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Patent Preparation and Prosecution

Introduction – Patent Prosecution

Patent Prosecution is not merely a process of interaction between an Applicant and/or his Legal Representative and a Patent Office with respect to the patentability of a patent, but, for the Applicant, it is also a test of legal and technical competence that it believes the Legal Representative possesses. Patent prosecution is highly individualized and reflects the underlying skill set of each Attorney as the prosecution process itself involves a high level of technical negotiation and interpretation of specific terminologies with the patent office, which in the end has high-impact value for the client.

The Indian Patent Office follows a well-defined patent prosecution system that includes several deadlines and other documentary requirements. In most cases, such deadlines begin with the priority date of the patent application. The patent prosecution procedure in India begins with the filing of a patent and continues until the invention is examined and registered.

We at IIPRD provide efficient patent filing services to Indian and International Corporates and Individual Inventors Firms. IIPRD has proved itself as one of the fastest filings and reporting to the respective clients. We diligently monitor all deadlines and take the necessary steps.

Patent Examination

Following the filing of a patent in India, a separate request for patent examination via Form 18 must be filed with the Indian Patent Office. This request can be filed at the time of patent application filing or at any time within 48 months of the earliest priority date. Some patent applicants intend to postpone the patent prosecution procedure for commercial reasons, as the claimed invention may require some time to be fully embodied as a commercially viable product.

As a result, such applicants can take advantage of the 48-month deadline and file the patent examination request a few months or years after the patent filing date. Some patent applicants, on the other hand, desire to expedite the patent examination process by filing such examination requests along with the patent application. When combined with a request for early publication, this can cut the patent prosecution time by about 18 months.

Patent Application – First Examination Report (FER)

The contents of the patent application are examined by the patent examiner to determine novelty, inventive step (non-obviousness), and industrial applicability. The patent office then provides a list of objections known as the first examination report (FER) or the office action. The patent applicant must respond to a First Examination Report (FER) within 12 months of the issuance.

Patent Issuance

The examiner grants the patent after receiving a suitable response from the applicant. A hearing may be required in various instances. Furthermore, after receiving a response to FER, the examiner may issue additional office actions, which must be responded to by the applicant in a timely manner in order to progress to the grant stage.

The duration of a patent in India is 20 years from the date of filing in India for both ordinary and conventional patent applications, and 20 years from the date of filing of an international PCT application for PCT national phase patent applications. Following the grant of a patent, a renewal fee must be paid in respect of the third year forward to the twentieth year, and it must be paid before the relevant years expire. The pending annuity as of the date of the grant must be paid within three months of the date of grant.

If the renewal fee is not paid within the prescribed time, the patent will be revoked, and during the period between revocation and restoration, the patent owner cannot take any action against any infringement of the invention. Our patent prosecution team at IIPRD, comprised of experienced and dedicated professionals with international experience, has been assisting clients in efficiently handling patent applications during prosecution and securing patent grants.

Our Approach – Patent Prosecution

IIPRD truly understands the inherent value of a patent application, its client’s business objectives, and also the role of intellectual property in their organization. IIPRD, therefore, undertakes the preparation and analysis of office action responses for patent applications and does so keeping in mind the best practices for each Patent Office it prepares responses for. The preparation of office action responses during the prosecution phase requires an in-depth analysis of the invention along with the prior arts taking into consideration the patentability criteria.

Prosecuting Indian Patent Applications

Our team, which includes Patent Agents and Patent Attorney in India, has extensive experience in prosecuting patent applications filed in the Indian Patent Office. As part of these prosecutions, we have responded to several examination reports issued by the Indian Patent Office.

We have also attended several hearings in the Indian Patent Office as part of the patent prosecution process. Our experience has helped us in thoroughly understanding the Indian Patent Act and the nuances involved in prosecuting Indian patent applications.

Patent Prosecution Support for Patent Applications Filed Outside India

IIPRD has extensive experience prosecuting and successfully securing patents in foreign countries throughout the world. The Patent Agents and Patent Attorneys in our firm have substantial experience in prosecuting patent applications filed abroad in association with our foreign associates. We also provide patent prosecution support to other law firms and patent attorneys based outside India. Given the analysis required to respond to office actions and the time involved in performing the same, typically, most IP firms entrust us with preparing detailed responses to office actions.

Opposition / Re-Examination Proceedings

IIPRD also provides complete support for the pre-grant as well as post-grant opposition procedures with respect to a patent. An interested party may oppose the grant of the patent based on grounds of opposition allowed under the respective laws by providing technical and legal arguments and associated references. IIPRD offers services to such clients in searching relevant prior art references and drafting Opposition Letters, which include all such references. IIPRD also offers its Services in drafting a complete Response to Opposition which includes legal as well as technical arguments that can be used to enable the allowance of the claims in the application/affirm the validity of the opposed patent claims.

Some of the Salient Features of our Patent Prosecution Services include:

  • Preparing Responses to Office Actions
  • Strategizing Amendments and Arguments for a patent application for maximizing impact
  • Technical Analysis of Office Actions
  • Technical Analysis of Cited Prior Art references

IIPRD can help you to prepare and file the responses for Office Actions / Patent Examination Reports. IIPRD provides prosecution support for Domestic Patents as well as prosecution support for International Patents, that covers opposition and re-examination support. A response to office action is not required by law, but it is highly recommended that you do so. A response to office action can be filed before the date set by the USPTO for reply, which will extend the time allowed for reply.

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