Even after you’ve filed the papers required for application as per our last blog post, there are still plenty of steps you need to take before your patent gets granted. There are also more forms you need to file.
Request for Publication – Form 9
Before an application can be granted, it must be examined. And before an application can be examined, it must be published in the official gazette. By default, this happens one month after 18 months of the filing.
However, these timeframes are likely to be too long for inventors, especially since your patent grant only gives you 20 years of protection from the date of filing. In such cases, it is advised that you file a request for publication along with your complete specification, which will allow your patent to get published faster.
Request for Examination – Form 18
Once the application has been published, a request for examination must be filed within 48 months from the priority date. It is advised that this is done as early as possible, since the longer you wait to do these necessary procedures, the longer it will take for your patent to get granted.
At this state, an examiner from the Indian Patent Office will examine your application for irregularities in novelty, inventive step, subject matter, or other procedural requirements.
This request for examination is mandatory. Your patent will not eventually get examined after a set period of time.
Request for Expedited Examination – Form 18A
It is also possible to file a request for expedited examination under the Patent Act and Rules, with an increased fee. Expedited examination allows your application to be checked faster. However, unlike with normal requests for examination, the applicants need to fulfil certain criteria to qualify for this. These include the applicant being a startup, or small entity, as well as a few other conditions enumerated in Rule 24C of the Patent Rules.
Reply to First Examination Report
Once the application has been examined, a First Examination Report (FER) will be issued to the applicant. This report will list out all of the examiner’s concerns, and the applicant is required to satisfactorily address this in a reply to this examination report. This reply needs to be filed within 6 months of the date of issuance of FER.
As with the patent draft, it is necessary to have someone with good understanding and knowledge of the field of the invention as well as the requisite legal skills to draft this reply. You may even be required to make necessary changes to the claims portion of the application, so an expert’s hand is necessary.
In addition to substantive objections, the examiner may also give procedural objections, which may require the applicants to make modifications in the documents already filed to be more in line with regulations (eg: sizes and formats of drawings). The examiner may also ask for additional documents such as certified copies of priority documents, and patent prosecution details for similar applications by the applicant in other jurisdictions.
Reply to Subsequent Examination Reports
If you have filed a reply before the deadline of six months from the date of issuance of FER, there is a possibility of getting an SER, or subsequent examination report. An important point to note is that the deadline to reply to this SER is six months from the issuance of the FER, so be careful to keep track of the timelines.
At this stage, the examiner might accept an applicant’s modifications and explanations, which is the ideal outcome. However, if this is not the case, a hearing may be requested. In this hearing, the patent attorney has the chance to personally make their case to the examiner.
Even after the initial documents are filed, the process of patent prosecution is not over. Giving someone a monopoly over technology is not something that is taken lightly by the government, and applicants need to be vigilant about pursuing their rights. Additionally, while patent timelines can last for months and years, it is advised that applicants file their forms and responses at the earliest possible dates in order to secure their rights as soon as possible.
Author: Varsha Valsaraj, Associate at PA Legal.
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