Patent Prosecution

Patent prosecution refers to an interaction between applicant and patent office regarding grant of pending patent application or regarding registered patent. Prosecution to get the patent application granted includes drafting, filing and pursuing the patent application with the patent office. After filing of patent application, it is published, examined by patent office so as to ascertain novelty, non-obviousness and industrial applicability and patent is granted only if it is not in contravention of any of the provisions of the act. Examination reports issued to patent applicant can include objections based on prior art as well as on non-compliance with procedural requirements. Replies to examination reports that are insufficiently persuasive can lead to rejection of patent application. Patent application can be opposed at the patent office before as well as after grant of patent.

Our Services Includes:

  • 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

Process

  • PublicationAfter drafting and filing of patent application, patent application is kept confidential 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.
  • ExaminationAfter 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 within fixed time period.
  • HearingAfter considering replies to Examination Reports and Hearing, if held, Patent Office disposes of the patent application.
  • OppositionPatent 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.

Timelines

Patent applicant to mandatorily request for examination that can optionally be expedited

Frequently Asked Questions

No, it is an automatic process i.e. you don’t 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.