Patent Drafting/Preparation

Patent is a crucial intellectual property right which protects the inventors’ ideas, innovations and promotes technological progress. Patents offer legal protection which provides the inventors exclusive rights to use, make and sell their inventions for a specified period of time, thereby providing them with a competitive advantage in the marketplace. It is essential for companies and inventors to understand the patent process, significance of patents and how patents can benefit their businesses and contribute to expanding the technological landscape.

We at K&K, understand and appreciate the due importance of a good patent specification and therefore, have a dedicated team of patent drafters, who have, for Fortune 500 Corporates and Leading Global IP Law Firms, drafted comprehensive, numerous and exclusive patents. K&K, annually, handles a fresh patent portfolio of over 6000 patent applications and is highly regarded for its Patent Practice by being ranked as No. 1 PCT filing law firm from India by Managing IP for several years in a row, and therefore takes a lot of pride in representing several Indian reputed companies and academic entities for their IP and Patent requirements including Patent Portfolio Creation, Management, Freedom to Operate, Enforcement, and Monetization mandates as a single stop shop.

K&K offers quality and consistent patent preparation services for its clients to help maximize returns from the IP. IIPRD’s and K&K Clientele comprises leading and growing patent law firms, corporates, individual practitioners, research institutions and acclaimed inventors. K&K offers customized patent drafting to best suit each client’s needs. Our patent experts include technologists with advanced degrees and extensive experience across technology domains including, but not limited to, Chemical, Biotechnology, Pharmaceuticals, Electronics, Electrical, Software and Mechanical. We at K&K , through our stringent confidential policies and practices, assure compliance to the best quality standards along with complete confidentiality of our client’s disclosure.

Conduct Free Patent Search

Our Patent Preparation Services include:

• Preparation of Complete/Provisional Specifications to meet client-defined standards, for filing in USPTO, EPO, JPO, PCT, India and other countries.
• Conducting Disclosure Meetings (DM) with the Inventors and/or Attorneys to clearly comprehend the inventive concept and subject matter along with the preferred implementations/embodiments to maximize the impact of a patent application.
• Internal Multi-Level Screening practices in an effort that only Strong and Enforceable Specifications are drafted and filed.
• Proofreading the Patent Application to understand and ensure that every patent application is semantically and syntactically correct.

Patent Filing

Khurana & Khurana (K&K) provides efficient patent filing services to Indian and International Corporates, Individual Inventors and Law Firms. K&K has proved itself as one of the fastest filings and reporting to the respective clients. We diligently monitor all deadlines and take necessary steps.

Types of Applications being filed at the Indian Patent Office

Ordinary Application- is the first application made for an invention without claiming any priority. This application should be accompanied by a complete specification and claims. (In India, a Provisional Application can be filed too.)

Convention Application- is an application that claims a priority based on the same or substantially same invention(s) filed in one or more of the convention countries in accordance with the Paris Convention. The application must be filed within 12 months from the date of the first application in the convention country.

PCT International Application- is an application which is filed in accordance with the Patent Cooperation Treaty (PCT). A PCT Application can be filed within 12 months of the Indian Filing (Priority) Date or directly without filing in India, by filing Foreign Filing License in accordance with Section 39 of the Indian Patent Act.

PCT National Phase Application- is an international application which can enter the Indian National Phase within 31 months from the Priority Date or International Filing Date whichever is earlier.

Filing Requirements

• Full name, Address, and Nationality of each Applicant and inventor.
• A copy of the Complete Specification, claims, abstract and drawings (if any), in the English Language.
• Verified English translation of the priority document. The same can be submitted subsequent to Filing as well.
• A Power of Attorney signed by an Applicant or an authorized person of each applicant, in original. The same can be submitted subsequent to Filing as well.
• Proof of Right: is a document evidencing the transfer of rights from inventor to Applicant (It can be Form 1 signed by all inventors or Notarized Assignment Deed). The same must be submitted within six months of the Indian Filing Date.
• The duly completed Applicable Forms required for Indian Patent Filing shall be provided to our clients for signatures, upon entrusting us with filing an application in India.
• The Indian Patent Office requires details of the Corresponding Applications filed outside India (such as Name of Countries, Application Date and Number, Status of Application, Date of publication etc.) according to Section 8 of the Indian Patent Act. Such Details are filed in Form 3 and can be filed within six months of the Indian Filing Date. Further on change of any status of such Foreign Application including any communication with the respective Patent Office, it is an obligation of the Applicant to inform the Indian Patent Office of any status change within six months of any such change.

Important Deadlines

• A Request for Examination must be filed within 48 months of the Priority Date or Filing Date, whichever is earlier. While the Request for Examination can be filed any time with this period, the application shall be examined only after publication. (An Application shall ordinarily be published within one month from the date of expiry of 18 months from the Priority Date or Filing Date, whichever is earlier).
• Form 3 must be filed within six months of any activity (Filing, Publication, Any Examination Report Receipt/Response etc.) of any application filed in other country/countries.
• Working of invention statement, in Form 27, must be filed by every patentee and licensee in respect of every calendar year within three months of the end of each year. The form will contain information such as periodical statements as to the extent to which the patented invention has been commercially worked in India.

Patent Prosecution

Patent Prosecution refers to a process of interaction between an applicant/representative and a patent office with respect to the patent, in order to best defend an inventor’s rights. It involves high levels of negotiation with the patent office and therefore has high-impact value for the client. K&K truly understands the inherent value of a patent and the role played by this prosecution process. We therefore undertake preparation and analysis of responses for patent applications, detailed discussions with the Examiner, thorough and effective strategy for and attending hearings before the Controller, among other things. We’ll be with you all the way.

The preparation of responses during the prosecution phase necessitates an in-depth analysis of the invention along with the prior arts, taking into consideration the patentability criteria. The First Examination Report (FER) is issued ordinarily within 12 months of filing the Request for Examination, provided the Application is published in the Indian Patent Journal.

Our prosecution services include:

• Technical Analysis of Cited Prior Arts
• Technical Analysis of Cited Prior Arts
• Following up with the Application Status and keeping abreast with the Latest Developments during the Prosecution
• Technical Analysis of the Examination Report
• Drafting cogent and effective Responses to Examination Reports
• Strategizing amendments and arguments for the patent application for Maximizing Impact
• Managing Granted Patent, if opposed
• Strategizing and implementing Effective Opposition
• Prevent Revocation of Granted Patent
• Drafting Statement along with necessary Evidence in cases of voluntary cancellation
• Long-lasting and all-inclusive  Patent support for our Clients