients getting the patent protection. Here our business experts walk with the client till they are able to get monetary returns from their patent protection.
  • YPT is trusted alike by industry associations (like FICCI, PHD Chamber of Commerce, FISME, etc), Government Departments and Ministries (like Department of Science and Technology), Fortune 500 companies, SMEs, Universities, Start-ups, Foreign Law Firms, and Individual Inventors in India and abroad. We have presence in 90+ jurisdictions to help our clients get best protections worldwide.

✓ 225+ Technology Experts : Covering Whole Range of Technical & Legal Subject Matters.

Clients From 45+ Countries : Knowledge of Global IP Best Practices.

✓ Always on Client’s Side : Minimize Expenses – Maximize Return.

✓ Beyond Patents : Complete Handholding in Monetization.

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More about Patents in India

What types of industrial property rights exist in India?

India has patents, patents of addition, designs and trade marks. Applications for all of these can be filed with the Indian Patent Office.

What are patents of addition in India?

Patents of addition relate to improvements in or modifications to patented inventions. A patent of addition cannot be granted before the main patent is granted. If the main patent is revoked, the patentee may request the conversion of the patent of addition into an independent patent. Patents of addition have the same term as patents for the main invention.

How long is the term of protection of Indian patents?

The term of protection of an Indian patent is 20 years from the date of filing of the application, subject to the payment of annual fees. The 20-year term was introduced by the Patents (Amendment) Act 2002. It also applies to all granted patents whose term had not expired on 20 May 2003. Under the previous law the term was 14 years from the date of filing.

What inventions cannot be patented in India?

Chapter II, Section 3 of the Indian Patents Act stipulates what is not considered an invention under the law and is therefore not patentable in India:

  • inventions being frivolous or contrary to public order, morality, public health, the environment, etc.
  • scientific discoveries
  • mere discoveries of new forms of known substances
  • methods of agriculture or horticulture
  • diagnostic, therapeutic and surgical methods for the treatment of humans or animals
  • plants and animals other than micro-organisms
  • mathematical or business methods or computer programs per se or algorithms
  • literary, dramatic, musical or artistic work or any other aesthetic creation
  • schemes, rules or methods of performing mental acts or methods of playing games
  • presentations of information
  • topography of integrated circuits
  • traditional knowledge

Inventions relating to atomic energy are not patentable either.

Can computer software be patented in India?

Under Section 3(k) of the Indian Patents Act, computer programs as such are not considered patentable subject-matter, but they may be protected under copyright law. An invention containing a computer program may be patentable if an essential part of the invention claimed is subject-matter other than a computer program and if this subject-matter is sufficiently disclosed in the specification.

Is India a member of the Patent Cooperation Treaty (PCT)?

Yes, India became a contracting state to the Patent Cooperation Treaty (PCT) on 7 December 1998. Since then it has been possible to designate India in international patent applications filed via the PCT route.

As a foreign applicant, do I need to appoint a professional representative in India?

The law does not say that you have to. However, if you reside abroad, you must furnish an address for service in India which will be used for all communications from the Indian Patent Office. The address of an authorised patent agent, for example, could serve as an address for service.

Which of India’s four filing offices should I file my patent application with?

India’s four filing offices are in Kolkata, New Delhi, Mumbai and Chennai. Each has a separate territorial jurisdiction. Where you file your application depends on

  • where you live
  • where your business is located, and
  • where the invention actually originated.

For foreign applicants without a place of business or address in India, the territorial jurisdiction is defined by the address or place of business of their patent agent.

What language must I use for a patent application in India?

The official filing languages in India are English and Hindi. In the case of Patent Cooperation Treaty (PCT) applications not filed or published in English, an English translation must be submitted within the 31-month time period.

Can I claim priority for an application filed in India?

Yes, you can claim priority when filing a patent application in India. A certified copy of the priority document must be submitted within three months of the date of filing of the application. The priority period is 12 months from the earliest priority claimed. It is possible to claim multiple priorities. Domestic priority (based on a previously filed application in India) is also available.

What do I need to do to get an early filing date in India?

For non-Convention applications it is possible to get an early filing date by filing a provisional specification, which has to be followed by a complete specification within 12 months of filing. Provisional specifications cannot be filed for divisional, Convention or PCT national phase applications.

Does India allow divisional applications?

Yes, applicants may file one or more divisional applications at any time prior to the grant of a patent.

What is a provisional specification in India?

Provisional specifications can be used to secure a priority date for an application. They describe the nature of the invention without claims, and should contain the title and description of the invention. A full specification, including claims and an abstract, must be submitted within 12 months of the provisional filing.

Are Indian patents subject to substantive examination?

Indian patents are subject to formal and substantive examination. Substantive examination is carried out on request (by the applicant or an interested party) to determine if the invention meets the patentability requirements (novelty, inventive step and industrial applicability).

How soon after filing an application in India do I need to file a request for examination?

You must submit this request within 48 months of the date of priority or the date of filing of the application, whichever is earlier. If you do not file a request for examination within the prescribed time limit, the application will be deemed to be withdrawn.

Can I request that my application be published earlier than 18 months from the filing date in India?

Yes, you can request early publication. The application will be published within one month of the date of the request, subject to payment of the prescribed fee.

Can I withdraw my application before it is published in India?

Yes. In India, if you make a request for the withdrawal of your application within 15 months of the date of filing or date of priority, whichever is earlier, the application will not be published.

Can I submit third-party observations on an Indian patent application?

Yes. Any person can oppose the grant of a patent by submitting observations to the Controller of the Indian Patent Office at any time after the publication of the patent application and before the announcement of the decision to grant. The statement and evidence presented in this “pre-grant opposition” will only be considered if and when a request for examination of the application has been filed.

