A BIRD’S EYE VIEW OF PATENT LAW IN
By Suwarn Rajan, Advocate & Patent Agent, Managing Partner, CARE INTELLECT,NEW DELHI,
Email:careintellect66@yahoo.com,www.careintellect.com
LEGISLATION
The Patent System in India is governed by the Patents Act, 1970 (No. 39 of 1970) as amended by the Patents (Amendment) Act, 2005 and the Patents Rules, 2003, as amended by the Patents (Amendment) Rules 2006 effective from 05-05-2006.
ADMINISTRATION
The Patent Office, under the Department of Industrial Policy & Promotion, Ministry of Commerce & Industry, performs the statutory duties in connection with the grant of patents for new inventions and registration of industrial designs. Patent Offices are located at Kolkata , Mumbai, Chennai and
Patent Information System (PIS) located at
INTERNATIONAL TREATIES
a) World Trade Organization (WTO) with effect from 01-01 -1995.
b) Convention establishing World Intellectual Property Organisation, (WIPO).
c) Paris Convention for the protection of Industrial Property with effect from Dec.7, 1998.
d) Patent Co-operation Treaty (PCT) with effect from Dec.7, 1998.
e) Budapest Treaty with effect from 17th December, 2001.
TYPES OF PATENT APPLICATIONS
a) Ordinary Application
b) Application for Patent of Addition (granted for Improvement or Modification of the already patented invention, for an unexpired term of the main patent).
c) Divisional Application (in case of plurality of inventions disclosed in the main application).
d) Convention application , claiming priority date on the basis of filing in Convention Countries.
e) National Phase Application under PCT.
WHO MAY APPLY
The inventor may make an application, either alone or jointly with another, or his/their assignee or legal representative of any deceased inventor or his assignee.
GENERAL PRECAUTIONS FOR APPLICANT
The first to file system is employed, in which, among persons having filed the same invention, first one is granted a patent, therefore,a patent application should be filed promptly after conceiving the invention. It is common experience that through ignorance of patent law, inventors act unknowingly and jeopardize the chance of obtaining patents for their inventions. The most common of these indiscretions is to publish their inventions in newspapers or scientific and technical journals, before applying for patents. Publication of an invention, even by the inventor himself, would (except under certain rare circumstances) constitute a bar for the subsequent patenting of it. Similarly, the use of the invention in Public, or the commercial use of the invention , prior to the date of filing patent application would be a fatal objection to the grant of a patent for such invention, thereafter. There is, however, no objection to the secret working of the invention by way of reasonable trial or experiment, or to the disclosure of the invention to others, confidentially.
Another mistake, which is frequently made by the inventors, is to wait until their inventions are fully developed for commercial working, before applying for patents. It is, therefore, advisable to apply for a patent as soon as the inventor's idea of the nature of the invention has taken a definite shape.
It is permissible to file an application for a patent accompanied by a "Provisional Specification" describing the invention. The application may, therefore, be made even before the full details of working of the invention are developed. The filing of an application for a patent disclosing the invention would secure priority date of the invention, and thereby, enable the inventor to work out the practical details of the invention and to file complete specification within 12 months from the date of filing of provisional specification.
WHAT IS PATENTABLE INVENTION
A new product or process, involving an inventive step and capable of being made or used in an industry. It means the invention to be patentable should be technical in nature and should meet the following criteria -
i) Novelty : The matter disclosed in the specification is not published in
ii) Inventive Step: The invention is not obvious to a person skilled in the art in the light of the prior publication/knowledge/ document.
iii) Industrially applicable: Invention should possess utility, so that it can be made or used in an industry.
WHAT IS NOT PATENTABLE
The following are Non-Patentable inventions within the meaning of the Act: -
(a) an invention which is frivolous or which claims anything obviously contrary to well established natural laws;
(b) an invention the primary or intended use or commercial exploitation of which could be contrary to public order or morality or which causes serious prejudice to human, animal or plant life or health or to the environment;
(c) the mere discovery of a scientific principle or the formulation of an abstract theory (or discovery of any living thing or non-living substances occurring in nature);
(d) the mere discovery of a new form of a known substance which does not result in the enhancement of the known efficacy of that substance or the mere discovery of any new property or mere new use for a known substance or of the mere use of a known process, machine or apparatus unless such known process results in a new product or employs at least one new reactant ;
Explanation- For the purposes of this clause, salts, esters, ethers, polymorphs, metabolites, pure form, particle size, isomers, mixtures of isomers, complexes, combinations and other derivatives of known substance shall be considered to be the same substance, unless they differ significantly in properties with regard to efficacy.
