Why? What? When? How? These are some of the most used words in John’s dictionary. He’s pretty curious about the workings behind what happens in his life, and many of those have to do with the inventions and the workings of intellectual property in the world around him.
John knows by now that the examination stage is crucial to any patent application, and that it’s a process that can take a long time, sometimes even years depending on the circumstances. So when he learns of a method to fast-track this process, he naturally has to turn to IP Geek for more information.
Hello IP Geek- I had a question for you.
So I know that patent applications must be examined, and for that you need to file a request for examination within 48 months of the filing of the application or priority date. But I heard the other day that the examination can be fast-tracked by filing a request for an Expedited examination?
Is this correct? How exactly does it work?
Hi John! You heard right! But let’s clear things up a bit more.
Every patent needs to be examined for the grant to happen, and for that the applicant must file a request for examination within 48 months of the filing date.
For some applications, such as PCT or Convention applications, the 48 month limit is counted from the date of priority, usually the first date where it was filed in other countries.
Now let’s get to the interesting bit- applicants have the option of opting for Expedited Examination (using Form 18A) under the Act and Rules. Depending on when you file this request, this has the capability to drastically reduce patent timelines. If you’re in a hurry, it’s best to file for a request for Expedited Examination along with the complete specification.
What exactly are the effects of this Request for Expedited Examination? How is it different from normal Requests for Examination?
8A requests are placed in a separate queue and are assigned to an examiner before those in the normal examination queue. Once a request is filed in form 18A, the controller must immediately assign the application to an examiner. The final report must then be sent to the applicant within three months of this date.
An ordinary request for examination can also be converted to a request for expedited examination by paying additional fees and complying with the additional conditions.
This seems like something that would make the patent office considerably speed things up in favour of these few applications, so it makes sense that there would be additional conditions. What are they?
Firstly, the application must either be already published- if not, a request for early publication must be filed with Form 18A as well.
Secondly, only certain types of applicants are eligible to file for expedited examination in India. These include women inventors, start-ups, small entities, governmental institutions and affiliates. Additionally, for PCT Applications, expedited examination requests can be filed if India is designated as the International Searching Authority or elected as an International Preliminary Examining Authority.
I see! This does sound like a very useful provision, especially since I know it can sometimes take forever to get examination reports in the normal queue. Thanks for the tip, IP Geek!
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