Image description
 

Patents :::

   


Patents are granted by the Government, for the commercial exploitation of an invention for a specific period of time in consideration of the disclosure of the invention so that on expiry of the terms of the patent the information can benefit the public at large.

 

Patentable Inventions:

A patent can be granted for an invention which may be related to any process or product. The word "Invention” has been defined under the Patents Act 1970 as amended from time to time.

"An invention means a new product or process involving an inventive step and capable of industrial application"

   

Therefore, the criteria for an invention to be patentable are,

(1) An invention must be novel

(2) has an inventive step and

(3) is capable of industrial application

 

Various types of Patent Applications in India

  

Ordinary Application

An application for patent made in the Patent office without claiming any priority of application made in a convention country or without any reference to other application under process in the office is called an ordinary application.


Convention Application (S.135)

When an applicant comes to the patent office with an application claiming a priority date based on a similar application filed in one of the convention country, it is called a convention application (By virtue of Paris convention). To get a convention status an applicant should file the application in Indian patent office within twelve months from the date of first filing of a similar application in the convention country. The priority document (S.138 (1)) and its English translation (if required) (S.138 (2)) also should be submitted by the applicant. A convention application should be accompanied by a complete specification.


PCT International application

 

PCT is an international filing system for patents in which the applicant gains an international filing date in all the designated countries conferring the late entry (up to 31 months) to the national offices without affecting the priority date. This is a simple and economical procedure for those applicants seeking protection for the inventions in many countries. Indian Patent office is a receiving office for international applications by nationals or residents of India. An international application shall be filed with the appropriate office in triplicate in respect of head office and quadruplicate in respect of branch offices, either in English or in Hindi language .


PCT-National Phase Application

 

An international application made according to Patent Cooperation Treaty (S.2 (1) (oa)) designating India can enter national phase within 31 months from the international filing date. This application filed before the Controller in the Indian patent office claiming the priority and international filing date is called PCT National Phase application. Applicant can enter national phase with a request made on white paper. But Form 1A is preferred by the Indian Patent office during National Phase Entry. The title, description, drawings, abstract and claims filed with the application shall be taken as the complete specification for the purposes of filing in India. The filing date of the application shall be the international filing date accorded under the Patent Cooperation Treaty. It is not mandatory for the applicant to submit the documents while entering the national phase for filing the application in the designated or elected member countries, as it is obligatory on the part of WIPO to send those things to the designated offices. However for convenience and faster processing the applicant may submit the necessary documents. Office may ask for any other documents, which are necessary in addition to what was submitted along with the application.

 

Basic requirements to enter National phase in India

Under the said basic requirements to start the national phase in India, the applicant is required to file the following with the DO/IN (Designated office) or EO/IN (Elected office) within the prescribed time limit:-

  1. An application on a plain paper (Form1 may be used, however the option remains with the applicant);

  2. National fee.

As per DO/IN or EO/IN the special requirements of the Office are as follows:

 

 

  • Name, Nationality and address of the inventor if they have not been furnished in the "Request" part of the international application,

  • Instrument of assignment or transfer where the applicant is not the inventor,

  • Document evidencing a change of name of the applicant if the change occurred after the international filing date and has not been reflected in a notification from the International Bureau (Form PCT/IB/306). Form 6 and/or Form 13 is also required.

  • Declaration of inventor ship by the applicant,

  • Statement regarding filing of corresponding applications in other countries,

  • Power of attorney if an agent is appointed,

  • Address for service in India 

  • Verification of translation, and

  • Copy of International application or its translation

 

Procedure for Patent in India

 

APPLICATION FOR PATENT

 

1. Who can apply?

 

Persons entitled to apply for a Patent in India. An application for a patent for an invention may be made by any of the following persons either alone or jointly with another.

  • True and first Inventor

  • His/her assignee

  • Legal representative of deceased inventor or assignee.

The applicant must be a national of India or of a convention country. Convention country means any country, which is a signatory or party or group of countries, or union of countries or intergovernmental organizations which are signatories or parties to an international, regional or bi-lateral treaty, convention or arrangement which India is also a party to be a conventional country/countries for the purpose of the Act (U/S133) as one who accord to citizens of India the same rights in respect of the grant of patents and the protection of patent rights as it accords to its own nationals.

The prescribed fee for making application of patent and other proceedings are different for a natural person and other than natural person.

2. Where to apply?

Application for the patent has to be filed in the respective patent office as mentioned below where the territorial jurisdiction is decided based on whether any of the following occurrence falls within the territory

  • Place of residence, domicile or business of the applicant (first mentioned applicant in the case of joint applicants)

  • Place from where the invention actually originated.

  • Address for service in India given by the applicant when he has no place of business or domicile in India. (Rule 5)

A foreign applicant should give an address for service in India and the jurisdiction will be decided upon that. An applicant (Indian or foreigner) also can give his Patent Agent's address as address for serving documents if he/she wishes so.

 

3. How to apply? (Rules 6,7,8 and 9)

 

Application for patent (Form 1) in duplicate should be accompanied by the following documents.

 

· Provisional or complete specification and drawings (if any) in duplicate.

· Statement and undertaking regarding foreign filing details in respect of the same invention.

· Declaration as to Inventor ship (In the case of a convention application and PCT National phase application and fling complete after provisional)

· Priority document (if it is a convention application)

· Power of attorney (if the application is made through a patent agent)

gpa-powerofattorneyforiprmatters.pdf
General Power of Attorney IPR Matters