Abstract

This article has been written by Saksham Sharma, a B.A. L.L.B. V sem student of S.S. Jain Subodh Law College, Jaipur.

The Patent examination process in India encompasses many stages. It begins with filing a patent application, followed by a request for examination within 48 months of filing. An examiner scrutinizes the application for compliance with patentability criteria, issuing a first examination report (FER) outlining objections or requirements. Applicants have six months to respond to the FER, addressing objections through amendments or arguments. Further examinations or hearings may occur if needed, leading to a final decision on grant or refusal. once granted, the patent details are published, inviting a one- year window for the post grant opposition. timely responses, adherence to guidelines, and effective resolution of objections are pivotal for a successful outcome in this process.

 

 Patent examination and prosecution 

Patent examination is the comprehensive evaluation conducted by a patent office to determine if an invention meets the legal criteria for a patent. It involves a meticulous review of the patent application, including its claims and supporting materials, to ascertain its uniqueness, non- obviousness, and industrial applicability in comparison to existing prior art. This process includes the issuance of examination reports by patent examiners outlining objections or rejections based on their findings. on the other hand, patent prosecution refers to the ongoing dialogue and negotiation between the applicants and the patent office throughout the examination process. It involves responding to office actions, addressing objections, making amendments, providing clarifications, and presenting arguments to overcome the examiner’s concerns. Ultimately, patent prosecution aims to navigate the examination hurdles successfully, aiming to secure the grant of a patent for the invention.

11- Patent examination process in india

Filing of application: The process begins with the filing of a patent application with the Indian patent office (IPO), either directly or through the patent cooperation treaty (PCT) route.

The filing of a patent application in india involves several key steps:

Preparing the application

• Invention Disclosure: The creator or applicant creates a detailed description of the creation, including drawings if necessary.
• Claims Drafting: Claims define the scope of protection sought for the invention. there must be clear, specific and supported by the description.
• Completing forms: Filing forms and providing required documents, including the creator’s and applicants details, along with any priority claims.

Choosing the filing route:

• Direct filing: Submitting the application directly to the Indian patent office (IPO).
• PCT Route: Filing under the patent cooperation treaty (PCT) can provide an extended time period for entering national phases and streamline the application process in multiple countries.

Filing the application:

• Filing fees: Paying the requisite fees for filing the patent application.

• Submission: Submitting the application along with all necessary documents, forms and claims either physically or electronically to the IPO.

Examination process:

• Substantive examination: An examiner assesses the application for novelty, inventive step, and industrial applicability compared to prior art.
• Examination report: The examiner issues an examination report outlining objections, if any, within a stipulated time frame.

Formalities Check:

The IPO conducts an initial review to ensure that the application meets all formal requirements, including proper documentation and fee payment.

Completeness of application:

• Documentation: The IPO verifies that all required forms and documents are properly filled out and submitted. This includes the application form, creator details, and any supporting materials.
• Claims and description: Ensuring that the claims are properly drafted and supported by a detailed description of the invention including any necessary drawings or diagrams.

Fee Payment: 

• Filing Fees: The IPO checks that the appropriate fees for filing the patent application have been paid. failure to pay these fees can lead to the rejection or abandonment of the application.

Formal Requirements Compliance:

• Correct Format: Verifying that the application is in the correct format and follows the prescribed guidelines set by the IPO.
• Priority Claims Confirming that any priority claims, if applicable, are correctly started and supported by the necessary documents.

Publications: 

The application is published after 18 months from the filing date or priority date, whichever is earlier, unless a request for early publication is made.

Publication timing:

• 18- Month period: By default, patent applications are published after 18 months from the filing date or priority date, whichever is earlier.
• Early Publications: Applicants can request early publication before the 18 -month period to make the inventions details public sooner.

Public Access:

• Accessible information: Once published, the patent application becomes accessible to the public. It can be accessed by anyone, including competitors, researchers, and the general public.
• Research and awareness: Publication enables researchers to learn about the inventions details, aiding in further research and development in the field. It also helps in raising awareness about the inventions.

