Patent Prosecution in India
An examination report is issued by the Indian patent office after conducting a patent examination of the patent claims that accompany a patent specification filed with the patent office. The examination report is also called as first examination report (FER). The examination report contains a list of objections raised by an examiner of the Indian patent office. The objections are both technical and formal in nature.
Patent Office Action in India
1. Heading – Every examination report starts with a reference number which is the application number and the date of dispatch. The date of dispatch is very important because it is mandatory to send a response to the FER within a period of 6 months and that period starts from the date of dispatch. For example, if a FER’s date of dispatch is 26/04/2018, then the last date for filing response to that examination report will be 26/10/2018.
2. Subject – When a request for examination is made with regard to grant of patent, the controller refers the application along with the specification whether provisional or complete and the supported documents to the examiner, to the examiner. The examination of the application is done by examiner under Section 12 read with section 13 of the Patents Act, 1970. The application will be considered abandoned if all the requisite documents are not submitted within a prescribed period under Section 21(1) of the Patents Act, 1970.
3. Body of the Examination Report – The body of the examination report starts with a table consisting of all the basic information. For example:
Application No.: When the applicant files for grant of patent, an application number is generated and is assigned to the applicant’s patent application.
Date of Filing: The date on which the applicant filed for grant of patent.
Date of Priority: When a priority is validly claimed, the date of filing of the first application, called the priority date, is considered to be the effective date of filing for the examination of novelty and inventive step or non-obviousness for the subsequent application claiming the priority of the first application.
Date of PCT International Application: By filing one international patent application under the PCT, applicants can simultaneously seek protection for an invention in a very large number of countries.
Applicant: Name of the Applicant
Agent: Name of the Patent Agent
Request for Examination no. & date: When a request for examination is made a request no. is generated along with the date on which the request is made.
Date of Publication: The date on which the patent application was published for the purpose of prior art.
The examination report consists of four parts, namely summary of the report, detailed technical report, formal requirements and documents on record, explained as follows:
PART- I: SUMMARY OF THE REPORT
There are certain requirements of the Patent Act, 1970 which the application shall fulfil.
(a) Invention u/s 2(1)(j): The criteria for patentability of an invention are novelty, inventive step and industrial applicability.
Novelty – Novelty is an extremely essential requirement and an undisputed state of patentability. An invention will be patentable if it is novel or new in the light of prior art, or is not anticipated by prior art.
Inventive Step3 – An invention will have inventive step only if it satisfies two conditions. First, the invention should be technically advanced in light of prior art or should have economic advance. Second, the invention should not be obvious to a person who has ordinary skills in the art in the light of
Industrial Applicability4 – Industrial application must relate to commercialization of patented product for the public and society purpose.
If the claims of the applicant fulfil the requirement of all the three, the remarks for each of the claims would be YES. If not, and the controller is dissatisfied with either all or few of the claims, he/she would remark that claim(s) as NO.
(b) Non-patentability u/s 3: There are certain invention which the Patent Law says are non-patentable. Such inventions are listed under Section 3 (a-p).
(c) Non-patentability u/s 4: Any invention relating to atomic energy is not patentable.
(d) Unity of invention u/s 10 (5): A patent application can only claim one invention or a group of closely related inventions. Patent offices will raise a unity of invention objection during examination of a patent application if they believe more than one invention is being claimed
(e) Sufficiency of disclosure u/s 10 (4): A patent application shall enclose a complete specification which discloses everything relating to the invention proposed to be patented.
(f) Reference to co-pending/foreign application(s) required: If there are any co-pending/foreign application(s) are in existence for the same invention.
(g) Claims [u/s 10(5) & 10(4) (c)]: If the claims u/s 10(5) & 10(4) on the grounds of Clarity/Conciseness, Definitiveness, supported by description & Scope approved or disapproved.
(h) Any other requirements.
PART – II: DETAILED TECHNICAL REPORT
The second part of the examination report is divided into two parts, List of documents cited & Detailed observations on the requirements under the Act.
(1) List of Documents cited
Patent Literature (the most easily searched form of prior art)
If the applicant’s patent is in infringement of another application for grant of a similar patent with a priority date or an already published patent, the detail of documents will enlist the latter patents along with their priority and publication date respectively.
The relevant description of the cited document(s) along with the relevant claims of the said document with claims that are in objection will also be mentioned here.
Non-Patent Literature (documents and publications that are not patents or published patent applications but are cited as references for being relevant in a patent prosecution)
If there is any literature, which is not available as a previously granted patent or any published application, which is in objection of the application for grant of patent it will be cited here. For example, a magazine article or doctoral thesis relevant to a claimed invention might be cited as non-patent literature.
(2) Detailed observations on the requirements under the Act
The detailed observations state the reasons and explanation as to why the applicant’s claims have been objected by the Patent Office on the basis of rejections as mentioned in the report above.