When is the first office action usually issued in India?

Since May 2006, the first office action, also called the First Examination Report (FER), is normally issued within six months of the date of the request for examination.

What is the time limit for responding to official actions in India?

You should comply with all the legal requirements and meet all the objections put forward in the First Examination Report (FER) as soon as possible. If you fail to respond to the FER within 12 months of the date of issue, your application will be deemed to have been abandoned.

When do I have to pay annual fees in India?

In India, the annual fees are due from the second year of the pending application. You have to pay the first annual fee on the second anniversary of the date of filing of the complete specification. If the application is granted more than two years after the date of filing, the accumulated annual fees are payable within three months of the date on which the patent was recorded in the register. Further annual fees are due each year, in advance. India has a two-tier fee system with different fees for individuals and legal entities.

Is there a grace period for paying annual fees in India?

Yes. The time limit for the payment of annual fees can be extended by up to a maximum of six months. This extension can be obtained on request, upon payment of a fee for each month of extension.

Can a lapsed patent be restored in India?

In India, provided the failure to pay the annual fee was unintentional, patent holders can file a request for restoration of a patent within 18 months of the lapse date, subject to the payment of an additional fee.

Can I request an extension of the patent term in India?

No, currently India does not allow the extension of patent terms.

How can I challenge a granted patent in India?

Since January 2005, India has had a post-grant opposition system under which you can oppose a granted patent within 12 months of the announcement of the decision to grant.

Interested parties, or the government, can also file a petition for revocation of a patent at any time during the life of the patent. Such petitions must be lodged with the Intellectual Property Appellate Board (IPAB) or at High Court level.

Where can I search Indian patent information in English?

The Indian Patent Office website provides a free search system for Indian patent information called “InPASS” (Indian Patent Advanced Search System). The system allows full text searches for published patent applications, granted patents and legal status information for Indian patents. It also provides online access to the Patent Office Journal, which is updated weekly on Fridays.

Where can I find official information about patent fees in India?

You will find the Indian Patent Office’s current fee schedule under Forms and fees on the IP India website.

Can I access the documents in the file of an Indian patent application?

Yes. Once an application has been laid open, anyone can file a written request for file inspection and obtain certified copies upon payment of the requisite fee.

Alternatively, provided the relevant records have been digitised, you can download the documents in the file from the Indian Patent Office’s free InPASS website.

Where can I find information about patent agents in India?

You can find information about patent agents in India in the Electronic list of patent agents on the IP India website.

 

When can you use ‘patent applied’ or ‘patented’ in India?

There can be confusion about when to use the phrase ‘patent applied’ and ‘patented’. The whole patent procedure can be very hectic. From the date of filing of patent application to the grant is a long procedure. If you present your invention to someone at a stage where the patent application is yet to receive a grant, then you can use the phrase ‘patent applied’ on it. This acts as a notice that you have filed a patent application for the invention. It serves as a warning to infringers that they might be liable to legal prosecution, charges, etc. in the future once the patent is granted.

The term ‘patented’ can be used on an article or invention or product when it has been granted a patent. This is the clearest notice to everyone that you have secured protection for your invention. Any potential infringements can be liable to serious legal repercussions.

We have years of experience and are well aware of the latest norms, regulations and procedures. Our job is to assist you in every step of the way so that you can secure comprehensive protection for your invention.

Below is a free e-book on a Quick Guide to Patents.

A Quick Guide to Patents, Understand how to modify the technical aspects of a patent

Here you can Download our FREE Help Guides:

Provisional Specification and Complete Specification: What is the Difference in India?

There is a vast amount of difference between Provisional Specification and Complete Specification.

A Complete Specification is a regular patent application that the patent office prosecutes, examines and grants.  A Complete Specification consists of the total disclosure of the invention along with Claims that define the legal limits of the invention. The disclosure also contains a detail method stating the working procedure of the invention.

A complete specification is sometimes difficult to produce as an invention may still be in its developmental stage.  In that scenario, you can provide a Provisional Specification which does not consist of the Claims. However, it comprises of the Novel and inventive features of the invention.

Here are some important points that you should be aware of:

  • You should file the Complete Specification within 12 months from the date of filing of a Provisional Specification. Otherwise, the patent office will consider your application as ‘abandoned’.
  • There is no hard and fast rule to apply for a Provisional Specification before filing the complete one. An applicant can directly file a Complete Specification while applying for a patent.
  • Although a Provisional Specification doesn’t consist of a Claims Section, it still defines the legal state or demarcations of an invention. Hence, you must be careful while drafting a Complete Specification. You must draft the claims within the scope of the Provisional Application. The patent office might reject your application if you introduce new matter.
  • One or more Provisional Specifications can be combined to form the complete one. In this case the Provisional Specifications needs to be of similar nature or derivatives of similar languages.

You select the Specification using Form 2.

A Quick Guide to Patents, know the difference between Provisional Specification and Complete Specification

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What are patents? What are their advantages in India?

Patents are a set of rights granted by the government to an inventor for a definite period of time. They are techno-legal documents containing the details of a novel, non-obvious and commercially feasible inventions or products. These exclusive legal rights prohibit third parties from making, using, and selling of products without the patentee’s consent. This also holds true for importing or exporting the patented product from a particular country. If a third party or entity wrongfully uses the rights, then the patentee can sue for patent infringement.

The advantages of patent are as below:

  • The inventor/ company which get the grant patent for a particular product enjoy a monopoly over that product. Thus, they can keep competitors at bay.
  • Researchers or inventors can license their patents to other entities which will eventually be monetarily beneficial for them.
  • An increase in chances of investment.
  • The status ‘patented’ helps in effective branding.

