Hii abhay I would like to thank you. I have cleared the patent agent exam 2022. Thank you for your videos. You made it easy to understand sections and rules.
@@AbhayPorwal sir one doubt , how the examination process will be , because in form 18 , no option given for convention application,plz clarify my doubt
Hi, is it possible that I can file provisional (spec) application in India and then file convention application in another country, convention application having more finished invention details (complete spec) than the provisional application on India.
As discussed in section 135.3, a person files an application with ipo then files a Pct and then again enters into ipo through national phase.Why a person who has already filed an Indian application will enter to ipo again through pct.I mean he has already filed his first application at ipo,now what's need to file again at ipo???
Interesting question, you will either choose the ordinary application or the pct national phase application for prosecution at IPO. Now which one to choose? Think from the patent life terms associated with an ordinary application and the pct national phase application! Even when both of these share the same priority date - their terms are calculated differently- that’s the motivation.
I got ur point, u mean as pct was filed after the ordinary application in this case,so term of the PCT application is more i.e., 20 years will be calculated from PCT filing date.So the applicant can enjoy patent protection for more duration if he chooses PCT application for prosecution.Thanks for quick reply Sir 😊
S138.6 states that any changes or modifications the applicant makes to their international patent application while it's being reviewed by an International Searching Authority (ISA) or a Preliminary Examination Authority (IPEA), and if the applicant wishes, those same changes can be treated as if they were made directly in front of the Indian Patent Office. In other words, if you decide to tweak or adjust something in your international patent application while it's being looked at by international authorities, and you want those changes to also apply in India, you can do that. These altered details would then be included when you submit your application to the Indian Patent Office during the national phase. This helps streamline the process. Instead of needing to reiterate the changes separately for the Indian application, the adjustments made earlier in the international context can carry over, if you choose, into your application when you bring it to the Indian Patent Office.
Bhuvana, search for types of patent application on this channel. If that also doesn't clarify your doubts - come back and let me know - i will help you out.
Sir, What is the point of post-dating a basic application if we have to file conventional application within 12 months from earliest priority date?? What is the advantage of post-dating in conventional application?? Kindly explain sir.
If you are referring to 09:39, here is an example, let's say a first application (P1) was filed in US on 1st Sep 2022, accordingly, you have time till 1st Sep 2023 to file a convention application (CPin) in India. You diligently filed CPin by 1st April 2023 claiming priority from P1. Now, in case you wish to post date the CPin, you are allowed to do that provided you don't post date it beyond 1st Sep 2023, that was the original 12 months boundary line! Now the question of why to do it? Think about the term of CPin, from which date does the 20 years are calculated? From the Indian filing date, Right? So if you push it later, don't you get a bit more time as term of patent? Is it clear?
Please make me clear in this case if we file convention application on 1sept 2023..then i will get 20years so why post dating is required if we can't fint it beyond 12months
Hello Girija, to compute the term of the national phase application - PCT (international filing date) is considered as the application date. Not the priority date, not the Indian filing date - but the PCT filing date is considered as the filing date for calculating 20 years of the terms for the national phase application.
What is the difference between 135(2) and 137? And also Sir if in multiple priorities concept the earlier filed applications in one or more country has to be provisional applications right?
135.2 and 137 are the same --> 135, talks about how can you file convention applications - within 12 months from the filing of the convention application, they further clarifies it by saying that you can even combine more than one applications by filing them as single application within 12 months from the earliest filed convention application. 137 - Specifically is dedicated to priority date - because convention applications are all about claiming priority. Here again they explained how you can combine two or more applications but you have to file within 12 months from the first application. Regarding your question of the earlier application being Provisional application -- the answer is NO (NO!) - these can be regular applications or provisional application - all they want is you to file the convention application in 12 months. I hope this is clear.
@@AbhayPorwal this means I can file a complete specification in one country and do further developments and file another complete specification in another country and combining these two I can file a single convention application within 12 months from the earliest filed application right?
@@shitalghodinde8426 Yes, the keyword is the inventions should be cognate or modification of one another, in that you can combine them and file as a single application in India - by claiming multiple priorities and paying the fees for "two applications"
@ankur, I had written a long response to a similar question asked by someone else on Linkedin. I am unable to post the same here. Can you please go through this bit.ly/3Kv9kGh
For convention application in India - I can perform infringing activity in India, from the date I read the first application (published outside India), till the publication of convention application in India. Is that correct?
Let me write that in a positive tone: Since there is no application filed in India, you are free to avail of the invention without infringing the rights of the patentee. You can be sued for infringement only once the patent is granted in India, for which the damages can be claimed from the publication date in India. However, the willful infringement activities, always attract unfavorable damages. So technically, yes, you can avail the invention till the patent is actually granted.
