Author: Anshika

Anshika my name suggest “THE SMALLEST PARTICLE” and as my name, I am curious to know about the minute findings to all UNANSWERED QUESTIONS in the field of research. My passion for understanding technology makes me love my work more and more every day. I am an IPR enthusiast who is devoting her practice to protect “creation of innovative minds” in the form of Patent, Trademark, Copyrights and Industrial Design. I facilitate various strategic services to protect an Industrial Property by means of filing patents, registering trademarks, industrial designs and geographical indications and protecting literary work and artistic work by filing copyright. My Expertise * Patent Preparation, Prosecution and Management, * Patent Search Services- Invalidity& Validity / FTO / Novelty / Patentability/ Infringement Searches/ Landscape/Portfolio Analysis * Preparing Office Action Response /FER replies * Trademark Application & Registration, * Trademark examination reply, * Copyright Application & Registration and * Industrial design Registration * Patent Drafting I believe that as a patent expert we work on cutting edge science information constantly to create opportunity and find out about the next big thing before that reaches the masses. I have conducted patent searches, drafted a number of patent applications and design applications for Fortune 500 companies, start-ups, individual entrepreneurs and inventors, non-profit organizations and alike.
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TRADEMARK REGISTRATION

Trademark Registration Process in India

Registration of trademarks is beneficial for business owners as it helps them to protect their goodwill and prevents unwarranted copying and infringement of goods. The Trademark Registration process is laid down under the Trademark Act, 1999 and the Trademark Rules Act, 2017.

The stages of the trademark registration process can broadly be characterized into the following stages:

1. Trademark search:

The first step in the trademark registration process is “Trademark Search”. Trademark Search is a preliminary search conducted to ensure that the proposed trademark does not violate any existing registered trademark and abides by the laws related to the trademark. Thus, before an individual makes an application to register a trademark it is advisable to conduct a trademark search for use of the proposed trademark in connection with certain goods or services.
Advantages of conducting a trademark search are

  • Beneficial,
  • Cost-effective and
  • Time-saving.

A trademark search report is generated after a trademark search highlighting relevant details and matches for proposed trademark.

2. Filing of Trademark Application

After reviewing the trademark search report, an application for the registration of the trademark is filed with the Trademark Registry. The application has relevant details like Logo or the Trademark Name and address of the trademark owner Classification or Trademark Class Trademark used since date Description of the goods or services.

The trademark application is generally filed in the Trademark Office within the jurisdiction of the place of business of the applicant. An application can be filed either manual application in the Trademark Office or file an online application through the Online Trademark Search facility.

After acknowledgement of the trademark, a trademark application allotment number and the Trademark applicant can start using the trademark symbol (TM) next to the brand name.

3. Examination of Trademark

After filing of the trademark application, the trademark application enters the stage of examination where the designated Trademark Registrar ensures that the application abides by the substantive and procedural laws governing Trademarks. The duration of the examination process ranges from six to eight months from the application date.

The Trademark Registrar issues an Examination Report highlighting the distinctiveness and similarity of the proposed trademark with existing trademarks. In particular, the examination report outlines the objections against the trademark under Section 9 and Section 11 of the Trademarks Act, 1999.

Objections under Section 9 which relates to marks that are descriptive of the goods or its generic nature or quality, can be defeated by showing that the trademark has acquired a distinctive character as a result of being used extensively.

Objections under Section 11 is made when there are identical or similar trademarks in existence in that particular field to which the product relates.

The applicant has to respond to the raised objections within one month from the date of receipt of Examination Report. If not, the trademark application will be abandoned by the Trademark Registry due to the lack of prosecution.

When a response to the Trademark Examination is accepted, then the trademark is published in the Trademark Journal. And, if the response has not accepted the applicant can request a hearing. If in the hearing, the examiner feels that the trademark should be allowed registration then the trademark is published in the Trademark Journal.

4. Publication in Trademark Journal

After dealing with the objections, the trademark application is published in a Trademark Journal giving the opportunity for the general public to raise any objections related to the Trademark application.

If any concerned third party can file the trademark opposition within three months (with a one-month extension) from trademark publication date. In case objections are raised against the application, a hearing, if needed is held where both parties are given a fair chance to present their cases. Based on the hearing and the evidence put forward by both parties, the hearing officer will give his judgement.

Any decision pronounced can be appealed before the Intellectual Property Appellate Board.

5.Certificate of Trademark Registration

If there are no objections brought forward within the four months since the publication of the application in the Trademark Journal, the Certificate for the Trademark registration is awarded.

6. Trademark Renewal

The registered trademark is valid for ten years and can be renewed on payment of the renewal fees.

Trademark Registration Flowchart

Trademark Registration Process and Procedure in India

Source: IpIndia.nic


The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
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How do I check a trademark name? When can you use the TM symbol? What are the three types of trademarks? What is trademark in simple words?

FAQs On Trademark

Frequently asked questions for Trademarks

Ques 1: What is a Trademark?

Ans: A Trademark is an Intellectual Property asset obtained for certain names, recognizable sign, symbols, designs, devices, or words or expression associated with the company’s corporate, product brand and identity. A trademark is a sign capable of distinguishing the goods or services of one enterprise from its competing enterprises. Trademarks used to identify services are usually called service marks.

Ques 2: What are different types of trademarks that may be registered in India?

Ans: There are 7 different types of trademarks that are registered in India

  1. Product Mark
  2. Service Mark
  3. Collective Mark
  4. Certification Mark
  5. Shape Mark
  6. Pattern Mark
  7. Sound Mark

Ques 3: What are the benefits of registering a trademark?

Ans: Benefits of regestring a trademark:

*Grants Exclusive Rights;

*Protects others from using your trademark;

*Differentiates your Products from competitor’s Products;

*Recognition to product’s Quality;

*Creates image for the goods/ services;

*Advertises the goods/services;

*Protects against infringement.

Ques 4: Who can apply for Trademarks?

Ans: Any person who is an individual, a company, a proprietor or a legal entity claiming to be owner of the trademark can apply for trademark.

Ques 5: What does TM and R signify, when can we use them?

Ans: The symbol “TM” means “Trademark”  and signifies any mark filed with the Trademark Office.

