Call us at: +91-80173 44048

 
 
WHAT WE DO
PATENT
TRADEMARK
COPYRIGHT
DESIGN
NON-LITIGATION LEGAL
RETAINERSHIP
ARRANGEMENT
WHO WE ARE
FAQS
PATENT
TRADEMARK
COPYRIGHT
DESIGN
TRAINING
PATENT AGENT
EXAMINATION
PREPARATORY
COURSE


BASIC COURSE ON
PATENT DRAFTING
PROSECUTION FLOWCHART
PATENT
TRADEMARK
COPYRIGHT
DESIGN
CAREERS
ARTICLES / NEWS
CONTACT US
 
WHAT WE DO - PATENT

Idea with commercial potential requires safeguards by way of patenting

A. Search

State of the art search

Purpose

  • To find out what technology already exists and then build on it;
  • To identify the current developments relating to the subject area of interest;
  • Results can identify new areas for investment, research and development, or acquisition;
  • Searching Patent as well as Non-Patent Literature;

An insight on the key patented innovations and major players in the relevant domain, to assist in your R&D process A request should give any limitation of the state of art search which could assist in carrying out the search; e.g. by publication date, key words, country, or language of documents disclosing technology.

     Search report

  • Overview of the state of Art;
  • Bibliographic data & abstracts of patent documents retrieved; 
  • IPC classification symbol based on the subject matter fields searched; 
  • Period covered by the report; 
  • Search strategy adopted & databases used;

 

Novelty/Patentability Search

Purpose

  • An inventor has an invention which he is interested in patenting;
  • To determine if anyone has previously invented anything similar or identical;
  • Determine whether to pursue patent protection depending upon the degree of inventiveness of your application; How remote or neighboring is your invention to the known art;
  • To better define the inventive contribution of the new product over the prior art;
  • Use Search Results to Strengthen Patent application;
  • Pre-empt the Examiner's Prior Art Rejections;
  • Prior art (patent published, application & NPL) to be searched;
  • Disclosures that are made in confidence will not be considered as prior publication;
  • No Date constraints;
  • Evidence of past public use or sale;

Search request

  • A full and detailed description of the subject matter of the request, which should relate to well defined technological problem;
  • Drawings, if they contribute to a better understanding of the description;
  • Detailed description of the invention;
  • Advantages of the invention;
  • Disadvantages/drawbacks /problems associated with the prior art
  • Examples (if any);
  • Applications of the invention;
  • Conception: Invention conceived on (date) & First written record (date)

Search report

  • Relevant Patents / Publications (with bibliographic data, abstracts & claims);
  • Non-patent references;
  • IPC based on the subject matter fields searched;
  • Search strategy adopted & databases used;
  • Comments from the searcher's point of view with detailed analysis, a brief summary of the cited documents, and their relation to the invention will be shown by means of international applied relevant category codes, i.e. X, Y; 
  • A copy of every cited document will be attached;

Special Searches

Biotechnology sequence search

Purpose

  • Biological Sequence includes nucleotide sequences (DNA or RNA) or amino acids sequences (peptides or proteins);
  • Protein [including Peptide] is specified by amino acid sequence;
  • Polynucleotide [including Polynucleotide partial fragment (ex. probe, primer, anti-sense)];
  • Antibody;
  • Expression system includes expression vectors and their regulatory elements (e.g. promoters, enhancers, etc.);
  • siRNA and miRNA;
  • SNPs / Haplotypes

Search strategy

Search is based on paid and non-paid databases.

Keyword search- EPO (ESPACENET), JPO, USPTO, WIPO (PATENTSCOPE), BIOSIS (STN), EMBASE and MEDLINE (STN);

Searches by Classes- IPC classification/ECLA classification/ICO Classes;

Sequence search-NCBI/EMBL-EBI, CA (STN), REGISTRY (STN), DGENE etc.