(e) a substance obtained by a mere admixture resulting only in the aggregation of the properties of the components thereof or a process for producing such substance;
(f) the mere arrangement or re-arrangement or duplication of known devices each functioning independently of one another in a known way;
(g) a method of agriculture or horticulture;
(h) any process for the medicinal, surgical, curative, prophylactic,diagnostic, therapeutic or other treatment of human beings or any process for a similar treatment of animals to render them free of disease or to increase their economic value or that of their products.
(i) plants and animals in whole or any part thereof other than micro-organisms but including seeds, varieties and species and essentially biological processes for production or propagation of plants and animals;
(j) a mathematical or business method or a computer programme per se or algorithms;
(k) a literary, dramatic, musical or artistic work or any other aesthetic creation whatsoever including cinematographic works and television productions;
(I) a mere scheme or rule or method of performing mental act or method of playing game;
(m) a presentation of information; (n) topography of integrated circuits;
(o) an invention which in effect, is traditional knowledge or which is an aggregation or duplication of known properties of traditionally known component or components.
(p) Inventions relating to atomic energy and the inventions prejudicial to the interest of security of
APPROPRIATE OFFICE FOR FILING AN APPLICATION AND FOR OTHER
PROCEEDINGS
Application is required to be filed according to the territorial limits where the applicant or the first mentioned applicant in case of joint applicants, for a patent normally resides or has domicile or has a place of business or the place from where the invention actually originated. If the applicant for the patent or party in a proceeding having no business place or domicile in India, the appropriate office will be according to the address for service in India given by the applicant or party in a proceeding . The appropriate office once decided in respect of any proceedings under the Act shall not ordinarily be changed. The four patent offices are located at Kolkatta, Mumbai, Delhi & Chennai.
PUBLICATION & EXAMINATION OF PATENT APPLICATIONS
i) Publication:
All the applications for patent, except the applications prejudicial to the defense of India or abandoned due to non-filing of complete specification within12 months after filing the provisional or withdrawn within 15 months of filing the application, are published in the Patent Office Journal just after 18 months from the date of filing of the application or the date of priority whichever is earlier. The publication includes the particulars of the date of the application, application number, name and address of the applicant along with the abstract. The applications for patent are not open for public inspection before publication. After the date of publication of the application, as stated above, the complete specification along with provisional and drawing, if any, abstract , application on any form or on plain paper and any correspondence between the office and applicant may be inspected at the appropriate office by making a written request to the Controller in the prescribed manner and on the payment of prescribed fee..
Early Request for Publication :
The applicant may also file a request for early publication in Form-9 with a prescribed fee of Rs 2500/- or Rs 10,000/- for natural person and other than natural person respectively. The above application is published ordinarily within one month from the date of the request on Form-9. The applicant shall have provisional Rights from the date of publication.
ii) Request for examination
No application for patent will be examined if no request is made by the applicant or by any other interested person in Form-18 with prescribed fee of Rs.2,500/- or Rs.10,000/- for natural person and other than natural person respectively, within a period of 48 months from the date of priority of the application or from the date of filing of the application ,whichever is earlier. Where no request for examination of the application for patent has been filed within the prescribed period, the aforesaid application will be treated as withdrawn and, thereafter, application cannot be revived.
iii) EXAMINATION
Application for patent, where request has been made by the applicant or by any other interested person, will be taken up for examination, according to the serial number of the requests received on Form 18. A First Examination Report (FER) stating the objections/requirements is communicated to the applicant or his agent according to the address for service ordinarily within six (06) months from the date of request for examination or date of publication whichever is later. Application or complete specification should be amended in order to meet the objections/requirements within a period of 12 months from the date of First Examination Report (FER). No further extension of time is available in this regard. If all the objections are not complied with within the period of 12 months, the application shall be deemed to have been abandoned. When all the requirements are met the patent is granted, after 6 months from the date of publication, the letter patent is issued, entry is made in the register of patents and it is notified in the Patent Office, Journal.
