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Formal Requirements

 

Section 8(1) requirement: Foreign Application Data

 

Foreign filing data is required to be filed at the time of filing or Within 6 months of Indian filing date and then within 6 months of filing date of each foreign application and each update.

 

Filed as Form 3 in India.

 

What all is to be included?

 

  • Data of same or substantially the same invention (including divisional, continuation and continuation in part).

 

  • Data of corresponding foreign applications filed by applicant alone or jointly or by other person (such as inventor, assignee).

 

  • Data of same or substantially the same invention.

 

Time Frame

 

It is advisable to file Form-3 on a bi-annual basis to keep the IPO updated of progress of foreign applications.

 

 

Section 8(2) requirement: Foreign Prosecution Data

 

  • This requirement is only filed when the Controller REQUIRES the same and notifies you to file foreign search/ examination reports, Office actions, allowed claims with English translation within 6 months of invitation.

 

  • It is not sufficient to file allowed claims.

 

  • There is no need to provide copy of citations marked in various examination or search reports.

 

  • Intention of statute is that any hidden citation or opinion/ analysis on novelty, inventive step should come out.

 

  • It is kind of equivalent to Information Disclosure statement (IDS) requirement abroad/ duty of disclosure in other countries.

 

  • Non-compliance does not lead to automatic revocation, there must be some non-disclosure of material information.

 

> In Kininklijke Philips Electronics N.V. v. Maj (Retd) Sukesh Behl & ANR (Philips), the Hon’ble Delhi High Court considered the question whether there was deliberate or willful suppression and whether the undisclosed information was “material” to the grant of the patent. Thus, in effect, Section 8 violation would not render a patent automatically invalid and several factors (including whether information was material and whether suppression was willful) would need to be considered in deciding a revocation action based on Section 8 violation.

 

> Further, in MAJ. (RETD.) SUKESH BEHL & ANR, Hon’ble Delhi High Court division bench upheld the single bench decision in this case that “The omission was only to furnish a part of the information for the reasons stated therein. It is also the specific case that the information so omitted is not material to the grant of the patent in question.”

 

Both S. 8(1) and (2) grounds for pre-grant, post grant opposition and revocation. 

 

Requirement for translation of International application, filing of Priority documents and English Translation thereof

 

PCT NATIONAL PHASE APPLICATIONS:

 

When PCT is neither filed nor published in English, duly Verified English translation must be filed within 31 months National Phase deadline (not extendable).

 

Verification should state that contents of translation of International application are correct and complete. The authorised attorney of applicant can sign the verification.

 

Translation should include translation of specification, claims, abstract, drawings, text, A. 19 statement & amendments and/ or A. 34 amendments.

 

Where PCT application claims a priority and the priority document was filed in compliance with Rule 17. 1 of PCT with WIPO, a copy of IB 304 has to be filed with Indian Patent Office along with a verified translation of priority documents if the priority document was not in English. The same must be filed within 3 months of Examiners invitation (not extendable), failing which the priority is disregarded. In case priority documents were not filed in compliance with Rule 17.1, a certified copy of the same must also be filed within the aforesaid deadline.

 

Convention Applications:

For convention applications, certified copy of priority docs with English translation has to be filed within 3 months from date of communication by Controller.

 

 

Assignment Documents (Proof Of Right To File Patent Application)

 

If applicants and inventors are same, Proof of Right is not needed.

 

The Applicant must establish complete chain in all other cases; Deadline to file is 6 months from Indian filing date which is extendable on filing condonation petitions.

 

Usually Form-1 signed by inventors in favor of applicant is sufficient or else file certified/ notarized copy of assignment deed/ employment contract/ national law copy is acceptable if the same provides rights to inventions/ patents vest in employer, then we can file national law copy with certified/ notarized copy of employment agreement).

 

If chain is more complicated, like further assignment from inventors assignee to a third party, Applicant needs to provide Certified/ notarized copy of each assignment deed or equivalent document and form 1 is not applicable.

 

Any post Indian filing date assignment is to be handled separately as it no more remains a proof of right (notarized original deed needed, stamp duty to be paid, Form-6 or 16 to be filed).

 

Sequence Listing:

 

The Application disclosing sequence listing of nucleotides and/or amino acids shall be accompanied by a copy of the sequence listing in electronic form.

 

The sequence listing is considered as part of specification for the purpose of fee calculation thus the fee will be calculated for the sequence listing pages as fee for extra pages of specification.

 

E-FILING

It is possible to file a patent application electronically in India. While the e-filing module of the IPO requires some expertise and training, it is certainly a good investment to eliminate the problem of data entry mistakes by the IPO which lead to numerous publication and data errors. The IPO also provides 10% discount on official fee in case of electronic filing.

 

 

Annual Working Report:

 

Every patentee and licensee have to furnish details of working of the invention in Form-27 in respect of every calendar year within three months of the end of each year (by March 31st every year).

 

Working means: An act of making, using, offering for sale, selling or importing for those purposes that product in India.

 

Its a mandatory provision.

 

Essential ingredients of report:

 

  • invention whether worked or not

  • If not worked: reasons for not working the invention and the steps taken for working of the invention

  • If worked:

    • Sold: quantum and value of sold products

    • Imported: Quantum, value and country of import

  • If the reasonable requirements of the public are being met

 

Offence:

 

  • Refusal/ Faliure to furnish information or furnishing of false  information

 

Penalties:

 

  • Refusal/Failure: Fine of US$ 20K

  • Furnishing False Information: Imprisonment of 6 months or fine or both

 

Annuity Fee

 

Annuities are payable after grant of patent (only after receiving the Letters Patent Document).

 

All pending annuities from the expiration of second year till date of grant have to be paid. Thereafter, annuities are payable on each anniversary of filing date.

 

Deadline of annuity payment depends on the date of grant.

 

The accumulated annuities from the expiration of second year till date of grant have to be paid within 3 months of recordal of grant date extendable by six months.(Total nine months).

 

The application lapses on non-payment of annuity fee.

 

Grace Periods And Reinstatement

 

  • Missing the filing of National phase filing deadline: No possibility to file in India after 31 months.

  • Missing filing the Request for examination: Deemed to be withdrawn, No possibility of extension.

  • Missing responding to official action: Deemed to be abandoned, No possibility of extension beyond 12 months.

 

Limited Extension is allowed in case if the Applicant misses the deadline to pay the renewal fee, filing of assignment documents, foreign application data, Power of attorney, and information regarding corresponding applications u/s 8(2).

 

For missing aforesaid deadlines of National Phase filing, Request for Examination, Response within 12 months, etc. restoration is also not possible.

 

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