We are one of the best Patent Prosecution firms in Ahmedabad, India with top-notch Patent Prosecution Attorneys in our Team. Innovation in this age of era leads to industry leadership and the greater good of the nation and if you give the innovator some exclusive rights over the intellectual property asset, it leads to more innovation thereby escalating the economy of the nation. A patent asset after being created is required to be protected or someone else will exploit the idea. Acquiring a patent or navigating it towards protection is tedious and sometimes gets complicated too. let’s find out more about obtaining patent protection by navigating our ways through the patent office.
Patent Prosecution services for USA
We provide patent prosecution services like reply to office action patent applications filed in USA based on our experience and technical expert team in diversified domain. We have technical experts to provide patent prosecution services for USA as per US patent law.
What is Patent Prosecution?
Patent prosecution is basically the interaction among the client and/or the attorney and the patent office in relation to the entire process of securing a grant of patent. In a wider sense, the prosecution is the process through which all patent application passes through before grant or rejection status.
Patent Filing
Before drafting the patent, the IP practitioner primarily performs a patent search as a requisite of patentability to check whether there exists any other such similar information in public domain which is also known as prior art. Once the prerequisites of patentability are complied along with obtaining the assent of the inventor for patent filing, IP professionals draft the patent application as per the type of application to be filed. IP professional then files the application in the respective patent office mostly through the online portal of filing along with prescribed forms as per statutory requirements. A patent application comprises of many legal documents like Application form, statement of foreign filing, a declaration as to inventorship, request for an early publication, request for examination, power of attorney; certified copy of the priority documents if its a convention application.
Request for Early Publication
All the applications made at the patent office are published in the journal of patent office on the ending of 18 months period from the date of (application) filing or the date on which priority obtained whichever is earlier. According to Indian patent law, the applicant may request the controller of patents to publishing the patent application before the ending of 18 months in form-9 and such application may be published within one month from the request.
Request for Examination
In order to move further in the process, the applicant is required to make a request for examination in form 18, within 48 months from the date of filing of the application or the date on which the priority obtained whichever is earlier. Every application will be examined in accordance with the Indian patent act and the rules as prescribed. In case, the applicant doesn’t file any request for examination in prescribed time, then the patent application should be treated as abandoned by the patent office. The applicant can also request for expedite examination of the newly filed patent application in the prescribed manner in form 18-A. As per recent developments in the Indian patent law, the applicant has to comply with the new patent rule of 24 C accordingly. You may find more about the requirement and process of expedite examination in the article written by Sanjaykumar Patel (founder and principal IP Attorney at Excelon IP), How to expedite Patents in India?
Response to the Examination Report ( First Examination Report- FER)
After the patent application has been published followed by the request for examination, the applicant waits for the issuance of the First Examination Report (FER). FER contains all the objections observed by the patent examiner during examination with respect to patentability as well as any other statutory and formal requirements. The applicant has to reply to FER within 6 months after receipt of FER with proper justification or arguments against all objections raised by the patent examiner. In case if objections are related to novelty and examiner has cited prior arts overlapping with the claimed invention, the application has to amend the claims to narrow down the scope of claims.
After reply to FER, when the examiner is agreed with the argument and/or claim amendment, he may proceed to grant the patent. However, if the examiner isn’t satisfied with the reply with justification and/or claim amendment, further hearing is offered to explain the case with any other evidence to justify patentability of claims. As per recent rule amendment, now hearing is also possible through the medium of video conferencing from patent attorneys office itself and no need to be physically present at the patent office. Whatever conversations happen during hearing needs to be submitted later as a written statement summarizing the whole sequence of events and final submission by the applicant.
Statuses of: Granted, Refusal or Abandoned!
If all the requirements or the requisites of patentability are complied within 12 months, beginning from the issuance of FER the patent will be granted to the applicant by Indian patent office under section 43.
If the prerequisites for the grant of a patent are not met within the prescribed timeline, the patent application will be abandoned under section 21.
Also, if the requirements of patentability are not fulfilled then the patent application will be refused, as depending on the case under the appropriate section.
If the patent is accorded to the applicant, the applicant will hold exclusive rights over that invention or technological development for 20 long years beginning from the date on which the application was filed.
Once the patent is granted it is also required to maintain the granted patent to keep it alive. This involves maintaining the patent by timely submission of working statement of a granted patent, as well as includes payment of annual fees to maintain its validity.
Annual Fees
When all the preconditions of a patent are fulfilled and complied according to the patent act, the patent is granted which will be valid for 20 years from its filing date. In order to maintain the validity of the accorded patent, renewal fees or maintenance fee is required to be paid annually.
Workability of a Patent
It is necessary to submit a statement of working with respect to the granted patent to the controller every year in the prescribed form (Form-27) in accordance with the patent act and rules. The working statement shall include the workability of the granted patent and details about the licensee if the patent is licensed to any licensee as well as the annual turnover generated from the patented invention. If the statement of working of patent is not submitted, then the patent owner will be liable for heavy penalty.
EXCELON IP, your Patent Prosecution Attorney
Patent prosecution is a long and lengthy process and also required a thorough knowledge of legal as well as of technical domain. That’s why it is highly recommended to hire an experienced patent attorney who will help you navigate through every point of the patent life-cycle. Excelon IP is a having team of experts or IP Professionals who have attained expertise in the domain of patent services. We, at Excelon IP, support our clients with all elements of patent prosecution.