Author is an Advocate and Patent and Trademark Attorney with Aswal Associates, Attorneys at law & Intellectual property, New Delhi, India and can be reached at sudhir@aswal.com. Author is a member of APAA, Delhi Bar Council, Delhi High Court Bar Association and Supreme Court Bar Association.
To minimize the cost of Patent filing and prosecution in India, there are number of things an attorney should take in to account.
In the event you are filing a PCT national phase application, provide your associate in India following information:
(i) Application details including title of the invention, names, addresses and Nationality of the inventors; applicants.
(ii) Complete specification as filed before the International office with claims, drawings and abstract.
(iii) English translation of the International Application if filed and published in language other than English.
(iv) Certified copy of the priority document/s if Form PCT/IB/304 is not available
(v) English translation of the priority documents, if filed and published in language other than English
Priority documents are to be filed in India within 31 months from date of priority, therefore if Form PCT/IB/304 is not available, provide your associate the certified copy of priority documents along with your instruction, so that all documentation can be completed on time.
Where the International application or the priority application are in language other than English, provide an English translation of the same to your associate.
Demand from your associate that power of authority as well as other formal documents be sent to you for execution.
The following requirements can be complied within 6 months from date of filing of the application, if your associate charges for late submission of documents these documents/information can be supplied along with the instructions to file the application.
- Where the Applicant is not the inventor, provide your associate with the Assignment deed or any other document by which the inventor/s have assigned their rights to the Applicant.
- Details and status of corresponding Applications in other countries for the same or substantially the same invention.
It will not only save the filing cost but also will minimize your prosecution cost as you would not be required to file petitions along with official fee for not complying with the formal requirements on time and seeking extension of time.
In India, the Patent rights accrues from the date of publication of application in India, it is therefore advisable to ensure speedy publication of the application. Ordinarily in case of the PCT national phase applications the statutory period of waiting till publication i.e. 18 months is already over, therefore the associate should be advised to expedite the publication by chasing the concerned authorities.
A Patent application in India is not examined unless a request for Examination is filed within 48 months from the date of priority. The ordinary time frame from filing of request to issuance of examination report is 18-24 months therefore it is also advisable to file the request for examination as soon as possible (not to wait for 48 months deadline) to expedite the grant in India.
The time frame for putting the application in order of Grant is 12 months from date of issuance of the examination report, but it is advisable to file the response and initiate the discussion with the examiner as soon as possible to avoid any last minute hassles.
- Related Videos
- Related Articles
- Ask / Related Q&A
- PATENT FILING REQUIREMENTS IN INDIA
- Trademark Law India
- Pct Filing in India
- The Product Patent Rule in India
- SAMSUNG CHALLENGES CONSTITUTIONALITY OF INDIA'S CUSTOMS REGULATIONS GOVERNING IMPORT OF IP GOODS
- Design Patent Law India
- Patents and Ethics in the Pharmaceutical Industry
- Knowledge Process Outsourcing At India!
Can I really sell my idea?
By: Russell Williams | 06/11/2009Yes; however, it is important to understand what you need to have in place to increase your odds of success. As you move your idea through the invention and patent process, your odds of success increase as your idea becomes more tangible and real.
Company Incorporation -The Procedure for Incorporating A Company in India
By: chaman | 28/10/2009Company incorporation is the act of making an official application to Companies House to create a company, which is well known the process of formation or process of incorporation. Full company name, the officers of the company and the principal address of the company on the register of companies held at Companies House are required to formalize the formation of a company.
Will Riches Come From Your Invention Submission
By: Oli Osorhan | 27/10/2009Overcome the barriers of making money from your revolutionary idea. The 4 barriers that stand in your way of obtaining a patent and selling it.
What is the difference between an idea and an invention and how do I properly document my idea?
By: Russell Williams | 26/10/2009The dictionary defines an invention as “a device, contrivance or process originated after study and experiment.” An idea is defined as “a formulated thought or opinion.”
What do I need to think about first in taking my idea to market?
By: Russell Williams | 21/10/2009Many inventors believe that they need to spend tens of thousands of dollars developing and manufacturing their ideas on their own to succeed, which is why you read so many stories about inventors who spent their life savings chasing an invention. While manufacturing is one option for certain inventors, it is not the most common option and certainly not the least risky.