The “R” means “registered trademark” and signifies the trademark is registered and validated by theTrademark Office for the product or service.

Ques 6: Where should trademark application be filed?

Ans: Trademark applications can be submitted filed physically at the Front Office Counter of the Indian Patent Office or filed on line through the e-filing gateway available at the official website www.ipindia.nic.in.

Ques 7: What is the validity of the trademark?

Ans: Validity of trademark is 10 years from the date of application. The trademark can renewed indefinitely by paying renewal fees  every 10 years. In India, a renewal request is filed in FORM TM-R within one year before the expiry of the last registration of trademark.

Ques 8: What is classification of goods adopted in India?

Ans:  Nice Classification is adopted for classification of goods and services. Accodring to Nice Classification:

Classes 1-34: For Goods

Classes 35-45: For Services

Ques 9:Are trademarks territorial?

Ans: Yes, Trademarks are territorial in nature and must be filed in the countries the aplicant seeks for protection.

Ques 10: Can a registered trademark be amended at later stage?

Ans: Yes, a registered trademark can be amended at a later stage as per the provision of Section 22  of the Trademark Act.

Section 22 in The Trade Marks Act, 1999

22. Correction and amendment.—The Registrar may, on such terms as he thinks just, at any time, whether before or after acceptance of an application for registration under section 18, permit the correction of any error in or in connection with the application or permit an amendment of the application: Provided that if an amendment is made to a single application referred to in sub-section (2) of section 18 involving division of such application into two or more applications, the date of making of the initial application shall be deemed to be the date of making of the divided applications so divided.

Ques 11: Can a trademark be removed on the ground of non-use?

Ans: Yes, a trademark can be removed on gounds of non- use as per the Section 47 of the Indian Trade Marks Act of 1999 if

  1. That the trade mark was registered without any bona fide intention and was not used till a date three months before the date of the application for removal; or
  2. Trademark is not used for a continuous period of five year from the date of registration of trademark and application was made after three months from the expiry of five years.

Ques 12: What are the different grounds for refusal of registration of a trademark under the trademarks Act?

Ans: Different grounds for refusal of registration of a trademark under the trademarks Act

Absolute Grounds – (Section 9 of the Act)

Relative Grounds (Section 11 of the Act)

Ques 13: How to file International Trademark Application?

Ans: An applicant can file an International trademark Applicantion:

Madrid Protocol: Using a single application to register the trademark in multiple countries by taking priority of one of the countries; or

Direct filing: Registering the trademark directly in the Trademark Office of jurisdiction of interest for soughting protection in that particular jurisdiction with or without taking priority in the domestic country.

Note: Under Madrid Protocol protection can only be obtained in member countries and these member countries listed below:
http://www.wipo.int/treaties/en/ShowResults.jsp?treaty_id=8

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patent form 2 patent application form pdf patent form 3 patent form 9 indian patent office patent form 18 patent form 5 provisional patent application india

PATENT FORMS

Let’s discuss different patent forms available at the Indian Patent Office and purpose of each form.

Application for Grant of Patent: Form -01 

Form 1 is an application form for a patent submitted by an applicant filing before the Indian Patent Office (IPO).

In particular, Form 1 contains details such as type of application, the applicant (s) name and details, category of the applicant (s), inventor(s) name and details, the title of the Invention, priority particulars of the application(s) filed in a convention country, particulars for filing patent cooperation treaty (pct) national phase application, particulars for filing a divisional application, particulars for filing Patent of Addition and etc. 

Further, form 1 also contains a declaration by the Inventor(s) that the Inventor(s) is the true and first inventor for the innovation.

Provisional/Complete Specification: Form -02

Form 2 furnishes the patent specification or the description of the patent application filed before the Indian Patent Office (IPO). 

In particular, the specification is either a provisional specification or a complete specification depending on the type of the patent filed by the applicant.

Preamble describing the provisional patent application in the first page of Form 2:  “The following specification describes the invention”

Preamble describing the non provisional patent application in the first page of Form 2:  “The following specification particularly describes the invention and the manner in which it is to be performed”

Statement and Undertaking Under Section 8: Form -03

Form 3 is a declaration submitted by the Inventor(s) to the Indian Patent Office (IPO) furnishing all the information/actions relating to patent applications filed in other countries for the present instant invention.

In particular, the Inventor(s) provides application number and other details in form 3 of the corresponding applications for patents filed outside India. 

Moreover, Form 3 also contains an undertaking that the Inventor will inform the Indian patent Office in writing the details regarding corresponding applications for patents filed outside India within six months if he files any such application.

Request for Extension of Time: Form- 04

Form 4 furnishes a request for extension of time before the Controller for reasons such as an extension of time to pay renewal fees etc.

Declaration as to Inventorship: Form -05

Form 5 contains the name of the Inventor and a declaration by the inventor that the inventor(s) is the true and first inventor of the subject matter sought to be protected using the current patent application.

Claim or Request Regarding any Change in Applicant for Patent: Form 06

Form 6 furnishes a request to the controller regarding changes in applicant(s) for current patent application. 

In particular,  Form 6 is used for providing details such as, names of the applicant (s) to be added or removed, names of original applicants and reason for the change, among other details that are to be entered.

Further, Form 6 may also be used to add or remove an applicant from an Indian national phase application where a change in applicant has occurred after the international filing date.

Notice of Opposition: Form 07

Form 7 can be filed by any person interested having the opinion that his rights have been infringed and he wants to file an opposition to a patent filed by an Inventor can give notice of opposition to the Controller of Patents.

In particluar, any person interested has to mention the grounds of opposition a particular patent. 

Further, the notice of opposition is filed at any time after the grant of patent but before the expiry of a period of one year from the date of publication of the grant of a patent filed.  

Representation for Opposition to Grant of Patent: Form 07A

Form 7A is filed within six months from the date of publication of the application u/s 11A or before the grant of a patent by any person interested having the opinion that his rights have been infringed and he wants to file an opposition to a patent filed by an Inventor. 

Form 7A is filed for Pre grant opposition.

Claim or Request Regarding Mention of Inventor as Such in a Patent: Form -08

Form 8 is filed by the applicant to add or remove an inventor in the patent application under section 28 of the Indian Patent Act. 

