Patent prosecution is a process where applicants and/or their representatives interact with the Patent Office to get a grant for their patent application. Since this process is time intensive and often includes negotiations with patent examiners, it becomes imperative to understand the basic mechanism of the patent prosecution system for a smoother journey.

The following article discusses the fundamentals of patent prosecution for applicants seeking patent protection in India.

The Patent Prosecution System in India

Every patent prosecution begins with the filing of a patent application before the Indian Patent Office. Post filing, the office verifies the documents to confirm the completeness of all the requirements. Thereafter, the application is sent for a technical examination to check whether the invention meets the three basic requirements of patentability, i.e., novelty, inventiveness, and industrial applicability. During this examination stage, the examiner having expertise in the particular technical domain judiciously examines the application. In case the examiner has any objection(s) in terms of patentability or formal requirements in the application, he/she incorporates those objections in an examination report and sends it to the applicants or their representatives for submitting their response within the stipulated time. Given below is the timeline of patent prosecution process in India.

Total time: Under the expedited examination process, patent applications are now being granted within a period of 8 months to 2 years instead of 3-6 years.

Now that you have an idea about the overall prosecution process, let us discuss the phases of patent prosecution.

Patent prosecution is divided into two phases (Fig.2). The first phase is pre-grant prosecution that involves the examination process conducted by the Patent Office. This includes the issuance of an examination report by the Office, as well as drafting and filing a response to that report within the prescribed time limit. If the examiner is not satisfied with the arguments submitted in the response, then he/she issues a hearing notice. Pre-grant oppositions after which the application proceeds for a grant or rejection are also included in this phase. The second phase is post-grant prosecution that takes place after the grant of a patent. This may include post-grant oppositions and post-grant amendments.

Pre-Grant Prosecution Stages

1. Filing and Publication

A patent application must be filed with the Indian Patent Office to get a patent. This application can be a provisional or a non-provisional/complete application. In India, the Patent Office functions from four jurisdictions viz. Kolkata, Delhi, Chennai, and Mumbai. The application must be filed at the appropriate jurisdiction which is decided based on the following requirements:

• Applicant’s place of residence, domicile, or place of business (first applicant in case of joint applicants) or,
• The place from where an invention originated or,
• In case of a foreign applicant, the address for service in India given by the applicant.

Once the non-provisional application is carefully drafted and filed with the Patent Office with all the necessary documents along with the prescribed fees, the Office assigns a unique patent application number and filing date or priority date to the application for reference and record purposes. Such first-filed applications are also known as a “priority application” and its date of filing is referred to as “priority date”. Usually, after the expiry of 18 months from the filing date or priority date, the patent application gets published in the Official Gazette of India and comes into the public domain. To fast-track the overall process, a request for publication (Form 9) can be filed any time after filing the application with the Patent Office. The application gets published within one month from the date of filing such a request. The applicant gets all the patent rights from the date of publication of a patent application. However, these rights can only be claimed if the application is ultimately granted into a patent and only after the final grant.

2. Search and Examination

This is the most important step of the prosecution process that decides the fate of a patent application. During this stage, the Patent Office reviews all the formal documents, and the patent examiners conduct a worldwide patentability search based on the key features of the invention to check for any closest prior art that is relevant to the application in question. Based on these prior arts, the examiner decides whether the invention for which a patent application has been filed is novel, inventive, and capable of industrial application. Further, the examiner also looks for those inventions that are strictly excluded from patentability and are known as “non-patentable inventions”.  Ordinarily, the examination stage takes 3-6 years. But for some applicants, this process can be accelerated to reduce the time to 8 months to 2 years provided they file a request for expedited examination of their application. For filing the expedited examination request, the application needs to be already published. If it is not published, then a request for early publication must be filed. The eligibility criteria for filing the expedited examination request include:

• Applicant has chosen India as an International Searching Authority (ISA) or as an International Preliminary Examining Authority (IPEA) in a corresponding PCT application.
• Applicant is a Start-up.
• Applicant is a small-entity.
• Applicant is a female or in case of joint applicants where all the applicants are natural person, at least one of the applicants is female.
• Applicant is a department of the Government, or an institution owned or controlled or financed by the Government.
• Applicant is eligible under a bilateral agreement between IPO and a foreign patent office.
• Applicant is an eligible educational institution which is owned or controlled by the Government.

