Patent Drafting/Preparation

An enforceable Patent is the key to effective Commercialization/Out-Licensing of any technology. No matter how good a technology is, if the description of the technical subject matter is not enabling or fails to disclose all necessary embodiments, and in case the claims are narrowly drafted and do not gain support from the specification, the worth of the technology is insignificant.

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 numerous patents and improved their skills by deliberation with experienced and renounced patent drafters.

K&K offers quality and consistent patent preparation services for all its clients to help maximize their returns from the IP. IIPRD’s Clientele comprises of leading and growing patent law firms, corporates, individual practitioners, research institutions and inventors. IIPRD offers customized patent preparation services to best suit each client’s existing and best drafting strategies. Our patent drafting experts include technologists having advanced degrees and extensive experience across technology domains including Chemical, Biotechnology, Pharmaceuticals, Electronics, Electrical, Software, and Mechanical. K&K, through its stringent confidential policies and practices, assures compliance to quality standards and complete confidentiality of client’s disclosure.

Our Patent Preparation Services include:

1.Preparation of Complete/Provisional Specifications to meet client-defined standards for filing in USPTO, EPO, JPO, PCT, India and other countries.

2.Conducting Disclosure Meetings (DM) with the Inventors/Attorneys in order to clearly comprehend the inventive concept and subject matter along with the preferred implementations/embodiments to maximize the impact of patent application.

3.Proofreading of 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 filing reporting to the respective clients. We diligently monitor all deadlines taking necessary steps.

Types of Applications being filed at the Indian Patent Office:

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

1. Full name, Address, Nationality of each Applicant and inventor.
2. A copy of the Complete Specification, claims, abstract and drawings (if any), in English Language.
3. Verified English translation of the priority document. The same can be submitted subsequent to Filing as well.
4. 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.
5. Proof of Right: is a document evidencing 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.
6. The duly completed Applicable Forms required for Indian Patent Filing shall be provided to our clients, for the signatures, upon entrusting us with filing an application in India.
7. 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:

1. 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 timeframe, 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)
2. 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.
3. 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. Patent prosecution process involves high level of negotiation with the patent office and therefore has high-impact value for the client. Khurana & Khurana (K&K) truly understands the inherent value of a patent and the role played by the prosecution process. K&K therefore undertakes preparation and analysis of responses for patent applications, discussions with the Examiner, preparations for and attending hearings before the Controller.
The preparation of responses during the prosecution phase requires an in-depth analysis of the invention along with the prior arts taking into consideration the patentability criterions. The First Examination Report (FER) is issued ordinarily within 12 months of filing Request for Examination, provided the Application is published at the Indian Patent Journal.
Our prosecution services include:

  • Drafting of Responses to Examination Reports
  • Strategizing amendments and arguments for the patent application for maximizing impact
  • Technical Analysis of Examination Report
  • Technical Analysis of Cited Prior Arts