Once a patent application is filed in India and published after 18 months of filing the application, the next step involves the examination of the patent application. The examination process starts once the applicant files a request for examination within 48 months from the date of filing of the application or the priority date whichever is earlier.
During the first examination stage, the examiner prepares the examination report incorporating all the statutory objections for the given patent application. The examiner performs a patent search in order to identify the prior arts relevant to the invention. The objections are well communicated and properly defined so as to be understood by the addressee without seeking further clarification. The First Examination Report (FER) is generally sent to the applicant along with the application and specification within six months from the date of publication or from the date of request for examination. The law in place requires that the objections are supported by correct legal provisions and proper reasoning. The objections once taken are maintained and are withdrawn only after justifying the proper reason for withdrawal.
The examination report may either be favorable or adverse to the applicant. If the report is favorable, the applicant has to put the application in order for grant within 12 months from its date. If the report is adverse, it normally includes formal objections relating to errors in the Forms or Fees and substantive objections relating to patentability requirements. During the process, the applicant can draft a response by amending the application in order to overcome the objections raised in the FER. The amendment can be allowed only if it is by way of disclaimer, correction or explanation. The amendment will not be allowed if the specification as amended describes matters which are not in substance disclosed or shown in the specification. Alternatively, the applicant may also request for a hearing within 1 month from the date of receiving the examination report to explain the reasons for non-acceptance of objections to the examiner. The examiner can also withdraw the application any time after filing of application and before the grant of patent by filing a written request and paying the requisite fee.
To better understand the examination process of patent applications, in India, please refer to the flow chart below.
Authored by Anjali Santhosh