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Patent

An enforceable Patent is a key to effective Commercialization of any technology. Even in case of good technology, if the description of the technical subject matter is not enabling or fails to disclose all necessary embodiments, and if in case of any claims that are narrowly drafted and do not gain support from the specification, in such a case technology’s worth is insignificant.

​We offer quality and consistent patent preparation services for all its clients to help maximize their returns from the IP. It comprises of leading and growing patent law firms, corporates, individual practitioners, research institutions and inventors. We offer customized patent preparation services to best suit each client’s existing and best drafting strategies.

Types of the applications filed at Indian Patents Office:
Ordinary Application – First application made for an invention without claiming any priority. This application should be accompanied by a complete specification & claims. (In India, a Provisional Application can be filed too.)

Convention Application – Application which claims a priority based on a same or substantially same invention(s) filed in one or more of the convention countries in accordance with the Paris Convention. The application must be filed within 12 months from the date of the first application in convention country.

PCT International Application – Application which is filed in accordance with the Patent Cooperation Treaty (PCT). A PCT Application can be filed within 12 months of Indian Filing (Priority) date or directly without filing in India, by filing foreign filing license in accordance with the section 39 of the Indian Patent Act.

PCT National Phase Application – International Application which can enter the Indian National Phase within 31 months from the Priority Date or International Filing Date whichever is earlier.

Filing Requirements are as follows:
Full name, Address, Nationality of each Applicant as well as inventor.

  • A copy of complete Specification, claims, abstract and drawings (if any), in the English language.
  • Verified English translation of the priority document. It can also be submitted subsequent to filing.
  • A Power of Attorney signed by the applicant or any authorized person of each applicant, in original. The same can be submitted subsequent to filing as well.
  • Proof of Right: A document evidencing transfer of rights from inventor to applicant (It can be Form 1 signed by all inventors or Notarized Assignment Deed). The same must be submitted within six (6) months of the Indian Filing Date.
  • The duly completed forms applicable are required for Indian Patent Filing and it shall be provided to our clients, for signatures, upon entrusting us with filing an application in India.
  • The Indian Patent Office require details of the corresponding applications filed outside India ( such as Name of the Countries, Application Date and Number, Status of Application, Date of publication etc.) according to Sec. 8 of the Indian Patent Act. Such Details are filed in Form 3 and can be filed within six (6) months of the Indian Filing Date. Changes of any status of such Foreign Application including any communication with the respective Patent Office, it is an obligation of the Applicant to inform the Indian Patent Office of any status change within six months of any such change.

Important Deadlines:

  • A request for examination must be filed within 48 months (4 years) of the Priority Date or Filing Date, whichever is earlier. The Request for Examination can be filed any time with this time frame, the application shall be examined only after publication. (An Application shall ordinarily be published within one month from the date of expiry of 18 months from the Priority Date or Filing Date, whichever is earlier).
  • Form 3 must be filed within six (6) months of any activity (Filing, Publication, Any Examination Report Receipt/Response etc.) of any application filed in other country/countries.
  • Working of an invention statement, in Form 27, must be filed by every patentee and licensee in respect of every calendar year within three (3) months of the end of each year. The form will contain information such as periodical statements to the extent at which the patented invention has been commercially worked in India.

​Patent Prosecution:
A process of interaction between an applicant / representative and a patent office with respect to the patent.

It involves process involves high level of negotiation with the patent office and therefore has high-impact value for the client. We truly understand the inherent value of a patent and the role played by the prosecution process.

We at Agnihotri & Jha Associates® undertake preparation and analysis of responses for patent applications, discussions with the Examiner, preparations for and attending hearings before the Controller, etc.

The preparation for any response during the prosecution phase requires an in-depth analysis of the invention along with the prior art taking into consideration the patentability criteria’s. The First Examination Report (FER) is issued ordinarily within 12 months of filing Request for Examination, provided the Application is published at the Indian Patent Journal.

​Our prosecution services include:

  • Drafting of Responses to Examination Report,
  • Strategising amendments and arguments for the patent application for maximizing impact,
  • Technical Analysis of Examination Report,
  • Technical Analysis of Cited Prior Arts.

​Our services in patent Search, Registration & Litigation

  • Drafting provisional as well as complete patent specifications for India and overseas
  • Filing as well as prosecuting applications at the Indian Patent Office and PCT
  • Filing as well as prosecuting applications internationally

Comprehensive patent searching with analysis & legal opinion for:

  • Prior art
  • Novelty
  • Patentability
  • Freedom to operate / practice (FTO)
  • Invalidation
  • Litigation Support
  • White Space Analysis
  • Technology Maps
  • Patent Litigation

Oppositions

  • Pre-grant & Post- grant.
  • Observation submission
  • Ex-parte & inter-parties proceeding(s)

Other Patent Services:

    • Infringement action, Prosecution & Defence.

  • Invalidation/ revocation proceedings at Appellate Board.
  • Appeals (at the IPAB & in various courts).
  • Journal watch service.
  • Post registration services such as renewals & filing statement of working.
  • Licensing / transfer of technology
  • Patent Portfolio Management.