WITHDRAWAL OF PATENT APPLICATION
The application for patent can be withdrawn at least 3(Three) months before the first publication which will be 18(Eighteen) months from the date of filing or date of priority whichever is earlier.
The application can also be withdrawn at any time before the grant of the patent.
The application withdrawn after the date of publication, cannot be refiled as it is already laid open for public inspection. However, application withdrawn before the publication can be refiled provided it is not opened to public otherwise.
OPPOSITION PROCEEDINGS TO GRANT OF PATENTS
PREGRANT OPPOSITION
Where an application for a patent has been published but a patent has not been granted, any person may, in writing represent by way of opposition to the Controller against the grant of any Patent. The representation shall be filed at the appropriate office and shall include a statement and evidence, if any, in support of the representation and a request for hearing if so desired.
The above representation may be made on the following grounds
(a) that the applicant for the patent or the person under or through whom he claims, wrongfully obtained the invention or any part thereof from him or from a person under or through whom he claims;
(b) that the invention so far as claimed in any claim of the complete specification has been published before the priority date of the claim—
(i) in any specification filed in pursuance of an application for a patent made in India on or after the 1st day of January, 1912; or (ii) in India or elsewhere, in any other document: Provided that the ground specified in sub-clause (ii) shall not be available where such publication does not constitute an anticipation of the invention by virtue of sub-section (2) or sub-section (3) of section 29;
(c) that the invention so far as claimed in any claim of the complete specification is claimed in a claim of a complete specification published on or after the priority date of the applicant's claim and filed in pursuance of an application for a patent in India, being a claim of which the priority date is earlier than that of the applicant's claim;
(d) that the invention so far as claimed in any claim of the complete specification was publicly known or publicly used in India before the priority date of that claim.
Explanation —For the purposes of this clause, an invention relating to a process for which a patent is claimed shall be deemed to have been publicly known or publicly used in India before the priority date of the claim if a product made by that process had already been imported into India before that date except where such importation has been for the purpose of reasonable trial or experiment only;
(e) that the invention so far as claimed in any claim of the complete specification is obvious and clearly does not involve any inventive step, having regard to the matter published as mentioned in clause (b) or having regard to what was used in India before the priority date of the applicant's claim;
(f) that the subject of any claim of the complete specification is not an invention within the meaning of this Act, or is not patentable under this Act;
(g) that the complete specification does not sufficiently and clearly describe the invention or the method by which it is to be performed;
(h) that the applicant has failed to disclose to the Controller the information required by section or has furnished the information which in any material particular was false to his knowledge;
(i) that in the case of convention application, the application was not made within twelve months from the date of the first application for protection for the invention made in a convention country by the applicant or a person from whom he derives title;
(j) that the complete specification does not disclose or wrongly mentions the source or geographical origin of biological material used for the invention;
(k) that the invention so far as claimed in any claim of the complete specification is anticipated having regard to the knowledge, oral or otherwise, available within any local or indigenous community in India or elsewhere, but on no other ground.
The Controller shall, if requested by such person for being heard, hear him and dispose of such representation. If the opposition is decided in favour of the applicant, the patent is granted and the grant of Patent is published in the Patent Office Journal thereby opening the application, specification and other related documents for public inspection on payment of prescribed fee.
GRANT OF PATENT
When all the requirements of the FER are met or in case of opposition under section 25(1),if the opposition is decided in favour of the applicant ,the patent is granted, after 6 months from the date of publication under section 11 A, the letter patent is issued, entry is made in the register of patents and it is notified in the Patent Office, Journal, thereafter opening the application ,specification and other related documents for public inspection on payment of prescribed fee.
TERM AND DATE OF PATENT
Term of every patent will be 20 years from the date of filing of patent application, irrespective of whether it is filed with provisional or complete specification. Date of patent is the date on which the application for patent is filed.
