Accelerated Patent Examination for an Early Grant – A Case Study

One of the most important aspects of an invention is perhaps the ability to protect it from unauthorised usage. Intellectual Property Rights play a key role in safeguarding this process. A patent, for example, grants a patentee the right to exclude others from exploiting his/her invention for a certain time period. Besides that, it also ensures exclusivity by prohibiting others from using, making, selling or importing the patented invention without prior authorization. Hence, a patent is of utmost importance to applicants – (natural persons, start-ups, small and large entities, educational institutions, etc.) as it protects their right to invention, while also saving cost and effort invested in developing an invention.

This article explains two routes for receiving a patent grant, i.e., normal route and fast-track route. It also elaborates on a step-wise process to be followed for two routes and how to receive a patent grant in a short time via the fast-track route in India.

Time Required for a Patent Application to Receive Grant

A patent process is usually a time-consuming process and involves multiple steps from the filing stage-to-the-grant stage. As per the Patents Act, there is no fixed timeline for a patent application to get granted. A patent application usually takes 2-6 years to get granted, depending on various factors, such as, promptness of the Examiner and the Applicant. Moreover, the time for the patent application to receive grant also depends on the prosecution process of the application. The Indian Patent law provides two routes for patent grant where one route is a normal route and the other is a fast-track route. The time for a patent application to get granted via the normal route is explained below:

Steps Involved in Normal Route for a Patent Grant

Figure 1: 8-Steps to Receive the Patent Grant in India via Normal Route

1. Filing – A patent application can be filed in a day either via the online e-filing portal or by physically visiting the Indian Patent Office. The application can be either a provisional application or a complete application depending on the invention’s stage. Filing a provisional patent application has an advantage of being filed without any formal patent claim. Moreover, filing provisional application helps in securing a priority date for the invention – although a provisional patent application is never published.

2. Publication – The patent application gets published after a period of 18 months from the date of filing or priority, whichever is earlier. Once published, the patent application is available for download by the general public. For early publication, a special request has to be made on Form-9.

3. Request for Examination (RFE) – A Request for Examination is to be filed by the applicant under 48 months from the date of filing or priority, whichever is earlier. The Patent Examiner will examine the patent application only when the RFE is filed.

4. First Examination Report (FER) – There is no specific time within which the FER is issued. The FER can be issued any time after an RFE is filed. However, a FER usually takes 1-4 years to be issued via the normal route.

5. Response to FER – FER response should be filed within 6 months from the date of issuance of the FER. The timeline for filling the FER response can be further extended up to 3 months by filing Request for Extension (Form 4).

6. Hearing Notice – In case the Examiner is not convinced with the FER response submitted by the applicant, the Examiner may issue a hearing notice. In certain cases, the Examiner may issue a subsequent examination report as well. Hearing notice includes the date of hearing which is usually after 1 month from the date of issuance of hearing notice. It should be noted that it is not necessary for a hearing notice to get issued. In certain cases, the patent application may receive grant directly after filing Response to FER.

7. Attend Hearing – Issues raised in the hearing notice are addressed during the hearing. After the hearing, a written submission is to be submitted in the patent office within 15 days from the date of hearing.

8. Grant or Refusal – The final order regarding the grant or refusal of the patent application is given at this stage. In some cases, the final order may be given directly after submitting the FER, and in other cases, the final order may be given after the written submission is presented. Overall, the process of receiving patent grant via the normal route takes 2-6 years which is a long time to wait for the applicant to apply the benefits of patent rights.

The patent office further provides the fast-track route to expedite the patent process. An applicant may opt for the fast-track route in case she/he/they (can be a company or institution as well) want to get the patent application granted quickly. However, only a limited number of patent applications are accepted for fast-track route in a year. The timeline for a patent application to get granted via the fast-track route is explained below.

Steps Involved in Fast-Track Route to Receive the Patent Grant

Figure 2:  8-Steps to Receive the Patent Grant in India via Fast-Track Route

1. Filing – Similar to the normal route, a patent application can be filed in a day via online portal or by submitting the documents by visiting the Indian Patent Office.

2. Early Publication – The patent office has a provision for filing a form for early publication (Form 9). On filing Form 9, the patent application gets published in a month from the date of filing of early publication.

