Indian Patent Office follows a well-defined patent prosecution procedure, which includes various deadlines and other documentary requirements. In general, such deadlines mostly begin from the priority date of the patent application. Patent prosecution process in India begins once patent is filed and continues till examination & registration of patent.
Patent Publication
Once a patent application has been filed with Indian Patent Office, the next step is patent publication.
Under normal circumstances, a patent application is published after 18 months from the date of filing or date of priority, whichever is earlier.
However, patent applicants can expedite the patent prosecution by filing request for early publication via Form 9, whereby patent applications are published within 6 weeks of filing said request. This can greatly reduce the time taken by patent office to complete post-filing steps, and patent applicants can easily save upto 18 months from the entire patent prosecution time period.
Patent Examination
After filing a patent in India, a separate request for patent examination via Form 18 is required to be filed with Indian Patent Office. This request can be filed either at the time of filing patent application or anytime within 48 months from the earliest priority date.
Some patent applicants intend to delay patent prosecution process for business reasons as the claimed invention might need some time for being completely embodied as a commercially viable product. Hence, such applicants can take advantage of the 48 months timeline and file the patent examination request after few months / years of the patent filing date.
Alternatively, some patent applicants prefer to expedite the patent examination process by filing such examination request along with the patent application. This combined with a request for early publication can reduce the patent prosecution time period by approx. 18 months.
First Examination Report (FER) or Office Action
The patent examiner examines the contents of patent application to determine novelty, inventive step (non-obviousness) and industrial application. Thereafter, the patent office issues a set of objections generally known as the first examination report (FER) or the office action.
Office Action Response
The patent applicant is required to submit a response to office action (FER) within 12 months of issuance of said office action.
Grant of Patent
After receiving a satisfactory response from the applicant, the examiner grants the patent. In some cases, a hearing may be required. In addition, the examiner can issue further office action after receiving response to FER, which can be responded to by the applicant in a timely manner to proceeds towards grant stage.
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Our team of advanced patent attorneys assists clients with patent searches, drafting patent applications, and patent (intellectual property) agreements, including licensing and non-disclosure agreements.
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).
Regularly invited to speak at international & national platforms (conferences, TV channels, seminars, corporate trainings, government workshops) on technology, patents, business strategy, legal developments, leadership & management.
Working closely with patent attorneys along with international law firms with significant experience with lawyers in Asia Pacific providing services to clients in US and Europe. Flagship services include international patent and trademark filings, patent services in India and global patent consulting services.
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