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Elucidating the Patent Process – Part 1

BananaIP Counsels > Intellectual Property  > Elucidating the Patent Process – Part 1

Elucidating the Patent Process – Part 1

BIP Counsels - Online Patent filing India

This post was first published on 16th July, 2014.

 

To comprehend the Patent Process in its entirety, it is very essential to understand clearly the different types of patent applications. This post lucidly explains the different types of applications which can be filed before the Indian Patent Office.

  1. Provisional Application
  2. Non Provisional Application/Complete Application
  3. Conventional Application
  4. PCT – International Application
  5. PCT – National Application
  6. Application for Patent of Addition
  7. Divisional Application

Provisional Application is a non final, preliminary application which is filed before the patent office to claim priority. This application is usually filed when an invention requires some more time to be perfected. This is beneficial because the Indian Patent office follows the ‘First to File’ system. Early filing prevents any other related inventions from becoming prior art to the application.

When an application is accompanied by a provisional specification, a complete specification should be filed within 12 months from the date of filing of the provisional application. Failure to do so, will amount in the application being abandoned.

The provisional application should briefly explain the invention and must be drafted very carefully so as to ensure that priority rights are secured for the invention. It acts as proof that the inventor had the concept and idea of the invention at the time of filing.

Non Provisional Application is accompanied by a complete specification which is also a Techno-Legal document. Complete specification should describe the invention in great detail and it should also disclose the best known method of carrying out the invention and necessarily end with one or more claims which define the scope of the invention.

A complete specification can be filed in 2 ways:

  1. Direct filing – Complete specification is filed first directly with the Indian Patent Office without filing any corresponding provisional specification.
  2. Subsequent filing – Complete specification is filed subsequent to filing of a provisional specification and claiming priority from the corresponding provisional application.

Conventional Application is an application for patent that enter India through the Paris Convention. When an application is filed in a Convention Country (basic application), the applicant has to file an application in India within 12 months of the date of filing of the basic application. If applications are filed in two or more countries, the applicant has to file an application in India within 12 months from the date of filing of the earliest application.

PCT – International Application: The Patent Cooperation Treaty assists applicants in seeking patent protection internationally for their inventions. By filing one international patent application under the PCT, applicants can simultaneously seek protection for an invention in 148 countries around the world.

A PCT application does not provide for the grant of an international patent, it simply provides a streamlined process for the patent application process in many countries at the same time. The applicant can enter into the patenting phases of various countries within 30/31 months from the date of filing of the PCT application.

The PCT process will be dealt with in-depth in upcoming posts.

PCT – National Application: The national application follows the international phase. It is necessary for an applicant to file a national phase application in each designated country, where protection is sought, within the prescribed time under the PCT, i.e., within 30/31 months from the priority date. However, this time limit may be increased through National Laws by each member country.

The applicant has to file the National Phase Application within 30/31 months from the priority date or International Application date, whichever is earlier.

For the National Phase Application, the title, description, drawings, abstract and claims as filed with the International Application under PCT shall be taken as the Complete Specification. All other formalities that are required for filing and processing an ordinary patent application shall apply to a National Phase Application.

Application for Patent of Addition: When an applicant comes up with an improvement or modification to an invention described or disclosed in the main application for which he has already applied or has obtained a patent, the applicant may make an application for a Patent of Addition.

A Patent of Addition shall be granted only after the grant of the main or parent patent. There is no need to pay separate renewal fees for the Patent of Addition during the term of the main patent. A patent of addition shall be granted for a term equal to that of the main patent and expires along with the main patent. Date of filing shall be the date on which the application for the patent of addition was made.

Divisional Application: When an application made by an applicant claims more than one invention, the applicant on his own or to overcome official objections, must divide the application and file two or more applications, as applicable for each of the inventions. This type of application, divided from the parent application, is called a Divisional Application. The priority date for all the divisional applications emerging from one application will be the same as that claimed by the parent application (Ante-dating).

The term of the patent for a divisional application shall be twenty years from the date of filing of the main application.

ApplicationRelevant sectionPriority dateImportant Condition
Provisional applicationS. 7, S. 9, S.10Date of filing provisional specification.To file complete specification within 12 months.
Non provisional applicationS. 7, S.9, S.10, S.11Direct filing- Date of filing complete specification.Subsequent filing- Date of filing provisional specification.Enablement and to provide Best mode of working of Invention
Conventional ApplicationS.133, S.135Date of filing of earliest application.Applicant has to file in India within 12months from the date of basic application.The term of patent of a convention application shall be twenty years from the date of filing of the Application in India.
PCT- International applicationS. 39, S.7,Earliest Priority DateApplicant can enter into various countries within 30/31 months from the date of filing of PCT application.
PCT-National application S. 7(1A), S.10(4A), S.138Earliest Priority DateApplicant has to file in India within 31months from the date of International application
Patent of AdditionS.54, S.55Date of filing Main applicationA Patent of Addition shall be granted only after the grant of the main patent
Divisional Application S.16Date of filing of Parent application

 

 

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