Request for examination:

Within 48 months of the filing date or the priority date, the applicant must request the examination of the patent application. If not requested within this period, the application is considered withdrawn.

 

Timeline for request:

• Deadline: Within 48 months from the filing date or priority date, the applicant must file a formal ‘’ Request for examination’’
• Failure to request: If the examination request isn’t made within this timeframe, the application is considered withdrawn.

Filing the request:

• Formal procedure: The applicants submits form 18 along with the required fees to the Indian patent office (IPO) to request examination.
• Fee Payment: The request must be accompanied by the prescribed examination fees.

Examination:

An examiner at the IPO conducts a substantive examination of the patent application. This involves assessing the inventions novelty, inventive step, and industrial applicability compared to prior art. the examiner issues an examination report detailing objections. If any.

Examination Process:

 

• Examination By the patent office: A patent examiner reviews the application to assess novelty, inventive step, industrial applicability, and whether it meets the patentability criteria as per the Indian patent act.
• First Examination report (FER): The examiner issues a first examination report outlining objections, if any, against the claims made in the application.

Responses to examination report:

The applicant has an opportunity to respond to the examination report within a stipulated timeframe (usually six months) by addressing objections, amending claims, providing additional information, or arguments to support patentability.

Responding to an examination report (ER) during the patent examination process in india is a crucial step for applicants.

• Review the report: Carefully read the examination report issued by the patent examiner. understand the objections and reasons for any rejections or objections raised against the patent application.
• Adress objections: Identify and address each objection raised by the examiner. This may involve amending claims, providing clarification, or submitting additional evidence to support the patentability of the invention.
• Amend claims: If required, modify the claims to overcome objections related to novelty, inventive step, or clarity. Amendments should still again with the invention disclosed in the original application.

 

Hearing if necessary:

In case of disagreements or further clarifications needed, a hearing with the examiner can be requested by the applicant.

In the patent examination process in india, a hearing may be scheduled if further discussion or clarification is needed after the applicant’s responses to the examination report (ER).

When is a hearing scheduled?

• Contentious Issues: If the examiner finds that certain objections or aspects of the application remain unresolved even after the applicant’s response, a hearing may be scheduled.
• Complex cases: In cases where the examiner requires additional clarification or where the application involves intricate technical or legal matters, a hearing might be necessary.
• Clarification: The primary purpose is to allow the applicant and the patent examiner to discuss and clarify any outstanding issues or concerns regarding the patent application.
• Resolution: The hearing aims to facilitate a resolution by providing an opportunity for both parties to present their arguments, amendments, or evidence in support of the patentability of the invention.

 

Amendments and Arguments: 

The applicant may need to make amendments to the application and provide arguments to convince the examiner regarding the patentability of the invention.

Amendments

There are two types of amendments during the patent examination process,

• Voluntary amendments: These are changes proposed by the patent applicant during the examination process to clarify, correct or modify the patent application.
• Mandatory amendments: Sometimes, the patent office may request specific amendments to the application to meet the patentability criteria.

There are many reasons for amendments in the patent examination process in india

• Clarity: Amendments might be made to ensure the claims and description are clear and concise.
• Patentability: To overcome objections raised by the examiner regarding novelty, inventive step, or industrial applicability.
• Support: Ensuring that the amendments find support within the original disclosure of the patent application.

 

Arguments:

Response to examination reports:

• After the examination of the patent application, the patent office issues an examination report citing objections.

• The applicants needs to respond to these objections raised by the examiner within the stipulated timeframe.

Content of arguments:

• The applicant needs to present arguments supported by legal and technical reasoning to overcome the objections raised in the examination report.

• This may involve providing clarifications, presenting case laws, or scientific evidence to support the patentability of the creation.

Decisions: 

Based on the response and arguments presented, the examiner issues a final decision either granting the patent or maintaining the rejection, If granted, the patent is published in the Gazette of india.