 

Chemical structure search

Purpose

  • Chemical structure searches are required when novelty lies in a specific chemical compound or entity;
  • If the structure is new, it becomes very difficult to search it with a common name or IUPAC name;
  • Chemical formula or IUPAC name is written differently making it very difficult to cover patents disclosing chemical structure of interest with keyword search alone;

Search strategy

  • Searches can be done on free chemical search databases, such as chemspider or paid database services such as STN (CAPLUS, REGISTRY, MARPAT etc.);
  • Searching for Chemical Substances;
  • Locating structures- exact, family & substructure, variable groups, attaching fragments, etc;
  • Markush structure search;
  • Polymer search & reaction search;

 

Freedom-to-operate (FTO) Search

Purpose

  • The ability to proceed with the research, development and/or commercial production, marketing or use of a new product or process with a minimal risk of infringing the unlicensed IP rights or TP rights of third parties
  • Performed by meticulously dissecting the product or process in fundamental components and then scrutinizing each for any attached IP or Third Party rights.
  • Expired patents not considered but can be used for designing non-infringement route
  • Date range is limited to the last 20 years
  • Non-patent literature is excluded but can be used for designing non-infringement route
  • Is Jurisdiction specific

Under claim comparison, the claims are tested to see whether they describe the product under consideration. A claim may be infringed either literally or under the doctrine of equivalents
FTO does not imply an absolute freedom or guarantee, but instead indicates a carefully executed analysis leading to a reasoned opinion that one can legally proceed with research, development or sale, in a given jurisdiction at a given point in time. One can be prepared for accusations of infringement, and accordingly licensing deals can be prepared in due time and knowledge.

Search request

  • Description      and drawings   (if any) of the product or process presented by you, where the technical solution should be clearly disclosed;

The countries where the in-force patent search and analysis is required should also be mentioned

Search report

  • The search will be  performed in patent databases, on the one hand to reveal the relevant patent documents (including the family members), and on the other hand to define their validity in the countries specified by you;
  • The Report will cite patent documents, in-force in any of the examined countries, revealed by the search considered being relevant to the subject-matter of product or process to be exploited;
  • The Search Report will also indicate the countries where the patent (or its family member) is in-force;
  • A detailed explaining opinion carried out based on comparative analysis will be provided on whether the product or process presented by you falls within the scope of any cited, in-force patent;
  • A copy of every cited document will be attached to the Report;

 

Infringement analysis

            Purpose

The patent owner has the responsibility to enforce the patent and may take legal actions to stop alleged infringing acts and recover damages;;The claims, and the specific language used therein, of the patent define the scope of the patent owner's exclusive rights;

Patent infringement implies an encroachment upon the domain belonging to a patent owner that is described by the claims of the patent and it is the patent owner who has the burden to prove infringement;

Patent Infringement Analysis Process is conducted to identify, verify, and provide evidence that a patent is being infringed;

   Methodology

  • Review of written description and claim language;
  • Review of file history
  • Statements that resolve ambiguity in claim language;
  • Principal cited prior art, with attention to examiner's rejections and amendments drawn to overcome art, i.e. file wrapper estoppels;
  • Claim-wise analysis (claim mapping);
  • Determine if the key claims, technologies, and features identified as infringing by the competitor exist in, match, or are equivalent (performing substantially the same function, in substantially the same way, to achieve substantially the same result as the claimed invention) to those in the client's accused patent, product, or service;
  • Determine to what extent any infringement exists (literal or equivalent) and what type (direct, indirect, or contributory) by performing a claim-by claim/technology/feature/capability evaluation;
  • Literal infringement;
  • Doctrine of equivalents;
  • Using claim charts, evaluate whether there is an identical or equivalent element in the product or process for each claim element;
  • Consideration of the effect of amendments and arguments made during prosecution;
  • Developing non-infringement position(s);
  • Guidance to engage in licensing deals;

                    Report

  • Detailed  technical analysis of the patent in question; Interpretation of the patent and review of the claims;
  • Review of written description and claim language;
  • Evidence to prove or disprove patent or product infringement or validity;
  • Claim chart analysis;

 

