Patent Examination in India

Missing the deadline for filing a request for examination can prove fatal for the patent application since it is apparent that missing the deadline would eventually kill the patent application. If the request for examination is made within the prescribed time limit, the Indian Patent office takes up the application for examination.

The normal Requests for Patent Examination can be filed within 48 months from the priority date (date of first filing of the invention, provisional patent, or complete patent / non-provisional patent) or date of filing of the patent application, whichever is earlier. If the patent examination request is not filed within the specified time limit, the patent application shall be treated as withdrawn by the Indian Patent Office. Under the Indian Patent Act 1970, filing a request for a patent examination per the prescribed timeline is mandatory.

As Per the Patent Act 1970, a formal patent examination process shall commence only after submitting such a request.

Types of Patent Examination

An express request for examination before the expiry of 31 months can be made concerning the applications filed under the Patent Cooperation Treaty (PCT), known as National Phase applications, by payment of the official fee.

There is another provision of expedited examination, in which the patent applications requested for expedited examination will be put in a queue separate from the patent applications for ordinary examination.

Ordinarily, within one month from the date of a request for examination, the Controller is required to refer the application to an examiner. Further, the examiner must prepare the Examination Report within one month, but not exceeding three months from the Controller’s date of reference for such examination.

On the other hand, upon a request for an expedited examination, the examiner will be required to give the Examination Report within one month, not exceeding two months from the date of reference for examination by the Controller.

The provision of expedited examination is available for startups and applicants who have included India in their PCT application as an International Searching Authority (ISA) or International Preliminary Examining Authority (IPEA). Therefore, selecting India as ISA can be beneficial to expedite the grant process.

An early publication request can be made along with prescribed fees if one does want to wait till the expiry 18 months from the date of filing for publishing the patent application.

Generally, the patent application is published within a month after a request for early publication.

Why do I have to file a request for an examination in India?

The process of examination starts with filing a request for examination. Unlike publication, this is not an automatic process. Only after receiving the Request for Examination (RFE), the Controller transfers the patent application to the patent examiner. The request for examination has to be made within 48 months from the date of priority or filing, whichever is earlier.

The patent examiner examines the patent application and prepares the examination report based on various patentability criteria:

1) Patentable subject matter;
2) Novelty;
3) Inventive step;
4) Industrial application; and
5) Specification Enablement

Other responsibilities of the patent examiner for the examination of a patent application include:

a) To conduct a comprehensive investigation of an application and prepare a report under section 12;
b) Conducting an inter-office search covering all four patent offices;
c) To raise objections rather than comment on missing forms.
d) The Examiner’s report will: Be a permanent part of a file’s note sheet and non-editable at the Controller’s end; Include a draft summary/gist of objections-this gist editable at the Controller’s end; Include any amendments to the complete specification;

Who can file the request for examination in India, and How?

In India, a request for patent examination (RFE) may be filed by:

-the patent applicant of the patent application or
-by any other interested person

The request for an Examination is filed by filing Form 18. The interested person (third party) must submit appropriate evidence of his interest in the patent application.

Form-18 has to be filed, specifying the details of the patent applicant or other interested people, application number, title, date of filing, and publication date, along with the prescribed fees.

It is very significant to follow the patent office timelines. Otherwise, it is advisable to file the request for examination while filing the patent application.

For a national phase application /PCT application entering India, the applicant can file an express request for a patent examination before the expiry of 31 months.

What is the First Examination Report under the Patent Act?

Once the patent application is examined, the Patent office issues an examination report to the patent application, which is generally known as First Examination Report (FER). The examiner submits this to the Controller. It usually contains prior arts similar to the claimed invention. Prior art means existing documents before the filing date, identical to the claimed invention. It need not be commercially available; it is evidence proving that the claimed invention is already known.

The Applicant should reply to the objections (if any) and place the application for a grant within six months from the FER issue’s date (First Examination Report). In this case, if the reply to the examination report is not made within the prescribed time limit of six months, the application is also deemed to be abandoned.

If the patent application is found to be for the grant, the patent is granted if a third party has no pre-grant opposition filed or pending.

What fees do I need to pay to request a patent examination?

The prescribed fee for e-filing is given below:

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