Welcome to D. P. Ahuja & Co.- Indian Intellectual Property Law Firm

CONVENTION APPLICATIONS

Name, address and nationality of the applicant and the Inventors.
Basic priority application numbers and dates
Name of the applicant in the convention country
English Specification with abstract
Drawings on A-4 size paper.
Sequence listing (if applicable) on CD, for Biotechnology inventions.
Statement concerning if any biological material used in the invention as disclosed in the specification was obtained from India (for compliance of National Biodiversity Act)
Power of Authority (Download Form) in original.
Time frame : to be filed within three months from the date of filing, otherwise Patent Office will not take further action on the patent application.
Kindly provide us with any one of the following documents as Proof of Applicants Right to file the application
1. A Declaration-cum-India Specific Assignment (Download Form) executed by the inventors and signed at least by two witnesses giving their full name and address below their respective signatures. Any two persons from your office can also act as witnesses ;
  OR
2. A copy of the World Wide Assignment in English, Certified Officially or Notarized as a true copy (eg. as may be recorded at the USPTO ) Time frame : must be filed within six months from the date of filing the application in India.
  Note : If the priority Applicant is different from the Indian Applicant, we also need a separate assignment from the priority applicant in favour of the Indian Applicant besides assignment by the inventors in favour of the priority applicant.
Certified Copy of Priority document.Time frame : to be filed within three months of the request for the same by the Patent Office in India, as no extension will be granted.
English translation of Priority document, if specification of priority document is not in English. Time frame : to be filed within three months of the request for the same by the Patent Office in India, and no extension will be granted.
Translation Verification Form (Download Form) has to be executed by the authorized translator of the Applicant as well as by the authorized official/person of the applicant company confirming that the translator is authorized to carry out such translation. Time frame : to be submitted within a period prescribed by the Patent Office, and no extension will be granted.
Form 3 with an Annexure (Download Form) giving a list of corresponding applications in other countries, giving country name, application number, filing date and present status. Time frame : to be filed within six months from the date of filing the application in India.
IPC classification of priority document(s).
Our office is partially open on Saturdays and is equipped to file new applications on Saturdays

EXPLANATIONS

NATIONAL PHASE ENTRY FOR PCT APPLICATIONS

PCT publication pamphlet including front page, specification and Search Report and any amendment made under Article 19 together with statement under Article 19.
Copy of PCT Request Form or PCT/IB/308, PCT/IB/304, PCT/IB/306
PCT/IPEA/409 and its annexes (only for Chapter II entry)
Sequence listing on CD for Biotechnology inventions (if applicable)
Power of Authority in original (Download Form)
Time frame - Must be filed within three months from the date of filing, otherwise Patent Office will not take further action on the patent application.
1. Either a Declaration-cum-India specific assignment executed by the inventors and signed at least by two witnesses giving their full name and address below their respective signatures. Any two persons from your office can also act as signatories;
  
  OR
2. A copy of the World Wide Assignment in English, Certified Officially or Notarised as a true copy (eg. as may be recorded at the USPTO ) Time frame : Must be filed within six months from the date of filing the application in India.
Kindly provide us with any one of the following documents as Proof of Applicants Right to file the application **Either a Declaration-cum-India Specific Assignment (Download Form) executed by the inventors and signed.
Certified Copy of Priority document (in the absence of PCT/IB/304). Time frame : To be filed within three months of the request for the same by the Patent Office in India, and no extension will be granted.
English translation of Priority document (if non-English). Time frame - To be filed before 31 months from the priority date, otherwise, it may be filed along with a petition within three months of the request for the same by the Patent Office in India, and no extension will be granted.
Translation Verification Form (Download Form) has to be executed by the authorized translator of the Applicant as well as by the authorized official/person of the applicant company confirming that the translator is authorized to carry out such translation. Time frame - Should be submitted within three months of filing or within a period prescribed by the Patent Office, and no extension will be granted.

