Tag: patent examination

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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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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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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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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.

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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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