An Ordinary Request for Examination of Patent Application in India<\/strong><\/p>\n\n\n\nThe request for ordinary examination of patent applications may be filed within 48 months from the earliest priority application date. The patent application undergoing the ordinary examination may take 3-6 years to receive a grant from the date of application. The ordinary request for examination can be filed by submitting Form 18 under Rule 24B(1)(i) along with a prescribed fee. Additionally, if an ordinary request for examination has been filed under Rule 24B by an eligible candidate, then such a request can be converted to the expedited request for examination under Rule 24C. This can be done using Form 18A by submitting the requisite document and paying the relevant official fee.<\/p>\n\n\n\n
Pros of the Ordinary Request for Examination:<\/strong><\/p>\n\n\n\n\n- Economical and inexpensive for the applicant(s)<\/li>\n\n\n\n
- The applicant has 48 months from the priority date to file the ordinary request<\/li>\n<\/ul>\n\n\n\n
Cons of the Ordinary Request for Examination:<\/strong><\/p>\n\n\n\n\n- Lengthy process<\/li>\n\n\n\n
- Takes more than 1 year from the filing date of the ordinary request for such applications to get examined. The same holds true for generating the first examination report because ordinary queue is assigned on such requests.<\/li>\n\n\n\n
- Takes more than 3-6 years for patent grant<\/li>\n\n\n\n
- Poses the risk of invention becoming obsolete due to slow-moving process<\/li>\n\n\n\n
- Causes huge loss to the applicant and inventors<\/li>\n<\/ul>\n\n\n\n
2. An Express Request for Examination of Patent Application in India<\/strong><\/p>\n\n\n\nIn case of the national application phase of Patent Corporation Treaty (PCT), an express request for examination, along with a prescribed fee in accordance with Article 20 (4) (ii) of the Patent Rules, 2003 (as amended), can be filed before the expiration of 31 months from the priority date. Once the express request for examination is filed, the Examiner should prepare the first examination report within one month, without exceeding three months. The express request for examination can be filed by submitting Form 18 under Rule 20(4)(ii).<\/p>\n\n\n\n
Pros of the Express Request for Examination:<\/strong><\/p>\n\n\n\n\n- Applicant receives the first examination report within 1-3 months of filing an express request<\/li>\n\n\n\n
- Applicant may receive the grant within 2-3 years<\/li>\n<\/ul>\n\n\n\n
Cons of the Express Request for Examination:<\/strong><\/p>\n\n\n\n\n- Slightly expensive in comparison to the ordinary requests<\/li>\n\n\n\n
- Can only be filed in case of the PCT national phase application<\/li>\n\n\n\n
- Applicant has only 31 months from the priority date to file the express request<\/li>\n\n\n\n
- Patent Office fails to strictly abide by the prescribed timelines for examination<\/li>\n<\/ul>\n\n\n\n
3. An Expedited Request for Examination of Patent Application in India<\/strong><\/p>\n\n\n\nRule 24C of the Patent Rules, 2003 governs the expedited request for examination. The request for this must be filed by submitting Form 18A within 48 months from the priority date\/application date of the patent application, whichever is earlier. It is pertinent to note that a request for expedited examination shall be accompanied by a request for early publication (i.e., Form 9) under rule 24A of the Patent Rules, 2003, except where an application has been published or a request for publication has already been filed.<\/p>\n\n\n\n
The examiner must examine the patent application and submit the first examination report within one month, but not exceeding two months. Similarly, the first examination report, if required, is to be issued within fifteen days from the date of disposal of the report by the Controller. A reply to the first examination report is to be filed by the applicant within 6 months from the date of the examination report or within an extended period of 3 months. Further, the Controller is required to dispose-off the application of expedited examination within 3 months from the date of receipt of the last response to the first examination report. Or, it must be done within 3 months from the last date to put the application in order for grant under Section 21 of the Patents Act, 1970.<\/p>\n\n\n\n
The applications having expedited requests for examination are assigned to a prioritized queue, which is different from the ordinary queue. Therefore, the patent applications for which the expedited requests are filed will be assigned to examiners for examination much earlier than the patent applications that have been in the ordinary queue.<\/p>\n\n\n\n
Pros of the Expedited Request for Examination:<\/strong><\/p>\n\n\n\n