Invalidity/Validity Search

Purpose

  • Generally undertaken by companies or individuals trying to determine if it is possible to invalidate another`s patent;
  • A Validity Search may also suggest strategies for avoiding the infringement of existing patent rights when seeking to enter a new market;
  • Useful is in licensing negotiations, prior to licensing deals or other business investment with a patentee, the strength of the patent can be determined;
  • Arguments and proof can be gained for opposition proceedings by which the novelty or inventive step of a patent could be challenged;
  • Validating own patent helps you to decide whether to take legal action against any infringement action;
  • Helps to decide the best way to deal with competitors, in case of allegations of infringement;

Search request
                             

The Validity search is carried out on the basis of a patent (patent no. & claims of interest) presented by you, which patent (or its family member) should be in-force in at least one country.

Search report

  • Validity and enforceability of the patent presented by you will be disclosed and delivered;
  • The search is performed in specific technical area systemized and up- to-date databases of patent and non-patent literature;
  • The Search Report will cite documents considered to be relevant on the validity of the patent;
  • The Report will include a brief summary of the cited documents;
  • A detailed explaining opinion on whether on the date of priority the subject-matter of the invention, whose validity is examined, had met the requirements of novelty and inventive step over the cited documents;
  • A copy of every cited document will be attached to the Report;

Patentability assessment

  • Comprehensive patent search (optional);
  • Assessment of patentability criteria (novelty, inventive step & industrial applicability) based on search results;
  • Non-patentability under section 3 of the Indian Patent Act;
  • Assessment of the possibility and cost of being granted a complete patent in future;

Drafting of patent specification

  • Drafting specification (provisional/complete) for filing in India;
  • Drafting of PCT application;
  • Drafting of specification for US and EP;

Filing patent application

  • Filing Provisional, Ordinary and Convention Applications in India;
  • Filing Patent of addition;
  • Filing of divisional application;
  • Foreign filing through convention route;
  • Filing of PCT application
    • Preparing and filing a new PCT application;
    • Filing formal documents such as POA, Priority documents, etc;
    • Filing amendments under Article 19;
    • Filing demand for preliminary examination;
    • Filing response to written opinion/preliminary examination report and filing amendment under PCT Article 34;
  • Filing PCT National Phase application in India;

Documents for filing application at IPO

  • Application for grant of patent in Form-1;
  • Applicant has to obtain a proof of right to file the application from the inventor. The Proof of Right is either an endorsement at the end of the Application Form-1 or a separate assignment;
  • Provisional/complete specification in Form-2;
  • Statement and undertaking under Section 8 regarding foreign filing details in Form-3, if applicable either along with the application or within 6 months from the date of application;
  • Declaration as to inventorship in Form 5 for applications accompanying a Complete Specification (with complete specification filed after provisional), a Convention Application or a PCT National phase application Form-5 may be filed within one month from the date of filing of application, if a request is made to the Controller in Form-4;
  • General Power of authority / Form-26, if filed through a Patent Agent;
  • Form 28 in case of Micro, small & medium enterprises (India) along with the evidence of its registration and for Foreign entities, Form 28 must be accompanied by any other document as proof, for example, executed copy of Balance Sheet/ P&L, Declaration by a Govt. Entity of Respective country;
  •  
  • Certified copy of Priority document is required in the following cases:
  • Convention Application;
  • PCT National Phase Application wherein requirements of Rule 17.1(a or b) of regulations made under the PCT have not been fulfilled;
  • Priority document (if not in English), an English translation duly verified by the applicant or the person duly authorized by him (can be filed later);
  • If the Application pertains to a biological material obtained from India, the applicant is required to submit the permission from the National Biodiversity Authority any time before the grant of the patent;
  • If invention relates to micro-organisms:-
  • Name of International Depository Authority;
  • Accession Number and Date of deposit;
  • Sequence listing as a Soft copy (an invention integrated with DNA/RNA sequence);
  • Other Documents (if applicable)
  • Particulars of Amendments made to specification/claims during the International Phase (Verified English translation)
  •  
  • Corrections or changes made at the International phase (Form PCT/IB/306)
  •  
  • OR
  • Document evidencing a change of name of the applicant if the change occurred after International filing date and has not been reflected in a notification from the IB
  • Form 6 and/or Form 13 is also required

