The Need for Patent Examination

As per Indian Patents Act, getting a Patent registration provides the Patentee with an exclusive right for his invention from the government of India from making, using, selling and importing the patented product by another individual with the patentee’s permission.

But these Patent rights are provided to only those inventions which meet the criteria as laid down under the Patents Act, 1970. It is therefore obligatory on the part of the examiner to examine whether the invention is new, carries inventive steps or capable of industrial application. 

Even though comprehensive search is done at the time of oppositions, revocations or counter revcations in infringement suits, the examination process acts as a primary step of the Indian Patent system.

Examination process cannot begin unless a request to the Patent office has been made to process the Patent Registration to the Examination stage. So now in this blog we will understand the provision for Patent examination.

Who can make a request for Patent Examination?

The request for initiating the Examination process can be made by-

  • Patent Applicant, or
  • Any other interested Party

What is the Requirement for making Examination request

  • Request of Examination is filed by filing form 18 mentioning the details of the applicant or interested party along with the evidence of his interest, application no, date of filing, title and publication date along with the following fees structure.
  • Requests for Patent Examination can be made within 48 months from the priority date or date of filing of the patent application; whichever is earlier.

Note:

It is to be noted that if a request for Patent examination is not filed within the specified period of time, then the application shall be treated as withdrawn by the Indian Patent Office.

Application that is filed with the Patent cooperation Treaty (PCT) before expiry of 31 months from the priority date.

Process after Examination of the Application

Following are the process for the Examination of the Application-

  • After an application for Patent registration is submitted, the next step involves the examination of the Patent registration application. Then the Patent office issues an Examination report to the applicant which is called a First Examination report (FER).
  • Applicant needs to respond to that Examination report within 12 months from the issuance of FER.
  • If the examiner is satisfied with the response submitted then the Patent will be granted and published in the journal. On the other hand if the examiner is not satisfied by the reply submitted by the applicant the application will either be rejected or be considered as abandoned if the response is not submitted within the prescribed period of time.

Note

It is to be noted that before rejecting the Patent application, the otroller will provide the opportunity of being heard provided the applicant has filed a hearing request 10 days in advance before the expiry.

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