Request for Publication: Form -09

Form 9 is filed by the applicant for the publication of the patent specification of the filed patent application by the Indian Patent Office after 18 months from the priority date or date of filing whichever is the earliest.

Patent applications are published within 1 month after expiry of the statutory period of 18 months.

In case of a request for an early publication, the application is published within 1 month from the date of request.

Application for Amendment of Patent: Form -10

Form 10 is used by the person to whom the patent is granted for amending particulars in the Patent Application. The application for amendment is made along with substantiating evidence.

Application for Direction of The Controller: Form -11

Form 11 is submitted in order to request any directions under section 51(1) or 51(2) to the Controller’s office.

Request for Grant of Patent Under Section 261 and 522: Form -12

Form 12 is filed by an applicant to request for grant patent under section 26(1) & 52(2) grant of a patent to the true and first inventor, where it has been obtained by another in fraud of him.

Application for Amendment of The Application for Patent/Complete Specification: Form -13

Form 13 is submitted by the applicant who wants to amend the application for patent/ complete specification/any document related thereto submitted while filing the Patent Application.

Notice of Opposition to Amendment / Restoration / Surrender: Form -14

Form 14 is submitted by the applicant or any person interested to provide a notice of opposition to amendment/restoration/ surrender of patent/grant of compulsory licence or revision of terms thereof or to the correction of clerical errors.

Application for Restoration of Patent: Form- 15

Form 15 is filed within 18 months from the date of lapse of a patent for the restoration of the patent when the patent has ceased to have an effect due to non- payment of renewal fees within the prescribed time.

The Application is accompanied with a statement highlighting the circumstances which led to failure to pay the prescribed fee.

Application for Restoration of Title/Interest: Form -16

Form 16 is filed by a person/party who wants to register a title or interest in a patent or share in it or registration of any document purporting to affect proprietorship of the patent even if they are no the inventor.

Application for Compulsory License: Form -17

Form 17 is filed before the controller of the patents by any person interested in applying for the grant of compulsory licence of a Patent after the expiry of 3 yrs from the date of grant of patent.

In particular, the compulsory licence is granted on the following three grounds:

  1. The reasonable requirements of the public with respect to the patented invention have not been satisfied
  2. The patented invention is not available to the public at a reasonably affordable price
  3. The patented invention is not worked in the territory of India.                    

Request/Express Request for Examination of Application for Patent: Form -18

Form 18 can be filed by applicant or any interested person within 48 months from the priority date or filing date whichever is at the earliest request for examination of the application for patent.

Request For Expedited Examination Of Application For Patent: Form -18A

Form 18 can be filed by applicant or any interested person requesting expedited examination of the patent application for a patent under rule 24C.

Application for Revocation of a Patent for Non-Working: Form -19

Form 19 is to be filed by the central government or any interested person who wish to revoke the patent before the expiry of the term for certain reasons of non-working.

Such application is made only after the expiry of 2 years from the date of grant of such patent.

Application for Revision of Terms And Conditions of License: Form -20

Form 20 is filed by a licensee who is granted with a licence by the controller and now wishes to Revise the terms of this Licence as he is unable to work with the previous terms of Licence.

Request for Termination of Compulsory License: Form -21

Form 21 is submitted by a patentee or any person interested who wishes to terminate a Compulsory licence issued by the controller and is the original owner of the patent and wants the compulsory licence Terminated for specific purposes.

Application Registration of Patent Agent: Form -22

Form 22 is submitted by a person who wishes to register themselves as Patent agents.

Application for The Registration of Name in The Register of Patent

Agents: Form -23

Form 23 is submitted by a person whose name is removed from the Register of patent agents for reasons under Section 130 or rule 116 and who wishes to restore their name in the register after such issue has been solved.

Application for Review/setting Aside Controller Decision/Order: Form -24

Form 24 is to be filed by the applicant/ opponent/ party who is aggrieved by the Controller’s decision in order to review or set aside such order within 1 month from the date of communication of such decision.

Request for Permission for Making Patent Application Outside: Form -25

Form 25 enables an inventor, resident of India who wishes to file a patent directly outside India without filing in India to request permission from the patent office.

Authorization of a Patent Agent in a Matter or Proceeding Under The Act: Form -26

Form 26 grants authorization to a Patent agent for representing the applicant in the Patent office in the matters or proceedings carried out under the Indian Patent Act.

Statement Regarding the Working of the Patented Invention on Commercial Scale in India: Form -27 

Form 27 furnishes statement of working of the patent in India along with relevant information submitted by patentees and licensees in a Statement Regarding the Working of the Patented Invention in India.

To Be Submitted By Small Entity / Startup: Form -28

Form 28 is submitted by an applicant wishing to be declared as a small entity/startup along with the proof relating to the status of being a small entity/startup.

Request For Withdrawal Of The Application For Patent: Form -29

Form 29 enables the applicant to withdraw the patent application or withdraw Request for examination before the issuance of the examination report. In particular, 90% examination fee shall be refunded.

To Be Used When No Other Form Is Prescribed: Form -30

Form 30 is used when no other form Is Prescribed.

Fees Schedule by IPO for filing the patent forms

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How can I check a patent in India? How do I check if a patent is registered? Who gives patents in India? How many patents does India have?

