Home » What is Patent Examination? | IP Conversations

What is Patent Examination? | IP Conversations

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’s been learning a lot about patents and patent procedures lately. He has a pretty good idea of what patent application and patent publication is like now, but he has some questions about patent examination. IP Geek answers.

Hello IP Geek.

 

We’ve talked a lot about the patent filing process and all the different types of patent applications someone can file. But I’ve heard a lot of inventor friends of mine talk about how the patent examination stage is very important. Can you tell me a little more about that?

Sure, John!

 

Your friends are right- the examination is a very important part of the patent process. Previously, we’ve discussed a number of things that can’t be patented, as well as the novelty and inventive step requirements. Your application must be drafted keeping all of these limitations in mind.

The patent examination stage is where all your hard work in drafting the application is put to test. What happens here is this- your patent application is examined by the Indian Patent Office. The actual person doing the examination will be someone who has a certain degree of skill in the technical field. 

 

This examiner will now check your application to see if it’s novel, has an inventive step, and falls within the allowed subject matter. The examiner also checks if you have only one main invention, and if you’ve fulfilled all the formal requirements. 

By formal requirements, I’m sure you mean all the payments and official documents and so on- you’ve mentioned them before. But does the examiner reject the application if there are any problems?

Not quite. If the examiner finds anything they think should be addressed, they issue the First Examination report. We call this the FER for short, and if you reply to the FER in a satisfactory manner your invention may still be accepted.

 

Patent Agents (who respond to the FERs) also ask for the opportunity to be heard by the Patent Office if their application isn’t accepted even after the response is filed. By law, the patent office cannot deny you a hearing if you request for it and have complied with all other deadlines and requirements.

I see. So the hearing is the final opportunity for any patent applicant to get their invention patented. I imagine it’s best to never let things reach that stage. But what do you mean by deadlines?

Well, there are plenty of deadlines associated with the patenting process. In this specific case, FERs must be responded to within 6 months of them being issued. This deadline can be extended by a further three months, provided that you do it before the initial six month period has expired. 

 

If no replies are filed within that time, your application is deemed to be abandoned and you will not be able to get a patent. Of course, the better your initial draft is, the fewer chances there are of the FER being a problem in the first place.

I remember very well how important the initial draft of the application is- it’s something that keeps popping up in our talks. Thank you so much for explaining, IP Geek!

 

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