If I want to use an invention filed outside India, I can wait for 12 months to see if a convention application is filed in India or a PCT is filed. If not, then I am safe to use the invention in India. In a reverse way, PCT would be a deterrent for my competition in another country to not work the invention till 31 months at least. (excluding exceptions and the previous question scenario)
@@prashant3285 I didn't quite understand the second part of your scenario. However, just on a cautious note, there are always chances of a patent of addition (continuation application) being filed in India claiming priority from its parent application (convention application), it could pose infringement threat to you in India.
@@AbhayPorwal Interesting, so patent of addition can be filed in a convention country even if the main invention was not filed in that convention country.
Hello Dr. Ankit, most of these videos start with a visualization of a "situation," and then we fight a solution to it with the help of the patent's act. So, paper 2 is all about applying your knowledge of the section to solve situations. If you are explicitly talking about drafting - you may refer to this response of mine on a LinkedIn question that I had received: bit.ly/3Kv9kGh
It means, if multiple convention applications are combined to file one single application in India (claiming multiple priorities), then fee will charged in multiples- basically, it will be considered as if all these applications are filed individually/independently. For example, if I can claim priority to two convention applications, then I need to pay the fee as if two applications are file separately .
@@AbhayPorwal Hi Sir, so in this case of cognate applications where one is modification of another the prority date of the claim for convention application will be later filed right? If I assume that modification means it is partly disclosed in those application
Hii abhay
I would like to thank you. I have cleared the patent agent exam 2022.
Thank you for your videos. You made it easy to understand sections and rules.
Congratulations Poonam. I am happy for you. Take care and all the best for your future endeavours.
Congratulations mam.. Can you please share some imp tips u experienced aftr exam ?
Thank you for translating in very easy way, really appreciated.
Glad that you liked it.
Sir it's helpful to understand convention application
Thank u so much sir..
As u told, this is the most requested video for many people.. It will definitely help us in this peak time of examination.
Thank you for your kind words. Should you have any exam related queries you may drop a message on Linked In or on email.
@@AbhayPorwal sir one doubt , how the examination process will be , because in form 18 , no option given for convention application,plz clarify my doubt
@@shanthalakshmik6884 once application is filed, the examination process takes it's usual course.
Hi, is it possible that I can file provisional (spec) application in India and then file convention application in another country, convention application having more finished invention details (complete spec) than the provisional application on India.
Yes, scope of the invention will be determined by the provisional application filed in India.
As discussed in section 135.3, a person files an application with ipo then files a Pct and then again enters into ipo through national phase.Why a person who has already filed an Indian application will enter to ipo again through pct.I mean he has already filed his first application at ipo,now what's need to file again at ipo???
Interesting question, you will either choose the ordinary application or the pct national phase application for prosecution at IPO. Now which one to choose? Think from the patent life terms associated with an ordinary application and the pct national phase application! Even when both of these share the same priority date - their terms are calculated differently- that’s the motivation.
I got ur point, u mean as pct was filed after the ordinary application in this case,so term of the PCT application is more i.e., 20 years will be calculated from PCT filing date.So the applicant can enjoy patent protection for more duration if he chooses PCT application for prosecution.Thanks for quick reply Sir 😊
Sir please explain sec 138.6 regarding ammendment
S138.6 states that any changes or modifications the applicant makes to their international patent application while it's being reviewed by an International Searching Authority (ISA) or a Preliminary Examination Authority (IPEA), and if the applicant wishes, those same changes can be treated as if they were made directly in front of the Indian Patent Office.
In other words, if you decide to tweak or adjust something in your international patent application while it's being looked at by international authorities, and you want those changes to also apply in India, you can do that. These altered details would then be included when you submit your application to the Indian Patent Office during the national phase.
This helps streamline the process. Instead of needing to reiterate the changes separately for the Indian application, the adjustments made earlier in the international context can carry over, if you choose, into your application when you bring it to the Indian Patent Office.
Sir still I couldn't differentiate PCT and convention application. How to understand easily?
Bhuvana, search for types of patent application on this channel. If that also doesn't clarify your doubts - come back and let me know - i will help you out.
Thank you sir
Sir, What is the point of post-dating a basic application if we have to file conventional application within 12 months from earliest priority date?? What is the advantage of post-dating in conventional application?? Kindly explain sir.
If you are referring to 09:39, here is an example, let's say a first application (P1) was filed in US on 1st Sep 2022, accordingly, you have time till 1st Sep 2023 to file a convention application (CPin) in India. You diligently filed CPin by 1st April 2023 claiming priority from P1. Now, in case you wish to post date the CPin, you are allowed to do that provided you don't post date it beyond 1st Sep 2023, that was the original 12 months boundary line!
Now the question of why to do it? Think about the term of CPin, from which date does the 20 years are calculated? From the Indian filing date, Right? So if you push it later, don't you get a bit more time as term of patent?