Our team of expert professionals can help you with drafting and filing a patent application. We have years of experience and are well aware of the latest norms, regulations and procedures. Our job is to assist you in every step of the way so that you can secure comprehensive protection for your invention.

Also, below is a free e-book on a Quick Guide to Patents.

A Quick Guide to Patents

A Quick Guide to Patents

Here you can Download our FREE Help Guides:

How can Indians file a patent internationally?

There is no such thing as a ‘global patent’ that is acceptable worldwide. You have to file separately either through the Paris Convention or Patent Co-operation Treaty System. With this, your application will get the acknowledgement of an international patent.

Paris Convention– For all member countries enlisted in the Paris convention, an applicant can file directly in the corresponding country within 12 months from the date of filing that is the Priority Date.

Patent Co-operation Treaty– In this system an applicant can file the patent application in the PCT contracting states within 30-34 months from the Priority Date ( here is an exception to the usual 12 months’ time frame from the Priority Date). You must note that all formal works are done in the form of documentation and simplified logistics. Through the PCT system an applicant can also get to know the International Search Report of his invention. However, an applicant must be aware that the PCT application itself must be filed within 12 months from the Priority Date. Also, know that every Paris Convention country may not be a member of the PCT contracting state. For filing patent applications in those countries; applicant has to take help of the Paris Convention.

A Quick Guide to Patents

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What do you mean by patent paralegal services in India?

Patent Paralegal Services in India are important for any company to analyse and draft the legal documents and ensure proper coordination. Basically, these services are important to keep watch on the IP activity of their competitor. Patent paralegal services in India includes preparation of documentation and ensures one of getting patent docketing. Patent Paralegal Services also help one in patent proofreading and PTA calculations. It is essential to monitor the patent application and keep all the updates about the field of invention.

Patent Paralegal Services are important for any company to analyse and draft the legal documents and ensure proper coordination. Basically, these services are important to keep watch on the IP activity of their competitor. Paralegal service includes preparation of documentation and ensures one of getting patent docketing. Online Patent Paralegal Services also help one in patent proofreading and PTA calculations. It is essential to monitor the patent application and keep all the updates about the field of invention. The monitoring that the paralegal services provide helps to search for any invalid patents in a particular domain. This ensures their rights to use the technology without any legal risk.

 

A Quick Guide to Patents

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What is the term of a patent in India? Is it renewable?

The term of a patent is twenty years according to the Indian Patent Act. It starts from the date of filing in case of domestically filed patents. The validity of a patent for national phase applications is twenty years from the date of International filing. In some countries, you can adjust this validity period if the patent office delays in granting a patent. This is also true for a delay from regulatory bodies in case of pharmaceutical and agricultural patents. However, the Indian patent office doesn’t entertain an extension of patent validity. After the expiry of a patent, it cannot be renewed.

Term of a patent

Term of a patent

To know more, read What are the Important Elements of Patent Prosecution in India?

Our team of expert professionals can help you with drafting and filing a patent application. We have years of experience and are well aware of the latest norms, regulations and procedures. Our job is to assist you in every step of the way so that you can secure comprehensive protection for your invention.

Below is a free e-book on a Quick Guide to Patents.

A Quick Guide to Patents

Here you can Download our FREE Help Guides:

When to file Patent Infringement suit in India?

You can file a patent infringement lawsuit only after the grant of a patent. However, the very first step should not be to file a lawsuit. First, you should spend your time to research and find out as to how exactly your patent is being infringed. Establish solid ground about your case.

Then, you should send a cease-and-desist letter to the infringer to notify them about the patent infringement. The next step is to work out a solution with the other party. You can ask them to stop using the product.

The next best solution is to discuss the possibility of a license for a fee if the infringement is not significant. This will allow them to use the invention and you shall receive compensation for the damages. However, if this doesn’t work out for either party then you should file a patent infringement lawsuit. You should take a look at some Patent Infringement cases before drafting a complaint.

Hire an attorney, and draft a complaint with them. Ensure that you have done a thorough background check and your grounds for filing a solid. To make a strong case, perform a Patent Invalidity Search. File the lawsuit with a federal court and notify the infringer about the same.

Now, the litigation process will begin and the court judge will listen to both parties. He/she will deliver judgement on the patent infringement based on the merits of the case.

Also, read more about Patent Revocation in India here.

A Quick Guide to Patents

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What is patentability search? Is it mandatory in India?

A patentability search determines whether a particular invention is eligible for acquiring a patent or not. It is also known as a prior art search, or simply, patent search. The parameters of the search are novelty, non-obviousness and commercial application. Hence, these three criterion together determine the patentability of an invention. It’s advisable to conduct a patentability search worldwide or at least in the countries you wish to protect your invention.

The scope of the search covers both patent and non-patent literature. Hence, you not only have to check federal databases of different countries, but also avenues like research blogs, websites, etc. If there is any information in the public domain, in any form, that describes your invention, then your invention is not novel.

You can do this process by yourself or you can hire a patent professional. A patent professional, with their experience and skills, can produce highly accurate results while searching). For India, you can use the Indian Patent Advanced Search System as the primary database for checking patents. However, this is not a mandatory step. If you’re confident enough about your invention meeting all the patentability criterion, you can directly file a patent application.

You can also read our elaborate article on Why do we need a prior art search for deeper insights.

A Quick Guide to Patents

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Patent examination: Who can file a request in India?

You can file a request for a patent examination yourself. If you are an organisation, then your immediate subsidiary or a patent agent can also file it. You can file the request for examination using Form 18 from Forms and Fees. If you are a small entity like a start-up, you can have an expedited patent examination using Form 18A.