Note : If the PCT application is filed in a non-English language, a Verified English translation of the PCT application (Download Form) (description, claims, abstract and drawings) and any amendments under PCT Article 19 or 34 to be submitted at the time of filing the application in India or with the time period as asked by the Patent Office. The Verification to be done in the same manner as stated above.

However, for PCT application published in a non-English language, an English text of the PCT application (description, claims, abstract and drawings) any Article 19/34 amendment must be filed at the time of filing the application the verified translation may be filed subsequently within the time line allowed by the Patent Office.
Whether the invention as disclosed in the specification uses the biological material originating from India
Form 3 with an Annexure (Download Form) giving a list of corresponding applications in other countries, giving country name, application number, filing date and present status. Time frame : To be filed within six months from the date of filing the application in India

EXPLANATIONS

Power of Attorney (mandatory) :

A Power of Attorney (Download Form) simply signed by any person authorised by the Applicant is a mandatory requirement for filing new trademark application.

Use Basis (mandatory):

If the mark has not been used in India, the application has to be filed on the basis of PROPOSED USE.
If the mark is in use in India, prior to filing of the application, then the date of first use must be claimed in the Application Form.
If use is claimed in India, then to comply with the efiling procedure, a commercial document establishing date of first use of the mark in India, is required to be filed along with a Statement, at the time of filing the application. An Affidavit has to be submitted at the Registry, later, with additional information such as a product brochure, annual figures of sales and advertising expenditure for the period of use in India. The Affidavit has to be executed by an authorised person of the Applicant and notarised.

Priority:

Original Certified copy of the Priority document (Application in Convention Country certified by the relevant Trade Marks Office) is required to be submitted at the Trade Marks Registry within 2 months of the Indian filing date.

Others:

Translation/Transliteration/Significance of a non-English mark must be stated.
For colour claim, the Pantone specification or colour name must be stated
For 3 dimensional trade mark (shape of the goods), at least 4 views of the mark, ie front, rear, top, and perspective, must be provided
For sound mark, reproduction of the same has to be submitted in the MP3 format not exceeding thirty seconds’ length recorded on a medium which allows for easy and clearly audible replaying accompanied with a graphical representation of its notations.

Verified English Translation of Priority Document

For National Phase of PCT Applications: In case the priority document is not in English, a Verified English Translation of priority document is required to be submitted at the time of filing the National Phase application. In the absence of such Verified English translation of priority document, the Controller will invite submission of the document within 3 months, otherwise the priority claim will be disallowed. Such invitation is generally issued along with the First Examination Report (FER). Kindly note that if Verified English translation of priority document is not submitted within 3 months of request made by the Controller, filing of a petition requesting the Controller to condone the delay is not possible as per amended Patents Rules, 2016 effected from 16 May 2016.
A verification certificate has to be signed by the translator and also by an authorized official of the applicant.
Kindly note that if the Controller does not ask to submit the Verified English Translation of priority document in the FER or otherwise, you may choose not to file it.
For Convention Applications (non-PCT): a Verified English Translation of priority document (in case the priority document is not in English) is required to be submitted within 3 months of request made for the same by the Patent Office. Such invitation is generally issued along with the First Examination Report (FER).

Filing of Proof of Right
In a decision of the Intellectual Property Appellate Board (IPAB) dated 28 October 2013, in the matter of NTT DoCoMo Inc. vs. The Controller of Patents and Designs, the requirement of submission of a Proof of Right has been clarified as follows:
Where the inventor is not the applicant, it is essential to either submit a worldwide assignment or an India-specific assignment while filing a patent application in India, irrespective of whether the application is a Convention or a National Phase application. This is in accordance with the Indian Patents Rules.

We recommend to our clients to provide any of the following documents with regard to proof of right:

A Declaration-cum-India-specific Assignment executed by the inventor(s) and signed by at least by two witnesses giving their full names and addresses below their respective signatures.
OR
A copy of the World Wide Assignment, duly Certified or Notarised as a true copy (as may be recorded at the USPTO).

Explanations