Patent Prosecution: Protecting Your Rights
Patent Prosecution is the process of interacting with the patent office—through negotiations, hearings, and written responses—to defend and secure an inventor’s rights. At K&K, we recognize and understand high-impact value of this process for our clients. We therefore undertake the preparation and analysis of responses to patent applications and patent office communications with utmost seriousness—engaging in detailed discussions with the examiner, strategizing to handle oppositions effectively, attending hearings before the Controller, among other things. Rest assured, we will be with you every step of the way!
The effective preparation of responses during the prosecution phase necessitates an in-depth analysis of the invention along with its prior art, 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 patent application is published in the Indian Patent Journal.
At Khurana & Khurana, we specialize in:
Conducting technical analysis of cited prior arts
Monitoring the Application status and staying abreast of latest developments during the prosecution process
Analysing examination reports in depth
Drafting clear and effective responses to examination reports
Strategizing amendments and arguments to maximize the impact of the patent application
Managing granted patent, in the event of oppositions
Implementing effective opposition strategies
Preventing the revocation of granted patents
Drafting statements and compiling evidences for cases of voluntary cancellation
Providing comprehensive patent support to build long-lasting client relationships
Drafting comment and analysis letters
Filing examination responses
Representing clients at patent hearings and in discussions with examiners
Drafting hearing written submissions
Filing claim amendments and appeals against patent decisions
Managing pre-grant oppositions
Handling post-grant oppositions
IDS Management for USPTO filings
At Khurana & Khurana, we are committed to guiding you through each critical phase of securing your patent, ensuring a seamless, strategic, and efficient process that transforms your innovations into valuable assets.
📩 For expert guidance on navigating patent prosecution, reach out to us today
WHY CHOOSE KHURANA & KHURANA?
Experienced in handling complex patent portfolios with a focus on maximizing IP potential.
1
Drafting Complete/Provisional Specifications to meet client standards for filing in USPTO, EPO, JPO, PCT, India, and other jurisdictions.
3
Multi-Level Screening to ensure only strong, enforceable specifications are filed.
2
Conducting Disclosure Meetings with inventors/attorneys to fully understand and strengthen the patent application.
4
Proofreading to guarantee semantic and syntactic accuracy in each application.
Efficient and Reliable Patent Filing Services
Khurana & Khurana (K&K) delivers fast, efficient patent filing services for Indian and international clients, including corporates, inventors, and law firms. Known for swift filings and thorough reporting, K&K ensures deadlines are closely monitored and managed, providing clients with secure, timely filings worldwide.
TYPES OF PATENT APPLICATIONS
AT THE INDIAN PATENT OFFICE
Ordinary Application
First-time filing without priority claims; may include complete or provisional specifications.
Convention Application
Claims priority from applications filed in Paris Convention countries; must be filed within 12 months.
PCT International Application
Filed under the Patent Cooperation Treaty, either within 12 months of Indian filing or with a Foreign Filing License.
PCT National Phase Application
Enters the Indian National Phase within 31 months of priority or international filing date.
FILING REQUIREMENTS
1
Applicant & Inventor Info
Full name, address, and nationality.
2
Complete Specification
Submit spec, claims, abstract, and drawings in English.
3
Priority Document Translation
Verified English version; can be filed later.
4
Power of Attorney
Original signed document; can be submitted post-filing.
5
Proof of Right
Transfer of rights from inventor to applicant
(Form 1 or notarized deed); due within six months.
6
Required Forms
Applicable forms provided to clients for signature.
7
Foreign Application Details
Form 3 for corresponding foreign patents, due within six months; notify of any status changes within six months.
IMPORTANT DEADLINES FOR INDIAN PATENT FILING
Request for Examination
Must be filed within 48 months of the earliest date (Priority or Filing Date). Examination occurs after publication, typically within 19 months of the earliest date.
Form 3 Filing
Required within six months of any action (filing, publication, or examination) on corresponding applications in other countries.
Working of Invention Statement (Form 27)
Must be filed annually by patentees and licensees within three months after the end of each calendar year, detailing commercial use in India.
PATENT PROSECUTION OVERVIEW
Patent prosecution involves the interaction between an applicant and the patent office to defend the inventor's rights through negotiation, making it a high-impact process. K&K recognizes the value of patents and offers comprehensive support throughout this process, including:
Response Preparation
Analyzing the invention and prior arts to meet patentability criteria.
Examiner Discussions
Engaging in detailed conversations with patent examiners.
Hearing Strategy
Developing effective strategies for hearings before the Controller.
The First Examination Report (FER) is typically issued within 12 months of filing the Request for Examination, contingent upon the application being published in the Indian Patent Journal.
COMPREHENSIVE PATENT PROSECUTION SERVICES
Prior Art Analysis
Technical evaluation of cited prior arts.
Application Status Tracking
Regular updates and monitoring of developments.
Examination Report Review
Detailed analysis for strong response strategies.
Response Drafting
Crafting effective replies to examination reports.
Amendment Strategy
Strategic modifications to enhance patent application.
Opposition Handling
Managing and defending opposed patents.
Revocation Prevention
Protecting the granted patent from cancellation.
Comprehensive Patent Support
Full guidance through all prosecution stages.