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Sunday, September 20, 2009

PATENT FILING REQUIREMENTS IN INDIA

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/agent 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 (or provide the application number only, if it is filed as well as published in English)
(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 within 31 months from the date of earliest priority
(v) English translation of the priority documents, if filed and published in language other than English within 31 months from the date of earliest priority.

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 and supply the power of authority to your associate within one month of filing application in India. Power of authority is not required to be legalised or notarised, the only requirement is stamping as per the Indian Stamps Act, which shall be done by your associate/ agent in India.

The following requirements can be complied within 6 months from date of filing of the application, if your associate/agent 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.

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