Level of disclosure required

Critically, a patent specification must meet the legal requirements of all countries in which a patent is to be obtained, not just the requirements of the country in which the invention is conceived or developed.

This generally means that the patent specification – whether a provisional or complete - must present the subject matter of the invention in a manner that is clear and complete enough to enable the relevantly skilled worker to make and use the invention without undue experimentation.

Further, the level of detail must credibly demonstrate that the inventor or patent applicant had “possession of an invention” in the form of the best example of the invention and other implementations of it that may not, at the time of drafting, have been reduced to practice.

Importantly, a highly technical discussion of the invention is not the only important factor. What is equally important is an awareness of, and experience in handling the legal issues that may later arise (particularly those peculiar to specific invention subject matter). This insight enables a more informed specification to be developed, providing for flexibility in patent strategy so that legal issues which may arise many years after patent drafting can be dealt with.

Patent Filing

U & S Legal consultants provides efficient patent filing services to Indian and International Corporates, Individual inventors and Law Firms. We diligently monitor all deadlines taking necessary steps.

Types Of Applications Being Filed At The Indian Patent Office

Ordinary Application- is a first application made for an invention without claiming any priority. This application should be accompanied by a complete specification and claims. (In India, a Provisional Application can be filed too.)

Convention Application- is an application which claims a priority based on a same or substantially same invention(s) filed in one or more of the convention countries in accordance with Paris convention. The application must be filed within 12 months from the date of first application in the convention country. PCT International Application- is an application which is filed in accordance with the Patent Cooperation Treaty (PCT). A PCT Application can be filed within 12 months of the Indian Filing (Priority) Date or directly without filing in India, by filing Foreign Filing License in accordance with the Section 39 of the Indian Patent Act.

PCT National Phase Application- is an international application which can enter the Indian National Phase within 31 months from the Priority Date or International Filing Date whichever is earlier.

Filing Requirements

• Full name, Address, Nationality of each Applicant and inventor.

• A copy of the Complete Specification, claims, abstract and drawings (if any), in English Language.

• Verified English translation of the priority document. The same can be submitted subsequent to Filing as well.

• A Power of Attorney signed by an Applicant or an authorized person of each applicant, in original. The same can be submitted subsequent to Filing as well.

• Proof of Right: is a document evidencing transfer of rights from inventor to Applicant (It can be Form 1 signed by all inventors or Notarized Assignment Deed). The same must be submitted within six months of the Indian Filing Date.

• The duly completed Applicable Forms required for Indian Patent Filing shall be provided to our clients, for the signatures, upon entrusting us with filing an application in India.

• The Indian Patent Office requires details of the Corresponding Applications filed outside India (such as Name of Countries, Application Date and Number, Status of Application, Date of publication etc.) according to Section 8 of the Indian Patent Act. Such Details are filed in Form 3 and can be filed within six months of the Indian Filing Date. Further on change of any status of such Foreign Application including any communication with the respective Patent Office, it is an obligation of the Applicant to inform the Indian Patent Office of any status change within six months of any such change.

Important Deadlines

• A Request for Examination must be filed within 48 months of the Priority Date or Filing Date, whichever is earlier. While the Request for Examination can be filed any time with this timeframe, the application shall be examined only after publication. (An Application shall ordinarily be published within one month from the date of expiry of 18 months from the Priority Date or Filing Date, whichever is earlier).

• Form 3 must be filed within six months of any activity (Filing, Publication, Any Examination Report Receipt/Response etc.) of any application filed in other country/countries.

• Working of invention statement, in Form 27, must be filed by every patentee and licensee in respect of every calendar year within three months of the end of each year. The form will contain information such as periodical statements as to the extent to which the patented invention has been commercially worked in India.

Patent Prosecution

Patent Prosecution refers to a process of interaction between an applicant/representative and a patent office with respect to the patent. Patent prosecution process involves high level of negotiation with the patent office and therefore has high-impact value for the client. The preparation of responses during the prosecution phase requires an in-depth analysis of the invention along with the prior arts taking into consideration the patentability criterions. The First Examination Report (FER) is issued ordinarily within 12 months of filing Request for Examination, provided the Application is published at the Indian Patent Journal.

Our prosecution services include:

• Drafting of Responses to Examination Reports.
• Strategizing amendments and arguments for the patent application for maximizing impact.
• Technical Analysis of Examination Report.
• Technical Analysis of Cited Prior Arts.