Patent Prosecution

Patent prosecution is the patent process required to obtain a patent which involves interaction between the Assignee/Inventor or his legal representative and Patent Office with respect to his patent application. During the patent prosecution process, a patent application has to go through the following steps-

  • Filing of the Patent Application- An inventor can file patent application either online or offline at the patent office in any of the respective jurisdictions: Kolkata, Delhi, Mumbai, and Chennai.
  • Publication of the Application- After filing the patent application is published within18 months from the earliest priority date/ filing date of the application. Prior, to the publication the patent application is confidential to the patent office.
  • Request for Examination- A request for examination has to be filed within 48 months from the date of filing of the application or the date of priority whichever is earlier. Request for examination can be pertained either by normal examination route or by Expedited examination route.
  • First Examination Report- After the examination of the patent application by the patent controller/patent examiner a First Examination Report (FER) is issued to the applicant or authorized agent. The FER cites the deficiencies in the patent application in compliance with the Patents Act, 1970 along with the objections in terms of novelty/ inventive step/ industrial aplicability. 
  • Examination Response- The applicant or his legal representative has to draft a reply to FER within 6 months from the date of issuance of FER overcoming the objections cited by the patent examiner.
  • Hearing- Hearing is conducted between controller and patent applicant is to ensure that all objections raised in the patent application are resolved easing the grant procedure.
  • Grant of the Patent Application- When the patent controller/patent examiner is satisfied that the patent application meets all patentability requirements. The granted patent is notified in the patent journal which is published from time to time.
  • Renewal of the Patent Application- In order to keep the patent in force, a renewal fee shall be payable to patent office at the expiration of the second year from the date of the patent or of any succeeding year.
  • Opposition of Patent application- A patent application can be opposed by anyone after the publication of the patent application. There are two types of oppositions-
    • Pre Grant Opposition- Opposition made after publication until grant of patent application.
    • Post Grant Opposition- Opposition made within 12 months after grant of the patent application. 
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Trademark Search

Before applying for trademark it is very necessary to conduct a trademark search to identify potential conflicts that could arise with existing trademark applications or registered trademarks in the same trademark class. In order to avoid it is always recommended to conduct a “Trademark Search” as trademark searches are an integral part of trademark ownership.

While conducting trademark seaches ONE can identify trademarks identical to your own mark, confusingly similar trademarks that conflict with your own mark making it more difficult to spot.

It is very important to conduct a preliminary search prior to registration of a new mark is very important to know about potential infringements, as well as to be protected against potential revocation of your mark. If there are any pre-registered marks significantly similar to your own which may lead to the refusal of your mark’s registration.

It is very important to get a proper search conducted by a trademark attorney as an improperly conducted trademark search at the initial stage could mean that your latterly registered trademark is liable for revocation if the existence of a similar pre-existing mark comes to light significantly contributing to wastage of time and resources.

Thus companies must carry out trademark searches routinely or comprehensively.

Comprehensive Trademark Search

Compared to a preliminary search, a comprehensive trademark search is always considered better due to its wider scope.

We specialize in providing a comprehensive trademark search as we have access to a large database having various state trademarks, company names, publications and domain names. This helps in performing a detailed comparative study and in seeking legal advice about concerns that you may face later while registering your trademark.

Start protecting your brand today by registering a trademark online through IPR STUDIO

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An industrial design right is an intellectual property right that protects the visual design of ... with the Designing and Printing of Linen Act and have expanded from there. Registering for an industrial design right is related to granting a patent.

Industrial Designs

An industrial design is the ornamental or aesthetic aspect of an article. It includes:

  • outer appearance / aesthetic aspects applied to the product
  • two-dimensional features, such as patterns, lines or color
  • three-dimensional features such as the shape of an article.

Depending on the particular national law and the kind of design, industrial design is registered and protected under industrial design law as a “registered design” or under patent law as “design patents or under copyright law.

WHY REGISTER YOUR DESIGN?

An owner of the design registers an industrial design or design patent to prevent third parties from making, selling, importing articles embodying the design which is a copy, or substantially a copy, of their unique protected design and to earn royalty.

CRITERIA FOR REGISTRATING DESIGN

  • New and original
  • Not published prior in any country
  • Not known publicly in India
  • Significantly distinguishable from known designs or combination of known
  • designs
  • No technical or useful function of a product
  • Finished article appeals to the eye design should be applied to an article by an industrial process doesn’t attract section 4 of design Act,2000.
  • Not contrary to public order or morality
  • Design cannot include trademark, property mark or any artistic rights as defined under the Copyright Act, 1957.

WHO CAN FILE THE APPLICATION FOR REGISTRATION INDUSTRIAL DESIGN:

Any person/proprietor of a design

Person includes:

  • Individual
  • FirmPartnership / Corporate Body
  • Legal entity

DESIGN SERVICES

  1. Search and Analysis
  2. Industrial Design  Filing and Registration
  3. Handling Objections/Office Actions/Examination Reports
  4. Design Patent  Renewals/MaintenancePortfolio Management.

We at IPR Studio are well equipped to assist all aspect of design application for filing in India.

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What is provisional and non provisional patent? How long does a non provisional patent last? How much does it cost to file a non provisional patent? What are the 3 types of patents?

Non- Provisional Patent Drafting

A non-provisional patent draft is a techno-legal document describing the invention in-depth and discloses the best method of carrying out the invention. Thus, also known as a complete patent application.

It is directly filed before the patent office by either a patent agent or an inventor where the inventor wishes to protect the invention.

A Complete specification / non-provisional  specification can be filed with either of the following two options:

1. Direct filing – Complete specification is filed directly before the Indian Patent office without filing any corresponding provisional specification.

2. Subsequent filing-

  • The complete specification is filed subsequently after filing a corresponding provisional specification within 12 months of the provisional application.
  • Using the PCT route

Analogy of Complete specification:

  1. Title
  2. Preamble to the invention
  3. Technical field of the invention
  4. Background of the invention
  5. Objects of the invention
  6. Statement of the invention
  7. Brief description of the drawings
  8. Detailed description of the invention
  9. Claims
  10. Abstract

Our Strategy

  • Thorough understanding of the invention disclosure form

  • Marking the important elements of the invention

  • Discussing with the inventor.

  • Claim Drafting

Incorporation of all the embodiments and illustrations Claim Enablement

First Set of claim preparation

Review and suggestions by the inventor

Incorporating the Inventor’s inputsSending to the inventor for the review for approval

Repeating step 2,3 and 4 till client’s approval

Final claims prepared after the final client approval.

  • Drafting Specification

Incorporation of all embodiments and illustrations

Claim Enablement

  • Sending the complete draft for multiple reviews.

  • Seeking an attorney review ( if applicable)

  • Sending the patent draft to the client

  • Incorporating suggestions from the client/ attorney

  • Preparing the final draft.

