India: Patent Examination Procedure In India

Missing the deadline for filing request for examination can prove fatal for the patent application. Since it is absolutely clear that missing the deadline, would eventually kill the patent application. If the request of examination is made within the prescribed time limit, the Indian Patent office takes up the application for examination.

The normal Requests for Patent Examination can be filed within a period of 48 months from the priority date (date of first filing of the invention, can be provisional patent or complete patent / non-provisional patent) or date of filing of the patent application whichever is earlier. If the patent examination request is not filed within the specified time limit the patent application shall be treated as withdrawn by the Indian Patent Office. It is mandatory under Indian Patent Act 1970, to file a request for patent examination as per the prescribed timeline.

As per the Patent Act 1970, only after submission of such request a formal patent examination process shall commence.

An express request for examination before expiry of 31 months can be made with respect of the applications filed under Patent Cooperation Treaty (PCT) known as National Phase applications by payment of the official fee. There is another provision of expedited examination, in which the patent applications which requested for expedited examination will be put in a queue separate from the patent applications for ordinary examination.

Ordinarily, within one month from the date of a request for examination, the Controller is required to refer the application to an examiner. Further, the examiner is then required to prepare the Examination Report within one month, but not exceeding three months from the date of reference for such examination by the Controller. On the other hand, upon a request for an expedited examination, the examiner will be required to give the Examination Report within one month, but not exceeding two months from the date of reference for examination by the Controller.

The provision of expedited examination is available for startups and applicants who have included India, in their PCT application as an International Searching Authority (ISA) or International Preliminary Examining Authority (IPEA). Therefore, selecting India as ISA can be beneficial to expedite the grant process.

An early publication request can be made along with prescribed fees if one does want to wait, till the expiry of 18 months from the date of filing for publishing the patent application.

Generally the patent application is published within a month after request for early publication.

Why do I have to file Request for Examination in India?

The Process of examination starts with filing a request for examination. Unlike publication, this is not an automatic process. Only after receiving the Request for Examination (RFE) the controller transfers the patent application to the patent examiner. The request for examination has to be made within 48 months from the date of priority or filing whichever is earlier.

The patent examiner examines the patent application, and prepares the examination report on the basis of various patentability criterias like:

• Patentable subject matter;
• Novelty;
• Inventive step;
• Industrial application; and
• Specification Enablement

Other responsibilities of the patent examiner for examination of a patent application include:

• To conduct comprehensive investigation of an application and prepare a report under section 12;
• To conduct an inter-office search covering all four patent offices;
• To raise objections rather than comment on missing forms.
• The Examiner's report will: Be a permanent part of a file's note sheet and non-editable at the Controller's end; Include a draft summary/gist of objections-this gist editable at Controller's end; Include any amendments to the complete specification;

Who can file the Request for Examination in India and How?

In India a request for patent examination (RFE) may be filed by:

• the patent applicant of the patent application or
• by any other interested person

Request of Examination is filed by filling Form 18. The interested person (third party) has to submit appropriate evidence of his interest in the particular patent application.

Form-18 has to be filed, specifying the details of the patent applicant or other interested person, application number, title, date of filing and publication date along with the prescribed fees.

It is very significant to follow the patent office timelines. Otherwise it is advisable to file the request for examination, while filing patent application.

For a national phase application /PCT international application entering India it is advised to file an express request for patent examination before the expiry of 31 months.

What is First Examination Report under the Patent Act?

Once the patent application is examined, the Patent office issues an examination report to the patent applicant which is generally known as First Examination Report (FER). The examiner submits this to the controller. It usually contains prior arts similar to claimed invention. Prior art here means existing documents before the date of filing, similar to claimed invention. It need not be commercially available. It is just evidence which proves that the claimed invention is already known

The Applicant should reply the objections (if any) and place the application in order for grant within 12 months from the date of issue of the FER (First Examination Report). In this case too, if the reply to the examination report is not made within prescribed time limit, which is 12 months, the application is deemed to be abandoned.

In case, the patent application is found to be in order for grant, the patent is granted, if there is no pre-grant opposition filed or pending by a third party.

What is the fees I need to pay for making Request for Patent Examination?

The prescribed fee for e-filing is given below:

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.