Form 18, Request for Patent Examination

Form 18, Request for Patent Examination

Further ahead…

Now, an examiner from the field of the invention examines the application and issues a First Examination Report or FER. The FER is sent to the primary applicant. This report contains the objections that the examiner has with your application. It might involve technical and/or non technical errors. You as the primary applicant must respond to the examination report within 6 months. The applicant can file for an extension of 3 months if needed but not beyond this. You must respond within this prescribed time limit. Otherwise, the patent office will consider your application as “abandoned“.

You respond to the FER in the form of an Office Action Response. Your job is to clear all the objections in order to get a grant for your patent application.

Check out our article on What are the Important Elements of Patent Prosecution in India? to know more.

A Quick Guide to Patents

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What are the restrictions for filing outside India for Indian residents?

For Indian residents opting for foreign or international filing, there are some restrictions for filing. They have to abide by the following rules:

  • An Indian applicant has to wait for a minimum time period of 6 weeks before he can file a patent application abroad. However if he wishes to file the application prior to this waiting time he has to get the permit by submitting a request for Foreign filing at the Patent Office.
  • An applicant may wish to file directly at a foreign country before applying for the same in India. In that scenario too he needs to file a request for Foreign Filing permit at the Patent Office. Only after obtaining permit from the office he can proceed further.

If an applicant fails to take permission from the Indian Patent Office before filing of an international Patent Application, his/her patent application will be considered as abandoned and a granted application will be officially cancelled. The applicant might have to serve a period of 2 years of imprisonment or fine or both.

Hence, you should take the restrictions for filing very seriously.

A Quick Guide to Patents

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Can you modify the technical aspects of a patent in India?

Basically, the short answer to whether you can modify the technical aspects of a patent in India is, NO. There is no chance to do any modifications or add something in a Complete Specification of the patent application. But, if you need to amend or add some new matter, you can do so by filing a Patent of Addition. For this, you need to a separate patent application apart from the original patent application. Therefore, the improvements or amendments to be done must be mentioned in this Patent of Addition.

You can read more about the Patent of Addition on the IP India website. Our team of expert professionals can help you modify the technical aspects of a patent by the means of a patent of addition. We have years of experience and are well aware of the latest norms, regulations and procedures. Our job is to assist you in every step of the way so that you can secure comprehensive protection for your invention.

Below is a free e-book on a Quick Guide to Patents.

A Quick Guide to Patents, Understand how to modify the technical aspects of a patent

A Quick Guide to Patents

Here you can Download our FREE Help Guides:

What is the process of patent application in India?

The process of patent application in India is similar to most countries. First, the persons who can apply for a patent application are the true or first inventor, an assignee or a legal representative. The form is to be properly filled and submitted at the required Indian Patent Office. The 4 main offices in India are located at Delhi, Mumbai, Kolkata and Chennai. You need to file application only with the offices which comes under the jurisdiction of your state of residence, or the place of origin of invention. Also, for foreign applicants who do not have a business place or are not resident of India can take the help of a patent agent to file the application with the correct office.

Priority Date is the initial or very first date on which you file the patent application. The Priority Date carries a lot of significance. The application with the earlier filing date gets first priority.

The patent office also considers the application with an earlier priority date for foreign or international filing. All the applications filed subsequently will have similar priority date as that of the parent application. Hence, you refer these subsequent applications as the family members of the parent application. The process of patent application is generally the same with only a minor change in format. This depends on the country where you file the application for. The applicant needs to take the help of the patent agent or attorney of the required country as he/she will not be able to file individually.

A Quick Guide to Patents, know the process of patent application

A Quick Guide to Patents

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What is the procedure for Patent Co-operation Treaty?

The PCT comprises of the following procedures:-

Filing– You need to file an international application with WIPO or a national or regional patent office. The application must abide by the requirements of PCT. It must be drafted in a language and submitted along with a set of fees.

International Search– An International Searching Authority is a major patent office in the world which is responsible for finding out probable ‘prior-arts’. Whether an invention is patentable or not and the inventor’s potential patentability is declared by the ISA in a written format.

International Publication– The contents of the publication is disclosed just after 18 months from the earliest filing date.

Supplementary International Search– There is a second ISA that finds out the prior-art on request if they are overlooked by the first ISA. This is entirely optional.

International Preliminary Examination– This is again an optional step which is conducted on request generally on the amended version of a patent application.

National Phase– This is done at the end of the PCT phase, usually 30 months from the very first application filing date.

How do I protect my invention in multiple countries?

Patent rights are limited to territories. To protect invention in several countries simultaneously you can go for the Direct or Paris Route or the PCT Route.

What is a PCT Route?

You can file an application under the PCT directly or within the 12-month from the filing date of a first application under the Paris Convention. This is applicable for all Contracting States of the PCT. It is much simpler and cost-effective.

Who can use the PCT Route?

The PCT Route is generally used by the major corporations, research institutions, and universities in order to obtain international patent protection. Small and medium sized enterprises (SMEs) and individual inventors also seek protection through PCT. A yearly list of the PCT filers is published in the PCT newsletter.

How does an International Patent Application effect?

Generally the international patent application you file serves the purpose or is equally effective as that of the national patent application (and certain regional patent applications). If the international patent application meets all the rules and regulations as stated in the Treaty and Regulations along with its applicability in all PCT Contracting States, then it will not be required to adapt to or draft a separate national phase patent application. The requirements as stated in Treaty and Regulations if met successfully will not require further adaptation to national or regional requirements. You will be exempted from the cost too.

Who can file an international patent application under the PCT?

A person is eligible to file in an international patent application if he/she is a native or resident of a PCT Contracting State. An application may comprise of several applicants. In those scenarios, only one of those applicants needs to fulfill the requirements.