3. Request for Expedited Examination – The patent office further provides a provision for requesting expedited examination of the patent application via Form 18A. The Request for Expedited Examination can be filed anytime within 48 months from the date of filing or the priority, whichever is earlier. However, there is an eligibility criterion for requesting the expedited examination.

An applicant can apply request for expedited examination if they fall under any of the criteria mentioned below:

  • The applicant chooses India as an International Searching Authority (ISA) or as an International Preliminary Examining Authority (IPEA) in a corresponding PCT application.
  • The applicant is a Start-up as per the rule 2(fb) of the Patent Rules, 2003.
  • The applicant is a small entity as per the rule 2(fa) of the Patent Rules, 2003.
  • The applicant is a female natural person.
  • The applicant is a government undertaking as per the section 2(1) (h) of the Patent Act, 1970 for Indian applicant, or is a similar entity in case of a foreign applicant.
  • The applicant is permitted under an arrangement for processing an international application pursuant to an agreement between Indian patent office with another participating patent office.

4. First Examination Report (FER) – In case of expedited examination, the FER can be issued within 6 months from the date of filing of Form 18A.

5. Response to FER – FER response should be filed in 6 months from the date of issuance of the FER. The timeline for filling the FER response can be further extended up to 3 months by filing – Request for Extension. Although the FER response can be filed within 6 months, the earlier the FER response is filed, the sooner the FER response is reviewed by the Examiner.

6. Hearing Notice – Similar to the normal route, in case the Examiner is not convinced with the FER response submitted by the applicant, the Examiner may issue a hearing notice. In certain cases, the Examiner may issue a subsequent examination report as well. Hearing notice includes the date of hearing which is usually after 1 month from the date of issue of hearing notice.

7. Attend Hearing – Issues raised in the hearing notice are addressed during the hearing. After the hearing, a written submission is to be submitted in the patent office within 15 days from the date of hearing.

8. Grant or Refusal – The final order regarding the grant or refusal of the patent application is given at this stage. In some cases, the final order may be given directly after submitting the FER, and in other cases, the final order may be given after the submission of written submission.

Case Study

One of our clients, who is a ‘startup’ approached us with an invention. They had all the details of the invention, and were looking to get a patent as soon as possible for commercializing purposes. Since the invention was at the final stage, and the client had complete details of the invention, we recommended the client to proceed with the complete application. Accordingly, we drafted the patent application, wherein we protected the invention with the claims and covered the details of the invention in the detailed specification. The application was filed on 12th May 2020.

Along with the complete application, we recommended the client to go for early publication by filing Form 9. Further, as the client was a startup and eligible for expedited examination, we suggested the client to file Form 18A for expedited examination along with the early publication form. Due to the steps followed in the Figure 2, the patent application got published in a month after the date of filing. Further, as we had filed for expedited examination, the patent application got examined and the FER was issued in 3 months, i.e., on 3rd Aug 2020.

Once the examination report was received, we focused on filing the response as soon as possible. Although there is a time period of 6 months to file the FER response (with additional 3 months extension), it is suggested to file as soon as possible to reduce the time for receiving the grant. Further, we also focused on satisfactorily overcoming all the objections raised in the FER to prevent the hearing notice from getting issued. As we had properly responded to the objections raised in the Examination Report, the application was directly issued grant certificate without going for hearing. This reduced the timeline of patent process by 2-3 months which would have been added to the process if the hearing notice would have been issued.

Conclusion

From the above article, we conclude that the fast-track process and specifically the expedited examination process has been a valuable initiative in optimizing the Indian patent process. Moreover, this initiative has encouraged the startups and small entities to file more patent applications as they don’t have to wait for long years to get to know the decision on their patent application. Further, this will also bring the Indian patent office practices at-par with the global IP practices.

Sagacious IP is one of the leading consulting and research companies in the field of Intellectual Property. It has an envious track record of serving several Fortune 500 companies, universities, investors, startups and other prominent players in the innovation ecosystem. The patent grant process usually takes 2-6 years which is quite a long period for inventors looking for faster results. Our dedicated patent filing and prosecution team has helped clients to receive patent grants in only nine months via the fast-track route. Click here to know more about our patent filing and prosecution service.

-Ronnie George (India IP Filing) and the Editorial Team

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