Is it clear?
@@AbhayPorwal yes sir cleared. Thank you so much sir to timely answer my question 🙏..You are indeed a best patent agent
@@rashmichauhan8819 Not sure about being a best patent agent, but yeah, one thing for sure, I love supporting you all :-)
Please make me clear in this case if we file convention application on 1sept 2023..then i will get 20years so why post dating is required if we can't fint it beyond 12months
@@nutanpawar9034 if you have filed convention application on 1st sept 2023 (last date) - you can't post -date the application.
Hello, can u please elaborate what this means "as per section 138.5 Nation phase filing application date is the date of international filing date".
Hello Girija, to compute the term of the national phase application - PCT (international filing date) is considered as the application date.
Not the priority date, not the Indian filing date - but the PCT filing date is considered as the filing date for calculating 20 years of the terms for the national phase application.
Thank you sir for making patent act easy
Can you make one short video for rule 57 to 63? process
Please check pre-grant opposition video and post-grant opposition video - you will get an easy illustration of rules 57 to 63.
@@AbhayPorwal ok thanks
What is the difference between 135(2) and 137? And also Sir if in multiple priorities concept the earlier filed applications in one or more country has to be provisional applications right?
135.2 and 137 are the same --> 135, talks about how can you file convention applications - within 12 months from the filing of the convention application, they further clarifies it by saying that you can even combine more than one applications by filing them as single application within 12 months from the earliest filed convention application.
137 - Specifically is dedicated to priority date - because convention applications are all about claiming priority. Here again they explained how you can combine two or more applications but you have to file within 12 months from the first application.
Regarding your question of the earlier application being Provisional application -- the answer is NO (NO!) - these can be regular applications or provisional application - all they want is you to file the convention application in 12 months.
I hope this is clear.
@@AbhayPorwal yes sir thank you so much👍🏻
@@AbhayPorwal this means I can file a complete specification in one country and do further developments and file another complete specification in another country and combining these two I can file a single convention application within 12 months from the earliest filed application right?
@@shitalghodinde8426 Yes, the keyword is the inventions should be cognate or modification of one another, in that you can combine them and file as a single application in India - by claiming multiple priorities and paying the fees for "two applications"
@@AbhayPorwal yes sir got it👍🏻
The video was indeed crisp and to the point ..Can you help with paper 2 ,part c ?
Thanks in advance
@ankur, I had written a long response to a similar question asked by someone else on Linkedin. I am unable to post the same here. Can you please go through this bit.ly/3Kv9kGh
For convention application in India - I can perform infringing activity in India, from the date I read the first application (published outside India), till the publication of convention application in India. Is that correct?
Let me write that in a positive tone: Since there is no application filed in India, you are free to avail of the invention without infringing the rights of the patentee.
You can be sued for infringement only once the patent is granted in India, for which the damages can be claimed from the publication date in India. However, the willful infringement activities, always attract unfavorable damages.
So technically, yes, you can avail the invention till the patent is actually granted.
@@AbhayPorwal Thanks for the technical clarification and more thanks for the ethical clarification
If I want to use an invention filed outside India, I can wait for 12 months to see if a convention application is filed in India or a PCT is filed. If not, then I am safe to use the invention in India.
In a reverse way, PCT would be a deterrent for my competition in another country to not work the invention till 31 months at least. (excluding exceptions and the previous question scenario)
@@prashant3285 I didn't quite understand the second part of your scenario. However, just on a cautious note, there are always chances of a patent of addition (continuation application) being filed in India claiming priority from its parent application (convention application), it could pose infringement threat to you in India.
@@AbhayPorwal Interesting, so patent of addition can be filed in a convention country even if the main invention was not filed in that convention country.
Post more videos on paper 2 before PAE
Hello Dr. Ankit, most of these videos start with a visualization of a "situation," and then we fight a solution to it with the help of the patent's act. So, paper 2 is all about applying your knowledge of the section to solve situations.
If you are explicitly talking about drafting - you may refer to this response of mine on a LinkedIn question that I had received: bit.ly/3Kv9kGh
Thank you so much.
Fees charged by IPO as if multiple applications were filed ....Sir please expalin me this sentence
It means, if multiple convention applications are combined to file one single application in India (claiming multiple priorities), then fee will charged in multiples- basically, it will be considered as if all these applications are filed individually/independently. For example, if I can claim priority to two convention applications, then I need to pay the fee as if two applications are file separately .
@@AbhayPorwal Hi Sir, so in this case of cognate applications where one is modification of another the prority date of the claim for convention application will be later filed right? If I assume that modification means it is partly disclosed in those application
@@shitalghodinde8426 yes, partly disclosed in both - in that case, later filed application will be considered for priority.