 

Prosecution of application

  • Meeting Formal Requirements before the Patent Office;
  • Filing 'Response to office action;
  • Attending hearings before the Controller;

 

Patent opposition (pre-grant & post-grant stage)

  • Discussion with client for detail procedure including possible grounds of opposition;
  • Patent Search & Analysis;
  • Building Arguments for an Opposition;
  • Drafting statement of opposition form, written statement and affidavit
  • Filing an Opposition;
  • Drafting reply statement and affidavit;
  • Attending hearings;

[Some stage(s) are not required in pre-grant opposition]

 

    ROAD MAP FOR PRE-GRANT OPPOSITION 

    Conducting SEARCH in the Patent Office Journal on weekly basis
    I
    IDENTIFICATION of the patent application to be opposed

    I
    RESEARCH on the ground of opposition

    (Overview of steps to build an argument) 
    1. To determine whether the application is still pending or granted
    2. Access to the description and claims
    3. Opposition is built by providing arguments to show that the claims do not fulfill the patentability requirement
    4. To identify of the subject matter of the patent protection: a molecule or a group of molecules, a salt, a process, a formulation, a combination, a dosage form, or other
    5. To check if there are existing oppositions filed in other countries to the corresponding patent
    6. Access to prosecution histories to make arguments against weak claims

    I
    PREPARATION of written representation and evidence in support

    I
    DECISION on request for hearing

    I
    FILING of opposition by way of representation (FORM 7A)  INCLUDING

    (Statement –detailing the ground of opposition)
    (Evidence by way of documents or affidavits, if any)
    (Requ
    est for hearing if so desired)

    I
    COUNTERING the allegations made by the applicant

    I
    ATTENDING the Hearing

     

    Assignments, Mergers & License agreements

    • Drafting of assignments, mergers & license agreements;
    • Pre-grant recordal of assignments, agreements, merger;
    • Post-grant registration of assignments, license agreements;

     

    Renewals and maintenance of patent

    • The annual fees are due from the second year of the pending application. You have to pay the first annual fee on the second anniversary of the date of filing of the complete specification. If the application is granted more than two years after the date of filing, the accumulated annual fee are payable within three months of the date on which the patent was recorded in the register;
    • The time limit for the payment of annual fees can be extended by up to a maximum of six months. This extension can be obtained on request, upon payment of a fee for each month of extension;

     

    Patent is an exclusive right granted by the Government to the applicant for his disclosed invention of industrial product or process which should be new, non-obvious, useful and patentable as per the patentability criteria laid down in the national law. A patent offers technical solution to a technical problem. In lieu of disclosure of invention, the Government provides legal protection for a limited term for his invention. A patent enunciates a contract between an inventor / applicant and the Government and gives the territorial right in the country where it is granted.

    As per clause (j) of section 2 of the patent act, “invention” means a new product or process involving an inventive step and capable of industrial application;

    As per clause (ja) of section 2 of the patent act, “inventive step” means a feature of an invention that involves technical advance as compared to the existing knowledge or having economic significance or both and that makes the invention not obvious to a person skilled in the art;

    As per (l) of section 2 of the patent act, “new invention” means any invention or technology which has not been anticipated by publication in any document or used in the country or elsewhere in the world before the date of filing of patent application with complete specification, i.e. the subject matter has not fallen in public domain or that it does not form part of the state of art;

     

 

 
  • Time
  • Reasonable charges based on time and content
  • No shortcut -through study of the Patent Act and Rules
  • Concept on patentability -based on IPO, US, EPO and
    PCT guidelines
  • Claims structures, construction, types & analysis
  • Drafting: style, format & practice
  • Time
  • Reasonable charges based on time and content
  • Course content based on extensive legal & technical
    research
Copyright © 2019 P. MAZUMDAR & ASSOCIATES- All Rights Reserved.   ARESS COMMUNET