Thursday, May 2, 2013

Indian Patent agent exam notes 1

Patent application and Documents required at the time of filing
Sections and Rules
Nat.per        Entity
Form 1
Application for grant of a patent
S.7, 54 & 135 and rule 20(1))]
Form 2
Provisional/Complete Specification
S.10 and rule.13
No fee
No fee
Form 3
Statement and undertaking
S.8 and rule 12
No fee
No fee
Form 4
Request for extension of time
S. 53(2) and 142(4))
rules 13(6), 80(1A) and 130
300 per month
1,200 per month
Form 5
Declaration as to Inventorship
S.10(6) and rule 13(6)
No fee
No fee
Form 26
Form of Authorization of a patent agent/or any other person in a matter or proceeding
S. 127,132 and rule 135
No fee
No fee
 The bolded forms are exception at the time of filing of patent and depends on certain conditions,
Form 3: Statement of undertaking regarding foreign filings [S.10(6) and rule 13(6)]
  • ·         If the applicant has filed and is prosecuting an application for the same or substantially the same invention in other countries, then he has to submit Form 3 detailing out particulars like date of filing, Publication number, country name etc.
  • ·         If there is no foreign filing then the applicant can give a NIL statement
Form 5: Declaration of Inventorship:
  • ·         If the inventors are not applicant in making an application for the patent, then the applicants are required to file a declaration that the applicants believe that the persons so named are the true and first Inventor
  • ·         In case the applicant is himself an inventor, then there is no need to file the declaration of inventorship
  • ·         Declaration of inventorship may also be filed within 1 month from the date of filing the complete specification
  • ·         A request for extension of time may be filed using form 4
Proof of Right (S.7(2))
  • ·         Where the application is made by virtue of an assignment of the right toapply for a patent for the invention, there shall be furnished with the application, or within such period as may be prescribed after the filing of the application, proof of the right to make the application.
  • ·         Applicant must file proof of right during filing or 6 months from the date of filing
  • ·         It can be produced in the body of the application(Form 1) or by way of separate assignment
  • ·         If application by way of legal representative needs to be filed then file a death certificate as proof of right to make an application
Form 26: Authorization of Patent agent:
If the patent is filed through a patent agent, then fill form 26.
April 2008
Procedure for obtaining a patent
Image Source: brainleague
Patent application has to first filed in India atleast 6 weeks before filing it abroad. If he wants to file the patent directly then he has to take permission from the controller by filling Form-25 and Rs 4,000 fees
Application must be accompanied by Provisional/Complete specification (Form 1,2,3,5,26 and proof of right)
If provisional is filed then complete specification must be filed within 12 months from the date of filing of provisional specification
Patent application is published after 18 months from the date of filing
In case an Early publication is necessary:Form-9, fees  Rs 10,000
Applicant to file Request for examination (RFE) within 48 months from the date of priority or date of filing whichever is earlier; Form-18, Fees :Rs10,000
After RFE, Controller forwards copy of all documents to examiner within 1 month from date of publication or one month from RFE whichever is later
Examiner carries out patentability search, makes report and forwards it to controller, Time-limit-ordinarily within 1 month but not more than 3 months from the date when the documents were received by examiner
Controller disposes of the report within 1 month from the date of receipt of the report
Controller forwards first examination report(FER) to agent/applicant within 6 months from RFE or date of publication whichever is later
Applicant to comply to the requirements imposed on him from the FER within 12 months from the date of FER forwarded to him. If no communication is heard after this period, application is deemed to be abandoned
If the application if found in order of grant, it is granted expeditiously with seal of patent office and date on which it is granted is registered in register of patent office
Note: The type of questions likely to be asked is usually in case studies, this question has also been asked as Short note in October 2006 paper, questions like how will you obtain a patent in shortest possible time- The answer is File complete specification first instead of provisional, then request for early publication through Form 9, fees Rs 10,000(Legal entity), and after publication immediately file for RFE through form 18, Fees: Rs 10,000.Rest of the steps from 7-12 are compulsory for grant of patent. Also we need to explain the various forms ,fees and their title and section, we need to also explain that claims should be clear, succinct and fairly based on matter disclosed and should relate to single invention, Complete specification should  disclose the best mode to carry out the invention. This helps to obtain patent in shortest possible time.
Below are some questions which can be answered using the above table
Jan 2010: Your client has applied for a provisional patent application in India. Draw a time line of all the important events till the date of grant of her patent application as per the Indian Patents Act and Rules.
April 2008:
Questions related to postdating of application
Dec 2008:
Option 1: Request to post date the application as per S.17(1)
Key features of the section
  • ·         Provisional as well as complete specification can be requested for postdating.
  • ·         Request for postdating is possible any time after filing provisional or complete specification, but before grant of patent.
  • ·         The date of post-date shall be specified in application to controller.
  • ·         Request for post-date shall not be made after filing provisional/complete specification.
  • ·         Post-dating is not possible to a date later than the date on which it was actually made, i.e, maximum period of 6 months.
  • Request for post dating can be made to the controller along with a fees of Rs 2000/-. By doing this the applicant receives 6 more months to file the complete specification
Option 2: Abandoning the application
Do not file the complete specification if the priority date is not important then by section 9 (1) the patent will get abandoned automatically and a fresh patent application can be made.
9(1) Where an application for a patent (not being a convention application or an application filed under the Patent Cooperation Treaty designating India) is accompanied by a  provisional specification, a complete specification shall be filed within twelve months from the date of filing of the application, and if the complete specification is not so filed, The application shall be deemed to be abandoned.
Option 3: S.9(3) :Applicant may decide to request the controller within 12 months from the date of filing to treat the specification as provisional specification and proceed with the application

