A patent search involves identifying similar patents or non-patent literature that may be considered important “prior art” references when applying for a patent. Prior art includes anything in the public domain, whether patented or not, that can determine whether an invention is novel.

Our team of IP professionals is well-qualified to conduct all types of patent searches. To date, we have successfully completed over 50 search projects.

Types of Patent Searches:

1. 1. Prior Art/Patentability Search
   2. Freedom to Operate (FTO)
   3. Invalidity/Validity Search
   4. State of the Art Search
   5. Technology Landscape
   6. Evidence of Use Search

Steps to start a Patent Search:

Step 1: Sign and Submit the Non-Disclosure Agreement with the Firm.

Step 2: Submit the Invention Disclosure Form.

Step 3: Your report will be shared through email within 10 business days.

After conducting the novelty check, the next crucial step is to draft your patent application precisely. The drafted document should clearly disclose the objective of your invention, the problem being solved, the solution provided, the novelty and inventiveness of your invention, the components used in its implementation, and the best method for operating the invention.

Normally, an ordinary patent application can be filed by two methods in India:

• • First provisional specification, and then complete specification; or
  • Directly filing the complete specification.

Filing: After completing the drafting process, the next crucial step is to file the patent application as soon as possible. The application process involves drafting and filing of official forms such as:

• • Form 1 (Application for grant of patent)
  • Form 2 (Provisional/Complete Specification)
  • Form 3 (Statement and Undertaking)
  • Form 5 (Declaration as to inventorship)
  • Form 9 (Request for Early Publication)
  • Form 18 (Request for Normal Publication)
  • Form 18A (Request for Expedited Examination)
  • Form 26 (Power of Attorney to be signed by the applicant in favor of patent agent)

The official filing fees for filing patent is as follows:

Examination: After filing the patent application in India, the applicant is required to file a request for examination with the Indian Patent Office within 31 months from the earliest filing date.

Normally, the Patent Office issues the Examination Report within 12-18 months from the date of filing of request for examination however; the same can be expedited by filing a separate request for expedited examination. After filing the request for expedited examination, the Examination Report is issued within 2 months and within a period of one year; your will application for patent will be disposed of.

Please note that the provision for filing a request for expedited examination is available only to a certain category of applicants, including both Indian and foreign applicants. The applicants who are eligible to file such a request includes:

1. 1. The applicant, in the corresponding PCT application, has designated the Indian Patent Office (IPO) as the International Searching Authority (ISA) and/or International Preliminary Examining Authority (IPEA);
   2. The applicant is a startup entity;
   3. The applicant is a small entity;
   4. The applicant is a female, or in the case of joint applicants where all the applicants are natural persons, at least one of the applicants is a female;
   5. The applicant is a department of the government, or an institution owned/ controlled/ financed by the government;
   6. The application pertains to a sector which is notified by the central government on the basis of a request from the head of a department of the central government; or
   7. The applicant is eligible under an arrangement for processing a patent application pursuant to an agreement between the IPO and a foreign Patent Office.

The official fee for request for normal/expedited examination is as follows:

• • • Request for normal examination (if the applicant is a DPIIT recognized start-up) = Rs 4000
    • Request for expedited examination (if the applicant is DPIIT recognized start-up) = Rs 8000 along with a request for early publication ofRs 2500 [TOTAL – Rs 10,500]

After filing the request for examination, the Patent Office issues an examination report containing technical and formal objections. The applicant must respond within six months from the date of issuance, with an option to extend this period by an additional three months.

Upon receiving the examination report, our team analyses the objection raised and prepare reply accordingly.

After submitting a reply to the Examination Report, the Patent Office will review the arguments in relation to the complete specification already filed. The Office may either accept the application directly or schedule a hearing. During the hearing, the applicant must explain the important technical features of the invention in relation to the cited prior art documents.

Additionally, a written submission must be filed within 15 days from the date of the hearing. After considering the arguments made during the hearing and the written submission, the Patent Office may either accept the application or issue a refusal with a reasoned order under Section 15 of the Indian Patents Act.

After meeting all the requirements set by the Patent Office, the Indian Patent Office will issue a patent certificate. The term of a patent in India is 20 years. Following the grant of the patent, the applicant is required to pay a renewal fee starting from the third year.

Please note that a patent filed in India is valid only in India. If you wish to seek protection in any foreign country, a separate application must be filed in that respective country.

Securing patent protection in multiple countries can be a complex process, but understanding the available routes can make it more manageable. Two primary pathways for obtaining international patents are the Patent Cooperation Treaty (PCT) route and the Convention route.

Patent Cooperation Treaty (PCT) Route

The Patent Cooperation Treaty (PCT) offers a streamlined process for seeking patent protection in multiple countries. Administered by the World Intellectual Property Organization (WIPO), the PCT simplifies the initial filing procedure by allowing applicants to file a single international application.

1. Single International Application: By filing one international application under the PCT, you can simultaneously seek protection for an invention in over 150 PCT contracting states.
2. International Search Report and Written Opinion: The application undergoes an international search by a chosen International Searching Authority (ISA), resulting in an International Search Report (ISR) and a Written Opinion on the patentability of the invention.
3. Publication: The international application is published by WIPO approximately 18 months after the priority date, making the invention public.
4. National Phase Entry: Within 30 or 31 months (depending on the country) from the priority date, you must enter the national phase by filing your application directly in the countries where you seek protection. Each country then processes the application according to its national laws.

Convention Route

The Convention route, governed by the Paris Convention for the Protection of Industrial Property, allows for patent protection in multiple countries by filing individual patent applications in each country, claiming the priority of an earlier application. Key features include:

1. Priority Claim: If you have filed a patent application in a Paris Convention member country, you can claim priority for the same invention in other member countries within 12 months of the initial filing date.
2. Direct Filing in Each Country: Separate patent applications must be filed in each desired country within the 12-month priority period. Each application will be subject to the national laws and procedures of the respective countries.
3. Independent Examination: Each country will independently examine the application, and decisions regarding patentability are made according to national laws.

Which Route to Choose?

Choosing between the PCT route and the Convention route depends on various factors such as:

• Number of Countries: The PCT route is more efficient if seeking protection in multiple countries, whereas the Convention route may be suitable for a limited number of countries.
• Cost Considerations: The PCT route can be cost-effective in the initial stages, but national phase entry fees and prosecution costs in each country should be considered.
• Timing: The Convention route requires filing in each country within 12 months, whereas the PCT route provides a longer timeline (up to 31 months) before national phase entry.

Our team of IP professionals is here to guide you through the complexities of international patenting, ensuring that your inventions receive the broadest possible protection across desired jurisdictions. Contact us today to learn more about your options and to develop a strategic plan for your intellectual property.