Common Reasons for Delay in Grant of Patent
This post was first posted on 20th July, 2o14.
A Patent gives its owner a monopolistic right and protection against unauthorized use of anything under its protection. This is the reason that a patent only gets granted once it passes several levels of stringent scrutiny. This phase is called the examination of the patent application. Examination of the application determines whether the patent application is worthy of a patent grant and thus, unless the application fulfills all patentabilty criteria, it does not receive a grant.
For a patent application to be examined, a specific request has to be filed within a stipulated deadline, in accordance with the laws of the country that the application is filed in and the required fee, if any, has to be paid. Time and again we criticize Patent Offices for not promptly processing applications. Patent Offices, are usually overburdened with applications, since anyone can file as many applications as they please at any time. This has taken a toll on the prompt prosecution of an application. What has to be mulled over here is whether the applicants share any responsibility for the delayed prosecution of applications. Ways to minimize delays in examination of application can be:
Conducting a patentability search before the filing of an application:
Conducting a patentbility search can be a pre-emptive measure to know what to expect as rejections from the Patent Office and to overcome those rejections before filing an application, thus minimizing the chances of receiving the same rejections again.
Filing Request for Examination (RFE) as soon as possible:
In India, the deadline to file an RFE is 48 months from the filing/priority date. It may be filed either by the applicant or by any person interested (includes a person engaged in, or in promoting, research in the same field as that to which the invention relates). The Indian Patent Office considers an application for examination only after its publication and in order of receipt of the RFE. For instance, applications for which an RFE was filed in the year 2009-2010 were examined only recently and their examination reports were issued. Most applicants prefer to file the RFE closer to the deadline rather than along with or close to the filing date of the application. The sooner we file the RFE, the sooner will the application be examined.
Availing of provisions for accelerated or express examination where applicable:
You can learn more from the Prioritized Examination Program and the Super Accelerated Examination System.
Payment of Examination Fee on time:
In certain jurisdictions, like the US, the payment of Examination Fee is construed as an interest in having the application examined. In such jurisdictions, an application is not processed unless the required fee is paid. Thus, the payment of complete/examination fee at the time of filing the application will prove beneficial to the applicant.
Minimization of non-technical informalities:
The examining division at a Patent Office, communicates to the applicant, any informality with respect to the application. This has to be rectified by the applicant and a time limit of up to six months is provided to respond to said communication. For instance, under the USPTO, certain non-technical objections, as listed below, are informed to an applicant by way of a Notice of Missing Parts, with a 2-month extendable deadline, which can be further extended by 4 months upon payment of extension fees. In India, these non-technical objections will be highlighted in the Examination Report:
a. Documents not filed: Certain documents if not filed along with the patent application, such as the Declaration or Statements with respect to Status of Corresponding Foreign Applications (Form 3 in Indian Patent Office), would entail the Patent Office bringing this informality to the applicant’s knowledge.
b. Informalities within documents filed: If the drawings are not in the right orientation or if forms do not have the required signatures or have ambiguous information, the Patent Office will require applicants to rectify this informality.
Relevance of Corresponding Applications: Timely furnishing of information regarding corresponding applications for an invention plays a huge role in the prosecution of an application. A positive search report or publication of grant of a patent in one jurisdiction aids a patent office in another jurisdiction in examining the application and generating the examination report promptly. Patent Prosecution Highway can prove extremely beneficial to applicants.
Filing response to the Examination Reports as early as possible:
Each jurisdiction has deadlines within which any objection raised by the examiner will have to be addressed. Indian Patent Law gives the applicant one year within which to respond to the examination report. The sooner this response is filed, the sooner the prosecution of the application gets concluded. A request for a hearing may be made in order to hasten the process. Rather than responding just before the impending deadline, if the response is filed well in advance, the grant of patent, if applicable, may be enjoyed earlier.
To conclude, I would like to state that, in order to obtain the much awaited patent right, we have to do our 2 bits to aid the Patent Office in faster prosecution of an application. Adherence to laws reflects our interest in getting the application granted sooner.
The pilot project by the Indian Patent Office for the intra-office sharing of applications to ensure that the examination burden of applications is evenly shared between various examination divisions, may come as celebratory news for patent applicants. Watch this space for more details!