News Letter                                                              

ANJAN SEN & ASSOCIATES Patent and Trademark Attorneys
		OFFICE ADDRESS:  17, Chakraberia Road (South) Kolkata - 700025,  West Bengal, India,  CONSULTATION CENTRE: 207, Canal Street, Kolkata - 700 048, India, Tele : +91 (033) 2474 9871/ 6529 3955 Fax: + 91 - 033 - 2486 8693 e-mail:anjanonline@vsnl.net           info@ipindiaasa.com Website: www.ipindiaasa.com

The Patents Rules governing grant of Patents in India further
amended by way of the Patent Amendment Rules, 2006 (Notified
5th May, 2006) – Faster Grant and Better Transparency of
Proceedings For Grant.

On Submission of Proof of Right

Applicable in case of right to apply by way of assignment.

The signed formal Application Form having endorsement of the inventor/s or the applicants in convention country (in case of convention filing) which prior to the amendment was required to be submitted within three months from the date of filing in India can now be submitted within six months from the date of filing in India. In case of national filings in India based on PCT International Applications the six month will be reckoned from the actual date of filing of the national application in India.

On Submitting Statement and Undertaking on corresponding Applications outside India

As you may be aware of all applicants for patents in India under the existing rules were required to submit a statement and undertaking detailing particulars of all corresponding filings outside India within three months from the date of filing in India. Now, the time line for filing of such details has been extended to six months from the date of filing the application. In case of national filings in India based on PCT International applications, the time line to submit the foreign filing details is six month from the date of entry in India. The Controller in India can also call for further information relating to objections on novelty and patentability on corresponding applications outside India and such details can also now be submitted within six months from the date of such requisition by the Controller.

On Publication of Pending Applications:

For possible entitlement of provisional rights (rights & privileges as if a patent has been granted effective from the date of publication of application) the usual publication of all applications after 18 months from the date of filing has now been attempted to be made more timely and prompt and as per the new rules the Controller should ordinarily notify all applications immediately after 18 months from the date of filing and within one month.

The possible expediting publications of application even before 18 months is also possible by requesting for early publication with prescribed fees in which case the publication as per the new rules should take effect ordinarily within a month from the date of the request for early publication.

On Request for Examination:

The time line to submit Request for Examination which was under the earlier rules after publication but within 36 months has now been made after publication but within 48 months from the date of filing/priority. Thus the request for examination should now be made after publication but positively within 48 months from the date of filing or priority which ever is earlier.

For Divisional Applications the request for examination should be submitted within 48 months form the date of filing or priority of the parent application or within 6 months from the date of filing of the divisional application.

Possible Faster prosecution of applications for grant before the Controller.

Under the amended rules a time line has been prescribed for the Office to take up applications for examinations, issue office action and settle the applications for intimation of grant.
Thus, as per the new rules, the application should ordinarily be referred by the Controller to the Examiner for examination one month after publication or the Request for Examination whichever is later.

The First Examination Report should be forwarded to the applicant / authorized agent within six months from the date of publication or the Request for Examination which ever is later.

The deadline for settling all objections, which was earlier six months from the date of the First Examination Report with possible extension of time on payment of additional fees has now been made as per the new rules 12 months from the date First Examination Report with no possible further extension.

The Patent Certificate as per the new rules is supposed to be issued within 7 days from grant

The above prescribed time line for processing of applications before the Controller's Office confirms the intention for expediting the proceedings to favour early grant of patents in India.

On Opposition proceedings to grant of patents in India

The time line for pre-grant opposition within three months from the date of publication of pending application has now been waived and pre grant representations for opposition can now be made until the grant of the patent. However, under the new rules no patents can be granted before the expiry of six months from the date of publication. Thus in effect representation of pre-grant opposition by way of statement and evidence in support of the opposition can be submitted until about six months from the date of publication of the application.

The above extended time line for pre-grant opposition is in addition to the possible post-grant opposition before the expiry of the period of one year from the date of publication of the grant.

Possible information on particulars of all corresponding foreign filing on applications for patent or patents in India.

Under the new rules it is now possible to officially request for information from the Controller on whether the time line to submit particulars of all corresponding applications outside India in respect of applications made in India has been complied. Since the non-filing of such information on foreign filings in respect of applications for patent in India is a ground for rejection/opposition or revocation of patent in India, such information would benefit maintaining proper transparency of prosecution before the Controller.

• Grant of patents in India is now much faster.
   

• All Indian  applications now laid-open after 18 months.
   

• Indian patent office receiving office for PCT International applications.
   

• World wide novelty in designs: validity of registered designs now require novelty or originality of designs not previously published in any country.
   

• Textile fabric design, pens, bottles, etc. which have eye appealing features are regularly being registered.
   

• Provision for restoration of lapsed registered designs now possible in India if requested within a stipulated period.
   

• You can now brand protect your specialized services as a trademark in India.
   

• Shapes can be protected as your trademark in India.