Where can I file an international patent application?

You can file an international patent application with the national Patent Office or directly to the WIPO (subjected to provision of permission by the state’s national security). These two offices act as the PCT receiving office. However you will be required to file an international application with the respective regional patent office if you are a resident of a country which is party to the European Patent Convention, ARIPO Harare Protocol and OAPI Bangui Agreement.

What is the cost of filing an international application under the PCT?

A PCT applicant is generally required to pay three types of fees while filing an international patent application. They are (a) an international filing fee (b) a search fee depending on chosen ISA and (c) a transmittal fee that depends upon the receiving offices. More details on forms and fees are described elaborately in www.ipindia.nic.in

How much fee reduction is available under the PCT?

For all applicants who file electronically, are always eligible for a fee reduction depending on the type of filing and application format submitted. Apart from this to make more people leave the conventional pen and paper method and adapt to electronic filing of the PCT system, applicants from developing nations get additional concession on fees. These individuals get almost a 90% reduction in some determined fees which include the international filing fee.

How long does it take for a PCT process to be completed?

An applicant has a time span of 18 months from the time an international patent application is filed (or usually 30 months from the filing date of the initial patent application) before he/she proceeds with the national phase procedures and formalities. This additional buffer time enables an inventor/ applicant to judge the potential and commercial viability of the invention in the desired countries. The overall time required for a patent to be granted varies depending upon the national or regional patent offices. This is because each and every regional or national office examines a patent application according to the corresponding regional patent laws.

What is the significance of “Claim Priority” of an earlier patent application?

Applicants who wish to protect their invention in multiple countries are required to first file a national or regional patent application with their national or regional patent Office. Within 12 months from the filing date (Priority Date) of the first application, the applicant has to file an international application under the PCT. Claiming Priority of an earlier filed application negates the possibility of invalidation of a patent for any reason.

In what language can you file an international patent application?

An international patent application can be filed in any language with the receiving office. If your application is in a language that is not or cannot be supported by ISA then you are required to submit a translation of your application. It is required for the purpose of an international search. Receiving offices however accepts application that is in a language competent to ISA and a “publication language”. Publication language is one of those in which international patent applications are published. Those languages are Arabic, Chinese, English, French, German, Japanese, Korean, Portuguese, Russian and Spanish. Thus as a translator you always have an option or choice of language while filing application.

Which Office will be responsible for carrying out the international search of a PCT application?

The availability of an International Searching Authority or ISA to the residents of a country is determined by the receiving Office where the international application was filed. Sometimes, receiving offices do give a choice to the applicant to choose an ISA.

What is PCT International Search?

It is a high quality search of the relevant patent documents and other technical literature in those languages in which majority of the patent applications are filed. The search quality is maintained as per the standards prescribed in the PCT and is executed by qualified staffs. The results are published in an international search report. A written opinion on potential of an invention is also drafted by ISA.

What is the value of the international search report?

This report enables you to determine the chances of obtaining patents in the PCT contracting states. The report result can be both in your or against your favor. This however will help you in deciding whether and how you should proceed further with your application (this is when search report is favorable) or how you can amend the claims in your application or can withdraw them (in case of unfavorable search report).

Is an international search carried out for all international applications?

The thumb rule is to conduct an international search for all international applications. However, there might be certain conditions when ISA will be unable to conduct a search. In those cases, ISA will issue a declaration stating non-issuance of international search report. ISA can also issue a partial report search if it feels that the application has multiple inventions but the applicant has not paid additional fees to conduct the search for all entailed additional inventions.

What does the written opinion of the International Searching Authority signify?

Simultaneously while the international search report is published, a preliminary opinion on whether the invention adheres to or meets the patentability criteria is established. The written opinion is sent to the applicant along with the international search report. It helps an applicant understand and interpret as to how the chances of obtaining a patent can be enhanced.

What is a PCT supplementary international search?

Apart from the PCT International Search, an applicant can request the ISA to conduct one or more supplementary searches apart from the PCT main international search. This can reduce the scope of new patents to be discovered in the national phase itself. Also, it helps in determining the technical scope of an invention to broader realm.

What is a supplementary international search report?

This is more or less similar to the main international search report. The supplementary international search report consists of a list of patent documents and literatures that might pose a challenge to the patentability of the invention claimed in the international application. Sometimes, the supplementary international search report contains a detail analysis and explanation than the main international search report.

What does an international publication under the PCT consist of?

WIPO is responsible for publishing the international application shortly after the expiration of 18 months from the priority date along with the international search report.  All PCT international applications are published online and can be found on PATENTSCOPE.

Can third parties access documents in the file of an international application?

Nobody is allowed access an international application unless the applicant himself requests or authorizes it (till the time of international publication that is 18 months after the priority date). If an applicant withdraws the application before international publication the also third parties cannot access it. After the international publication some documents are made public in PATENTSCOPE which then serves as a medium to access.

What is an international preliminary examination?

An International Preliminary Examination (IPE) is a second step to evaluate the patentability of an invention. Generally, people opt for this examination if they make any changes to their application. The changes can be due to issues regarding the application in the Written Opinion of International Search Authority (WO-ISA).

After an initial international search and the report published an applicant may wish to make changes in the international application in order to overcome challenging documents identified. This preliminary examination allows participating in the examination process and influencing the findings of the examiner before entering the national phase. The ISA conducts the International Preliminary Examination and produces an International Report on Patentability (IPRP).

This report is similar to the WO-ISA and allows you to assess the impact of the changes you made. Bear in mind, the IPE is an optional step, and you should opt for it preferably only if you make significant changes to your application.

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What is the value of the international preliminary report?

