BIMI G B ASSISTANT CONTROLLER OF PATENTS INDIAN PATENT OFFICE NEW DELHI Bimi G B

Transcription

1 BIMI G B ASSISTANT CONTROLLER OF PATENTS INDIAN PATENT OFFICE NEW DELHI bimigb.ipo@nic.in

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3 Year RO/IN RO/IB Physical epct Total Physical epct Total

4 Receiving office or RO Receipts the IA Does the following verifications;(article 11 and 14) Formality Check :Nationality/Residence At least one of the applicants must have the right to file with the RO The application must be in a language accepted by the RO(English/Hindi) (If formality criteria not satisfied, IA referred to IB)

5 e PCT was started in Delhi in 2014 November and centralised in April 2017 All International applications filed under PCT online,through e PCT module is being processed and record copy transmitted to WIPO by Patent Office Delhi.

6 Checks for national security clearance/ffl (as per section 39 of Patent Act 1970) Section 39 : Residents not to apply for patents outside India without prior permission. -(1) No person resident in India shall, except under the authority of a written permit sought in the manner prescribed and granted by or on behalf of the Controller, make or cause to be made any application outside India for the grant of a patent for an invention unless-(a) an application for a patent for the same invention has been made in India, not less than six weeks before the application outside India; and (3) This section shall not apply in relation to an invention for which an application for protection has first been filed in a country outside India by a person resident outside India.]

7 Forwards the record copy to IB and the search copy to ISA, including any required translation (Article 12 and Rules 22.1 and 23.1) Forwards and receives correspondence from applicants and the international authorities Establishes priority documents of PCT applications filed with it (Rule 21.2)

8 INDIAN PATENT OFFICE (IN) AUSTRIAN PATENT OFFICE (AT) AUSTRALIAN PATENT OFFICE(AU) EUROPEAN PATENT OFFICE ( EP) CHINESE INTELLECTUAL PROPERTY OFFICE (CN) UNITED STATES PATENT & TRADEMARK OFFICE(US) SWEDISH PATENT OFFICE (SE)

9 Request (Article 3(2)) RO/101 Description (Article 3(2)) one or more claims (Article 3(2)) abstract (may be filed later without affecting the international filing date) (Articles 3(2) and 3(3)) Drawings (where applicable) later submission may, subject to certain conditions, result in a later international filing date (Articles 3(2) and 14(2)) Sequence listing part of description (where applicable) (Rule 5.2(a)) Indications containing references to deposited microorganisms or other biological material (some designated Offices (e.g. Japan) require that they be in the description or in the international application on the international filing date) (Rule 13bis)

10 translation of the international application for the purposes of international search or international publication may be furnished later without affecting the international filing date (Rules 12.3 and 12.4) separate power of attorney or copy of general power of attorney may be filed later without affecting the international filing date (Rules 90.4 and 90.5) In case of offline filing three copies with RO/IN or one copy with RO/IB

11 Offline numbering for RO E PCT /online numbering Forms : RO/IN ISA/IN RO/IB IPEA

12 Computer-generated request (Rules 3.1 and 3.4, Section 102(h)) International application number Filing date Name and address of applicants Nationality and residence of applicants Name and address of authorized patent agents Priority claims with date multiple priorities can be claimed ISA nominated Fee reduction details (Small entity/start up) Number of pages Declaration by inventors

13 Request can be updated based on any missing data for which objections are raised by RO RO/101 is available on the e PCT module while filing or is available with the RO or WIPO website (can be downloaded ( in case of Offline filing. any text printed in italics may be omitted

14 The request must be signed by all persons (legal entity or natural persons (Rules 4.15, 26.2bis(a)) indicated as applicant or applicant and inventor BUT: if only one of the applicants signs, the lack of signature of the other applicants will not be considered a defect WARNING: Any notice of withdrawal would have to be signed by or on behalf of all applicants (including applicant/inventors)

