Most of our client's file their overseas patent applications
via the PCT (Patent Cooperation Treaty) process. There are many
good reasons for this, but one of the ones I wish to focus on is
how to use the examination process to their considerable
When a PCT application is filed, the PCT examiner conducts a
search of relevant prior art and sends us the results. Analysis of
these results by the client and the patent attorney can give a good
interpretation as to the patentability of the invention. If a
Demand fee is paid, we can then enter into a dialogue with the
examiner and make amendments – hopefully resulting in a
favourable examination report.
There are pros and cons to this approach as outlined below.
(a) A favourable report should be sought:
To save a considerable amount of money!
If you can resolve many of the outstanding issues at the PCT
stage, you do not have to multiply those charges on a country by
country basis. Patent attorneys are not cheap and it is desirable
to avoid replication of charges unnecessarily through repeated
prosecution of the same issues in each country.
To convince potential investors that there is an invention
considered patentable by an independent authority.
This generally carries more weight with an investor than any
representations from the patent applicant.
To assist in the decision as to whether to file national phase
applications. If a successful examination report cannot be gained,
that is an indication that patent protection could be weak.
Advantages of not responding to an examiner's report
The invention is inherently weak and you wish to have broad
claims that act as a deterrent to other parties. This is of limited
use as if potential competitors / partners are IP savvy as they
would have their own attorneys conduct an equivalent analysis to
that of the PCT examiner (which we have performed on a number of
Cited prior art has different relevance in different countries
– for example it may have been published within the US
grace period. This is something that we are highly conscious of and
always review the relevant dates before suggesting any potential
narrowing of the claims.
There is no further money for this project and the PCT
application is in a holding pattern.
Talking to an intellectual property adviser can help determine
the best course of action.
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
To print this article, all you need is to be registered on Mondaq.com.
Click to Login as an existing user or Register so you can print this article.
This article enunciates the recent, much awaited, and landmark judgment delivered on September 16, 2016 by Hon'ble Delhi High Court throwing light on the important provisions of the Copyright Act, 1962.
Department of Industrial Policy and Promotion recently issued an office memorandum pursuant to receiving representations from various stakeholders for guidance with respect to the applicability of the provisions of Section 31D of the Copyright Act, 1957.
An Invention Disclosure Form is the documentation of the invention. This is a means to document particulars of your invention and submitting it to the patent attorney who is filing your patent application.
The Patents Act 1970, along with the Patents Rules 1972, came into force on 20th April 1972, replacing the Indian Patents and Designs Act 1911. The Patents Act was largely based on the recommendations of the Ayyangar Committee Report headed by Justice N. Rajagopala Ayyangar. One of the recommendations was the allowance of only process patents with regard to inventions relating to drugs, medicines, food and chemicals.
Some comments from our readers… “The articles are extremely timely and highly applicable” “I often find critical information not available elsewhere” “As in-house counsel, Mondaq’s service is of great value”
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).