Patent prosecution refers to the interaction that takes place between an applicant (that can be an inventor or the inventor’s assignee) and the patent office regarding grant of a pending patent application. Prosecution is done usually to obtain a patent grant from the Patent Office and includes the steps of responding back to the examination report(s) issued by the patent office and attending to any hearing that the Patent Office may schedule along with preparing/filing the response to the hearing notice. Filing is an administrative process but, at the same time, requires careful monitoring. IPLF, through the support of Khurana & Khurana, has a full-fledged docketing team supported by the latest in-house docketing software to take care of all filing related activities, timelines therein, etc. Our software resources keep track of all timelines, including those related to prosecution and litigation to ensure that no deadline is missed.
Examination starts with the applicant filing a Request for Examination (RFE). Only thereafter the Controller of Patents transfers the patent application to a Patent Controller/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 prepares an examination report on the basis of various patentability criteria viz subject matter patentability, novelty, inventive step, industrial application, and specification enablement. The report so made is termed as First Examination Report (FER) and is sent to the applicant/ their attorney seeking elaborations/ clarifications/rebuttals etc.
Each Examination Report has to be comprehensively and persuasively replied to in order to avoid rejection of the patent application. Such replies generally include modification in claims, as long as modified claims can be backed by specifications. As can be appreciated, a thorough knowledge of various laws pertaining to patenting in the relevant jurisdiction as well as an excellent understanding of relevant technology is required to address an Examination Report. We at IPLF is fully geared up to handle various examination related matters via our well qualified and experienced Patent Attorneys.
- Drafting Responses to Examination Reports/Office Actions.
- Strategizing amendments and arguments for the patent application for maximizing impact.
- Technical Analysis of Examination Report.
- Technical Analysis of Cited Prior Arts.
After drafting and filing of a complete patent application, patent application is kept confidential by the Patent Office at least for 18 months from the date of priority or date of filing, whichever is earlier. This period of 18 months can be reduced if a request for early publication is filed.
After receiving the Request for Examination filed by the Patent Applicant or by any other interested person, the Patent Office issues an Examination Report to the Patent Applicant, to which the Patent Applicant has to satisfactorily reply and put the application in the condition of allowance (of the patent) within Six (6) Month from the date of examination report.
After considering replies to the Examination Reports and reply to the hearing notice (if a hearing is held), the Patent Office disposes off/decides on the patent application. Patent Attorneys at IPLF, through the support of Khurana & Khurana, regularly appear before the Patent Office for such hearings to put forward our client’s submissions most effectively.
A patent application can be opposed before and after the grant. Pre-grant opposition can be filed by any person, whereas post-grant opposition and revocation proceedings can be filed by any interested person. Similar competencies as an attending to Examination report and Hearing as elaborated above are required and our Patent Attorneys are very well-experienced in all Opposition related matters as well.
- Power of Authority
- Documents as filed during the application
1. Why is an applicant required to file Request for Examination in India?
The process of examination is not an automatic process like publication, and the Applicant is required to file a request for initiating the process of examination. After receiving the Request for Examination (RFE), the patent application is then transferred by the Controller to the patent examiner. An Applicant is required to file a Request for Examination within 48 months from the date of priority or filing whichever is earlier.
2. Who can file a Request for Examination?
A request for Examination may be filed by:
- The applicant of the patent application; or
- Any other interested person.
3. What is the Process for filing the Request for Examination?
The Request for Examination is filed by filing Form 18. If the person who is filing a request for examination is a third party, he has to submit appropriate evidence of his interest in the concerned patent application along with the Form. In addition to filing Form 18, and paying the prescribed fees, the following details are required to be submitted:
- Details of the patent applicant or other interested persons.
- Application Number of the patent application.
- Title, Date of filing and publication date of the patent application.
4. When can a Request for Express Examination of patent application be filed in India?
The Request for Express Examination of the patent application can be made only in respect of PCT national phase application filed in India. An applicant is required to make the request for express examination before the expiry of 31 months from the earliest priority application Date.
5. Is there any provision for Expedited Examination of patent application in India?
Yes, an applicant may file a Request for Expedited Examination of patent application to the Indian Patent Office. It should be accompanied by a request for publication except in cases where the patent application has already been published or the request for publication of the patent application has already been filed. The applications in respect of which a request for expedited examination has been filed will be allotted to an examiner sooner than the application in respect of which normal examination request is filed. The Request for Expedited Examination is filed to accelerate the process of examination.
6. Is it possible to convert an ordinary Request for Examination into a Request for Expedited Examination?
Yes, the same can be done by paying additional fees.
7. Is the Request for Publication mandatory?
No, it is an automatic process i.e. the inventor/applicant does not have to request a patent office to publish the patent application. Patent office, after eighteen months from the date of filing of application or the date of priority of the application, whichever is earlier, publishes the patent application.
8. What is prosecution history?
A patent application goes through a review process at the patent office where the application is filed. Patent examiners at the patent office review the merit of the case by reviewing relevant prior art and send examination reports, also referred to as office actions. The most common office action is a rejection where the examiner cites close prior art in rejecting the patentability of the invention covered by the patent application. The patent attorney or patent agent representing the inventors must review the office action and prepare a detailed response including amendments to the application and any necessary arguments to rebut the claims of Examiner.
9. What is an invention disclosure form?
An invention disclosure form is a questionnaire format that allows a patent practitioner to collect necessary information from inventors and/or applicants to be able to conduct a patent search, draft a patent application, and file the patent application.
Invention disclosure typically form includes questions relating to technical details of the invention, the information about inventors and applicants, the information regarding government involvement in developing the invention, information regarding previous disclosure or any planned disclosure of the invention, countries of interest for protecting the invention and so on.
Typically, questions in an invention disclosure form are structured so as to obtain information in a format that will be useful for practitioners to advise the right strategy for the patent application, and useful in preparing a strong patent application.
10. When can I file the pre-grant opposition?
A pre-grant opposition may be filed any time after the publication of a patent application until the grant of the application.
11. When can I file for post-grant opposition?
A Notice of Opposition against the grant of Patent can be filed anytime within twelve (12) months from the date of publication of the grant of the patent at the appropriate Office.
12. What do you mean by patent opposition?
Patent opposition refers to the act of providing supporting material to reject a patent application. Indian patent law allows two kinds of patent oppositions which include pre-grant patent opposition and post-grant patent opposition. Under pre-grant opposition, any person can represent for opposition to the Indian Patent Office, against the grant of a patent after the application for a patent has been published, but a patent has not been granted. A post-grant opposition may be filed by any interested person within 12 months from the date of publication of the patent grant.
13. Who can file for patent opposition?
Indian patent law allows two kinds of patent oppositions which include pre-grant patent opposition and post-grant patent opposition. Under pre-grant opposition, any person can represent for opposition to the Indian Patent Office, against the grant of a patent after the application for a patent has been published, but a patent has not been granted. A post-grant opposition may be filed by any interested person within 12 months from the date of publication of the patent grant.
14. Is there any provision for Early Publication?
Yes, a request for early publication can be filed. Once requested, patent application gets published within one month of such request if application was accompanied by complete specification.
15. Is provision for Expedited Examination available?
Yes. Request for expedited examination can be made by the applicant if the applicant is a Start-up, or if the applicant is a female, or if the applicant is a Govt. supported Institution, or if it has chosen India as International Searching Authority (ISA) or International Preliminary Examining Authority (IPEA) in its corresponding international patent application.