15 Purpose: possibility to anticipate certain national phase requirements during the international phase (Rule 51bis.2) inclusion in request or subsequent filing is optional Declarations relate to the following matters (Rule 4.17): identity of the inventor applicant s entitlement to apply for and be granted a patent applicant s entitlement to claim priority of an earlier application

16 Applicants may correct or add any of the declarations filed under Rule 4.17 Time limit: until the expiration of 16 months from the priority date (or even later, provided that the declaration is received by the International Bureau before the technical preparations for international publication have been completed) The receiving Office or International Bureau may invite the applicant to correct any declaration that is not worded as required or, in the case of the declaration of inventorship (Rule 4.17(iv)), is not signed as required

17 Transmittal fee International filing fee (for IB) Search fee (for ISA) fee for priority document late payment fee (Fees indicated in italics are to be paid only as per instructions from RO

18 RO/101 RO/102 RO/105 Demand Letter RO/106 One month TF PF SF IB (UTR No) Not paid paid RO/133 Not Paid Record copy to IB SC/ISA Certified copy /IB RO/117 Withdrawn

19 The amount of the late payment fee depends on the amount of the unpaid fees indicated in the invitation to pay: it is 50% of the unpaid amount, subject to minimum and maximum amounts. The minimum is equal to the transmittal fee and applies where the unpaid amount of fees is less than the amount of the transmittal fee; the maximum is equal to 50% of the international filing fee.

20 RO/105 is issued for intimation of international application number RO/106 in case of defects RO/107- in case of incorporation of reference (missing parts) RO/126 for later submitted parts RO/110- Priority defects RO/132- where no other form is prescribed After basic forms are issued and processed, the record copy is transmitted to IB Applicant gets instant intimation through his recorded in the e PCT module.

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23 Natural Person International Filing fees **90% FEE REDUCTION (If one of the applicant has a different nationality/residence, 90% IB fee reduction cannot be claimed) Search fees (AT/EP/SE) ***75% FEE REDUCTION Legal Entity Start Up (DIPP certificate) Small Entity (e Udhyog Adhaar Certificate)

24 For Applicants A single application in a single language filed in a single country called the international application and has the effect of filing simultaneously in different countries (designated countries). Online filing through e PCT offers the following fee reductions; USD 205(PDF filing) USD 308(XML filing)

25 International Filing Fee Search Fees (AT) USD 1,366 ** (AU) (CN) (EP) USD 1,722 USD 316 USD 2202*** (SE) (US) USD 2202*** USD 2080 For small entity USD 1,040 For micro entity: USD 520 USD 153 USD 38* (IN) USD 2,202*** INR INR 2500*

26 Transmittal Fee Fee For Certified Copy For e-filing For physical filing INR 16000/- INR 17,600/- for legal entity INR 3200/- INR 3,500/- for natural person INR 8000/- INR 8800/- for small entity INR 5000/- INR 5,500/- for legal entity INR 1000/- INR 1,100/- for natural person INR 2500/- INR 2,750/- for small entity

27 USD A/C in SBI Overseas bank from 1998 closed in 2017 New INR A/C opened in the name of CGPDTM at Central Bank of India FOREX division The applicant can make payment towards IB fee and ISA (except ISA/IN) fees directly through NEFT /RTGS and submit the UTR /Ref numbers via to RO/IN RO prepares debit instructions to the bank and transmits the payment subsequently to IB and ISA and also intimate the same through e mail to all International authorities. All agents required to make payment Online (10% reduction) Transmittal and Priority fee also paid through form 30 via online payment portal

28 India is participating in the Pilot Project on Netting of PCT fees with the European Patent Office and WIPO This will be commenced from April 2018 Presently after confirming the search fees to IB, e Search copies are tra s itted to the ISA s except ISA/US Priority documents shall be transmitted to IB through WIPO DAS.The public notice already issued by IPO. At present 95% of International applications are filed through e PCT.

29 Before Introduction of e PCT After Introduction of e PCT

30 THANK YOU More details