POSTGRANT OPPOSITION:
Any interested person can file notice of opposition (along with written statement and evidence, if any) anytime after the grant of Patent but before the expiry of a period of one year from the date of publication of grant of a Patent in the Patent Office Journal .The above notice under Section 25(2) shall be filed on Form-7 along with a fee of Rs. 1500/ or Rs. 6000/- for natural person and other than natural person respectively, in duplicate at the appropriate office. The grounds of opposition under section 25 (2) are the same as given before in case of pre grant opposition. The post grant opposition is decided by an Opposition Board followed by a hearing and the reasoned decision by the Controller.
RIGHTS OF THE PATENTEE
Where a patent covers a product, the grant of patent gives the patentee the exclusive right to prevent others from performing, without authorization, the act of making, using, offering for sale, selling or importing that product for the above purpose.
Where a patent covers a process, the patentee has the exclusive right to exclude others from performing, without his authorization, the act of using that process, using and offering for sale, selling or importing for those purposes, the product obtained directly by that process in India. These rights created by statute are circumscribed by various conditions and limitations as provided in the Patents Act, 1970 as amended by The Patents (amendment) Act, 2002.
REGISTER OF PATENT
The Register of Patents are kept in the Patent offices and can be inspected or extract from it can be obtained on payment of prescribed fee. Register of Patent contains the name and address of the patentee, notification of assignment etc., particulars in respect of validity or proprietorship of patent and payment of renewal fee.
RENEWAL FEE
To keep the patent in force, Renewal fee is to be paid every year. The first renewal fee is payable for the third year and must be paid before the expiration of the second year from the date of patent If the patent has not been granted within two years the renewal fees may be accumulated and paid immediately after the patent is granted, or within three months of it’s recordal in Register of Patents or within extended period of 9 months ,by paying extension fees of six month on Form 4, from the date of recordal. If the renewal fees is not paid within the prescribed time, the patent will cease to have effect. However, provision to restore the patent is possible provided application is made within eighteen months from the date of cessation.
Renewal fee is counted from the date of filing of the Patent application. Six month's grace time is available with extension fee for payment of renewal fee. No renewal fees is payable on Patents of Addition, unless the original patent is revoked and if the Patent of Addition is converted into an independent patent; renewal fee, then, becomes payable for the remainder of the term of the main patent.
RESTORATION
Application for restoration of a patent that lapses due to non-payment of renewal fees must be made within 18 months of lapse. The application is to be filed in the appropriate office according to the jurisdiction.
DOCUMENTS REQUIRED FOR FILING AN APPLICATION
1) Application form in duplicate (Form 1).
2) Provisional or complete specification in duplicate. If the provisional specification is filed, it must be followed by the complete specification within 12 months.(Form 2).
3) Drawing in duplicate (if necessary).
4) Abstract of the invention in duplicate.
5) Information & undertaking listing the number, filing date & current status of each foreign patent application in duplicate (Form 3).
6) Priority document (if priority date is claimed) in convention application,when directed by the Controller.
7) Declaration of inventor-ship where provisional specification is followed by complete specification or in case of convention/PCT national phase application (Form 5).
8) Power of attorney (if filed through Patent Agent).
9) Fee (to be paid in cash/by cheque/by demand draft) (See Schedule I).
PROVISIONAL SPECIFICATION
Application for patent may be accompanied by the provisional specification. It should contain the description of invention with drawing, if required. It is not necessary to include Claim. However, the complete specification should be fairly based on the matter disclosed in the provisional specification and should be filed within 12 months. If the complete specification is not filed within 12 months the application is deemed to have been abandoned.
COMPLETE SPECIFICATION
The complete specification is an essential document in the filing of patent application along with the drawing to be attached according to the necessity. Complete specification shall fully describe the invention with reference to drawing, if required, disclosing the best method known to the applicant and end with Claim/Claims defining the scope of protection sought. The specification must be written in such a manner that person of ordinary skill in the relevant field, to which the invention pertains, can understand the invention. Normally, it should contain the following matter-
1) Title of invention, 2) Field of invention, 3) Background of invention with regard to the drawback associated with known art, 4) Object of invention, 5) Statement of invention, 6) A summary of invention, 7) A brief description of the accompanying drawing, 8) Detailed description of the invention with reference to drawing/examples, 9) Claim(s), 10) Abstract.
