PATENT EXAMINATION AND REPLY TO PATENT FER- INDIA
The Indian Patent Act, 1970 follows the deferred examination system. Hence, the applicant has to make request for initiation of examination proceedings with the Indian Patent Office (IPO) in the prescribed format. It is essential that the applicant files request with the IPO for examination of patent application within the prescribed limit. Section 11B of the Patents Act, 1970 in this regard states that “no application for a patent shall be examined unless the applicant or any other interested person makes a request in the prescribed manner for such examination within the prescribed period”.
How to initiate patent examination process?
To initiate the examination proceedings, the applicant is required to file a request with the IPO on Form 18 along with the fee as specified in the first schedule of the Patents Act. The request for examination can be filed within a period of 48 months from the date of priority of the application or date of filing of the application whichever is earlier. If the request is not made within the stipulated time, the application is deemed to be withdrawn by the applicant.
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First Examination Report (FER)
Once the application for patent is examined, the Patent office generally issues an examination report to the applicant. Such examination report is known as First Examination Report (FER).
Reply to Patent FER
The applicant is given six months’ period from the date of issuance of the FER to comply with the objections raised in the FER. If the applicant fails to respond to the FER within 6 months, or within an extended period of 3 months if requested in Form 4 within the prescribed period of 6 months, the application is deemed to have been abandoned.
If the application is found to be in order for grant, the patent is granted and the letters patent is issued to the applicant, else the Controller shall offer an opportunity of hearing and decide the case on merits.
However, if a pre-grant opposition is filed and pending, further action is taken after disposal of the pre-grant opposition.
Expedited or Early Examination of Patents under the Indian Patent Law
With the amendment to the Patents Rule, 2003 of the Indian Patents Act, 1970 on May 16, 2016 by Patent (amendment) rules, 2016), provision of Expedited Examination was introduced in the Patent system of India.
Meaning: An Expedited Examination is a faster process of examination of patent application than the ordinary examination.
Process: A request for Expedited Examination may be filed by an applicant, requesting the Indian Patent Office (IPO) to expedite the examination of the relevant patent application.
As per Rule 24C of the Patents Rules as amended in 2016, a request for Expedited Examination can be filed only by electronic transmission duly authenticated with the prescribed fees in Form 18A within 48 months of the date of priority of the application or the date of filing the patent application, whichever is earlier.
Who can file a Request for Expedited Examination of Patents in India?
A request for Expedited Examination of patent may be filed by the applicant on any of the following grounds, namely:
- that Indian has been indicated as the competent International Searching Authority (“ISA”) or elected as an International Preliminary Examining Authority (“IPEA”) in the corresponding international application; or
- that the applicant is a Startup; or
- that the applicant is a small entity; or
- that if the applicant is a natural person or in the case of joint applicants, all the applicants are natural persons, then the applicant or at least one of the applicants is a female; or
- that the applicant is a department of the Government; or
- that the applicant is an institution established by a Central, Provincial or State Act, which is owned or controlled by the Government; or
- that the applicant is a Government company as defined in clause (45) of section 2 of the Companies Act, 2013 (18 of 2013); or
- that the applicant is an institution wholly or substantially financed by the Government;
Explanation: – For the purpose of this clause, the term ‘substantially financed’ shall have the same meaning as in the Explanation to sub-section (1) of section 14 of the Comptroller and Auditor General’s (Duties, Powers and Conditions of Service) Act, 1971(56 of 1971); or
- that the application pertains to a sector which is notified by the Central Government on the basis of a request from the head of a department of the Central Government.:
Provided that public comments are invited before any such notification; or
- that the applicant is eligible under an arrangement for processing a patent application pursuant to an agreement between Indian Patent Office and a foreign Patent Office.
Explanation: – The patentability of patent applications filed under clause (j) above will be in accordance with the relevant provisions of the Act.”
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