As per the Patent Rules of 2003, following rules are applicable at various stages:
FILING OF APPLICATION FOR SEEKING PATENT GRANT
- Rule 6- Leaving and serving Documents
- Rule 6 Sub-rule (1A) – When a patent agent files all related documents to the patent by electronic means is duly authenticated, all scanned copies of original documents that is supposed to be submitted in original must be submitted within 15 days, otherwise it would have deemed to have not been filed.
- Section 7 of the Patents Act, 1970 lays down that every patent application must cater to one invention only.
- Rule 10- by virtue of the above the applicant must produce proof of the right to make the application within 6 months.
- Followed by obligation under Section 8 of the Act which deals with Information and undertaking regarding applications.
- Rule 12 of the Patent Rules of 2003 states that all statements and undertakings regarding foreign applications must be filed within 6 months.
Specifications– if Provisional specifications is filed, complete specifications must be filed within 12 months from the date of filing the application.
Declaration of Inventorship– within a month from the date of filing complete specification.
PUBLICATION AND EXAMINATION OF APPLICATIONS
- Rule 24 Publication of application – A patent application is not ordinarily be open to public under Section 11A (1) for 18 months from the date of filing of application or the date of priority of the application. On expiry of this period the application is published except when it has been withdrawn 3 months prior to the period specified above.
- Publication on the Journal by the Controller- within a month from the date of expiry provided above or a month from the date of request for publication.
- Rule 24B-The request may be filed at the time of filing of the application or subsequently within 48 months from the earliest priority date. Rule 24B also lays down that the Examiner shall make an examination report and submit it to the Controller within 1-3 months. [First Examination report]
- Disposal of Report by Controller- within 1 month First statement of objections, along with any documents as may be required, shall be issued by the Controller to the applicant or his authorised agent within 1 month from the date of disposal. [Rule 24B(3)]
- Applicant must finish all requirements within 6 months. [Section 21] This time period is extendable on request and fee till 3 more months.
- Rule 24C-This rule deals with “Expedited examination of applications”.
- Sub-rule 8- the Controller or his authorised agent must issue the first statement of objections along with any document (if any), to the applicant within 15 days from the disposal date of the report of examiner.
- Rule 28- this rule deals with “Procedure in case of anticipation by prior publication”.
- Sub-rule 1- an applicant can be afforded an opportunity to amend his specifications when the Controller sets out specific objections to the applicant.
- Sub-rule 2- this provision is laid down with regard to when an applicant contests any objections communicated to him by the Controller or he refiles the specifications where he can even express whether or not the specifications need to be amended. The applicant can be given an opportunity to be heard if he requests the same and the request shall be made earlier than 10 days of the final date of the period preferred.
- Sub-rules 3 and 4- if the applicant requests hearing within 1 month from the date of communication of the gist of specific objections, the Controller can fix a date of hearing. The applicant must be given 10 days’ notice before such hearing takes place (in accordance with sub-rule 4)
- Sub-rule 7- all written submissions and relevant documents related to the hearing must be filed within 15 days from hearing date.
OPPOSITION PROCEEDINGS TO PATENT GRANT
1. Rule 56
This rule deals with the “Constitution of Opposition Board and its proceeding”.
Sub rule 1 states that when an opposition notice is received under Rule 55A, the Controller shall constitute an opposition board with 3 members out of which one would be nominated as chairman.
The eligibility criteria of such members is discussed under Section 73(2) of the Act. The Board constituted shall conduct examination of the opposition notice along with the documents filed under Rules 57-60. A report has to be submitted containing reasons on each ground within 3 months. Followed by
2. Rule 62
- Once evidence has already been presented (if any) and on receiving the recommendation of Opposition Board, the Controller can fix a date for hearing of Opposition contentions, the notice period for which is 10 days.
- The notice of such hearing must reach the parties at least 10 days in advance. [Sub-rule 1]
- If either of the parties involved intends to rely on any publication at the time of the hearing which is not mentioned in the notice or statement of evidence then that party shall give the other party and the Controller at least 5 days of notice informing the same along with the publication. [Sub-rule 4]
GRANT OF PATENTS
1. Rule 74(2) – Patent Certificate to be issued within 7 days from the date of grant of Patent under Section 43 of the Patents Act of 1970.
2. Rule 80– which deals with “Renewal fees under Section 53”, states that the fees is payable from the 2nd year from the date of Patent.
Extension in the period of payment – Not more than 6 months
Post grant opposition – to be settled within 12 months