Indian Patent Procedure 2 – ‘Client2Attorney’

This is post is in continuation of Indian Patent Procedure.

Dear Mr X,

We write in furtherance of our letter dated December 13, 2017, apprising you of the filing process vis-a-vis the Indian patent procedure. In this mail, we will apprise you of the next steps.

Once you have completed the filing of your patent application, your application is set up for automatic publication within 18 months FORM 9 from the date of filing. In case, you wish to get your application published early, you can do so by filing requisite and paying an additional fee of Rs. 2500/-. If you choose to do so, your application would be put for publication within 6 months from the date of making such request. The second thing that is important at this stage is that you will have to make a Request for Examination (RFE) in requisite FORM 18 and paying official fee of Rs. 4000/-. Since a normal examination generally takes a lot of time, you can file a request for expedited examination by filing FORM 18A and paying an official fee of Rs. 8000/-. In case a request for expedited examination is made, the examination of the application takes place within 3-6 months.

In case you fail to file an RFE withiin 48 months from the date of filing, you can on an express request made under FORM 4 and a petition for condonation of delay get an extention of upto 3 months. In case of failure to file a RFE, the applicaiton is deemed to be abandoned.

Once the request for examination is completed, the examiner examines the application for patentability under various heads, in particular, he checks for Technical requirement (such as novelty, inventive step, industrial applicability, non-patentability, unity of invention, sufficiency of disclosure, scope, clarity and conciseness, definitiveness, etc.) and Formal Requirements (such as, format of specifications, drawings, claims, numbering of documents, submission of required documents etc.).

The examiner then reports it to the Controller of Patents, who is then required to dispose the examination and issue a First Examination Report (FER). The applicant is required to reply to the FER within 6 months from the date of issuance of the FER. In case the applicant fails to do so, the application is deemed to be abandoned. Therefore, the applicant has 6 months period from the issuance of FER to put his application up for grant.

A reply to the FER is then required to be sent to the Controller giving arguments with regard to the raised objections. In case the Controller is satisfied with the reply, he will order the grant of patent. In case he is not satisfied with the argument advanced by the applicant, a hearing notice is issued. The applicant through his agent is then required to attend the hearing and subsequently file a written submission within 15 days from the date of hearing. The Controller then examines the arguments advanced by the applicant and if he is satisfied that the objections are overcome, he will order grant of a patent, otherwise, refuse it.

In case of refusal, the applicant has the option to file a review petition (by making application in FORM 24) to the Controller of Patents and Designs; if agreived, he may also file an appeal to Intellectual property Appellate Board (IPAB); if agreived, he may approach the High Court of competent jurisdiction.

Regards,
L&P

Image from here.

Siddhant Sharma

Siddhant is currently enrolled in a six year law programme at one of India's premier private law schools, due to graduate in April, 2018. His journey as a techno-legal student started in year 2012 as a matter of fate than choice, but since then legal studies have embarked and impressed upon him the desire to pursue advocacy, in particular corporate and commercial litigation. Apart from academics, he has always been interested in, and still continue to be inclined towards, niche practice areas and entrepreneurial endeavours. He finds joy in writing about Patents.

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