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arches related to types of patent applications types of patent applications pdf patent application india patent application form publication of patent application priority application patent filing a patent application patent specification conventional application

Types Of Indian Patent Applications

An inventor can file the following types of Patent Applications before the Indian Patent Office:

1.Provisional Application
Provisional Application is a self-suggestive term i.e. temporary application filed with a Patent Office, to claim a “Priority Date” and when an invention is not complete in all aspects. It is less expensive to prepare and file and enables the inventor to study the feasibility of the invention in terms of potential markets, distributors, licensees. However the complete application needs to be filed within 12 months or else it will be treated as abandoned.

2.Complete Application
A patent application containing the complete specification and claims of the invention is called a complete application and this can be filed directly if the invention is complete in all aspects.

3.Convention Application
When an applicant files a patent application claiming a priority date based on the same or substantially similar application filed in one or more of the convention countries is known as a convention application.

An applicant should file the patent application in the Indian Patent Office within twelve months from the date of first filing of the similar application in the convention country to get “convention status” for the Indian Application.

4.Patent Cooperation Treaty (PCT) – International Application

An international application made in accordance with the Patent Cooperation Treaty (PCT) being the first application is called an international application, or PCT application.  An applicant needs to file just a single application with one receiving patent office in order to simultaneously seek a patent in multiple (up to 138 countries) across the globe.

The application is to be filed in English language within 12 months from the date of filing in India.

5.PCT-National Phase Application

An international application made in accordance with the Patent Cooperation Treaty (PCT) being the first application, can enter the national phase in India within 31 months from the international filing date or priority date (whichever is earlier). This application is filed before the Indian Patent Office claiming the priority and international filing date is called PCT National Phase application.

6. Divisional Application

When patent claims more than one invention, the applicant either voluntarily or in response to an objection based on lack of unity during the examination of the parent application at any time before the grant of the parent application can divide the parent application into two or more applications is known a Divisional Application.

The priority date for all the divisional applications is same as the Parent Application and it contains matter from a previously filed parent application.

7. Patent Of Addition

Any improvements or modifications in the patented invention as a natural process or as a result of feedback of the market or the industry then the original patented product or the process is protected by a “Patent of Addition” in India.

A patent of addition is only granted after the grant of the patent for the main inventions.

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A provisional patent application is not examined, so its claims not get rejected in an office action. Depending on what was the problem that is being referred to as a rejection, a provisional application that fixes the problem might be subsequently filed with a later filing date

Provisional Patent Application

As per the patent law, a provisional application is a legal document filed in the Indian Patent Office or any other patent office to establish an early filing date and allows the inventor to file a patent application without a formal patent claim, oath or declaration, or any information disclosure (prior art) statement.

A provisional patent application buys you the time to file the complete patent application/ non- provisional patent application before the patent office within 12 months of filing while establishing the priority for the invention.

In simple words, a Provisional Application is a temporary, quick, inexpensive application filed before the Patent Office, to claim a “Priority Date” when an invention is not complete in all aspects and which can be claimed in a later-filed nonprovisional application.

Advantages of Provisional Patent Application:

  1. Easy preparation and filing
  2. Low Filing Cost,
  3. Protection of invention from getting copied
  4. Ability to use the term “patent pending”, which can only be legally used when a patent application has been filed
  5. Enabling the inventor to conduct a feasibility analysis of the invention in terms of potential markets, distributors, licensees.

A complete application/Non-provisional Application needs to be filed within 12 months or else the application will be treated as abandoned.

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Freedom To Operate Search

Freedom to Operate Search, also known as Clearance Search or Right to use search is performed to check and identify whether any in-force patents or published patent applications with claims that cover the technology, process, or product the inventor is targeting.

Simply, it is used to ascertain the freedom to operate the invention in a particular jurisdiction from a legal point of view that the product or process utilized or carried out by the inventor is not infringing on any live patent’s claim.

If during the FTO search the invention to be operated is located on a live patent then the inventor may:

  • Not proceed with the invention
  • Invalidate the relevant patent
  • Apply for a license for the relevant patent
  • Buy the relevant patent technology

                                                                                                                 

Why conduct FTO Search?

  1. To identify potential patent barriers and uncover licensing needs in commercializing the products or/and technologies.
  2. To know countries where the patent can be applied.
  3. To map out the technical field of the products, technologies, or processes.
  4. To conduct patent infringement risk assessments, assess the competitors in the same field.
  5. To evaluate the potential for “new”

                                                                                                                   

Our Approach

Before the commercialization of any product/technology, it is essential to conduct a due diligence process to examine the claims of in-force patents as a means of assessing your risk of potential infringement. Thus, an FTO search/ Clearance Search is conducted to locate any granted and alive (in-force) patents or patent applications ensuring that the desired product can be pitched in a specific market (jurisdiction) without infringing or violating anyone’s intellectual property rights within that particular region/country.

Our focus:

  1. In-force patents
  2. Published pending patent applications
  3. An exhaustive search on patent databases based on
  4. Keywords based Searching,
  • Classification based Searching- CPC, IPC, USC, F-terms (For Japanese Patents),

  • Citation Search, Family Search and Semantic Search

FTO Search Reports 

The search reports have detailed analysis of the relevant records in

  • Word Report Format
  • Excel Report Format

We provide customized patent validation or validity Search reports as per client’s requirement. We aim at delivering your search results in a customized format ranging from a full report to a comparative feature matrix, verbal report, or any other delivery mechanism as requested by the client.

Turn Around Time – 4-10 days

So when launching your product in the market conduct the Freedom to operate search or Clearance by professional. Contact us to get in touch with our experts for professional advice.

To Request Sample, Fill in the details below

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patent invalidation process patentability search freedom to operate search infringement search prior art search firms patent validity in india patent invalidation search basics

Invalidation Searches

Patent invalidity/validity search is basically the analysis to understand the strength of patent claims. A patent invalidity (or patent validity) search can be used to validate the claims made by a patent or to invalidate one or more claims of a competitor’s patent when facing a patent infringement suit. Moreover, these searches also check the strength of a granted patent while exploring licensing options.

The validity search is performed by after the grant of a patent to ensure validity and enforceability of the granted patent. On the other hand, invalidity search is conducted to invalidates the patent that has been or may be asserted.

