This post is the first one in a series of upcoming posts on patent prosecution in India.
Based upon the work that law firms in India undertake, according to me, patent prosecution can broadly be divided into two categories: (1) prosecuting a national phase PCT application patent; (2) prosecuting a patent for first filing in India. The scope of work for both these types of patent prosecution is fairly different and requires different skillset to make the patent proceed to grant. In this post I will expound upon the basic differences between both these categories of patent prosecution, and will further elaborate the need to use patent search databases during patent prosecution.
The basic difference
The basic difference between the scope of work of both these type of patent prosecution is that while prosecuting a national phase PCT application patent, you essentially do not have to draft the patent claims from the scratch. You already have the complete specification of the patent application ready and served to you by the client. In this type of patent prosecution the bulk work has already been undertaken by the overseas client. And what you, as an Indian IP attorney, ought to do is to get your overseas client’s patent up to grant.
On the other hand while prosecuting a patent for first filing into India, you will have to start from the scratch, that is to say, from meeting the client, to getting him to fill an information disclosure form (IDF) to finally drafting the patent and filing it within the timeframe.
Thus, in a nutshell we can say that while prosecuting a national phase PCT application is mostly about keeping to the timelines and adhering to formal requirements, prosecuting a patent for first filing in India is more about getting to know the in and out of invention, the technology involved, drafting the complete specification, along with adhering to the timeline and formal requirements.
The differences between the two types of patent prosecution is quite pertinent from the above figure showing general methodology involved in each of the categories. The difference in the skillset required for undertaking each of these patent prosecution is that while a patent attorney undertaking prosecution of a national phase PCT application is required to have robust knowledge of the formal requirements (i.e. the timelines, forms, fees, documents required). His main job is to get the client’s existing application to proceed to grant in whatever way possible – for this he is required to, in a nutshell, suggest and draft an improvised application. Whereas, on the other hand a patent attorney undertaking prosecution of a patent for first filing needs to be immaculate in understanding technology.
It is to be noted that in practice and designation there is no such demarcation in being a patent attorney, however these are the two types of work that a patent attorney undertakes, both of them or either one of them. Period. To be a patent attorney, one needs to have knowledge of both technical as well as formal requirements.
Ok! Let’s get to business! The crux of this post!
When are patent databases used?
Patent databases are used for either undertaking prior art search, patentability search, freedom to operate search – in case of first filing in India, or searching for prosecution history of corresponding foreign applications – in case of PCT applications. [Well there may be other uses of patent databases, however to keep the word count limited, I have included only these.]
Multi Country Patent Search Databases
|S.No.||Name of database||Access available / Use of Database||Administered/ Maintained by|
(Contains 3.2 million published international patent applications (PCT).)
|International Patent Cooperation Treaty (PCT) applications in full text format &
patent documents of participating national and regional patent offices
|2.||Espacenet (100 million patent documents from around the world)||· Search and find patent publications ;
· machine-translate patent documents;
· track the progress of emerging technologies; find solutions to technical problems etc
|European Patent Office|
|3.||Global Dossier Initiative
|Single, secure point of access for the management of dossier and examination information, enabling and encouraging streamlining of office procedures among different IP Offices||Developed by the IP5 Offices (USPTO, EPO, JPO, KIPO, and SIPO)|
|4.||patexia||Analytical tools regarding the IP field, including the details of attorneys, law firms, companies, and examiners, for its community members||Patexia Inc.(U.S.)|
Country Wise Official patent search Databases
|Name of the Database||Country and its Patent Office|
|1.||PatFT – Patent Full-Text and Image Database and AppFT – Patent Application Full-Text and Image Database||United States Patent and Trademark Office (USPTO)|
|2.||inPASS- Indian Patent Advanced Search System||Office of Controller General of Patents, Designs & Trade Marks (India)|
|4.||IPsum – Online Patent Information and Document Inspection Service||Intellectual Property Office -UK|