The International Preliminary Report on Patentability (IPRP) provides information on the chances of gaining a patent. During the PCT International phase, you have to select an International Search Authority (ISA). The ISA will produce a report, which is the Written Opinion of ISA (WO-ISA) based on its research. Hence, this report will let you know the chances of getting a patent.

You can make changes to your application after reviewing the WO-ISA to avoid any challenges with securing the patent grant. After making these changes, you can take an International Preliminary Examination (IPE) to see the impact of your changes (optional). The ISA conducts this examination and produces the international preliminary report on patentability (IPRP). However, if you feel you don’t need to make any changes, then the WO-ISA is converted into the IPRP. Therefore, IPRP is a crucial document in the national phase of PCT as patent offices refer to the information in the report while making decisions.

We can assist you with drafting and filing an international application. Also, we will ensure that we support you throughout the entire patent process. Especially at the time you enter the national phase. Our team of experienced experts are always aware about the latest norms, rules and regulations.

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How to enter the national phase in India and abroad?

Once you have decided that you wish to proceed further with your international application you have to enter the national phase. This requires paying requisite fees, submitting translation of applications in some cases. Every case is different and you will need to assess the state of your application in each country that you apply for. You must keep in mind the deadlines and respective due dates. Generally, you must enter the national phase of your application within the first 30 or 31 months of the initial date of filing. Hence, it is of utmost importance that you track your application status on a regular basis. Once your international phase is clear, you should start your preparation for the national phase.

We can assist you with drafting and filing an international application. Also, we will ensure that we support you throughout the entire patent process. Especially at the time you enter the national phase. Our team of experienced experts are always aware about the latest norms, rules and regulations.

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National Phase: What happens to my application in India and abroad?

Once your application enters the national phase, the national or regional patent Offices begin the process of determining as to grant you the patent or not. Now, the national phase entry often depends on the filing route as well. There are 2 broad options, which are Patent Co-operation Treaty and Paris Convention.

Let’s consider the example of PCT. The PCT route provides you with an international search report, the written opinion of ISA and sometimes an international preliminary examination report. These make the examination easier for the concerned offices. Further, the granting of the patent application in every country is in the hands of the respective patent office. You might get a grant in one country but another country might reject your application (along with certain valid reasons).

Our team of expert professionals can help you with drafting and filing a patent application. We have years of experience and are well aware of the latest norms, regulations and procedures. Our job is to assist you in every step of the way so that you can secure comprehensive protection for your invention.

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What is a Patent Co-operation Treaty or PCT?

It is an international treaty with more than 150 participating countries. For Inventors who wish to seek patent protection in multiple countries can do so by filing a single patent application. It is not required to file separate national applications for multiple regions. Whether the patent will be granted on not depends on national or regional patent Offices.

What is a Paris Route?

It is also known as the Direct Route. You can file applications separately in countries where you wish to seek patent protection. All the applications can be filed simultaneously. Also, you can file an application in any one of the member states of the Paris Convention. The remaining applications can be filed separately within 12 months from the filing date of that first patent application.

How can I find whether my invention in public domain already exists or not in India?

One can find that whether his invention in public domain exists or not. You can find whether the invention in public domain exists by performing out a prior art search. You can also go to the Indian Patent website and search for patents in the patent database. But generally, you should do a worldwide search to know if your idea is already patented in any other part of the world. It is because if it’s patented in any country, the patent will be treated as prior art. Also, look for non-patent literature such as research papers, journals, or anything else which describes your idea.

 

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Can I file a patent outside India?

Yes, you can file for a patent outside India by filing a PCT application. For filing a patent outside India, an international patent application can be filed in IPO as a receiving office in PCT request form using PCT-SAFE. After the grant of such permission, the Patent Office India shall transmit the application to the IB. The applicant has to pay the prescribed transmittal fee in addition to the International Application fee and search fee.

The Patent Cooperation Treaty (PCT) assists applicants in seeking patent protection internationally for their inventions, helps patent Offices with their patent granting decisions, and facilitates public access to a wealth of technical information relating to those inventions. By filing one international patent application under the PCT, applicants can simultaneously seek protection for an invention in a very large number of countries.

he Patent Cooperation Treaty (PCT) makes it possible to seek patent protection for an invention simultaneously in each of a large number of countries by filing an “international” patent application. Such an application may be filed by anyone who is a national or resident of a PCT Contracting State. It may generally be filed with the national patent office of the Contracting State of which the applicant is a national or resident

 

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What do you mean by patent translation in India?

Patent translation in India is the specialized task of converting patent-related documentation into another language.  This could be for a set of patent claims, a description, and drawings, prior art or legal documentation relating to a patent dispute.

Patent translation requires the substantial cost of a translator who has the specialized technical skill necessary to translate complex industry jargon and legal patent language. Most translators can handle about 2,000 words per day, or eight pages, meaning that the average 9,400-word patent application will take about a week to translate without accounting for quality assurance measures such as proofreading. Translation costs represent a major budget item for those who plan to apply for patent protection in more than one nation.

A strong patent translation in India can have a positive impact on the value of your international patents, while poor translation can lower their value. Because a good translation must marry complicated technical content with expertise about both the science and language issues at hand, hiring the wrong professional can have grave consequences in the form of major errors in content. These consequences include:

  • Production delays
  • Increased costs for correcting erroneous translations
  • Damaged ability to enforce international patents

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What do you mean by patent prosecution in India?

Patent prosecution in India is the legal right to protect your intellectual property. Patent prosecution usually refers to the process of obtaining patent protection on an idea, invention, design, or plant. The first step of patent prosecution in India occurs when you file an application with the patent office, or your attorney files it on your behalf. The waiting period is about 24 months for most patent applications, after which the application will be assigned to a reviewer.

