Examination Process of a Patent Application

The patent is an exclusive right and to get this right, you need to secure your invention by filing it in the patent office. To apply, you need to follow the process to file a patent application in India. In this process, there is a step of examination for the different types of patent applications in India. In this article, we are going to discuss the examination process of a patent application.

Examination process of patent application

As we read in the previous article, the Examination process of the patent application is not automatic. The application needs to file the application for the examination process. To file the examination request, any person interested or the applicant himself can apply the request for examination. The form to apply the request for examination is Form 18 given under the Patents Act, of 1970. 

Request for Examination

Section 11B of the Patents Act deals with the request for examination. As per this section, the applicant of any other interested person can request in a prescribed manner which is given in the act.

Form 18

After the publication of the application, the applicant or the interested person has to file Form 18 with the prescribed fee given under Schedule 1 of the act i.e. 4000 for the natural person.

You can check the format of Form 18 here.

https://ipindia.gov.in/writereaddata/Portal/IPOFormUpload/1_30_1/form-18.pdf

Form 18A

There is one more form which is called Expedited examination. Form 18A deals with expedited examination. Rule 24C of the Patents Rules, 2003 deals with expedited examination. The fee for filing Form 18A is 8000 for a natural person. But in case if you want to convert the simple request for examination into the expedited request for examination, you just need to pay the 4000 and your request will be converted to the expedited request for examination. This fee should be paid only by electronic transmission.

You can check the format of Form 18A here.

https://ipindia.gov.in/writereaddata/Portal/IPOFormUpload/1_105_1/Form-18A.pdf

Who can apply for the expedited examination?

Not every applicant is eligible to apply for the expedited examination. The law provides some conditions where such persons can file this request. These conditions are as follows:

  • In the international application, if the person has chosen the Indian office as ISA or IPEA.
  • The applicant is a startup or small entity.
  • If the applicant is alone or jointly where at least one applicant is female.
  • The applicant is a department of Government.
  • Institution established by central, provincial, or state act which is owned or controlled by the government.
  • If the applicant is a government company.
  • If the applicant is an institution wholly or subsequently financed by the government.
  • That the application pertains to a sector which is notified by the central Government based on a request from the head of the Central Government.
  • The applicant is eligible under an arrangement for processing a patent application under an agreement between the Indian Patent Office and a Foreign Patent office.

These are the conditions in which if any of the applicants fulfil any one condition, then they can go for the expedited examination by filing Form 18A with the prescribed fees.

Any person who wants to grant his patent in a short period, should go for an expedited examination.

The time limit for filing RFE

As per the recent amendment made in The Jan Vishwas Act, 2023, now the time limit for filing the RFE (request for examination) is 31 months from the date of filing. The person has to file the RFE before the expiry of 31 months otherwise the patent application will be treated as withdrawn by the applicant. So, you should make the request for examination before the expiry of this period.

Examination of application

Once you have filed the RFE, the controller will send all the documents related to your invention to the examiner for the examination process. This process is given under section 12 of the Patents Act, of 1970.

The examiner will check some details like:

  • Whether the documents (including specifications) fulfil the requirements of the act?
  • If there any lawful grounds of objection to the grant of the patent under this act?
  • Is the application already published or being used in India or elsewhere in the world (section 13)?
  • Or any other matter which may be prescribed in the Patents Act or Patent Rules.

Consideration of Report

After finding the above details, the examiner makes a report within 1 to 3 months and sends this detailed report to the controller. The controller checks this report and makes the gist of this report which we call the First Examination Report or statement of objections.

First Examination Report

The first examination report is the gist of the report sent by the examiner to the controller. The report sent by the examiner technically describes all the necessary and important information which may or may not be fully helpful for the applicant. So, the controller creates its gist and this gist is called the first examination report.

Content of First Examination Report (FER)

Normally, the FER is mainly divided into 4 parts:

The summary of the report

The summary of the Report talks about the novelty, inventive steps, and industrial applications of the invention. This also includes whether the invention is clashing with section 3 or 4 of the Patents Act or not. If your invention is clubbing more than one article in one application, then the controller can ask you to divide the patent application into two or more parts.

Detailed Technical Report

This section includes the list of documents mentioned and other observations on the requirements as per the Patents act.

Formal Requirements

Formal requirements include the filing procedure, correction in documentation or any other norms and regulations related to the act.

Documents on Record

This section includes all relevant documents formed based on the examination process. For example, your invention needs to file the NBA, and then the controller can ask you to provide proof of NBA filing.

Powers of the controller related to FER

There are different powers of the controller related to FER which are discussed in Sections 15 to 20 of the Patents Act. So, let us discuss these powers one by one.

