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.

In accordance with the patent rules, applicants can request the patent office for expedited patent examination based on following eligibility criteria:

(a) The patent application has filed a PCT international phase application and has further selected India as an International Searching Authority (ISA) or as an International Preliminary Examining Authority (IPEA) in such PCT application.

(b) The applicant is a Start-up or a small entity or a female natural person;

(c) The applicant is a government in case of an Indian applicant, or is a similar entity in case of a foreign applicant; or

(d) The applicant is eligible under an arrangement for processing an international application pursuant to an agreement between Indian patent office with another participating patent office (Patent Prosecution Highway).

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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.

What are the common grounds for rejecting a patent application in India?

As a leading patent attorney specializing in India’s patent application process, I would like to address the critical question, “What are the common grounds for rejecting a patent application in India?” Indian patent law, governed by the Patents Act of 1970 and the Patents Rules of 2003, outlines various reasons for patent application rejection. In this article, we will delve into these grounds, which include novelty, inventive step, industrial applicability, insufficient disclosure, non-patentable subject matter, double patenting, and incomplete or incorrect forms and fees.

Novelty: A patent application may face rejection if the invention lacks novelty. To be considered novel, the invention must not have been previously disclosed in any prior art or publication before the application’s filing or priority date. This requirement applies to global novelty, not just within India.

Inventive Step: An invention must involve a technical advancement or economic significance that is not obvious to a skilled professional in the relevant field. If the invention is deemed obvious, it may be rejected due to a lack of inventive step.

Industrial Applicability: To be patentable, an invention must be capable of industrial application. Rejection may occur if the invention is merely a theoretical concept or idea without practical applicability.

Insufficient Disclosure: Patent applications that fail to provide sufficient and clear disclosure of the invention, including necessary drawings and the best method of performing the invention, can be rejected.

Non-Patentable Subject Matter: India’s Patents Act, 1970, lists specific inventions that are not patentable. Examples include discoveries of scientific principles, mathematical methods, computer programs per se, business methods, and methods of agriculture or horticulture, as per the provisions of section 3 of The Patents Act.

Double Patenting: To avoid double patenting, applications for inventions that have already been patented or have a pending patent application may be rejected.

Incomplete or Incorrect Forms and Fees: Rejection can occur if required forms are not accurately completed or appropriate fees are not paid.

To improve the chances of obtaining patent protection for your invention, thoroughly research prior art, draft a clear and complete description of the invention, and adhere to the guidelines provided by the Indian Patent Office. Engaging a skilled patent attorney or patent agent can further help you navigate this complex process.

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