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Patents in India – Express and Expedite Patent Examination in India

EXPRESS AND EXPEDITE PATENT EXAMINATION IN INDIA

In India, an application for patent only goes through examination when a request for such examination is made to the Controller of Patents within a period of 48 months from the date of filing of that patent application, or from the date of priority of the first mentioned patent application, or within a span of 6 months from the date of filing of a further patent application such as a Divisional Application, whichever is later.

PCT National Phase Application in India

In case of a PCT (Patent Corporation Treaty) National phase application, an express request, along with a prescribed fee according to Rule 20(4)(ii) of the Patents Rules, 2003 (as amended), for examination can be made before the expiry of 31 months from the priority date of the said PCT national phase application. Once the express request has been made, the Controller is required to pass on that application to an examiner, and the examiner is then required to summarize and prepare an examination report within 1 month but not exceeding three months.

India’s federal Ministry of Commerce and Industry {Department of Industrial Policy and Promotion} in 2016 introduced new provisions under the Patents Rules, 2003, which permits a patent application to move out of turn for a faster prosecution. According to the new provisions the Indian Patent Office (IPO) are progressing applications out of turn for the examination if a request for expedited examination for an application along with the prescribed fees filed under Rule 24C of the Patents Rules, 2003 (as amended).

Expedited Patent Examination

However, the provision for expedited examination is only available to, startups and applicants who have designated “India” in their respective PCT applications, as an International Searching Authority (ISA) or International Preliminary Examining Authority (IPEA). Therefore, selecting India as ISA in a PCT application can be favorable for the Applicants to expedite grant process of corresponding PCT national phase Indian application. Under the expedited examination, the examiner is obligatory to give the First Examination Report (FER) within 1 month but not exceeding 2 months from the date of reference of the application to the Examiner for examination by the Controller, and further, the final disposal of the application is to be taken within 3 months of filing of response to the First Examination Report.

In India, patent offices initiated the expedited examination process in 2016 and, using this expedited examination process, many startups in India, including Optimus Pharma Pvt. Ltd., a Hyderabad based company, were able to get the patents granted within a record time of almost 10 months. The startup got a patent process of Apixaban, an anti-coagulant, in record time of almost 4 months under the expedited examination process. Such diminution in time will for sure help in cost efficiencies related to the management of a patent application up to their grant.

To provide the high demand of request for expedited examination of patent applications, IPO has also recently employed more than 250 patent examiners, affecting a substantial increase in the number of existing patent examiners. With this increase in the number of employed patent examiners, the period of ordinary patent examination is substantially declined to 2-3 years, which used to be almost 6-7 years and sometimes even more.

International Patent Applications filed in India under National Phase before the Indian Patent Office

A PCT international patent application under the Patent Cooperation Treaty can be filed before the Indian Patent Office before the expiry of 31 months from the priority date of the patent application. The complete patent specification should be filed along with Form 1.

In case, the language of the international patent application is in any other foreign language other than English, it has to be translated in English and the translated English copy has to be duly verified by the patent applicant or the person duly authorised by him that the contents thereof are correct and complete.

The patent translation of the international application should include the following details:

i. the patent description;
ii. the patent claims as filed;
iii. any text matter of the drawings;
iv. the patent abstract; and
v. in case the applicant has not elected India and if the claims have been amended under Article 19, then the amended claims together with any statement filed under the said Article;
vi. in case the patent applicant has elected India and any amendments to the description, the patent claims and text matter of the drawings that are annexed to the international preliminary examination report.

Advantage to Foreign Entities Filing Patents under PCT & entering India in National Phase

The patent attorney can file express patent examination request in Form 18 / Form-18A along with the fee specified in first schedule, at any time before thirty one months from the priority date.

Frequently Asked Questions by Inventors’ Worldwide

  • What is the Cost of filing patents in India?
  • What is patentable under the Indian Patent Act?
  • What are the different Patent filing options available?
  • What is the Patent filing procedure in India?
  • What is the Patent process time-line?
  • How long does it take to Get a Patent granted in India?
  • Are software inventions patentable in India?
  • What is the jurisdiction of a software patent?
  • Is creating a prototype necessary before filing for patents? Should I apply for patent before publishing?
  • Are business methods patentable in India?
  • How to conduct a patent search for my invention?
  • Is my invention already invented?
  • When should I apply for a patent?
  • Can I file for a patent outside India, without filing in India?
  • Why should I determine if I have freedom to operate for my technology before launching it in market?
  • Should I apply for a patent in my individual capacity or in my companies name?
  • When will my patent application be examined by the patent examiner?
  • Does a patent give me the right to use my invention?

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 filingspatent services in India and global patent consulting services.

Global Blockchain Lawyers (www.GlobalBlockchainLawyers.com) is a digital platform to discuss legal issues, latest technology and legal developments, and applicable laws in the dynamic field of Digital Currency, Blockchain, Bitcoin, Cryptocurrency and raising capital through the sale of tokens or coins (ICO or Initial Coin Offerings).

Blockchain ecosystem in India is evolving at a rapid pace and a proactive legal approach is required by blockchain lawyers in India to understand the complex nature of applicable laws and regulations.

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