What are The Crucial Elements of Patent Prosecution in India?

Let’s first understand the meaning of patent prosecution in a legal perspective. The patent prosecution refers to the complete process of filing the application and applying it to seek protection from the registered Patent Office. During the course of patent prosecution, a number of elements have to be handled, such as early publication request, examination request, pre-grant opposition, and many more.

Let’s have a look on the patent prosecution elements in India, for which we provide our assistance.

  1. Early publication request: The patent application is automatically published in official journal after 18 months of the filing date to make it a part of prior art after its publication. But, an applicant can request for its publication before 18 months, which have its associated advantages and disadvantages.
  2. Examination request: An examination request can be filed within 48 months after the filing of application. Once the application is not filled within this time period of 48 months, then the application will be deemed to be withdrawn. This request can be filed after the publication, along with the request for early publication, or on the filing date. For requesting the examination, the applicant has to fill an associated form with its examination fee. Once the request is filed, now the controllers gave the charge to the examiner for the examination purpose.
  3. Examination report response: Once the examination gets conducted on the basis of Indian Patent Act section 12 and 13, the patent office issues a report or examination analysis report that includes all the mistakes and objections which were made by the applicant in the application, so that it can all be corrected. A time period of 6 months to rectify all those mistakes or corrections is given to the applicant.
  4. Pre-grant opposition: There is also a provision that any third party can file an opposition application in the prescribed format to oppose the patent before its grant. This is filed under the section 25(1), sub section (2), sub-section (3) of section 29, or section 8 of the Indian Patent Act, depending upon the number of oppositions filed, without any statutory application fees. The applicant may also stand against the opposition.
  5. Post-grant opposition: There is also a provision that any third party can file an opposition application in the prescribed format to oppose the patent after its grant, within its expiry period of 1 year. This is filed under the section 25(2), subsection (2), sub-section (3) of section 29, or section 8 of Indian Patent Act, depending upon the number of oppositions filed, with the prescribed fee. The applicant may also stand against the opposition.
  6. Annuity fee: Once all the patent requirements are met in accordance with the Patent Act, the patent gets its grant and is valid for 20 years from its filing or priority date. To sustain its validity till 20 years, an annuity fee has to be paid from the 3rd year till its 20th
  7. Statement & Undertaking: The statement and undertaking has to be filled in accordance with the section (8) of the Indian Patent Act, without any statutory fee. In these, the applicant has to give in writing that he will keep the Controller informed about the details regarding corresponding applications for patents filed outside India from time to time.
  8. Statement of working of patent: It is mandatory to submit a statement of working to the controller in prescribed form, without paying any extra statutory fee, every year. If in any case, the applicant fails to submit this, then he/she may have to pay a heavy fine as a penalty.
  9. Submission of certified copy: A certified copy has to be taken from the Indian Patent Office, so that in case, it is required to be deposited in International bureau of WIPO, or patent offices to file any conventional application by claiming the priority of Indian application.
  10. Getting the foreign filing license: In order to get patent for the application even outside India, a foreign filing license (permission in written format) has to be taken from the Patent Office after paying the associated fee. If in case, the applicant wants to file patent outside India first, then he/she is must to have that license, otherwise will have to pay a lot of amount as penalties. There is also one possibility that the applicant first files application in India, and then outside India after 6 weeks of the filing date.
  11. Modifications in patent application: There is a provision that the applicant can update his/her own work by filing a request for amendments, in accordance with the section (57) of Indian Patent Act 1970. This can be requested both, before and after the grant of the application. There may also be a case that the applicant wants to give the patent rights to someone else with his/her full consent. Or the applicant may also wish to change his/her address details or any other details. Well! This can also be done by submitting a request application in the prescribed format.

 

This is how we can help you!

Your Patent Team (YPT) is an exclusive team of more than 125 members specializing in a number of domains, such as Pharmaceutical, Chemical, Mechanical, Electrical, Biotechnology, and Electronics, Telecommunication, Software, Information Technology and many more, serving clients from more than 45 countries. We provide support to our client through all the patent prosecution elements.

Here’s a list of all the areas where we can help you:

  • We provide our mentorship to our clients on the basis of pros and cons of early publication according to what our client’s wants.
  • We analyze the objection came out from the raised in the examination report, and provide our support in drafting its counter response.
  • We provide our assistance in all the phases of patent preparation, draft creation, patent filing for the pre- and post-grant of patent.
  • We can keep our clients updated by sending remainders at different stages through the course of patent grant.

We have a fully responsive team consisting of technical subject experts, patent attorneys, and IP attorneys, who understands IP practices till its core. And we make it all possible because of them.

Come, Let us serve you once!

To know more about us, please visit our Indian patent prosecution services here.