The specification must start with a short title, which describes the general nature of invention. The title should not contain anyone's name, a fancy name and trade name or personal name or any abbreviation etc.
Description:
The specification must be written in good and clear English or Hindi. The specification should indicate those features which are essential for the operation of the invention as well as those features for which a choice can be made. The description must be sufficiently detailed for someone who works in the same area of technology to be able to perform the invention from the information given in the description. The best method of putting the invention into effect is required to be described.
In case of biological invention, it is required to mention the source or geographical origin of biological material used for the invention
Claim:
A set of properly drafted claims is an important part of complete specification. The complete specification must have at least one Claim. . The first claim is the main claim.. The subsidiary claims refer to the main claim and include qualifying or explanatory clauses on the various integers of the main claim or optional features. They may also contain independent claims. Although the claim clauses consist of a number of claims, the totality of the claims must relate to one invention only. It should be noted that a claim is a statement of technical facts expressed in legal terms defining the scope of the invention sought to be protected.
Abstract
The abstract is the concise summary of the invention preferably within 150 words and shall commence with the title of the invention. It should be prepared in such a way that one can understand the technical problem and solution with its usefulness. If necessary, most relevant drawing should also be included in the abstract, particularly, in mechanical type inventions. Each main feature mentioned in the abstract and illustrated by a drawing should be indicated by reference numerals. In case of Chemical invention, it should contain the Chemical Formula for understanding the invention. However, it cannot be used for the purpose of interpreting the scope of protection in legal proceeding.
DRAWING
Drawing should be filed on standard A4 size sheet in duplicate. Drawing should be drawn on the sheet with margin of 4 cm on top and left hand and 3 cm at the bottom and right hand side. Figure should be shown clearly on sufficient scale in upright position with respect to top and bottom position of the sheet. At left-hand top corner of the sheet, the name of applicant should be mentioned, with the application No. therebelow. No. of sheets and sheet no. should be mentioned at the right hand top corner. At the right-hand bottom, signature of the applicant/agent should be made mentioning the name there under. A reference letter/numerals as used in the description should also be used in denoting the corresponding component/part in the figure(s). No descriptive matter should appear on drawing except under certain cases such as flow sheet, chemical and other reactions etc. No drawing or sketch should appear in the specification.
FIGURE-2
Signature of Applicant/Agent
15 16
|
SI. No.. |
On what payable |
No. of Form |
|
|
For natural person |
|||
|
Rupees |
|||
|
1.. On application for a patent under sections 5(2), 7, 54 or 135 and rule 39 accompanied by provisional/ complete specification. (i)for each sheet of specification in addition to 30; |
(ii)for each claim of in addition to 10. 1 |
1000 Multiple of 1000 in case of every multiple priority. (i)100 |
(ii) 200 4,000 Multiple of 4,000 in case of every multiple priority (i)400 |
|
2. On filing complete specification after provisional upto 30 pages and 10 claims:- (i)for each sheet of specification in addition to 30; |
(ii)for each claim of in addition to 10. |
2 No fee (i)100 |
(ii) 200 No fee (i)400 |
|
3. |
On filing a statement and undertaking |
3 |
No fee |
|
4. |
On request for extension of time under sections 53(2)and 142 (4), rules13(6) ,80 (1A) and 130 |
4 |
300 per month |
|
5. |
On request for publication under section 11A(2) and rule 24A |
9 |
2,500 |
FEES schedule-l
Amount of fees (in rupees)
For other than natural person(s) either alone or jointly with natural
Rupees
(ii)800
(ii)800
No fee
1200 per month