Publication of granted patent:

Upon grant, the patent is published, and the applicant is issued a patent certificate.

• Publication in the patent gazette: The details of the granted patent, including the patent gazette by the indian patent office (IPO).

• Timing of publication: Typically, the granted patent is published within a few weeks or months after the grant date.

• Public disclosure: Publication of granted patents facilitates the dissemination of technological advancements and ensures transparency by disclosing patented inventions to the public.

• Legal effect: Once published, the granted patent confers exclusive rights to the patent holder as per the terms and conditions outlined in the granted patent document.

• Opposition period: After publication, there is a window during which third parties can file the post- grant opposition against the granted patent within one year from the date of publications.

• Enforcement: The patent holder can enforce their rights against infringement after publication, seeking legal remedies for any unauthorized use of their patented invention.

Post grant opposition:

After the patent is granted, there’s a provision for third parties to oppose the granted patent within a specified period (within one year from the date of publication grant).

• Timeframe: The post grant opposition window opens within one year from the date of publication of the granted patent in the patent gazette by the indian patent office (IPO).
• Eligibility: Any person interested can file a post grant opposition, challenging the validity of the granted patent.
• Invalid grounds: Opposition can be based on various, including lack of novelty, inventive step, industrial applicability, insufficiency of disclosure, or that the invention is not patentable subject matter as per the patents act.
• Prior art and evidence: Opponent often rely on prior art references or evidence to support their claims of why the patent should not have been granted.
• Filing the opposition: The opposition is filed with the IPO, providing detailed reasons and evidence supporting the opposition grounds.
• Notice to patent holder: The IPO may conduct hearings or proceedings to consider arguments from both parties (Opponent and patent holder) and review evidence before making a decision.
• Hearing or proceedings: The IPO may conduct hearings or proceedings to consider arguments from both parties (Opponent and patent holder) and review evidence before making a decision.
• Decision by IPO: Based on the submissions, evidence, and arguments presented by both parties, the IPO decides whether to revoke the patent or maintain its validity.

 

Common Issues:

• Objections on novelty or prior art: Examiner finds similar prior art references that could challenge the novelty of the invention.

• Insufficient Description or clarity: The application lacks clarity or does not sufficiently describe the invention, making it difficult to ascertain its scope or implementation.

• Lack of inventive step (Non- Obviousness): Examiner raises concerns regarding the invention’s, making it difficult to ascertain its scope or implementation.

Solutions:

• Amendments to claims: Modify claims to differentiate the invention from prior art, emphasizing unique features or aspects that distinguish it and strengthen its novelty.

• Providing Technical arguments: Present detailed technical arguments. backed by evidence or expert opinions, demonstrating how the invention is non- obvious compared to prior art.

• Enhancing description and drawings: Improve the description and drawings to provide clearer and more detailed explanations of the invention’s working, enabling better understanding and assessment of patentability.

Conclusions:

The patent examination process in india is a structured journey that begins with filing and progresses through examination, responses, and potential hearings or further correspondence, its culmination involves the grant or refusal of a patent, marking the official acknowledgment of an invention’s novelty, inventive step, and industrial applicability. Successful navigation of this process demands meticulous attention to examiner objections, timelines. the publication of granted patents and the provision for post- grant opposition emphasize the commitment to transparency and fairness in the patent system, ensuring that patents granted align with the standards of innovation and benefit society by fostering technological advancements while safeguarding public interest.

References:-

• https://ipindia.gov.in/writereaddata/images/pdf/oatent-office-procedures.pdf
• https://www.lawrepublic.co/patent-registration-procedure-in-india/
• https://patentattorneyworldwide.com/in/step-6-response-to-objections-or-first-examination-report/
• https://www.setindiabiz.com/learning/step-by-step-procedure-for-patent-registration-in-india#:~:text=A%3A%20Patent%20prosecution%20refers%20to,their%20agent%20for%20a%20hearing
• https://lawcirca.com/examination-of-patent-application/