Supreme Court of India adjudicates on dichotomy introduced for the first time by the Patents (Amendment) Act, 2005, in the Patent Law
By: Sudhir Kumar | 20/10/2009Supreme Court of India in its civil appellate jurisdiction adjudicated on a Patent dispute titled J. Mitra & Co. Pvt. Ltd. versus Asst. Controller of Patents & Design. & Ors.The Supreme Court granted the leave and directed the High Court to adjudicate the matter in interest of justice for only two appeals of such kind were pending in the High Courts. The special circumstances arises because of dichotomy introduced for the first time by the Patents (Amendment) Act, 2005
How to get a Patent
By: NoroIP | 19/10/2009A quick guide to the patent process. Includes important terms. While fairly straightforward, the technical terms and legal aspects of filing a patent application can be confusing. I’ve attempted to outline the patent process step-by-step and include simple explanations of patent terminology you will encounter along the way. It should be noted that getting a Trademark or Copyright follows a very different process.
Tips for preparing a great patent resume
By: NoroIP | 19/10/2009While general rules for preparing a resume also apply to those in the IP field, there are some basic additions that can help you create a great patent resume.
Supreme Court of India adjudicates on dichotomy introduced for the first time by the Patents (Amendment) Act, 2005, in the Patent Law
By: Sudhir Kumar | 20/10/2009 | PatentsSupreme Court of India in its civil appellate jurisdiction adjudicated on a Patent dispute titled J. Mitra & Co. Pvt. Ltd. versus Asst. Controller of Patents & Design. & Ors.The Supreme Court granted the leave and directed the High Court to adjudicate the matter in interest of justice for only two appeals of such kind were pending in the High Courts. The special circumstances arises because of dichotomy introduced for the first time by the Patents (Amendment) Act, 2005
SAMSUNG CHALLENGES CONSTITUTIONALITY OF INDIA'S CUSTOMS REGULATIONS GOVERNING IMPORT OF IP GOODS
By: Sudhir Kumar | 07/04/2009 | Intellectual PropertySamsung India Electronics Pvt. Ltd, Indian arm of Samsung Electronics Co. Ltd has challenged the constitutionality of India's customs regulations governing the import of IP goods in Delhi High Court by filing a writ petition. Samsung India is aggrieved by action of the Indian customs department that is not clearing its imports of dual-SIM-card mobile phones in view of application for registration of patent rights filed by the patentee in respect of similar technology with custom office.
Tradedress and Its Interpretation by Courts in India
By: Sudhir Kumar | 05/02/2009 | Intellectual PropertyTrade dress refers to characteristics of the visual or sensual appearance of a product that may also include its packaging which may be registered and protected from being used by competitors in relation to their business and services. The characteristic includes their shape (3 dimensional), packaging, colour, graphic design or even the smell of the product.
Yahoo!’s Yodel First Sound Mark Granted in India
By: Sudhir Kumar | 17/09/2008 | TrademarksYahoo!’s yodel became the first sound mark to be granted by Indian Trade Marks Registry. As per the provision of the Indian Trade marks Act a ‘Trademark’ means a mark capable of being represented graphically and which is capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others. It also denotes the origin of goods and carries goodwill of the business in respect of which it is used.
Patent Application for Pediatric Anti-aids Drug Nevirapine Rejected
By: Sudhir Kumar | 17/09/2008 | PatentsPatent office of India located at New Delhi rejected a patent application by German drug major Boehringer Ingelheim claiming syrup form of anti-AIDS drug nevirapine. The base salt i.e. Nevirapine was invented in 1989 by Boehringer Ingelheim and was not patented in India. Later on Boehringer Ingelheim filed an application for registration of syrup form of anti-AIDS drug nevirapine. After publication of application in the Indian Patent Journal the Indian Network of People Living with HIV/AIDS
Supreme Court Allows Appeal of Entertainment Network (india) Ltd. “radio Mirchi” and Refers Matter Back to Copyright Board for Compulsory License
By: Sudhir Kumar | 17/09/2008 | CopyrightM/s Entertainment Network (India) owner of FM Radia “Radio Mirchi” Ltd filed an appeal in the Supreme Court against M/s Super Cassette Industries Ltd owner of “T-Series” brand. The matter involved interpretation of Section 31 of the Copyright Act, 1957. Supreme Court was of the opinion that the order of the Board should be set aside and the matter be remitted to the Board again for the consideration of the matter afresh on merit and on those terms appeal was allowed.
Supreme Courts Bars Challenge to “peter Scot” on Principles of Acquiescence And/ or Waiver
By: Sudhir Kumar | 17/09/2008 | TrademarksKhoday Distilleries Limited (Now known as Khoday India Limited) filed an appeal against judgment and order dated 12th October, 2007 passed by a Division Bench of the High Court of Judicature at Madras in Trade Mark Second Appeal (TMSA) No. 2 of 1998 affirming the judgment and order dated 25th September, 1998 passed in T.M.A. No.3 of 1989 whereby and whereunder an appeal preferred by the appellant herein under Section 109 of the Trade and Merchandise Marks Act, 1958 arising out of an order date