+91-80-26860424 / 34

Call Us Today

LinkedIn

Search
 

Chapter 4 – Publication and Examination of Applications

BananaIP Counsels > The Patent Rules > Chapter 4 – Publication and Examination of Applications

Chapter 4 – Publication and Examination of Applications

 

24. Publication of application.

 

The period for which an application for patent shall not ordinarily be open to public under sub-section (1) of section 11A shall be eighteen months from the date of filing of application or the date of priority of the application, whichever is earlier.

 

Provided that the period within which the Controller shall publish the application in the journal shall ordinarily be one month from the date of expiry of said period, or one month from the date of request for publication under rule 24A.

 

 

24A. Request for publication.

 

A request for publication under sub-section

 

(2) of section 11A shall be made in Form 9.

 

 

24B. Examination of application.

 

(1) (i) A request for examination under section 11B shall be made in Form 18 within forty-eight months from the date of priority of the application or from the date of filing of the application, whichever is earlier;

 

(ii) The period within which the request for examination under sub-section (3) of section 11B to be made shall be forty-eight months from the date of priority if applicable, or forty-eight months from the date of filing of the application;

 

(iii) The request for examination under sub-section (4) of section 11B shall be made within forty-eight months from the date of priority or from the date of filing of the application, or within six months from the date of revocation of the secrecy direction, whichever is later;

 

(iv) The request for examination of application as filed according to the ‘Explanation’ under sub-section (3) of section 16 shall be made within forty-eight months from the date of filing of the application or from the date of priority of the first mentioned application or within six months from the date of filing of the further application, whichever is later;

 

(v) The period for making request for examination under section 11B, of the applications filed before the 1st day of January, 2005 shall be the period specified under the section 11B before the commencement of the Patents (Amendment) Act, 2005 or the period specified under these rules, whichever expires later.

 

(2)(i) Where the request for examination has been filed under sub-rule (1) and application has been published under section 11A, the Controller shall refer the application, specification and other documents related thereto to the examiner and such reference shall be made in the order in which the request is filed:

 

Provided that in case of a further application filed under section 16, the order of reference of such further application shall be the same as that of the first mentioned application:

 

Provided further that in case the first mentioned application has already been referred for examination, the further application shall have to be accompanied by a request for examination, and such further application shall be published within one month and be referred to the examiner within one month from the date of such publication.

 

(ii) The period within which the examiner shall make the report under sub-section

 

(2) of section 12, shall ordinarily be one month but not exceeding three months from the date of reference of the application to him by the Controller;

 

(iii) the period within which the Controller shall dispose off the report of the examiner shall ordinarily be one month from the date of the receipt of the such report by the Controller.

 

(3) A first statement of objections, along with any documents as may be required, shall be issued by the Controller to the applicant or his authorised agent within one month from the date of disposal of the report of examiner by the Controller:

 

Provided that where the request for examination was filed by a person interested, only an intimation of such examination may be sent to such person interested.

 

(4) Reply to the first statement of objections and subsequent reply, if any, shall be processed in the order in which such reply is received.

 

(5) The time for putting an application in order for grant under section 21 shall be six months from the date on which the first statement of objections is issued to the applicant to comply with the requirements.

 

(6) The time for putting an application in order for grant under section 21 as prescribed under sub-rule (5) may be further extended for a period of three months on a request in Form 4 for extension of time along with prescribed fee, made to the Controller before expiry of the period specified under sub-rule (5).

 

24C. Expedited examination of applications.

 

(1) An applicant may file a request for expedited examination in Form 18A along with the fee as specified in the first schedule only by electronic transmission duly authenticated within the period prescribed in rule 24B on any of the following grounds, namely:-

 

(a) that India has been indicated as the competent International Searching Authority or elected as an International Preliminary Examining Authority in the corresponding international application; or

 

(b) that the applicant is a startup.

 

(2) A request for examination filed under rule 24B may be converted to a request for expedited examination under sub-rule (1) of rule 24C by paying the relevant fees and submitting requisite documents as required under sub-rule (1).

 

(3) Except where the application has already been published under sub-section (2) of section 11A or a request for publication under rule 24A has already been filed, a request for expedited examination shall be accompanied by a request for publication under rule 24A.

