Patent Examination

Overview

Unlike other IP Examinations, the Indian Patent Act, 1870 follows a different examination process where the applicant has to request the Indian Patent Office to initiate the examination proceedings. It is mandatory for the applicant to file the request to conduct an examination, failure to which will abandon the application

Request for Patent Examination:

  • In order to place a request for examination, the application has to place a request with the Indian patent office in Form 18 along with the prescribed fees.

  • The request for examination has to be filed within 48 days from the date of priority of the application or from the date of receipt of the application.

  • If the applicant fails to place the request for examination within the prescribed time, the application is deemed to be withdrawn by the applicant.

Issue of First Examination Report (FER)

After placing the request for examination, the Indian Patent Office will scrutinize the application and examine it for the patentability criteria. After examination of the application, the IPO will issue the detailed report of the application.

This report is known as first examination report which will state if the patent can be granted or not. If no, then the reasons for rejection or objection and will also state if any clerical changes have to be made. In short, it will detail out the result for patent grant for which the applicant has to send a reply within the prescribed time.

Reply to First Examination Report (FER)

In case any objections are raised by the IPO, then applicant has Six Months’ time from date of issue of examination report to comply with the objections raised in the registry. 

If the applicant fails to respond to the FER within 6 months, the applicant can ask for condone delay for an extended period of 3 months by filing an application under FORM 4 within the prescribed time, failure to which the application will be abandoned.

After complying to all the objections raised in the FER, if the application is found to be in order, the patent will be granted and letter of patents will be issued to the applicant.

But, if the application does not comply with the FER and Controller is of the opinion that the application need further correction and clarification, an opportunity of hearing will be given to the parties and the case will be decided on merits.

Early Examination of Patents (EEP)

Statutory recognition:

Rule 24C of the Patent Rules, 2003 provides for expedited patent application examination in India's patent system. It is basically a faster process of examination of patent application than an ordinary examination of patents.

Request for EEP:

Just like the Normal Examination request, a formal request for expedite examination has to be filed by electronic transmission duly authenticated under FORM 18A along with the given fees within 48 from the date of filing of the application or date of the priority application.

Eligibility

The following people are eligible to file for expedited examination application

  1. Individual, who is citizen of India as a competent ISA or IPEA for the corresponding international application.

  2. Start-up

  3. Small entity

  4. Natural person- both in single application and joint application in which at least one applicant is female

  5. Applicant is from Department of Government or a Government company as defined in Clause 45 of Section 2 of the Companies Act, 2013

  6. Applicant is an institution wholly or substantially financed by the Government

  7. The applicant belongs to Central Government Sector

  8. Or, the applicant is under an arrangement to process the patent application based on the agreement between Indian Patent Office and Foreign Patent Office.