Tuesday, July 19, 2011

How to Keep Patent fiing and prosecution cost in check in India

How to keep Patent filing and prosecution cost in check in India

While filing the Patent Application in India, if certain procedural formalities are completed in time, they may result in cost saving in filing as well as later prosecution of Application. It is therefore necessary to complete the procedural formalities within stipulated time frames of entering Application in India.

Beside the basic mandatory requirements for filing Patent Application in India i.e.
Name, address, and nationality of applicant / Inventor; the complete specification must be provided in English and where the complete specification is on basis of priority document/ PCT Application; a certificate as to English translation must be provided (on basis of which your attorney can file a verification with Indian Patent office)

Other requirements that are to be complied with certain time after filing of Application are:

Priority Documents:
In case of PCT Application; the certified copy of priority documents are to be filed within 31 months from date of priority (where PCT/IB/304 not issued or supplied) along with their English translation, certificate of translation. In case of Conventional Application the Priority document or English translation thereof (where applicable) along with verification in support to be preferably filed along with the application or within 3 months of filing.

Statement and undertaking as to Foreign Applications:
Details of all corresponding foreign application for same or substantially the same invention (filed by applicant or any person through which Applicant claims or drives title) within 6 months of filing of application and/or within 6 months of filing of Patent application in any country outside India;

Assignment Document:
Proof of right in favour of applicant from inventor (where the applicant is distinct from inventor) in writing (assignment deed, employment agreement or any other arrangement) preferably notarised within 6 months from filing of application;

Power of Authority:
Power of authority in favour of Indian Patent Attorney/ agent, to be stamped in India (legalisation/ notarisation not necessary) preferably to be filed within a month or to be filed mandatorily within 3 months if requisitioned by Controller otherwise the application shall not proceed towards publication.

Once the above requirements are complied; the application can proceed smoothly and Applicant can save cost towards filing petition for enlargement of time/ condonation of delay/ correction of procedural error. Non compliance of certain requirements also opens the application for any opposition and revocation.

To keep the cost in check, it would be advisable to seek clarification from Local Attorney whether they shall be charging additionally for compliance after filing or any late filing of documents. Accordingly cost estimate should be evaluated for Patent filing in India.

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