The key objective of the validity and invalidity search is to point out prior arts which were likely to be overlooked by the patent examiner during the prosecution stage and questions novelty or non-obviousness of the patented invention.

It involves exhaustive and in-depth searching of the patent and non-patent literature search to identify prior arts predating the earliest filing of the patent.

Why conduct Invalidity Searches ?

  1. To determine novelty and inventive step of your patent over other patents.
  2. To invalidate patents when threatened with infringement.
  3. To prepare for licensing and enforcement of patents.
  4. To accurately understand the technology of patent and claims coverage.
  5. Upon receiving a notice from a patent owner for infringement.

OUR APPROACH-

We perform exhaustive searching across various databases and provide references that are relevant to the patent that has to be invalidated. Our comprehensive search strategy includes

  • Keywords based Searching,
  • Classification based Searching- CPC, IPC, USC, F-terms (For Japanese Patents),
  • Assignee And Inventors based Searching,
  • Citation Search, and
  • Family Search
  • Semantic Search.

Invalidity/Validity Search Reports

The search reports have detailed analysis of the relevant records with

  1. Color-coded claim charts
  2. Relevant text highlighting in patent PDFs
  3. Claim/key feature analysis

We provide customized patent validation or validity Search reports as per client’s requirement. We aim at delivering your search results in a customized format ranging from a full report to a comparative feature matrix, verbal report, or any other delivery mechanism as requested by the client.We also provide interim updates time to time to keep the clients updated about the search progress.

Turn Around Time – 3-10 days

To Request Sample, Fill in the details below

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freedom to operate clearance search invalidity search patentability search state of the art search prior art search product infringement novelty search how to check patent infringement

Infringement Searches

A patent is said to be infringed when a product/process violates the rights granted to a patentee by unauthorized making, using, offering for sale or selling the patented invention.

Is my product/process infringing other patents?

To determine infringement of a patent either by a product or a process, we have to analyze the subject patent claims. In particular, the patent claims define the scope of protection granted to a patent.

An in-depth, detailed analysis has to be conducted to find out whether the product/process infringes upon the rights of a patentee.

The product/process is compared with the elements/process steps of the subject patent claim to determine whether the claimed elements/steps exist in the product/process, infringing the patent. A patent is said to be infringed if all the elements of the independent patent claim are located in the product or the product follows the same process as claimed in the invention.

Thus if all the elements in the patent claim map on to the features of the product, the product is infringing upon the patent rights of the patentee.

If the product does not have at least one feature of the patent claim then the product does not infringe upon the patent rights of the patentee. This analysis is referred as infringement analysis/ product mapping/ claim mapping.

Why conduct Infringement Analysis?

Infringement Studies are conducted to determine and measure the scope of infringement in terms of future litigations, earning royalty and/or licensing opportunities.

We at IPR studio, offer strategic solutions to identify technology standards and/or potential products infringing your patent. We mine technical literature to identify products, systems, or services using a similar invention as claimed in the subject patent. The comparison of the infringing product with the subject patent claim is provided as Evidence of Use chart, Claim Chart in textual and/or graphical formats.

Evidence of Use

Evidence of Use (EoU) helps patent owners identify all the potentially infringing products in the marketplace. Our EoU charts focus on manuals, designs, press releases, news, and reviews available publically.

Identifying parts of the alleged infringement that may need to be further tested or reverse engineered is another key part of a good EoU.

We map patent claim elements to specific features of identified products/processes by Collecting, documenting, and properly citing the evidence to demonstrate the indication of the strength of patent infringement assertion.

Claim Charts

A patent claim chart is a visualization of all information of the claim broken down by its specific elements and analyzed to determine and prove infringement has occurred. 

Our Approach

  • Analyzing Patent- Preparing claim charts with independent claim
  • Identifying products, systems, or services using a similar invention claimed in the patent.
  • Mapping Identified elements with product literature, product specifications, patents, figures, and photos to the claims of the subject patent.

Example:

A patent for a table claiming that the table top can be electronically height adjusted and can slide up and down.

The approach to check whether your invented table infringes the patent by checking whether all the elements of the patent claim appear in your product, i.e. whether your table-top can be electronically height adjusted, and can slide up and down.

If your product has all the features of the claimed invention along with new additional features, even then your product infringes upon the patent.

If your product does not have at least one feature mentioned in the elements of the subject patent claim, then your product does not infringe upon the patent.

Our Report

We provide customized services to meet the customer’s specific needs along with intensive client involvement and interaction.

We aim at delivering your search results in a customized format ranging from a full report to a comparative feature matrix, verbal report, or any other delivery mechanism as requested by the client.

  1. Turnover Time- 3-7 days
  2. Delivery-

                 Highlighted copies of references

                 Word report

                  Excel report

Contact Us to get professional advice and we will help you in conducting infringement search for you.

To Request Sample, Fill in the details below.

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Patent Search Services

Patent search is a search involving research to data mine the patent and non-patent literature helping the inventor to know about the existing technology before applying for his own “Patent Application”.

Patent Search Services:

    • Prior-art Searches/ Novelty Searches/ Patentability Searches,
    • Infringement Searches,
    • Invalidation Searches,
    • Freedom to operate Searches, and
    • Landscape Searches

Our searchers are advanced degree professionals in science/engineering with international training in a patent search, patent laws, and policies.

Our Strategy

    • Our search team provides in-depth search results based on an extensive search performed on multiple search engines, databases, and libraries for patents and non-patent literature.
    • Our approach is highly consultative, communicative, responsive, and high-touch with our clients to provide an effective search project.
    • We aim at delivering your search results in a customized format ranging from a full report to a comparative feature matrix, verbal report, or any other delivery mechanism as requested by the client.
    • Our techno Patent Attorneys understand the level of effort required to conduct all types of patent searches and provide an accurate time frame for every search up front before we start working.

We provide customized services to meet the customer’s specific needs along with intensive client involvement and interaction. 

Our Search Report

At IPR Studio, we believe that a good search report has both relevant results (Narrow results) and related results (Broad results).

results

We conduct comprehensive customized services in several technical disciplines such as computer software, electrical, mechanical, biomedical, biotechnology, food technology, pharmaceuticals, chemistry, and alike domains.

