Summary
Under the Indian Patent Act 1970, applicants must file a request for examination to advance a patent application to the examination stage. This request must be filed within 48 months from the priority date, failing which the application is deemed withdrawn. The request can be made by either the applicant or an interested third party with evidence of interest. For national phase applications, an express request may be filed before 31 months. The request is submitted using Form-18 along with the prescribed fee, after which the formal examination process begins as per the Act.
In the Indian patent system, an application does not proceed to examination automatically. The applicant must file a request for examination before the patent office takes up the application. This differs from jurisdictions such as the United States, where the examination fee is paid at the time of filing. Under the Patents Act, 1970, an applicant in India has a defined window within which this request must be made.
The deadline for filing
A request for examination must be filed within 48 months from the date of priority, the priority date being the date on which the invention was first filed. Only after the request is filed is the application taken up for examination. If the request is not filed within this period, the application is treated as withdrawn. Filing the request is therefore mandatory under the Patents Act, 1970.
It is prudent to file the request at the time of filing the application. Where that is not done, the applicant should track the 48-month due date carefully, since the consequence of missing it is the loss of the application.
Who may file the request
The request may be filed by the applicant, or by any other interested person. An interested person must furnish proper evidence of interest in the application to the patent office.
National phase applications
For a national phase application filed in furtherance of a PCT international application, an express request for examination may be filed. This allows the application to be examined at any time before 31 months.
Form 18 and the prescribed fee
A request for examination is filed on Form 18, which records the details of the applicant or interested person, the application number, the title, the date of filing, and the publication date. The prescribed fee is INR 2500 where the applicant is a natural person, and INR 10,000 where the applicant is a legal entity. Once the request is filed, the formal examination process is initiated under the Patents Act, 1970.
For an express request for examination in a national phase application, the prescribed fee is INR 3500 for a natural person and INR 14,000 for a legal entity.
Form 18 is available on the Indian Patent Office website: Form 18 (PDF).
Disclaimer
This article is for general information and does not constitute legal advice. Readers should consult a patent attorney before acting on any matter relating to patent prosecution in India.
Is it mandatory to file a RFE in US. Suppose we have filed National phase application in US, then by when can we file RFE.
Please reply at amit.agrawal202@gmail.com
Dear Amit,
In the US, there is no concept of “filing of a Request for Examination” separately.
Every non-provisional application/ complete specification filed with the USPTO gets examined automatically if the necessary fee was paid during the filing of the application.
Again, filing of a national phase application along with appropriate fee indicates the intention of the Applicant to have the application examined. Therefore, the application will be taken up for the examination in due course.
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I want to know that if i want to patent an antenna in India . then I have to submit drawings of antenna.
I have to submit antenna hardware or drawing are sufficient?
@Anonymous, for filing a patent in India for an antenna, there is no need to show the actual antenna at the point of filing. Drawings of the antenna will suffice. During the examination of the patent application, the examiner may ask for a model/demonstration; but this is a very rare scenario.
If there are more than one inventors in a patent application, can one of then file for the request for examination?
@Shashi, Any person interested in a patent application can file a Request For Examination (RFE). The interested person may be any one of the inventors, any one of the applicants, any person who is linked to the area of technology to which the patent belongs (the link may be from using the technology commercially, performing research in that area and so on).
sir during examination may any person make objection on claims ?
Nitin sir,
This query may be an extended question to what you have already answered regarding “It is interesting to note that a request for examination may be filed by the applicant of the application or by any other interested person in such application providing proper evidence of interest in the particular application to the Patent office.”
Can the any interested person be one of the employees of another entity of the same organization. If yes, what documents would suffice the need of ‘providing proper evidence of interest in the particular application’? Does submitting an ID proof that the parent entity of the Applicant’s entity and the employee entity, sufficient?