In order to improve the efficiency and transparency in filing and processing of Patent Applications and to ensure accuracy of Patent data as well as related certificates provided by the Patent office, the Govt of India has proposed to make e-filing of Patent applications mandatory. The draft of proposed amendments i.e. Patent (Amendment) Rules 2011 have been published for inviting public opinion and is expected to be notified soon. Any objections and suggestions to same may be submitted to Ministry of Commerce. Government of India by April 1, 2011 (i.e. within 45 days of publication of notification as to proposed draft Rules).
The major proposed changed suggested under the draft Rules are as follows:
1. All Patent Documents must be filed electronically duly authenticated by Applicant or Agent.
2. Mandatory requirements as to filing of Patent documents with Patent office (except to drawings and affidavits):
(i) Typewritten or printed in Hindi or English (unless directed or allowed by Controller) in large and legible characters not less than 0.28 cm in height and 1.5 spacing in between lines
(ii) A-4 paper with margin of 4 cm on top and left side and 3 cm on right and bottom.
(iii) Numbered in consecutive Arabic numerals at centre of bottom of sheet;
(iv) The description of the invention and claims must be numbered every 5th line of each page of description and claims at right half of the left margin;
(v) Signature on Patent documents in language other than in English and Hindi to be accompanied by a transcription in English or Hindi capital letters;
3. Where the invention relates to a sequence listing of nucleotides and/ or amino acids sequences, the sequence listing must be filed in computer readable form (ASCII text file) and additional fee would be applicable for filing sequence listing (which is not applicable as of now)
4. Where online transmission of Patent documents cannot be initiated or could not be completed for whatever reasons, document can be handed over or send by post to Patent office so as to reach there within the stipulated time frame.
5. Where Patent Documents are amended, the amended as well as superseded patent documents shall be submitted electronically. Every new or amended document be marked at Header of documents as Amended and while resubmitting the Patent documents an undertaking must be submitted that unamended pages are the same as originally submitted earlier.
In case of Individual Applicant Government has proposed to provide assistance in E-filing to those for whom E-filing is not convenient and Controller has been vested with power of direct acceptance of their Patent documents in other forms and manner than explained above.
Showing posts with label Patent filing requirements. Show all posts
Showing posts with label Patent filing requirements. Show all posts
Sunday, March 27, 2011
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.
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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