Patent Application in India
Provisional Specification
Indian Patent Law follows first to file system. To file a patent in India, an application with a provisional patent specification can be filed if the invention is still under experimentation stage. Filing a provisional specification provides the advantage to the inventor since it helps in establishing a ―priority date of the invention. Further, the inventor gets 12 months’ time to fully develop the invention and ascertain its market potential and to file the complete specification.
A provisional patent is however not a preliminary rough draft but, when filed, is considered a scope defining document. A complete specification filed in respect of the same application must ideally be within the scope of the provisional specification. Thus, a provisional specification is an important document for securing a priority date for an invention which is nearing its completion.
Complete Specification
A complete specification is a document which provides a full and complete disclosure of the invention. Thus, when filing for a patent in India, an application can be filed with either a complete specification or a provisional specification (as explained above).
As per the Indian Patent Law, a complete specification must contain a full disclosure of the invention along with the best method of performing the invention. The main contents of a complete specification are as under:
- Title of the invention
- Field of the invention
- Background of the invention
- Summary and Object of the invention
- Brief description of the drawings
- Detailed Description of the invention
- Patent Claims
- Abstract
First Examination Reports (FER)/ Office Actions
Once a patent application is filed along with a request for an examination, the Patent Office issues a First Examination Report containing techno-legal objections regarding the patent application. Responding to the First Examination Report requires expertise and experience. It is mandatory to respond to the First Examination Report within 6 months of date of issue. If the Controller is satisfied by the response provided by the Applicant (or the Attorney of the Applicant), the application generally proceed towards a grant.
Attending Hearings
Once an Applicant has filed a response to the First Examination Report, the application is examined by the Patent Office in light of the response provided. In event that the Controller is not satisfied with the response, the Controller may issue a hearing notice to the Applicant. The hearing notice has the details of the scheduled hearing along with a list of further objections. In such an event, the Applicant (or the Attorney of the Applicant) is expected to be present and provide an explanation to the objections raised by the Controller in the hearing notice. Hearings are conducted either in-person or via video conferencing.
Patent Application in Foreign Jurisdictions
We, at VNA Partners assist in filing patent application in India as well as foreign jurisdictions. In this regard, a conventional application (under the Paris Convention) may be filed or an application may be filed under the Patent Co-operation Treaty (PCT). The Paris Convention for the Protection of Industrial Property, established in 1883, provides for 12 months time to file the patent application in the member countries from the date of filing of the earliest application. On the other hand, PCT is a system which allows an applicant to file in PCT contracting states within 30/31 months from priority date instead of 12 months. The PCT is an international treaty with more than 150 Contracting States. The PCT makes it possible to seek patent protection for an invention simultaneously in a large number of countries by filing a single “international” patent application instead of filing several separate national or regional patent applications.
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