10,000
17
|
6. On request for examination of application for patent a)under section 11B and rule 24(1) b)under |
18 2,500 |
3500 10,000 |
||
|
7. rule20(4)(ii)On request for certified copies under section 72 or for certificate under section-147and |
1,000 |
|||
|
8. |
Rule-133 On request for inspection of register under section 72 inspection under rule 27 or rule |
- |
200 |
|
|
9. |
74AOn notice of opposition to grant of Patent under section 25(2) |
7 |
1,500 |
|
14000
4,000
800
6,000
18
|
10. |
For supplying of photocopies of the documents per page. |
||||
|
4 |
11. |
For renewal of a patent under section 53. |
~ |
||
|
12 |
Before the expiration of the 2nd year from the date of patent in respect 3rd year |
||||
|
2,000 |
13 |
Before the expiration of the 3rd year in respect of |
the 4th year |
||
|
2,000 |
14 |
Before the expiration of the 4th year in respect of |
5th year |
||
|
2,000 |
15 |
Before the expiration of the 5th year in respect of |
6th year |
||
|
2,000 |
16 |
Before the expiration of the 6th year in respect o |
f 7th year |
||
|
6,000 |
17 |
Before the expiration of the 7th year in respect or the 8 th year. |
|||
|
6,000 |
18 |
Before the expiration of the 8 year in respect or the 9 year. |
|||
|
6,000 |
19 |
Before the expiration of the 9 th year in respect of the 10th year. |
|||
|
6,000 |
20 |
Before the expiration of the 10 th year in respect of the 11th year. |
|||
|
12,000 |
21 |
Before the expi ration of the 11 th year in respect of the 12th year. |
|||
|
12,000 |
22 |
Before the expiration of the 12 th year in respect of the 13th year. |
|||
|
12,000 |
|||||
4
~
500
500
500
500
1,500
1,500
1,500
1,500
3,000
3,000
3,000
19
|
23 |
Before the expiration of the 13th year in respect of the 1 4 th year. |
3,000
|
12,000 |
20
|
24 |
Before the expiration of 14th year in respect of 1 5th year |
||
|
3,000 |
12,000 |
25 |
Before the expiration of 15th year in respect of 16th year |
|
5,000 |
20,000 |
26 |
Before the expiration of 16th year in respect of 1 7th year |
|
5,000 |
20,000 |
27 |
Before the expiration of 17th year in respect of 18 th year |
|
5,000 |
20,000 |
28 |
Before the expiration of 1 8th year in respect of 19 th year |
|
5,000 |
20,000 |
29 |
Before the expiration of 19 th year in respect of 20th year |
5,000
20,000
PATENT COOPERATION TREATY
Patent Laws differ from country to country and there is no "World Patent" or "International Patent". However, there is an international filing system that is accessible in accordance with patent cooperation treaty (PCT). When a PCT application is filed in one of the member-states of the PCT, this is legally in effect equivalent to filing in all PCT member states. Patent right is granted only by the particular member country after entering the national phase in that country (Corresponding to the International application).
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INFORMATION FOR FILING OF INTERNATIONAL
APPLICATIONS FOR PATENT UNDER PCT BY INDIAN
APPLICANTS.
a Competent receiving Office.
b. Language of filing.
c. Elements of the International application.
The Patent Office, Kolkata,
RO/IN: English, Hindi RO/IB: Any language.
i. Request (PCT/RO/101). ii. Description. iii. One or more claims, iv. Abstract.
v. Drawings (where applicable), vi. Fees.
vii. P. A./ G.P.A (Where applicable) viii. Priority documents (where applicable)
d. No. of copies required.
e. Competent International Searching Authorities [ISAs].
f. Competent International Preliminary Examining Authorities [IPEAs].
RO/IN: 3(i to v) to The Patent Office, Kolkata and 4(i to v) to the Patent Offce,
RO/IB: 3(i to v)
Austrian Patent Office (AT). Australian Patent Office (AU). European Patent Office (EP).
Austrian Patent Office (AT). Australian Patent Office (AU). European Patent Office (EP). (Only if ISA was AT, EP or SE).
22
THE LIST OF THE PCT FEES. AN INDIAN APPLICANT IS REQUIRED TO PAY.
a. To Receiving Office [The Patent Office, Kolkata,
Transmittal fee
International filing fee
INR 2000 [for individual(s)] INR 8,000 [for legal entity]
USD 1086* for 30 sheets USD 12*extra for each remaining sheet
iii. Reduction
PCT Easy Reduction
Electronic filing not Character coded
Electronic filing Character coded
iv. Search fee
v. Fees for preparing certified copy of priority document and transmission of the same to IB.