The inventive step comprises of the details about the cited documents which are mentioned in Part II of the report and are tagged as D1, D2, D3…so on and so forth.
Part III explains as to why the respective requirements under the law mentioned in Part I of the report were not satisfactory.
PART – III: FORMAL REQUIREMENTS
If the application fee, anything with the forms or any document is found to be of objection, Part III states those objections and the remarks stating as to why that objection has been raised.
Part IV: DOCUMENTS ON RECORD
This section contains the list of documents filed for grant of the patent along with the last date of filing for response of such report.
Patent Time line under the Indian Patents Act, 1970 and Patents Rules, 2003 | Responding to Office Actions Issued by Patent Examiner
Non-provisional Patent Application in India
Endorsement by /Assignment from Inventor
PATENT PROSECUTION PROCESS IN INDIA
A convention patent application or PCT patent specification can be filed before any of the four patent offices in India (Kolkata, Delhi, Mumbai or Chennai). Depending upon the address of Residence of applicant or domicile, place of business of the patent applicant, the place where the invention actually originated the appropriate office of the patent office for filing patent application will be the head office of the patent office or the branch office under whose territorial limits patent applicant resides.
However, if the patent applicant has no business or domicile in India, the address for service in India would be the address of the patent attorney or the patent firm filing on behalf of the patent applicant.
The main stages of patent application process in India before the Indian Patent Office are:
Patent Filing before Indian Patent Office
Patent Opposition (if any)
Replying to Patent Opposition Raised by Patent Examiner
Indian Patent Grant
Publication of Indian Patent Grant in the Indian Patent Office Journal
Patent Filing before the Indian Patent (online patent filing / offline patent filing before the Indian Patent Office)
Complete/ Non-provisional Patent Application
An invention application for a patent can be filed by the true and first inventor before the Indian Patent Office by the patent attorney on behalf of his clients. However, the patent application can also be filed by the assignee or legal representative of the inventor. In case, the patent application is filed by the assignee, proof of assignment has to be submitted along with the patent application. The patent applicant can be national of any country.
What all details to include in a Complete/ Non-provisional Patent Application
Every patent application shall be accompanied by a provisional or complete specification. Provisional applications are generally filed at a research stage where some scientific data is required to backup the patent claims and best mode of performing the invention. Filing of a provisional specification before the Indian patent office allows the patent applicant to get a priority patent application date.
Provisional Patent Specification Includes Following Details
- Broad Invention Title
- Written Description of the Invention
- Patent Drawings explaining the invention, if any
Complete / Non-Provisional Patent Specification Includes Following Details
Patent Abstract ( 150 characters)
Written Description of the Patent
Enablement and Best Mode of performing the invention
Patent Drawings (if any)
Patent Claims (independent patent claims, dependent patent claims)
Sequence details Deposit (Microorganisms, if any)
Explanation for Patent Terms
Patent Title is generally a sentence or a phrase indicating the content of the invention.
It is a short paragraph indicating main details of the inventions in 150 characters or less.
Written Patent Description
This is main body of the patent specification. It includes the complete and detailed description of the invention. Written Description generally starts with a background of the invention which includes prior art details.
Patent Drawings (if any)
The written description might be supplemented with drawings, where and when required specifically for mechanical inventions. The patent drawings should be numbered.
Enablement and Best Mode of performing the invention
The patent applicant has to provide details for enablement and best mode of performing the invention
in order to allow a person with ordinary skill in the art to make and work the invention.
Patent Claims define the scope of the invention. They are the most important elements in a patent specification.
If an invention includes novel strain of microorganisms, which cannot be described by writing, a sample of the microorganism has to be deposited at an internationally recognised depository. In India, there is an internationally recognised depository at Chandigarh.
Patent Services Patent Prosecution in India
Our expert patent attorneys can write and prepare response to office action issued by patent examiner. The response to patent office action has to be filed within 12 months from the date of issuance of the FER. We provide Patent Filing Services, Patent Prosecution Services, Patent Registration in India, Patent Filing in US, & Patent Filing in Europe through our trusted network of international patent associates.
Advocate Rahul Dev is a Patent Attorney & International Business Lawyer practicing Technology, Intellectual Property & Corporate Laws. He is reachable at rd (at) patentbusinesslawyer (dot) com & @rdpatentlawyer on Twitter
Quoted in and contributed to 50+ national & international publications(Bloomberg, FirstPost, SwissInfo, Outlook Money, Yahoo News, Times of India, Economic Times, Business Standard, Quartz, Global Legal Post, International Bar Association, LawAsia, BioSpectrum Asia, Digital News Asia, e27, Leaders Speak, Entrepreneur India, VCCircle, AutoTech)
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