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We are among the few Indian firms equipped for providing services related to patent protection and enforcement in India and across multiple jurisdictions including SAARC, ASEAN, EU, USA, Japan, and South Korea.
Our team of unrivalled Patent Attorneys and Technical Experts, with strong technological and legal backgrounds, provide services and strategic vision to clients across all sectors including Bio-Medical Devices, Mechanical, Pharmaceutical, Biotechnology, Life Sciences, Chemical Sciences, Energy, Manufacturing, Automotive and Software/IT.
The team has a broad range of experience in proceedings before the Patent Office including oral hearings, oppositions, cancellations, rectifications, IP assignments, and other related proceedings.
We maintain a system to keep a timely check on the upcoming deadlines and make every effort to stay in touch with our clients on a regular basis.
Patent is an intellectual property right, to make, use or sell an invention for a limited period of 20 years. A Patent is granted to an entity on disclosing a technical invention, which may be a product (system/apparatus/device) or process (method/manufacturing) or both, which is novel or new and demonstrate inventive step or technological advancement over the existing technologies.
It is a statutory right of the Patentee for his new invention which can be categorized as a new process or product. A Patentee has the following exclusive legal rights, on the technology for which a patent is granted:
The registration of a patent, grants protection to inventions and other benefits thereto, few of which are summarized below:
Reducing competition and raising company value: Creation of a niche market for the patented products, where the consumers are solely in position to purchase the product of the Patent Holder.
The patent rights are territorial in nature, i.e. a patent and its related rights are valid and enforceable only in those jurisdictions where it has been registered/granted in accordance with the respective national laws. Therefore, it is always advisable that the Applicants should identify the markets and jurisdictions which are commercially significant for the technology and accordingly decide and determine the strategy for Patent Protection.
The invention for grant of a patent should meet the following conditions:
The subject matter of the following inventions is not patentable:
The application for patent can be filed by any of the following persons, either alone or jointly with any other person:
It is advisable to ascertain if the subject matter of an invention is patentable, before strategizing patent protection. In other words, through conducting search, the inventors can ensure that the technology invented by them has already been disclosed or not or has been made available to public or not. The prior art search can be performed using paid or unpaid databases.
The unpaid database which can be accessed freely are:
The Applicant can file a request for grant of a patent along with the requisite documents at the appropriate Indian Patent Office (IPO). The IPOs are located at New Delhi, Mumbai, Chennai and Kolkata. The Applicant can determine appropriate territorial jurisdiction on the following basis:
Yes, the inventions disclosing the use of biological material can be patented in India. The complete specification should sufficiently disclose source and geographical origin of the biological material. Further, when the biological material is obtained from India, the Applicant is required to submit a permission provided by the National Biodiversity Authority (NBA) before the grant of a patent.
In case, the disclosed biological material is not available to public, such biological material is required to be submitted with the International Depository Authority (IDA), on or before the date of filing of the application. Microbial Culture Collection (MCC), Microbial Type Culture Collection and Gene Bank (MTCC), and National Agriculturally Important Microbial Culture Collection (NAIMCC) are recognized the IDAs in India.
In the official journal of the Patent Office, applications are published after the expiry of 18 months from the application filing date or the earliest priority application date, whichever is earlier.
However, the following applications are not published:
The official publication of the invention is significant for the Applicant, as from the publication date the Applicant shall have similar privileges as if the patent is granted. However, the Applicant cannot institute any proceedings for infringement until patent is fully granted.
The Applicant can file a request for early publication along with the prescribed official fee in order to expedite the process of official publication of the patent application. In such a case, the application may be published within 1 month from the date of such request.
It is mandatory for the Applicant to file a request for examination of the application within 48 months from the earliest priority application date or application filing date, whichever is earlier. Since, the applications are examined based on the date of filing of the request, it is advisable to file the said request as early as possible.
If the necessary request is not filed within the prescribed period, the application is treated as withdrawn by the Applicant and cannot be restored or reinstated under any provisions of the Patents Act 1970.
Apart from the Applicant, any “person interested” can file a request for examination. An evidence of interest in the application is required to be provided by the “person interested” along with the request. Such person is intimated about issuance of the examination report.
