Process of
Patenting
Validity of Patent Protection
• The patent protection is granted to an applicant for a limited period,
generally 20 years, starting from the date of filing of the application.
• Once a patent is granted for an invention in India, the next vital step is
to ensure that it is renewed annually by paying Patent Renewal Fee as
per Section 53, Rule 80 of the Indian Patents Act, till the expiry of the
patent grant period.
• n some countries, patent protection may be extended beyond 20 years.
The extension aims to compensate for the time expended on the
administrative approval procedure before products can be put on the
market.
Post-grant Opposition
Once the patent has been granted by the Patent Office, it still can be
challenged by anyone within one year from the date of publication of the
grant of the patent.
• The applicant for the patent wrongfully obtained the invention or any
part of the invention.
• The invention claimed has been published before the priority date. he
invention claimed was publicly known/used before the priority date.
• The invention claimed is obvious and does not involve an inventive
step.
• The subject of the claim is not patentable as per Chapter II of the Patent
Act, 1970.
• The details/specifications of the invention do not sufficiently and clearly
describe the invention.
Commercialization of a Patent
• The patent owner may grant permission to an individual/organization
industry to make, use, and sell his patented invention.
• The patent owner has a decent job e.g. university professor and has no
desire or aptitude to exploit the patent on his own.
• The patent owner may not have the necessary manufacturing facilities.The
manufacturing facility is not able to meet the market demand.
• The patent owner wishes to concentrate on one geographic market for
other geographical markets, he may choose to license the patent rights.
Need for a Patent Agent
• In general, applicants can prepare their patent applications and file them
without assistance from a patent agent.
• The complexity of patent documents, it is advisable to seek legal
assistance from a patent attorney/agent when drafting a patent
application.
• Furthermore, the legislation of many countries requires that an
applicant, whose ordinary residence or principal place of business is
outside the country, be represented by an attorney or agent qualified in
the country.
Can a Worldwide Patent be Obtained
• Universal Patent‘ or World Patent‘ or International Patent‘ as the patent
rights are territorial. An application for a patent must be filed with a Patent
Office of the 37 country in which one wishes to seek patent protection.
• Regional Offices have been established which receive patent applications
on behalf of a group of nations e.g. European Patent Office and African
Regional Intellectual Property Organization.
• A single application is sufficient to cover many nations that are members of
a particular regional office/organization.
• to seek patent protection in several countries worldwide, it is preferred to
file an international patent under the Patent Cooperation Treaty (PCT).
Do I Need First to File a Patent in India
• Indian residents are required to file the patent application first in India.
Subsequently, they may file for patent protection in other countries.
• The applicant is not an Indian resident. If 6 weeks have expired since the
patent application was filed in India by an Indian resident.
• If two or more inventors are working on an invention in a foreign country
and one of the inventors is an Indian resident.
• In case of international collaboration, if one part of the invention
originated in India and the inventor is an Indian resident, he has to seek
permission to file the patent outside India.
• If the invention is related to defense or atomic energy or utility model, the
inventor/s needs to seek permission from the Indian
Patent Related Forms
Fee Structure
Types of Patent Applications
1. Provisional Application
2. Ordinary Application
3. PCT Application
4. Divisional Application
5. Patent of Addition Application
6. Convention Application
Commonly Used Terms in Patenting
National Bodies Dealing with Patent Affair
• Many departments/organizations/bodies dealing with various aspects
of patents, namely, the Indian Patent Office (IPO)
• Department for Promotion for Industry and Internal Trade (DPIIT)
• Technology Information, Forecasting and Assessment Council
(TIFAC)
• National Research Development Corporation (NRDC).
Utility Model
• Utility Model is a helpful tool for Micro, Small and Medium
Enterprises (MSME) since the grant of a Utility Model‘ is usually less
rigorous and involves minimal cost.
• Nearly 80 countries, including France, Germany, Japan, South Korea,
China, Finland, Russian Federation and Spain, provide protection for
Utility Models under their IPR laws.
• India till date does not recognize utility patents. If these small patents
are recognised under IP protection in India