USD 78 USD 155
USD 233
ISA/AT-USD 241
ISA/EP-USD 1925**
ISA/AU-USD 908
ISA/CN-USD 260
ISA/US-USD 1000
ISA/SE-USD 1925
INR 1,000 [for individual (s)] INR 4,000 [for legal entity other than Individual(s)]
23
b. To the International Preliminary Examination Authority (IPEA-optional)
HANDLINGFEE IPEA/AT-EUR 129
IPEA/AU-AUD 205 IPEA/EP-EUR129
IPEA/CN-CNY 200
I PEA/US-USD 155
IPEA/SE-SEK 1210
PRELIMINARY IPEA/AT-EUR 200
EXAMINATIONFEE IPEA/AU-AUD 550
(Optional) IPEA/EP-EUR 1,595**
IPEA/CN-CNY 1,500 IPEA/US-USD 600,
IPEA/SE-SEK-5.000
* International filing fee is reduced by 75% where the applicant or if there are two or more applicants, each applicant is a natural person and is a national of, and resides in
** Nationals of state which fulfill the requirements for the corresponding reduction of certain PCT fees as specified above may be eligible for reduction by 75% in search fee and preliminary examination fee.
MODE OF PAYMENT
To facilitate the payment in US Dollar, as required by International Bureau of World Intellectual Property Organisation and International Searching Authority selected by the applicant, an account has been opened by RO/IN in the name of the Controller General of Patents, Designs & Trade Marks, with the State Bank of India, New York Branch, 460, Park Avenue, New York-NY- 10022 assigning account No. 2111-250821-001.
24
In view of above, an Indian applicant, filing an International Application for Patent under Patent Cooperation Treaty, is required to remit the consolidated amount in US Dollar by Demand Draft, payable to the 'Controller of Patents' at State Bank of India, New York Branch, for payment towards international filing fee and search fee.
ACT TO BE PERFORMED FOR ENTRY INTO THE NATIONAL PHASE
An applicant desirous of entering the-Indian national phase before DO/IN or EO/IN is required to perform certain acts within the time limit applicable for entry into the national phase [under PCT Article 39(1)]. "Performance of certain acts" means meeting the requirements as laid down in the Treaty. The requirements are of two types, namely (a) basic requirements and (b) additional special requirements to be complied with by the applicant in connection with the national phase.
Basic Requirements
Under the said basic requirements to start the national phase in India, the applicant is required to file the following with the DO/IN or EO/IN within the prescribed time limit: (Which is 31 months from the priority date in both cases), (i) An application on a plain paper or Form 1 (preferably):
National fee in INR: INR 1,000 for natural person(s)
In case of no or one priority, and multiple of INR 1,000 in case of every multiple priority,
INR 4,000 for other than natural person
In case of no or one priority, and multiple of INR 4,000 in case of every multiple priority.
(ii) Where the international application has not been filed or published in one of the official languages of DO/IN or EO/1N as the case may be, a translation of the application [under PCT Article 22: Description, claims (if amended, both as originally filed and amended together with any statement)and under PCT Article 39(1): Description, claims, any text matter of drawings, abstract(if any of those parts has been amended, both as originally filed and amended by the annexes to the international preliminary examination report)].
b) Additional Special Requirements
As per DO/IN or EO/IN the special requirements of the Office are as follows:
a) Name, Nationality and address of the inventor if they have not been furnished in
the “Request” part of the international application,
b) Instrument of assignment or transfer where the applicant is not the inventor,
c) Document evidencing a change/change of name of the applicant if the change occurred
after the international filing date and has not been reflected in a notification from
the International Bureau (Form PCT/IB/306). Form 6 / Form 13 is also required.
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d) Declaration of inventor ship by the applicant,
e) Statement regarding corresponding applications in other countries,
f) Power of attorney if an agent is appointed,
g) Address for service in
h) Verification of translation, and
i) Copy of International application or its translation when required
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Tags :Intellectual Property Rights
