In the National Phase of the PCT Application there is no option for the applicant to automatically avail the examination of the Application. The Patent Application will only be examined only when the applicant or any other interested person makes a request for such an examination. It was the amendment of Patent Rules in 2016 that brought about this change wherein the option for an expedited examination was introduced when India was recognized as a competent International Search Authority and International Preliminary Examination for the PCT Applications.
In this blog we will be delving into what an Expedited Examination procedure is, the legal provision that aids in the process, the forms to be filled and the documents to be attached therein among other aspects of the Examination procedure in the PCT National phase.
Expedited Examination: What is it?
A patent application under the PCT in the national phase is examined only when the applicant or any other interested person makes a request for such examination in the prescribed manner which will be dealt with in the forthcoming sections within 31 months from the date of priority of the first mentioned application (if applicable) or from the date of filing of the patent application, whichever is earlier.
An important fact to be noted is that the examination of the application is done only after the publication of the patent application; irrespective of when the request for examination is filed. A patent application is usually published after 18 months from the earliest priority date (Section 11A(1) of Indian Patents Act, 1970 r/w Rule 24 of Patents Rules, 2003).
But the catch is here. If a request for early publication is filed under Rule 24A through Form 9 then the application is published within one month of making such request. Hence, requests for expedited examination may be filed after the patent application is published as a consequence of an early publication request.
Eligibility criteria for the filing of an expedited examination for the PCT Application includes the following:
- The applicant has filed a PCT application and selected India as an ISA or IPEA in a PCT Application.
- The applicant is one of the following – a start-up, or a small entity, or a female natural person;
- The applicant can also be a government or a similar entity
- The applicant is eligible for processing a PCT Application as per the agreement between the IPO and another participating patent office.
Procedure
It is possible to seek express examination for PCT national phase applications filed in India. In the case of national phase applications, the evaluation of the application will only occur once 31 months have passed after the priority date.
Occasionally, applicants may desire to submit a National Phase application in India well before the 31-month limit. If the applicant wants the patent office to examine their application well before the 31-month deadline, they can submit a request for expedited examination of the patent application using Form 18 under Rule 20(4)(ii). The purpose of an express request for examination is to prompt the Indian Patent Office to review the national phase application prior to the 31-month deadline.
Eligible applicants can submit a request for accelerated examination using Form 18 A, as per Rule 24C. This request asks the Indian Patent Office to speed up the inspection process for the patent application. In order to request accelerated inspection, a submission for publication on Form 9 must be included, unless the patent application has already been published.
Step 1: upon the application for expedited examination filed as under Form 18A, the controller assigns the application to an examiner. This takes place within 1 month and not exceeding 2 months from the date of filing the form.
Step 2: The Examiner submits the examination report to the controller within one month of assignment.
Step 3: The Controller issues the order of First Statement of Objection within 15 days of the examination report submission.
Step 4: The Controller will issue the FSO with other documents if required to the applicant or the authorized agent. This process takes place within 6 months.
Step 5: The Applicant files one or more replies to the FSO and the same is addressed to the Controller. The said replies are to be filed within 3 months from the date of last reply from the applicant to the FSO or 3 months from the last date for the applicant to reply to the FSO whichever is earlier.
Form and Requirements
Form 9 : Request for publication
- Name, Address and Nationality of the Applicants
- Signatures of the applicant or the authorized registered patent agent
- Name of the Natural person who has signed
- To be addressed to the Controller of the Patent Office
Form 18A: Request for Expedited Examination of Application for Patent
- Name of the Applicant
- Patent No. and Name of the invention
- Choose the grounds applicable for the request of expedited examination
- Mandatory documents submission as evidence of eligibility for availing expedited examination on the grounds
- India has been indicated as the competent ISA in the corresponding international application: Relevant ISA number issued by ISA, India
- India has been elected as an IPEA in the corresponding international application: Relevant IPEA number issued by IPEA, India
- Start-up: The certificate of recognition as a startup from Department for Promotion of Industry and Internal Trade (Indian applicant) and in case of a foreign entity, any document as evidence of eligibility.
- Small entity: Evidence of registration under the Micro, Small and Medium Enterprises Act, 2006 (27 of 2006) [Indian Applicant] and any document as evidence of eligibility (Foreign entity)
- natural person; natural persons as joint applicants or at least one applicant is female: Photo identity card of female applicant issued by competent authority as evidence of eligibility
- Department of the Government: Any document that evidences the eligibility
- Institution established by a Central, Provincial or State Act, which is owned or controlled by the Government: Any document that evidences the eligibility
- Institution wholly or substantially financed by the Government: Any document that evidences the eligibility
- Government company as defined in clause (45) of section 2 of the Companies Act, 2013: Any document that evidences the eligibility
- A sector which has been notified by the Central Government, on the basis of a request from the head of a department of the Central Government: Notification from the Central Government and documents as maybe required by the Controller
- An arrangement for processing a patent application pursuant to an agreement between Indian Patent Office and a foreign Patent Office: Declarations and documents as maybe required by the Controller.
Conclusion
To accelerate the examination of a National Phase PCT application in India, applicants must request an examination within 31 months of the earliest priority date. The 2016 amendment to the Patent Rules introduced an expedited examination option, available for applications where India is designated as the International Search Authority or International Preliminary Examination Authority. Eligible applicants, including startups, small entities, female applicants, and government entities, can file for expedited examination using Form 18A. Early publication requests via Form 9 can further hasten the process, ensuring timely patent application reviews by the Indian Patent Office.
*Written by Gayathri S, Legal Intern @Intepat
