Patent Examination and Response to First Examination Report (FER) in India
Under the Indian Patents Act, 1970, patent applications are examined in accordance with a deferred examination system. Examination proceedings before the Indian Patent Office (IPO) are initiated only upon filing a formal request by the applicant or an interested person, in the manner prescribed by law.
Section 11B of the Patents Act, 1970 expressly provides that no patent application shall be examined unless such a request is filed within the stipulated period. Timely initiation of the examination process is therefore essential to preserve patent rights in India.
Initiating the Patent Examination Process in India
To commence examination, the applicant must file a Request for Examination (RFE) using Form 18, together with the prescribed official fee as set out in the First Schedule to the Patents Act.
The request for examination may be filed within 48 months from the earlier of the priority date or the filing date of the patent application. If the RFE is not filed within this statutory period, the patent application is deemed to be withdrawn.
First Examination Report (FER)
Upon examination of the patent application, the Indian Patent Office typically issues a First Examination Report (FER). The FER sets out the examiner’s objections and observations, which may relate to:
- Patentability requirements (novelty, inventive step, industrial applicability)
- Formal or procedural deficiencies
- Clarity, unity, or claim scope issues
The FER represents a key stage in the prosecution of a patent application in India.
Reply to Patent FER
The applicant is required to respond to the FER within six months from the date of its issuance. This response must address all objections raised and place the application in order for grant.
An extension of up to three months may be requested by filing Form 4, provided the request is made within the original six-month period. Failure to submit a complete and timely response results in the application being deemed abandoned under Indian patent law.
If the Controller is satisfied that the application meets all statutory requirements, the patent proceeds to grant and Letters Patent are issued. Where objections remain unresolved, the Controller may offer an opportunity of hearing and decide the application on its merits.
In cases where a pre-grant opposition has been filed and is pending, further prosecution steps are taken only after disposal of the opposition proceedings.
Expedited Examination of Patent Applications in India
The Patent (Amendment) Rules, 2016, effective from 16 May 2016, introduced the mechanism of Expedited Examination under Indian patent law. Expedited examination allows eligible applicants to secure examination of their patent applications on a faster timeline compared to the ordinary examination route.
Request for Expedited Examination
A request for expedited examination must be filed in Form 18A by electronic transmission, duly authenticated and accompanied by the prescribed fee. The request must be submitted within 48 months from the earlier of the priority date or the filing date of the application, in accordance with Rule 24C of the Patents Rules, 2003 (as amended).
Eligibility for Expedited Examination in India
A request for expedited examination may be filed on any of the following grounds:
- India has been indicated as the International Searching Authority (ISA) or elected as the International Preliminary Examining Authority (IPEA) in the corresponding PCT application
- The applicant qualifies as a Startup under applicable Indian regulations
- The applicant qualifies as a Small Entity
- The applicant is a natural person, or in the case of joint applicants, all applicants are natural persons, and at least one applicant is a female
- The applicant is a Government department
- The applicant is an institution established under a Central, Provincial, or State Act and is owned or controlled by the Government
- The applicant is a Government company as defined under the Companies Act, 2013
- The applicant is an institution wholly or substantially financed by the Government, as defined under applicable statutes
- The patent application relates to a sector notified by the Central Government, following public consultation
- The applicant is eligible under an arrangement for accelerated processing pursuant to an agreement between the Indian Patent Office and a foreign patent office
Patentability of applications filed under expedited examination continues to be assessed in accordance with the substantive provisions of the Indian Patents Act, 1970.
Importance of Patent Examination Strategy for Applicants
For startups, MSMEs, and foreign applicants, a clear understanding of the patent examination process in India, including FER response and expedited examination options, is central to managing prosecution timelines and aligning patent rights with commercial objectives in the Indian market.