Patent Examination Process
Patent Examination is the process by which the patent office examines the patent application. It examines whether the invention is eligible for patent protection and determines if all the criteria mentioned under the Indian Patents Act are met. It does not happen automatically. A request for examination has to be made to the Indian Patent office for the examination of the patent application. It is post this process of requesting that the process of examining the application takes place.
Once a patent application has been filed in India and published after 18 months of filing the application, the next steps involve the examination of the patent application. The request for examination of the patent application has to be put forth by the applicant within 48 months of filing the application or the priority date whichever is earlier.
The examination then happens in stages. During the first stage of examination the examiner prepares the examination report stating all the requirements laid down under the statute. He objects to the application if he finds any irregularity or non-compliance with the conditions laid down under the Act. The examiner and his team also performs a patent search in order to identify the similar patents. The examiner clarifies and properly defines all the objections of the application to the applicant. This report is called the First Examination Report and is generally sent within 12-18 months from the date of publication or from the date of request for examination. The objections laid down by the examiner are final and are not withdrawn until the application is rectified according to that or reasons are justified to the examiner.
Patent Examination Report
The Patent system in India is such that the burden of granting patent rights to the patent holders is bestowed upon the Examiner. After the applicant files a patent application, the examiner has to carefully examine the application. The examination process has to be substantive in nature. According to the Indian Patent Act the process of examination commences only after the filing of a formal request for examination of the patent application. This is one of the vital reasons why the patent application is examined in accordance with the date of request of examination and not by the date of filing the patent application.
The examination conducted by the examiner is put into words to create a report of the examination. After conducting a rigorous examination process, the Indian Patent Office (IPO) issues a First Examination Report (FER). In this report the examiner lays down the objections to the application in accordance with the Indian Patent Act. The applicant has to reply to the FER within 6 months from the date of issuance of the FER. The Indian Patent Office leverages 3 months upon the applicants who file a request for the extension of time to file a response upon a prescribed fee. It is only before the expiry of the 6 month time period that the request for extension of time period can be filed.
The examination performed by the Indian Patent Office is the first action that is taken by the office towards the applicant. Hence, this is known as the First Office action. The IPO may also issue a Subsequent Examination Report (SER), once the response to the FER is filed by the applicant. The applicant is then required to file the response to the SER within 6 months of issuance of the FER. The SER cannot be issued after the expiry of the extendable FER response period i.e. 6+3 months.
Patent Publication
The patent application is automatically published after a period of 18 months from the date of filling the application for making it a prior art. Prior art acts as evidence that your invention is already known. In case the applicant is desirous of an early publication, he/she can file under Form 9 requesting for an early publication and by paying the requisite fee provided in Table I of the First Schedule. (See Rule 7 of the Patent Rules, 2003).
Once the patent is filled, the applicant can file for examination with a period of 48 months from the date of filling the application by Form 18/Form 18A (Request for Examination) by paying an examination fee mentioned in Table I of the First Schedule. (See Rule 7 of the Patent Rules, 2003). In case no request for examination is filed within the aforesaid period, the application is considered to be abandoned.
Once the controller at the Patent Office receives the receipt of the request for examination, he/she examines the report on the basis of Section 12 & 13 of the Patent Act, 1970 and if there are any objections, a FER (First Examination Report) is issued to the applicant which states all the mistakes and errors that were made by the applicant in the patent application. The applicant is given a period of 6 months to rectify the mistakes and send the appropriate response to the controller.
Once a patent application is filed with the patent office, patent applicants are required to submit request for early publication of patent application in addition to request for patent examination. Once a patent examination request is filed, the patent office examines the patent application in accordance with patent procedure and provides a patent examination report (patent office action) to the patent applicants, which contains one or more objections relating to novelty, inventive step (non-obviousness), industrial application, sufficiency of disclosure and formal requirements.
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