Table for Forms and Fees

Fees (Rs)
No Fees
Form 2,3, 5, 26 & 27
Form 13
Form 4
Form 6, 8 and 13
Form 1, 13, 16, 23, 24, 25
Form 7, 10, 11, 12, 14, 15, 17 & 19, 20, 21,
Form 22
Form 9 & 18
Form 18

  • Fees for Natural person represented in this table, for legal entity Multiply the above figure by 4
  • All forms for compulsory License form , fees is Rs 1500 (Form 17,19,20,21)
PCT Application

Jan 2010
Your client Sivaram has filed a patent application in Germany on January 1st 2006. He has filed a PCT application on December 31st 2007. By which date should you file his national phase application in India? Assuming you have filed his national phase application in India on January 1" 2008, what is the last date by which the request for examination is to be filed in India to keep his application live?
Jan 2010
You have filed a provisional patent application in India and now wish to file an application under the Patent Cooperation Treaty (PCT). Draw a timeline with the important dates for actions under the PCT system
National Filing date:
Rule 20. International applications designating or designating and electing India
Rule 20(4) (i) : The time limit referred to in sub-rule (2) shall be thirty one months from
the priority date as referred to in Article 2(xi);
Priority date: 1st Jan 2006
National filing date: before 1st August 2008 (31 months from priority)
Filing for Request for examination:
Rule 24 B: Examination of application.;
(1) (i) A request for examination under section 11 B shall be made in Form 18 within forty-eight months from the date of priority of the application or from the date of filing of the application, whichever is earlier;
Hence RFE should be filed before 1st Jan 2010 (Priority date: 1st Jan 2006 , hence within 48 months from this date RFE should be filed)
Competent Searching Authority (sometimes asked in objective question) for PCT
(Remember: A2CEUS). (Australia, Austria, China, Europe, United States and Sweden)
Competent International Searching Authority:
Australian Patent Office, Austrian Patent Office, European Patent Office, State Intellectual Property Office of the People’s Republic of China, Swedish Patent and Registration Office or United States Patent and Trademark Office