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Patents Under Patent Cooperation Treaty

The patent co-operation treaty provides for filing of an international application where protection is sought for an invention in any of the countries, which are party to the treaty. Filing of such an application has the same effect as if the application has been filed separately in each of the countries in which protection is desired. Under Chapter II A of the Patents Rules 2005, the procedure for processing of an international application filed under the PCT with the Indian Patent Office is as follows:

An international application filed under PCT designating India will be treated as an application for patent under Indian Patents Act. The title, description, drawings and claims filed in the international application will be taken as the complete specification under the Act. The filing date of an application for patent and its complete specification will be the international filing date accorded under the Treaty (priority date). An applicant who has filed an international application designating India must within the prescribed time limit, pay the prescribed national fees and other fees to the patent office and file with the office, a translation of the application (if not filed or published in English) in English duly verified by the applicant stating the correctness and completeness of the contents thereof. The translation should include a translation of the description, the claims as filed, any text matter of the drawings and the abstract. The time limit prescribed is 21 months from the priority date. However, where the applicant has, before the expiration of 19 months from the priority date, elected India for the purposes of the use of the result of the international preliminary examinations, the time limit is 31 months from the priority date. The Patent office will not commence processing of an international application designating India before the expiration of 36 months from the priority date. However, where the applicant has, before the expiration of 31 months from the priority date, elected India for the purposes of the use of the result of international preliminary examination, the processing of the international application may be commenced any time after the expiry of 36 months from the priority date. If the requirement outlined above is not complied with by the applicant, the international application will be deemed to have been withdrawn. It is important for the purpose of determining whether the necessary filing of document in the Indian Patent office has been done within the prescribed time, and for ascertaining when processing of the application will starts, its is important to clarify whether the client has elected India for the purpose of the use of the result of the international preliminary examinations before the expiration of 19 months from the priority date.

Where the priority of an earlier national application is claimed under Article 8 in the international application, a copy of the said national application, certified by the authority with which it was filed (referred to as �the priority document�) together with the international application, needs to be submitted by the applicant to the International Bureau not later than 16 months after the priority date. If this requirement has not been complied with, the priority document must be filed with the Patent Office before the expiry of the applicable time limit as mentioned in rule 20D (6). If the priority document is not in English, a duly verified English translation there of must be filed. In case the applicant defaults in filling the priority document or the translation thereof within three months from the date of the invitation; and if the applicant fails to do so, the claim of the applicant for the priority will be disregarded by the Patent Office.

Procedure thereafter is as provided under the Indian Patents Act, 1970

The application will be examined by an Examiner in respect of the following matters:

(1) Whether the application and specification comply with the requirements of the act and rules made thereunder.
(2) Whether there is any lawful ground of objection to the grant of the patent under the Act.
(3) Search under s.13 for anticipation by prior claim in the records of the Indian Patent Office. An objection based on prior claiming can be raised even if the prior clam is not cited by the examiner.
(4) Any other matter which may be prescribed.

The Examiner will ordinarily submit his report to the Controller within a period of 18 months from the date of reference to him for examination.

If the report of the Examiner contains any objection to the application or requires any amendment of the application or of the specification to ensure compliance with any provisions of the Act or the rules, the controller will communicate the gist of the objection to the applicant and will, If the applicant requests for the same within the prescribed time, give him an opportunity for being heard.

Where the application does not comply with any requirement of the Act or the rules, the Controller may either refuse to proceed with the application, or require the application, specification or drawing to be amended to his satisfaction before he proceeds with the application.

The application has 9 months (according is the 2005 amended rules) from the date on which the first statement of objections to the application is forwarded by the Controller to him in which to comply with all the requirements imposed on him. On request made by the applicant in the prescribed manner and before the expiry of the 9-month period, the period may be extended to a total period of 12 months from the date on which the objections are forwarded to the applicant.
If the applicant does not comply with the requirements within the said period, his application will be deemed to have been abandoned.

After the applicants have complied with all the requirements of the office within the time prescribed or within the extended time granted, the Controller may accept the complete specification. He may postpone acceptance up to 12 months from the date of forwarding the objection, if an application for the purpose is made by the applicant.

On acceptance of the complete specification the Controller will allot a serial number to the application, which will be the number of the patent when granted.

The fact of acceptance of the complete specification will be advertised in the Official Gazette, and thereafter the application and specification will be open to public inspection. From the date of advertisement of acceptance of a complete specification and until the date of sealing of the patent the applicant will have the same rights and privileges as if the patent had been sealed in the date of the advertisement. However, the applicant will not be entitled to institute infringement proceeding until the patent has been sealed.

At any time within 4 months from the date of advertisement of the acceptance of a complete specification (which may be extended by 1 month by the Controller if application is made in the prescribed manner) any person interested may give notice to the Controller of opposition to the grant of the patent on any of he grounds mentioned in S.25. Where any such notice of opposition is duly given, the Controller will notify the applicant and will give to the applicant and the opponent an opportunity to be heard before deciding the case.

If at any time acceptance of the complete specification and before the grant of a patent the Controller discovers that the invention has been published before the priority date of the claim in any specification filed in pursuance of an application for a patent made in India or in any other document in India or elsewhere, he may refuse to grant patent unless the complete specification is amended to his satisfaction within any time period as prescribed by him. In the case of prior publication in a document other than an Indian specification, the applicant may prove that the prior publication does not constitute anticipation having regard to ss. 29 (2 and3).

Where a complete specification in pursuance of any application for patent has been accepted and either:

(a) the application has not been opposed under s. 25 and the time
For filling of opposition has expired; or
(b) the application has been unsuccessfully opposed; or
(c) the application has not been refused by Controller by any power vested in him under the Patent Act,

The patent will be granted to the applicant on request (a request for sealing of patent must be made on appropriate From.) and the patent sealed and entered in the Register.

If the patent has not been opposed, the request for sealing must be filed not later than months the date of advertisement of the acceptance of the complete specification. If at the end of the 6 months� period any proceeding in respect of the application is pending before the Controller or the High Court, the request may be made within 2 months after the final determination of the proceeding. The proceeding before the Controller may relate to (a) an opposition to the application under s. 25, (b) an application for amendment under s. 57 or (c) any objection raised by the Controller subsequent to advertisement, under s. 27. The proceeding before the High Court may relate to an appeal against the decision of the Controller in an opposition or under s. 27 or s. 57.

The period for filling a request for sealing of the patent may be extended from time to time by the Controller on application made to him for the purpose. Such application should be filed on appropriate from and the prescribed fee paid within the period of extension sought. Where there is no proceeding pending the maximum period of extension that may be granted is 3 months.

Once a patent is sealed, the applicant enjoys the bonafide ownership of the subject matter of the patent till 20 years at the cost of periodical renewals of the right of ownership of the patent. After 20 years, the patents 20 years, the patents opens for the public domain from the womb of the owner of the patent and patent becomes the beneficial commercialized object for the public at large.

About the Author

By Shekhar Kumar, Advocate
________________________
NAASHREE ASSOCIATES
Advocates
Litigation cell: 6, Babar Lane, Ist Floor, Bengali Market, New Delhi-110001.(INDIA)
Phones; 91-11-23324521,23739530,91-9873203306
Email: [email protected]
Web: www.naashree.com

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