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WIPO INTERNATIONAL CLASSIFICATION

For national or international IP protection applicants MUST determine whether their creation is new and novel or similar to a creation owned/claimed by someone else. In order to determine this thorough research is conducted.

International classification facilitates these searches by organizing information with respect to inventions, trademarks and industrial designs into simple, indexed, manageable structures for easy retrieval and perusal by the applicants.

WIPO has classified Intellectual Property into 4 main classifications:

International Patent Classification

Locarno Classification

Nice Classification

Vienna Classification

Classification Description Established By Revised By
International Patent Classification (IPC) It is used to classify patents and utility models according to the different areas of technology pertaining. Strasbourg Agreement in 1971 IPC Committee of Experts.
Locarno Classification (LOC) It classifies goods for registration of industrial designs. Locarno Agreement in 1968 Committee of Experts of the Locarno Union
Nice Classification (NCL) It is international system for classifying goods and services for registering of marks. Nice Agreement in 1957 Committee of Experts
Vienna Classification (VCL) It classifies the figurative elements of marks into categories, divisions and sections according to their shape. Vienna Agreement in 1973 Committee of Experts of the Vienna Union.
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trademark classes india pdf trademark class list india pdf trademark class 35 trademark class 11 trademark classes explained trademark class 39 class 41 trademark india trademark class 30 Page navigation

Trademark Classes

Trademark classification is the classification of goods and services . Trademarks are classified into several classes under Nice Classification (NCL).  There are different classes for registering marks for goods and services i.e TM classes 1-34 classify goods and TM classes 35-45 classify services.

Description of classes under Nice classification is as explained below:

Trademark Class 1 Chemical used in industry, science, photography, agriculture, horticulture and forestry; unprocessed plastics; chemical substances for preserving foodstuffs;
Trademark Class 2 Paints; varnishes; preservatives against rust and against deterioration of wood; colorants; metals in foil and powder form for painters; decorators; printers and artists;
Trademark Class 3 Bleaching preparations and substances for laundry use; cleaning; polishing; abrasive preparations; soaps; perfumery, essential oils, cosmetics, hair lotions;
Trademark Class 4 Industrial oils and greases; lubricants; dust absorbing, wetting and binding compositions; fuels (including motor spirit) and illuminants; candles, wicks;
Trademark Class 5 Pharmaceutical, veterinary and sanitary preparations; dietetic substances adapted for medical use, food for babies; disinfectants; fungicides, herbicides;
Trademark Class 6 Common metals and their alloys; metal building materials; small items of metal hardware; pipes and tubes of metal; goods of metal not included in other classes
Trademark Class 7 Machines and machine tools; machine coupling and transmission components; agricultural implements other than hand-operated; incubators for eggs
Trademark Class 8 Hand tools and implements (hand-operated); cutlery; side arms; razors
Trademark Class 9 Scientific, electric, photographicl, measuring, apparatus for recording, transmission or reproduction of sound or images; data processing equipment and computers;
Trademark Class 10 Surgical, medical, dental and veterinary apparatus and instruments, artificial limbs, eyes and teeth; orthopaedic articles; suture materials;
Trademark Class 11 Apparatus for lighting, heating, steam generating, cooking, refrigerating, drying ventilating, water supply and sanitary purposes
Trademark Class 12 Vehicles; apparatus for locomotion by land, air or water
Trademark Class 13 Firearms; ammunition and projectiles; explosives; fire works
Trademark Class 14 Precious metals and their alloys and goods in precious metals; jewellery, precious stones; horological and other chronometric instruments
Trademark Class 15 Musical instruments
Trademark Class 16 Paper, cardboard and goods made from these materials; printed matter; stationery; brushes; typewriters and office requisites; plastic materials for packaging;
Trademark Class 17 Rubber, asbestos, mica and goods made from these materials; plastics in extruded form for use in manufacture; packing, stopping and insulating materials; flexible pipes
Trademark Class 18 Leather and imitations of leathe; animal skins, hides, trunks and travelling bags; umbrellas, parasols and walking sticks; whips, harness and saddlery;
Trademark Class 19 Building materials, (non-metallic), non-metallic rigid pipes for building; asphalt, pitch and bitumen; non-metallic transportable buildings; monuments, not of metal.
Trademark Class 20 Furniture, mirrors, picture frames; goods of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother- of-pearl, meerschaum or of plastics
Trademark Class 21 Household or kitchen utensils and containers; combs and sponges; articles for cleaning purposes; unworked or semi-worked glass; glassware and earthenware;
Trademark Class 22 Ropes, string, nets, tents, awnings, tarpaulins, sails, sacks and bags, padding and stuffing materials(except of rubber or plastics); raw fibrous textile materials
Trademark Class 23 Yarns and threads, for textile use
Trademark Class 24 Textiles and textile goods, not included in other classes; bed and table covers.
Trademark Class 25 Clothing, footwear, headgear
Trademark Class 26 Lace and embroidery, ribbons and braid; buttons, hooks and eyes, pins and needles; artificial flowers
Trademark Class 27 Carpets, rugs, mats and matting, linoleum and other materials for covering existing floors; wall hangings(non-textile)
Trademark Class 28 Games and playthings, gymnastic and sporting articles not included in other classes; decorations for Christmas trees
Trademark Class 29 Meat, fish, poultry and game; meat extracts; preserved, dried and cooked fruits and vegetables; jams, fruit sauces; eggs, milk and milk products; edible oils and fats
Trademark Class 30 Coffee, tea, cocoa, sugar, rice, tapioca, sago; bread, pastry and confectionery, ices; honey, treacle; yeast, baking powder; salt, mustard; vinegar; spices; ice
Trademark Class 31 Agricultural, horticultural and forestry products and grains; live animals; fresh fruits and vegetables; seeds, natural plants and flowers; foodstuffs for animals, malt
Trademark Class 32 Beers, mineral and aerated waters, and other non-alcoholic drinks; fruit drinks and fruit juices; syrups and other preparations for making beverages
Trademark Class 33 Alcoholic beverages(except beers)
Trademark Class 34 Tobacco, smokers’ articles, matches
Trademark Class 35 Advertising, business management, business administration, office functions
Trademark Class 36 Insurance, financial affairs; monetary affairs; real estate affairs
Trademark Class 37 Building construction; repair; installation services
Trademark Class 38 Telecommunications.
Trademark Class 39 Transport; packaging and storage of goods; travel arrangement.
Trademark Class 40 Treatment of materials.
Trademark Class 41 Education; providing of training; entertainment; sporting and cultural activities.
Trademark Class 42 Scientific, design and technological services; industrial analysis and research services; design and development of computer hardware and software.
Trademark Class 43 Services for providing food and drink; temporary accommodation.
Trademark Class 44 Medical services, veterinary services, hygienic and beauty care for human beings or animals; agriculture, horticulture and forestry services.
Trademark Class 45 Legal services; security services for the protection of property and individuals; personal and social services rendered by others to meet the needs of individuals.


