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.
Our Services Include:
- Drafting of Responses to Examination Reports
- Strategizing amendments and arguments for the patent application for maximizing impact
- Technical Analysis of Examination Report
- Technical Analysis of Cited Prior Arts