Patent Prosecution is not merely a process of interaction between an Applicant and/or his Legal Representative and a Patent Office with respect to patentability of a patent, but, for the Applicant, it is also a test of legal and technical competence that it believes the Legal Representative possesses. Patent prosecution is highly individualized and reflects the underlying skill set of each Attorney as the prosecution process itself involves high level of technical negotiation and interpretation of specific terminologies with the patent office, which in the end has high-impact value for the client.

 

 

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What is patent docketing in India?

Patent docketing in India is a method or system for managing the patent application process. Docketing is an important tool for patent law firms, as it can be rather difficult to keep track of all patent applications for customers. Since each patent application can take up to several years, more and more patents are entered into the docketing system to better manage each one.

Many people assume that the patent docketing in India is merely data entry. Therefore, it can be hard for a law firm to find a qualified person to work on the patent docketing system. While a significant amount of data does, in fact, need to be input into the patent docketing system, the system itself can be incredibly complex in terms of the amount of information being kept and the number of patent applications being stored. For example, once information is entered into the system, it is up to the docketer to compute the due date manually and enter that date into the system.

Docketing is one of the most important facets of managing intellectual property. Therefore, organizations need to maintain a top-notch docket management system. Otherwise, the expenses of creating and maintaining patent records can skyrocket. Docketing tools efficiently keep track of fees, payments for applications, and deadlines. They even send reminders to all involved parties when needed.

 

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When does the Indian patent application get published?

There are two ways in which an Indian Patent Application can be published. They are automatic publication and early publication. The publishing of an Indian patent application would happen automatically after eighteen months from the date of filing or date of priority. This is called automatic publication. A request for early publication is possible by filing form-9 and paying the prescribed fee of Rs.2,500 for a natural person or Rs.10,000 for other than a natural person.

After filing the patent application, the patent office publishes your application in the office patent journal. The publication of only complete application takes place as the patent office does not publish provisional applications. It is important to publish the patent application as early as possible. This is due to the fact that the rights of the patentee start accruing only after the publication date.

 

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What is the difference between provisional and non-provisional patent application in India?

A provisional patent application allows you to begin securing patent rights while a non-provisional patent application is the first step toward a legally recognized patent. A provisional patent application is meant to help protect your idea and give you time to perfect it. Once you have the design and function ready, you can apply for the non-provisional patent.

Both provisional and non-provisional application protect your idea. With a provisional patent application, you also hold your place in the queue should you file for a non-provisional patent. While choosing to file a provisional patent will extend the total patent pending time, it should be seen as a benefit. When you first come up with an idea, it often takes time to develop and perfect it.

Non-provisional patent laws require inventors to submit an application for a patent within a year of showing the product in any way. This includes in print, at a trade show, or images of the item. If you don’t submit within that time frame, the chance to file for a patent is gone.

When you file a provisional patent application, it gives you another 12 months to make your idea better. Many inventors struggle to get a perfect prototype completed within the one-year period. But provisional patent will buy some extra time to work out the kinks.

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Can I patent an idea in India?

No, you cannot patent an idea in India. The invention itself has to be produced or a patent application containing the invention must be filed with the Indian Patent Office. While all inventions start with an idea, not every idea can be called an invention. Understanding the difference between ideas and inventions is critical to understanding the core ideas about patents.

It is, of course, axiomatic that an idea is an essential first step toward any invention. Nothing can or will happen without an idea, so in one sense ideas are a critical, and valuable, piece to the overall innovation equation. In and of themselves, however, ideas are not monetarily valuable. Without some identifiable manifestation of the idea there can be no intellectual property protection obtained and no exclusive rights will flow.

 

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What is the renewal fees in India for a patent?

India’s Patent Act mandates patent holders to pay renewal fees in India for keeping their patents in force for the entire term.

Like most countries, patents in India are granted for a period of 20 years from the date of filing of the application, and international filing date in case of the Patent Cooperation Treaty (PCT) National phase application.

The first renewal fee is payable before the expiration of the second year of the patent – which is essentially the start of the third year of the patent.

Subsequently, the renewal fees in India is paid before the expiration of the previous year of the patent. For example, the renewal fee for the 7th year would be payable before the expiration of the 6th year of the patent.

When a patent is granted for an invention in India, the next vital step is to ensure that it is renewed regularly and unceasingly. This can be done by the payment of Patent Renewal Fees diligently during the lifetime of the patent i.e. 20 years. The renewal fees in India for individuals and small entities is 800-2000 and the standard renewal fee is 4000.

 

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How can I file a patent in India?

You need to follow certain steps to file a patent in India. Firstly you need to check whether your invention is patentable or not. Then, you need to become a registered member of the Indian Patent Office. After that, you need to gather the information about your invention and draft an application before you submit your application to the Indian Patent Office. YPT will help you with the whole process of patent filing in India.

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How can YPT help me in patent filing in India?

YPT has expertise in patent filing in India. YPT has an in-depth understanding of working style of each of the four patent offices in India. YPT utilizes its knowledge of the patent enforcement ton draft applications quickly thereby saving your time and money. YTP is trusted alike by industry association for its quality services. Our professionals have expertise of patent filing to the core. We will assist you with all the steps involved in the procedure of the patent grant.

 

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What is the difference between Utility patent and Design patent in India?

The essential difference between utility and design patents is the difference in protecting “How it looks” (design) vs. “How it works” (utility).  If you’re concerned about competitors copying the appearance of your concept, then apply for design patents.  If you want to protect the functional features of your concept, then apply for utility patents. In some cases, it may be appropriate to file design and utility patent applications.

 

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What is patent prosecution in India?

