4 Tips to Ensure Faster Grant of Patent Application – India

March 13, 2023
grant of a patent application

By Aastha Suri and Renu Bala Rampal

Patent is a legal right granted to the owner of an invention, excluding others from making, selling, and using his invention for a limited time period. The term of a patent is 20 years from the date of filing of the patent application.

The patent process involves filing of the patent application with the Indian Patent Office (IPO). The patent application once filed gets published after the expiry of 18 months from the date of filing of the patent application, or priority date, whichever is earlier. A request for examination (RFE) shall be filed with the IPO within 48 months from the date of filing of earliest patent application, otherwise the application shall construed to be abandoned. After filing the RFE, the IPO examines the patent application in the order in which such requests were filed. The entire process from filing of the patent application till grant of the patent may take years, and thus it turns out to be a time-consuming process. In India, grant of a patent application usually takes 3-6 years from the date of filing of the application.[1]

Although the grant of the patent application majorly depends on the three factors i.e. novelty, newness, and non-obviousness of the invention, one can opt for a number of strategies so as to accelerate the entire process to reach upto the stage of the grant of the patent application.

Strategies to ensure Faster grant of Patent Application

There are several strategies that may help in faster grant of the patent application. The four major strategies are described herein detail:

  1. Direct/Early Filing of the complete specification
    An applicant should consider direct filing of the complete specification instead of filing provisional specification if the invention is complete ready/developed as it may otherwise slow down the further stages and ultimately grant of the patent. On the contrary, in case the applicant wishes to file provisional specification first, in that case the complete specification is required to be filed within 12 months from the date of filing of the provisional specification. However, the filing of complete specification filed in pursuance of the provisional specification should be as early as, possible as it may accelerate the entire patent process upto the grant of the patent application. As we are well aware that only complete specification gets published and not the provisional specification, direct or early filing of complete specification may lead to early publication of the application (i.e. on expiry of 18 months from the date of filing of the patent application, or priority date, whichever is earlier), which may further accelerate the examination of the application as the examination of the application requires the application to be published. Therefore, direct/ early filing of complete specification may accelerate the entire patent process and, thus the grant of the patent application.
  2. Early Publication
    Generally, every patent application gets published on expiry of 18 months from the date of filing of the patent application, or priority date, whichever is earlier. However, an applicant can speed up the publication of patent application by filing Form 9on the same date of filing of the patent application, which may further accelerate the patent prosecution process. After filing Form-9, the patent application gets published within a month of making the request for early publication in Form-9, which is stated in Section 11(A) (2) and Rule 24 of the Patent Rules. One of the primary benefit of the filing early publication is faster examination of the patent application as request for examination can only be filed once the application is published. Instead of waiting for the expiry of 18 months for the examination of the patent application, one can file early publication for faster examination of the patent application.
  3. Request for examination AND/OR Expedited Examination
    Another strategy ensuring faster grant of the patent application involves filing of Form-18 i.e. request for examination on the same day of filing of the complete specification. The examiner is required to make the report within one month, which is extendable upto three months from the date of reference of the application to the examiner by the Controller (as per sub-section (2) of section 12). Further, the Controller disposes off the report of the examiner within one month from the date of the receipt of such report by the Controller and the Controller issues the first statement of objections to the applicant/agent within one month from the date of disposal of the report of examiner by the Controller.[2] Hence, early filing of Form-18 may accelerate the examination of the patent application. Another strategy for quick examination of the patent application involves filing of Form-18A i.e. expedited examination only if the applicant is eligible for the expedited examination.

    The examiner is required to make the report within one month, extendable upto two months from the date of reference of the application to him by the Controller (as per sub-section (2) of section 12). Further, the Controller disposes of the report of the examiner within one month from the date of receipt of such report by the Controller and the Controller issues the first statement of objections to the applicant/agent within fifteen days from the date of disposal of the report of examiner by the Controller.In case, the application is not published then the request for early publication shall be accompanied by the request for expedited examination. A request for examination can also be converted into request for expedited examination by paying the required fee.[3]

  4. Eligibility criteria for filing expedited examination
    The following categories of applicants can request for an expedited examination as per the amended patent rules:

    • Start-up;
    • Small Entity
    • Female applicant (in case of joint applicants, at least one of the applicants must be female
    • Government undertaking or government-owned, financed, or established authority/company
    • Any application whereby India has been chosen as the appropriate International Searching Authority or International Preliminary Examination Authority; and
    • Educational Institution
  5. Early Filing of Response to Office Actions
    The early filing of the response to office actions including First Examination Report (FER) and Hearing accelerates the entire process of the grant of the patent application. As the Controller issues the FER, the applicant is provided with a time period of six months from the date of the issuance of the FER to put the application in order of the grant. A further extension of three months can be requested by making an application through Form 4 (before the expiry of 6 months). However, the applicant should file the response to FER as early as possible, preferably within one month from the date of issuance of the FER to the applicant/agent. If the application is found to be in order for grant, the patent is granted. However, if the Controller is not satisfied with the FER response, he may offer a hearing to give applicant a chance of being heard before taking any decision. The applicant is required to file a written submission with any proposed amendments within fifteen days from the date of the hearing. In order to ensure faster grant of the patent application or early decision of the Controller, the applicant should file the written submission as early as possible for the Controller to review and decide upon the application. After hearing the applicant and reviewing the written submissions, the Controller may either refuse or grant the patent application.

[1] https://sagaciousresearch.com/blog/fast-tracking-patent-grant-in-india-pros-and-cons/

[2] https://ipindia.gov.in/writereaddata/Portal/ev/rules/pr24.html

[3] https://www.intepat.com/blog/patent-grant-india-1-year/

Related Posts

Five Steps to Turn your Idea into a Patent

For more information please contact us at : info@ssrana.com