For detailed classification visit https://www.wipo.int/classifications/nice/nclpub/en/fr/ 

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Mosaicing Indian Patent Law

As per the Indian Patents Act 1970, an invention is patentable when it satisfies the following criteria:

  1. It is novel

  2. It has an inventive step or it must be non-obvious

  3. It has Industrial applicability

  4. It doesn’t fall under section 3 and 4 of the Patents Act 1970.

A person skilled in the art accesses methodologies for evaluating inventive step based patent laws.

Mosaicing provides the patent examiner to evaluate inventive step in light of two or more pieces of prior art information in combination, provided that a person skilled in the relevant art could reasonably have been expected to combine such information.

‘Prior Art’ is any “state of knowledge existing before the priority date of the claimed application.” Inventive step is always determined in relation to any matter published in any document anywhere in the world or any use before the priority date of the claim.

Mosaicing of prior art documents is permissible in the determination of the inventive step.

IPO guidelines for mosaicing:

  1. Mosaicing of prior art documents is not followed in the determination of novelty

  2. The cumulative effect of the disclosures cannot be taken into consideration nor can the lack of novelty be established by forming a mosaic of elements taken from several documents. This may be done only when arguing obviousness.

Case Law: In OA/8/2009/PT/CH [250/2012] IPAB held – “to defeat novelty, the appellant should show that an earlier document, disclosed all that the patentee is seeking to patent. And that each limitation of the claimed invention is found in a single prior art reference. The appellant has not done this. So the attack on novelty is rejected.”

A mosaic of extracts culled from several documents has not been accepted as constituting a relevant anticipation (Decision of the Controller (1942) Re. Patent Application No. 27709).

A ‘mosaic’ of separate steps, each known in manufacture, is not sufficient to constitute ‘anticipation’ as to warrant the refusal of grant of a patent, though they may have a bearing upon the question of quantum of ingenuity which arises when a court is called upon to consider whether there is ‘subject matter’ for a patent in the invention (Decision of the Deputy Controller (1946) Re. Patent Application No. 32384.)

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Multiple terms can be combined together with Boolean operators to form a more complex query (see below). Note:If the english language option has been

Boolean Search

Boolean search is a type of patent searching that enables the users to find relevant results by combining keywords with Boolean operators. Boolean operators are used in all types of patent searching including the patentability search, validity/ invalidity search, prior art searching/ novelty search and the like.

What are boolean operators?

Boolean Operators are simple words used as conjunctions to combine or exclude keywords in a patent search.

General boolean operators are:

1.AND,

2.OR,

3.NOT

The above mention boolean operators are either used alone or in combination to produce focused and productive results by eliminating inappropriate hits.

LET US UNDERSTAND THE BOOLEAN OPERATORS

From the above, we can see if we use OR we have broader results while using AND the results are narrowed down. NOT excludes the results having that specified keyword.

Let us understand more with examples:

The pictorial snapshot illustrates applications containing tennis and applications containing a ball.

The pictorial snapshot illustrates applications containing both tennis and ball.

The pictorial snapshot illustrates results of applications containing either tennis or ball.

The pictorial snapshot illustrates applications containing ball but not the word tennis and applications containing the word tennis but not ball.

From the above examples, boolean searching can easily be understood.

 


Snapshots are taken fromWIPO Search Tools and Strategies 

 

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Mar 18, 2019 - Comprehensive eFiling Services for Patents External website that opens in a new window. Patent Search for 18th Month Publications External ...

Types of Patent Search Strategies

Different Approaches for Patent Searches

Different approaches for searching patent can be categorized under the following heads:

  • Keyword searches,
  • Classification searches,
  • Boolean Searches,
  • Structure searches,
  • Sequence searches, and
  • Image searches

Keyword Searches

The most widely used and basic search category for patent searching involves the use of concepts and terms related to the invention by inserting text characters as search terms. Search term includes alternative terms, synonyms, spelling variations, acronyms. It also helps in finding records related to similar technology area.

Classification Searches

Classification searches are performed used to categorize patents based on a specific code that groups inventions according to the technical area. It is an easy, comprehensive, faster and quicker way of classifying patents as per the subject matter.

Classification systems:

  • International Patent Classification (IPC),
  • United States Patent Classification (USPC),
  • Cooperative Patent Classification (CPC),
  • Japanese FI and F term classification, F stands for “feature”.

Earlier European Patent Classification (ELICA) was also used but to make the classification easier Cooperative Patent Classification (CPC) was introduced. CPC is an extension of the IPC and is jointly managed by the EPO and the US Patent and Trademark Office. 

The classification search is used in combination with other search strategies to yield the best search results to the searcher conducting a search in a particular technical area.

Boolean Searches

Boolean Search is a type of search allowing searches to combine keywords with operators such as AND, NOT and OR to produce more relevant results.

Structure Searches

Structure searches involve searching chemical structures on certain databases based on atom to atom and fragment to fragment indexing of chemical structures. 

Sequence Searches

Sequence searches are used for searching chemical structures on certain database based on nucleotide and protein sequences.

Image Searches

Image searches are conducted on Google platform which allows image to image mapping based on a search algorithm helpful in identifying similar images.

Why perform Patent searching?

Patent Searching is performed:

  • To determine the novelty of the invention and idea by finding similar patents and prior arts.
  • To discover owners of a particular patent or patents in a field of interest.
  • To validate and invalidate the particular patent searching.
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