 

(4) Where the request for expedited examination does not comply with the requirements of this rule, such a request shall be processed in accordance with the provisions contained in rule 24B, with an intimation to the applicant, and shall be deemed to have been filed on the date on which the request for expedited examination was filed.

 

(5) The Controller shall refer the request for expedited examination along with the application and specification and other documents to the examiner, in respect of the applications where the request for expedited examination has been received, in the order of filing of such requests.

 

Provided that a request for expedited examination under this rule filed by a startup shall not be questioned merely on the ground that the startup ceased to be a startup after having filed an application for patent due to the lapse of more than five years from the date of its incorporation or registration, or the turnover subsequently crossed the financial threshold limit, as defined.

 

(6) The period within which the examiner shall make the report under sub-section (2) of section 12, shall ordinarily be one month but not exceeding two months from the date of reference of the application to him by the Controller.

 

(7) The period within which the Controller shall dispose of the report of the examiner shall be one month from the date of receipt of such report by the Controller.

 

(8) A first statement of objections along with any document, if required, shall be issued by the Controller to the applicant or his authorised agent within fifteen days from the date of disposal of the report of examiner by the Controller.

 

(9) Reply to the first statement of objections and subsequent reply, if any, in respect of an application where the request for expedited examination was filed, shall be processed in the order in which such reply for such application is received.

 

(10) The time for putting an application in order for grant under section 21 shall be six months from the date on which the first statement of objections is issued to the applicant.

 

(11) The time for putting an application in order for grant under section 21, as prescribed insub-rule (10) may be further extended for a period of three months on a request for extension made in Form 4 along with the prescribed fee, made to the Controller before the expiry of the period specified under sub-rule (10).

 

(12) The Controller shall dispose of the application within a period of three months from the date of receipt of the last reply to the first statement of objections or within a period of three months from the last date to put the application in order for grant under section 21 of the Act, whichever is earlier:

 

Provided that this time limit shall not be applicable in case of pre-grant opposition.

 

(13) Notwithstanding anything contained this rule, the Controller may limit the number of requests for expedited examination to be received during the year by way of a notice to be published in the official journal.

 

 

25. Identification of published applications.

 

Publication of application under sub-sections

 

(2) and (5) of section 11A shall be identified by the letter ‘A’ along with the number of application.

 

 

26.

 

A request for withdrawing the application under sub-section (4) of section 11B shall be made in Form 29.

 

 

27. Inspection and supply of published documents.

 

After the date of publication of the application under section 11A, the application together with the complete specification and provisional specification, if any, the drawing, if any, the abstract and any other document filed in respect of the application may be inspected at the appropriate office by making a written request to the Controller on payment of the fee in that behalf and copies thereof may be obtained on payment of fees specified in the First Schedule.

 

 

28. Procedure in case of anticipation by prior publication.

 

 

(1) If the Controller is satisfied after investigation under section 13 that the invention so far as claimed in any claim of the complete specification has been published in any specification or other document referred to in clause (a) of sub-section (1) or subsection (2) of the said section, the Controller shall communicate the gist of specific objections and the basis thereof to the applicant and the applicant shall be afforded an opportunity to amend his specification.

 

(2) If the applicant contests any of the objections communicated to him by the Controller under sub-rule (1), or if he refiles his specification along with his observations as to whether or not the specification is to be amended, he shall be given an opportunity to be heard in the matter if he so requests:

 

Provided that such request shall be made on a date earlier than ten days of the final date of the period preferred to under sub-section (1) of section 21:

 

Provided further that a request for hearing may be allowed to be filed within such shorter period as the Controller may deem fit in the circumstances of the case.

 

(3) If the applicant requests for a hearing under sub-rule (2) within a period of one month from the date of communication of the gist of objections, or, the Controller, considers it desirable to do so, whether or not the applicant has refiled his application, he shall forthwith fix a date and time for hearing having regard to the period remaining for putting the application in order or to the other circumstances of the case.

 

(4) The applicant shall be given ten days’ notice of any such hearing or such shorter notice as appears to the Controller to be reasonable in the circumstances of the case and the applicant shall, as soon as possible, notify the Controller whether he will attend the hearing.

 

(5) After hearing the applicant, or without a hearing if the applicant has not attended or has notified that he does not desire to be heard, the Controller may specify or permit such amendment of the specification as he thinks fit to be made and may refuse to grant the

 

patent unless the amendment so specified or permitted is made within such period as may be fixed.