3. Issuance of Examination Report

If the examiner finds that the invention lacks novelty or inventiveness in relation to any prior art, or it falls within the ambit of “non-patentable inventions”, then he/she enlists such objections in an examination report and sends it to the applicant or their representatives. The applicant must overcome every objection cited in the report within the prescribed time to proceed further with the process. If the applicant fails to submit his/her response within the time limit, then the application gets abandoned.

4. Response to Examination Report

It is important to note that sometimes an applicant may decide to modify or amend the specification, claims, or drawings. Such modifications, however, should remain within the scope of the original application, and the addition of any new subject matter should be strictly avoided. After receiving the response, the examiner reviews all the arguments or amendments that the applicant has submitted and proceeds to the next step.

5. Subsequent Examination Reports or Hearing Before the Examiner

If the examiner is satisfied with the arguments or amendments, then he/she proceeds by issuing a patent certificate to the applicant. But if the examiner is unsatisfied with the applicant’s response to the examination report, then he/she can issue a second examination report or a hearing notice to resolve the matter. The applicant gets another opportunity to submit his/her response to the second examination report or appear for a hearing before the examiner and file a hearing submission within the prescribed time.

6. Pre-Grant Opposition

The search and examination mainly take place between the examiner and the applicant. However, in some jurisdictions such as India, any third party called “the opponent” can oppose the grant of a patent based on certain grounds. This can be done immediately after the publication of the application but before the patent grant. Under Section 25 (1) of the Patents Act, a pre-grant opposition can be filed by “any person” without paying the official filing fees. The proceeding of a pre-grant opposition involves the filing of a statement, reply, and supporting evidence by both parties. Based on the merits of the pre-grant opposition, the examiner sends a notice to the applicant for his/her response to the opposition. The parties usually request a hearing before the examiner before he/she passes any order or decision for that particular application.

7. Decision of the Examiner

The examiner once again reviews the documents submitted by the applicant and makes a final decision of whether to proceed with the grant or refusal. In case a pre-grant opposition has been filed against a patent application, then a hearing notice is issued to both the applicant and the opponent before passing the final order.

Sometimes, the applicant decides to opt for international protection via the Convention or Patent Cooperation Treaty (PCT) route. In such cases, the applicant must file a PCT or convention application within 12 months after filing the first application or the priority application and then prosecute his/her applications in different countries independently as each country has different patent laws. Through the PCT or Convention route, an applicant can also file a patent application directly in foreign countries (without filing in India) but has to take a written permission or Foreign Filing Licence (FFL) from their local patent office. Since this process can be a tricky, taking assistance from patent experts or legal counsels can be extremely beneficial in increasing the likelihood of getting a patent.

Post-Grant Prosecution Stages

1. Post-Grant Opposition

In India, under Section 25 (2) of the Patents Act, a post-grant opposition can be filed after the grant of a patent but within one year from the date of publication of the grant of a patent based on any of the grounds described under the said section. Unlike pre-grant opposition, post-grant opposition can be filed by a “person interested” only and he/she must pay the prescribed official fees based on the entity status. Another difference between the two oppositions lies in the formation of an Opposition Board at the Patent Office to examine the documents filed by the opponent and the patentee, and in furnishing a recommendation in the post-grant opposition. Subsequently, the examiner issues a hearing notice to both the parties and decides whether the patent can be maintained, revoked, or amended.

2. Post-Grant Amendments

Section 57 and Section 59 of the Patents Act provides the provision of both pre-grant and post-grant amendments. Section 59 states that the proposed amendments must meet the following requirements:

• Amendments should be by way of correction, disclaimer, or explanation.
• Amendments must be made for the incorporation of a fact.
• Amendments to the specification or claims should not go beyond the subject matter of originally filed specification or claims, respectively.

Such amendments may include the following details:

• Amendments in name, address, as well as the address for service.
• Amendments in the complete specification including description, claims, and priority date of a claim.

Additionally, Section 78 empowers the examiner to correct any clerical error, which may either be requested by any person interested or even without such a request.

Conclusion

It is clear from the above information that patent prosecution decides the fate of a patent application. Thus, it is important to have a strong legal team by your side that assists you and represents your application at each step because even the slightest negligence may result in rejection or abandonment of the application.

In case you need help for patent filing and prosecution in India, Sagacious IP has got you covered. Our India Patent Filing and Prosecution service enables you to secure your invention by leveraging a strong patent draft prepared by skilled patent attorneys. We have a team of qualified registered Indian patent agents and patent attorneys with a technical background in domains such as software, electronics, mechanical engineering, and life sciences, who can help you make the right decisions. Click here to know more about this service.

– Richa Chaudhary (Intellectual Property Prosecution) and the Editorial Team

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