Patent prosecution in India is the process of writing and filing a patent application. It helps in pursuing protection for the patent application with the patent office.  It also helps you develop an intellectual property protection strategy, including preparing and filing patent applications with the patent office.The patent prosecution phase includes all the communications to and from the Indian Patent Office from the time of filing the patent application to grant of patent. After the patent grant, the patent will be in force only when the patentee pays the annuity fee regularly.

 

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What is the patent filing fee in India?

The patent filing fee in India varies depending upon the class in which the inventor falls. The cost of filing is different for individuals, small entity groups and large entity groups. The fee can range from 10,000-50,000 Rs. in general.

Patent filing fees in India payable for a patent application are:

  1. Application for grant of Patent
  2. Provisional or Complete specification
  3. Statement and Undertaking
  4. Declaration as to Inventorship
  5. Request for publication
  6. Request for examination of application for Patent
  7. For extra sheet over 30 sheets
  8. For extra claim over 10 claims

 

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What is the difference between product and process patent in India?

A product patent protects a product. It offers high protection to the original inventor to reduce the competition for the same product. Whereas, a process patent protects the process through which one manufactures the product and not the product. It reduces the element of monopoly in the market. As India is a part of TRIPS agreement, the agreement requires all its members to shift their patent regime from process to product patent.

Product Patent

Under this regime, the patent is granted to the original inventor of the product. Here are a few characteristic features of a Product Patent:

  • The grant of a product patent implies that no other person other than the inventor can manufacture the same product using the same process or any other process.
  • Product patent provides a ‘True Monopoly’ right to the inventor
  • Product patents are considered to be a higher level of protection compared process patents.

Process Patent

As the name says, a process patent is granted only to a particular process and not to the end product that is a result of such a process.

  • The protection is seen as a limited parent. This is because any other manufacturer or inventor can create the same product using a different process.
  • A process patent gives a low rage of protection to the inventor. Hence, the chances of competitors reverse engineering the product are high.
  • Also, there can be multiple process patents for a single product.

 

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Is it mandatory in India to provide software code for getting software patents ?

There are two requirements regarding the submissions and getting software patents in description of a patent:

  1. The written description should be enabling, means that the content of the specification should support the claimed subject matter.

 

  1. The written description should disclose the best mode to perform an invention.

 

Till the time you can provide enough material to support both the above points, it is not mandatory to submit the code. You can use various pseudo-codes. If not, then you may need to submit the code.

 

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What do you mean by design patent in India?

A design patent in India is a form of intellectual property protection which allows an inventor to protect the original shape or surface ornamentation of a useful manufactured article. This applies to any unique form or otherwise perceivable design features of an object – for instance, a chair, table, hand tool, clock, bottle or purse.

A design patent in India protects the ornamental appearance of an invention, i.e., how a product looks and not how it works. Design patents are typically cheaper and quicker to obtain than utility patents.  While design patents offer limited protection compared to the broader scope of utility patents, filing a design patent application may still be worthwhile if you want to protect the appearance of your product or concept from being copied.

For design applications filed  the patent term is 15 years after issuance without need for any renewals or maintenance fees. Design patents are typically cheaper and quicker to obtain than utility patents especially for a small entity (e.g., individual or company with less than 500 employees),

 

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What do you mean by patent registration in India?

Patent Registration process in India is basically a process to file an application to register your invention under Patent Act. It provides you with the monopoly to use your invention for the public. A registration helps you to get a patent of an intellectual property right to an invention carried out by an individual or firm.A patent registration helps you to get a patent of an intellectual property right to an invention carried out by an individual or firm.The four patent offices are located at Kolkata, Mumbai, Delhi & Chennai.

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What is the patent filing procedure in India?

The patent filing procedure in India is an essential task for getting a patent grant. There are several steps involved to file a patent application in India. The steps are:

  1. Patentability Search
  2. Drafting patent application
  3. Patent filing.
  4. Publication of the patent application.
  5. Request for examination
  6. Office response
  7. Patent grant

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What is pre-grant opposition in India in the patent process?

Section 25(1) of the Indian patent (Amendment) Act 2005 provides a provision for filing a pre-grant opposition in India against a patent application. Under this provision any person, any third party or the Government may challenge the application of grant of patent and inform to the controller of Patents of the opposition, in writing against the grant of a patent after the application for a patent has been published and/but before the grant of the patent. Pre-grant opposition acts as a defensive shield to confirm the validity of the patent applications before patents are granted to them. The pre-grant opposition in India acts as a safety net to capture questionable patent applications before a patent is granted to them. If someone thinks that your patent has infringed their patent or if they want to oppose it for some purpose, then they oppose your patent in the Indian Patent Office. This is known as pre-grant opposition.

Pre-grant opposition can be made on the grounds listed under section 25(1) (a) to (k) of the Patent Amendment Act, 2005:

  • Wrongfully obtaining the invention
  • anticipation by prior publication
  • anticipation by prior date, Prior claiming in India
  • Prior public knowledge or public use in India
  • Obviousness and lack of inventive step
  • non patentable subject matter
  • insufficiency of description of the invention
  • non-disclosure of information as per the requirement or providing materially false information by an applicant
  • Patent application not filed within 12 months of filing the first application in a convention country
  • nondisclosure/ wrong mention of source of biological material
  • Invention anticipated with regard to traditional knowledge of any community, anywhere in the world.

 

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What is electronics patent filing in India?

Electronics patent filing in India is an online method of filing patents.  Online patent filing provides you with the platform to file your application electronically which is accessible to everyone. So, the process starts with signing in as an unregistered filer and ends on the successful completion of the patent filing.one just needs to register himself on the ipindia site to commence the proceedings of the patent filing. Using the electronic filing system, anyone with a web-enabled computer can file patent applications and documents without downloading special software.

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