A “person interested” means a person engaged in or involved in promoting research in the same field to which the invention relates.
In the following categories a request to expedite the examination of the patent application can be filed or normal request can be converted into an expedited request:
Recently, the Patent Prosecuting Highway Pilot Program commenced between the Indian Patent Office and Japan Patent Office.
Patent Prosecution Highway is a bilateral initiative between the National Patent Offices, for providing accelerated/fast tracked patent prosecution, through use of work products, such as examination reports, written opinions, etc. of one office by the other patent office for fast grants. Notably, the number of requests is limited to 100 cases per year.
The Applicant can file a request to withdraw a patent application any time before the grant of a patent.
When the request to withdraw the application is filed within 15 months from the earliest priority application date, the application will not be published in the official journal of the Indian Patent Office.
Further, the Applicant may seek 90% of refunds of the official fee paid for request for examination, if the application is withdrawn by the Applicant before the issuance of the first examination report/ office action.
The deadline for filing response to the examination report is 6 months from the date of issuance of the examination report.
However, the said deadline can be extended for maximum 3 months by filing the appropriate request, before the expiry of the actual official deadline.
The term of a patent is 20 years from the application filing date or date of entering the PCT International Phase, provided that the renewal/annuity fee is paid every year before the expiry of the due date or within the extended period (maximum 6 months).
The patent will lapse or cease to exist in case patent renewal/annuity is not paid within the prescribed time limit or extended period.
A patent lapsed or ceased to have effect due to non-payment of renewal/annuity can be restored or reinstated by filing a request for restoration of patent within 18 months from the date on which patent is lapsed. The request for restoration is published in the official journal of the Patent Office, when the Controller is satisfied that failure to pay the renewal/annuity fee was unintentional. Any person interested, may file a notice of opposition to restoration of patent within 2 months from the date of such publication.
Yes, the Applicant or Patentee can assign rights or interests in the application or patent by way of executing an assignment deed or an agreement between the Assignor (Applicant or Patentee) and Assignee.
In order to enforce such agreements or assignments, it is necessary for the Assignee to file a request for change in the proprietorship of the patent application or the patented invention along with necessary documents in the prescribed manner along with the official fee.
On the grant of a patent, it is mandatory for the Patentee to furnish information related to working of the patented invention on commercial scale in India.
The recent Patents (Amendment) Rules, 2020 resulted in the revision of the Form 27 for furnishing such statement of working. The details of the related patents can be incorporated in a single form and is required to be filed by September of every financial year.
If the Patentee or licensee refuses or fails to provide information of working of the patented invention on commercial scale in India, he may be liable to punishment with fine which may extend up to INR 1 million.
Additionally, if the Patentee provides false information in this regard, he shall be punishable with imprisonment which may extend to 6 months, or with fine, or both.
Any person can file representation by way of Pre-Grant Opposition against the grant of a patent, after publication of the patent application in the official journal by the Indian Patent Office. The permissible grounds of opposition are as follows:
The Post-Grant Opposition can be filed by any “person interested”, within 1 year from the date of publication of grant of a patent. The permissible grounds of opposition are as follows:
Foreign Filing License is a permission, under which the Applicant or inventor has to seek permission, for filing of application outside India, from the Indian Patent Office under the following circumstances:
In case the Applicant fails to comply with the aforementioned mandates, he shall be punishable with imprisonment for a term which may extend to 2 years, or with fine, or with both.
Any person interested can file a request for compulsory license after expiry of 3 years from the date of grant of Patent in India. The grounds for compulsory license are as follows:
The Indian patent system has provisions of differential official fee for Applicants belonging to different categories. The applicable official fee for the small entities and start-ups is akin to Natural Persons, after the recent Patents (2nd Amendment) Rules, 2020. The Applicant is required to provide necessary documents for claiming the official fee benefit.
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The client’s satisfaction is evident from years of their association with us, more than a decade for a lot of them. We act as an extension of in-house legal teams and act as External Legal Counsel to you. Our efforts are towards being strategic partners in your growth and not to be just a law firm.
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