Power to refuse or require amendment in the application

Section 15 of the act deals with the power of the controller to refuse or require amendment in the application. After checking the report of the examiner, if the controller finds that the application is not patentable or it needs some amendment, then the controller will send the FER to the applicant and ask him to do the necessary changes. But if there is no novelty or non-obviousness in the application, then the controller can refuse the grant of application by giving the opportunity to be heard before cancelling such application.

Powers related to divisional application

Section 16 of the act deals with divisional application. A divisional application is a kind of application in which the inventor has mistakenly applied for the invention which is covering more than one article in one patent application. In such a case, the controller may order the applicant to divide his application into two or more than two applications.

It should be noted that the priority date of the divisional application will remain the same as the filing date of the original application. The applicant has to amend the original application by removing the second article from the specification and adding that second article in another new application which will be called as divisional application. Also, the applicant has to file the divisional application at any time but before the grant of the original application.

Power related to the dating of the application

As per section 17 of the Act, the controller has the power to post-date the application upto six months from its original date of filing. But there is a clash between section 9 and section 17. As per section 9 of the Act, the applicant can post-date the application for upto 12 months (By cancelling the Provisional specification). So, if there is any clash between these two sections, section 9 will prevail.

 Power of controller in case of anticipation

As per section 18 of the act, this is the power of the controller that if the application, which is being examined, was published or being used in the public before the date of filing, then the controller will not refuse to grant the application if the applicant has provided the sufficient information which claims that the invention was not used in the public or the use was just for trial purpose.

Power related to potential Infringement

As per section 19 of the act, if there is potential infringement done by your patent application to another’s patent, the controller will ask you to insert such information in your patent application.

Power related to the substitution of applicants

As per section 20 of the act, if any person interested gives form 6 to the controller in a prescribed manner and asks to change or substitute the applicant, then the controller shall take such action to remove or substitute the applicant by taking cognizance from the application.

There are some powers of the controller which are related to the FER. Let us discuss these powers.

Reply to First Examination Report

The controller shall send you the FER within one month. After receiving the FER, now you have a period of 6 months to make a reply to this FER by giving the proper explanation and proof to remove such objections. Section 21 of the Patents Act deals with the period for putting the application for the grant. If the applicant fails to reply to the FER, the application will be considered abandoned.

But if you need some extra time to make the reply, then the act also provides the solution for it. The Applicant can file the FORM 4 which is known as an application for an extension of time. This form will help the Applicant to take 3 more months to complete the process to file the reply to the First examination report. There is a prescribed fees given in the act which is 1000 per month if you have file the RFE by giving form 18. But if you have made the expedited examination, then you need to pay the fee of 2000 per month.

It should be noted that if you need extra three months i.e. 6+3 months by giving an extension of time, then you have to file form 4 before the expiration of the 6 months.

To file the reply of first examination report, you can go to the link: https://ipronline.ipindia.gov.in/epatentfiling/FORM30/frmFORM30MENU.aspx

Examination Process

Hearing

After the submission of the reply to first examination report, the examiner will check your reply and if there is any other requirement left, then the controller will give you the Hearing notice where the requirements will be mentioned. The applicant has to attend the hearing by giving the hearing notice to the controller that the applicant will attend the hearing at the time provided by the controller.

After the hearing, if any documentation is required then the applicant has to submit those records or documents within 15 days of the date of hearing.

Grant or refusal of patent application

If you fail to submit the required details or the controller is satisfied that this invention is not patentable, he shall refuse to grant the patent for the invention.

But if the controller is satisfied with the given information, then he will grant the patent and make the entry in the register of patent under section 67 of the Patent Act 1970. He will give the Certificate of grant of patent.

FAQs related to the examination process

How I can request for examination for a patent application?

To request the examination of your patent application, you need to file Form 18 with prescribed fees which is 4000 for a natural person.

When can I file the request for examination?

Once your patent application is published, you can file the RFE. Or you can file Form 9 and Form 18 or Form 18A simultaneously if you want to grant your application as soon as possible.

What is the time period to file the reply of FER?

As per section 21, you have to file the reply of FER within 6 months but this time can further extended to 3 more months by giving form 4 with the prescribed fee.

Conclusion

After reading this article, you now know about how the examination of a patent application is done. This process may vary from country to country. The examination process covers many aspects starting from the request for examination to the grant of the patent by covering hearing and FER.

In conclusion, we can say that the Examination process of a patent application is a lengthy procedure which obviously takes some time but at the end, if your invention has the potential, this process will be fruitful to you. Hope, you like the article, you can share your views in the comments. See you soon with another interesting article.

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