 

(6) The hearing may also be held through video-conferencing or audio-visualcommunication devices: Provided that such hearing shall be deemed to have taken place at the appropriate office.

 

Explanation.– For the purposes of this rule, the expression “communication device” shall have the same meaning as assigned to it in clause (ha) of sub-section(1) of section 2 of the Information Technology Act, 2000 (21 of 2000).

 

(7) In all cases of hearing, written submissions and the relevant documents, if any, shall be filed within fifteen days from the date of hearing.

 

28A. Procedure in relation to consideration of report of examiner under section 14.

 

Incase the applicant contests any of the objections communicated to him, the procedure specified under rule 28 may apply.

 

 

29. Procedure in case of anticipation by prior claiming.

 

(1) When it is found that the invention so far as claimed in any claim of the complete specification, is claimed in any claim of any other specification falling within clause (b) of sub-section (1) of section 13, the

 

(2) If the applicant’s specification is otherwise in order for grant and an objection under clause (b) of sub-section (1) of section 13 is outstanding, the Controller may postpone the grant of patent and allow a period of two months for removing the objection.

 

30. Amendment of the complete specification in case of anticipation.

 

 

If the applicant so requests at any time, or if the Controller is satisfied that the objection has not been removed within the period referred to in sub-rule (2) of rule 29, a date for hearing the applicant shall be fixed forthwith and the applicant shall be given at least ten days’ notice of the date so fixed. The applicant shall, as soon as possible, notify the Controller whether he will attend the hearing.

 

(2) After hearing the applicant, or without a hearing if the applicant has not attended or has notified that he does not desire to be heard, the Controller may specify or permit such amendment of the specification as will be to his satisfaction to be made and may direct that reference to such other specification, as he shall mention shall be inserted in the applicant’s specification unless the amendment is made or agreed to within such period as he may fix.

 

31.Form of reference to another specification.—

 

When in pursuance of rule 30, the Controller directs that a reference to another specification shall be inserted in the applicant’s complete specification, such reference shall be inserted after the claims and shall be in the following form, namely: —

 

“Reference has been directed, in pursuance of section 18(2) of the Patents Act, 1970, to the specification filed in pursuance of application No……………”

32. Procedure in case of potential infringement.

 

If in consequence of an investigation made under section 13, it appears to the Controller that the applicant’s invention cannot be performed without substantial risk of infringement of a claim of another patent, the applicant shall be so informed and the procedure provided in rule 29 shall, so far as may be necessary, be applicable.

 

33. Form of reference to another patent.—

 

Where the Controller directs that a reference to another patent shall be inserted in the applicant’s complete specification under subsection (1) of section 19, such reference shall be inserted, after the claims in the following form, namely: — “Reference has been directed, in pursuance of section 19(1) of the Patents Act, 1970, to Patent No………… “

 

 

34. Manner in which a claim under section 20(1) shall be made.

 

(1) A claim under subsection (1) of section 20 shall be made in Form 6.

 

(2)The original assignment or agreement or an official copy or notarized copy thereof shall also be produced for the Controller’s inspection and the Controller may call for such other proof of title or written consent as he may require.

 

 

35. Manner in which a request may be made under section 20(4).

 

(1) A request under subsection (4) of section 20 shall be made in Form 6.

(2) The request shall be accompanied by proof of death of the joint applicant and a certified copy of the probate of the will of the deceased or letters of administration in respect of his estate or any other document to prove that the person who gives the consent is the legal representative of the deceased applicant.

 

 

36. Manner of application under section 20(5).

 

(1) An application under sub-section (5) of section 20 shall be made in Form 6 in duplicate and shall be accompanied by a statement setting out fully the facts upon which the applicant relies and the directions which he seeks.

 

(2) A copy of the application and statement shall be sent by the Controller to every other joint applicant.

 

 

37. Numbering of applicant ions on the grant of patent.

 

On the grant of a patent, the application shall be accorded a number (called serial number) in the series of numbers accorded to patents under the Indian Patents and Designs Act, 1911 (2 of 1911), which shall be the number of the patent so granted.

 

38.[Omitted ]

Go to Previous Chapter

Go to Next Chapter

Speak with an IP Expert Today
close slider
css.php