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Sunday, 21 Apr 2019

Patent Registration Procedure

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With effect from January 1, 2005, the procedure for Publication and Examination is amended substantially. Following is the brief idea of the procedure:

PUBLICATION:
1.   After an application for a patent is filed, the same shall not be available for inspection for a period of 18 months.
2.   Upon completion of 18 months, the application shall be published automatically in an Official Journal. The official Journal is published by the Patent office on a weekly basis.
3.   If the applicant intends to expedite the publication, he may make a specific request in a prescribed form with additional filing fees and the application will be published as soon as possible.
4.   Once the application is published till grant, the applicant shall have all the privileges and rights as if a patent for the invention has been granted.

However, no suit for infringement can be filed till the patent is granted.

EXAMINATION:
1.   No application will be automatically examined unless the request for Examination is filed. The application will be examined only on the basis of filing of a special  request for Examination in a prescribed form with fees.
2.   A request to file for Examination of the application is required to be filed within a period of 48 months from the date of priority or from the date of filing, whichever is earlier.
3.   Once the request is filed, the application will be substantially examined by the Patent Examiner and an Examination Report will be sent stating the question of patentability of the invention and any other details for proper and sufficient description. The applicant has to comply with all requirements and put the application in order overcoming all the objections raised by the Examiner to his satisfaction with in a period of 12 months extendable for a period of 3 months upon payment of  extension fees. Examiner upon reply, will send the application to the Controller with his report for grant or rejection and the Controller shall notify the applicant about  the same.

Representation of Opposition:

Once the application is published, any aggrieved person may in writing represent by way of an opposition to the Controller against the grant of patent on any of the following grounds:
• Wrongfully obtained invention.
• Prior Publication
• Prior Claiming
• Prior public knowledge or public use in India
• Obviousness and lack of inventive steps
• The invention is not properly described
• Lack of subject matter (invention is not patentable)
• Failure to disclose information relating to the applications filed in foreign countries for the same inventions.
• Non disclosure or wrong disclosure of the source or geographical origin of biological material used for the invention; and
• Invention is known due to the prior knowledge, oral or other wise available within any local or indigenous community in India or elsewhere.

Upon receiving representation of opposition, the Controller shall consider and dispose of the representation as he deems proper.

None of the party including the aggrieved party who has made representation will be party to the proceeding.

The Patent will not be granted within six months from the date of publication. Hence, the Representation can be made anytime after publication but before grant.

Grant:

Once the application is found to be order with compliance of all the requirements including objections on patentability of the invention or disposed off by the Controller if represented for opposition, the patent is granted as soon as possible (but not before expiry of six months from the date of publication) and information of grant is published in an Official Journal.

OPPOSITION:

Once the patent is granted, the same can be opposed within a period of one (1) year from the date of grant upon following grounds:

* Wrongfully obtained invention.

* Prior Publication

* Prior Claiming

* Prior public knowledge or public use in India

* Obviousness and lack of inventive steps

* The invention is not properly described

* Lack of subject matter (invention is not patentable)

* Failure to disclose information relating to the applications filed in foreign countries for the same inventions.

* Non disclosure or wrong disclosure of the source or geographical origin of biological material used for the invention; and

* Invention is known due to the prior knowledge, oral or other wise available within any local or indigenous community in India or elsewhere.

Once the opposition is filed, the matter will be decided after taking into consideration all the written and oral evidences.

What happens after an opposition period is over?

After the Opposition period is expired or no opposition is filed or the opposition is won by the patentee, the grant of a patent is confirmed.