Patent prosecution refers to an interaction between applicant ( that can be an inventor or the inventor’s assignee) and patent office regarding grant of a pending patent application or regarding a registered patent. Prosecution activities to get the patent application granted include drafting, filing and pursuing the patent application with the patent office. Drafting has been elaborated upon in the previous section.
Filing is an administrative process that, at the same time, requires careful monitoring. We have a full-fledged docketing team supported by latest in-house docketing software to take care of all filing related activities, timelines therein etc. The software keeps track of all timelines, including those related to prosecution and litigation to ensure that no deadline gets missed.
After filing of a patent application, it is published and examined by patent office so as to ascertain novelty, non-obviousness and industrial applicability and to ensure that it is not in contravention of any of the provisions of the patents Act. Only thereafter is a patent granted.
Examination starts with the applicant filing a Request for Examination (RFE). Only thereafter the Controller of Patents transfers the patent application to a patent examiner. The request for examination has to be made within 48 months from the date of priority or filing whichever is earlier. The patent examiner prepares an examination report on basis of various patentability criteria viz subject matter patentability, novelty, inventive step, industrial application and specification enablement. The patent examiner also objects on missing forms/ procedural requirement if any, so as to make the patent application compliant with various patent laws. The report so made is termed as First Examination Report (and subsequent reports are sequentially numbered) and is sent to the applicant/ their attorney seeking elaborations/ clarifications/rebuttals etc.
An examination report along with all correspondence thereto is a permanent record of prosecution history of patent application and available at all times to the public, normally via access to the Patent Office’s website. Each Examination Report has to be comprehensively and persuasively replied to in order to avoid rejection of the patent application. Such replies generally include modification in claims, as long as modified claims can be backed by specifications (in which no modification is allowed)
A patent application can be opposed at the patent office before as well as after grant of patent.
As can be appreciated, a thorough knowledge of various laws pertaining to patenting in the relevant jurisdiction as well as excellent understanding of relevant technology is required to address an Examination Report.
After drafting and filing of a Complete patent application, patent application is kept confidential by the Patent Office at least for 18 months from the date of priority or date of filing, whichever is earlier. This period of 18 months can be reduced if request for early publication is filed.
After receiving the Request for Examination filed by Patent Applicant or by any other interested person, Patent Office issues Examination Report to Patent Applicant to which Patent Applicant has to satisfactorily reply and put the application in the condition of allowance (of patent) within fixed time period. As already elaborated, we are fully geared up to handle various examination related matters via our well qualified and experienced Patent Attorneys.
After considering replies to Examination Reports and Hearing, if held, Patent Office disposes the patent application. Patent Attorneys with us are qualified to appear before the Patent Office for such hearings to put forward our client’s submissions most effectively.
Patent application can be opposed before and after the grant. Pre-grant opposition can be filed by any person and post-grant opposition, revocation proceedings can be filed by any interested person. Similar competencies as an attending to Examination report and Hearing as elaborated above are required and our Patent Attorneys are very well –experienced in all Opposition related matters as well.
Patent Office keeps the filed patent application confidential for 18 months from the date of filing of patent application or date of priority (whichever is earlier).
Ordinarily, publication is done within 18 months of priority date. If requested, early publication can also be performed within 1 month of request for same.
Patent applicant has to mandatorily request for examination that can optionally be expedited.
After receiving the examination report, patent applicant has to put the application in condition of allowance by replying to objections within 6 months from the date of issuance of First Examination Report (FER).
We can file response to examination report within 3 to 7 working days.
No, it is an automatic process i.e. the inventor/applicant does not have to request patent office to publish the patent application. Patent office, after eighteen months from the date of filing of application or the date of priority of the application, whichever is earlier, publishes the patent application.
Yes, a request for early publication can be filed. Once requested, patent application gets published within one month of such request if application was accompanied by complete specification.
Yes. Request for expedited examination can be made by the applicant if the applicant is a Start-up or if it has chosen India as International Searching Authority (ISA) or International Preliminary Examining Authority (IPEA) in its corresponding international patent application.