Focus Keyword- Examination of application

Additional keywords- Section 12, Section 13, Search for anticipation

Request and Examination of Patent Application

After a patent application is uploaded under Section 11A, the next step is the examination of the patent application to ascertain whether the invention for which the patent is being sought, can be granted or not. For an invention to qualify for a grant of a patent, it must possess novelty, inventive step (non-obviousness), should be capable of industrial application and should not fall within the categories of non-patentable inventions specified under Section 3 of the Patents Act, 1970. 

Under the Patents Act, 1970, it is mandatory to file a request for patent examination within a prescribed time period, failing which the application is considered withdrawn by the applicant. Therefore, missing the date for filing a request for patent examination has dire consequences resulting in the patent application being dismissed in its entirety. The examination of the patent can be requested in a prescribed manner by:¹

• the applicant; or
• any other interested person. 

The examination of a patent is not an automatic process. The examination is undertaken under the following circumstances:

• on receipt of the request for examination in Form 18 from the applicant or any interested person (third party); or
• on receipt of Form 18A for expedited examination.

The request for the examination should be filed within 48 months from the date of priority or date of filing of the application, whichever is earlier.² Therefore, the examination of a patent application is subject to filing a request for examination under section 11B of the Patents Act, 1970. This process of examination is known as Deferred Examination System.³  

Once a request for examination has been made in respect of a patent application, the Controller must refer the application, specifications of the patent and other documents related to the patent to the Examiner who prepares a report by taking into account the various considerations for granting a patent.⁴ These include:

• the subject matter of a patent, whether or not it is patentable;
• novelty;
• inventive step;
• capable of industrial application. 

The Examiner must also take the following matters into consideration while preparing a report:

• ensure that the application, specifications and other documents related to the patent are in accordance with the provisions of the Patents Act, 1970 and the rules made under the Act;
• while pursuing the application, consider whether the grant of the patent can be objected on any lawful ground;
• consider the investigation results found under Section 13.

The report should be made by the examiner to the Controller within a period of 1 month but should not exceed 3 months from the date when the application was referred to the examiner by the Controller.⁵ This report is known as the First Examination Report (FER). The Controller should dispose of the report of the examiner within 1 month of receiving the report.⁶ 

First Examination Report

The report made by the examiner to the Controller after referring to the application, specifications and other documents related to the invention for which patent is being sought and taking into account the considerations prescribed under Section 12(1) is known as the First Examination Report (FER). The objections made by the examiner should be conveyed to the applicant in the FER. 

The First Examination Report along with the application, specifications or any other documents must be sent to the applicant or his authorised agent within 1 month from the date of disposal of the examiner’s report by the Controller. However, an intimation of the examination should be sent where the request for examination is filed by any other interested person.⁷ Furthermore, the first and the subsequent replies, if any, to the FER should be processed and handled in the order in which the replies are received.      

Additionally, an applicant can also file a request (Form 18A) for an expedited examination of patent application along with the prescribed fee on the following grounds:⁸  

• wherein an international application submitted in India by a competent International Searching Authority or elected as an International Preliminary Examining Authority; or
• where the applicant is a startup. 

To a request for examination, a request for expedited examination can be attached by paying the requisite fees and submitting the documents.⁹

Search for Anticipation

The examiner in order to determine the novelty and newness of an invention must conduct a “search for anticipation by previous publication and by prior claim”¹⁰ with respect to the subject matter of the invention. The object behind doing so is to ascertain whether or not the invention has been anticipated or predicted by:

• previous publication; and
• prior claim. 

Therefore, the invention will lack novelty if the features specified in the claim have been anticipated previously. Thus, the search for anticipation forms an integral part of the examination of a patent application. 

Under Section 13(1) the examiner handling the patent application should investigate to ascertain whether the complete specifications of the invention claimed:

1.  has been anticipated by publication before the date on which the   applicant filed the complete specifications in pursuance of a patent application made in India, on or after the 1st January 1912 (Anticipation by Previous Publication);
2.  is claimed under any claim of any other complete specification published on or after filing the complete specification, where the specification is filed in pursuance of a patent application made in India and dated before or claiming the priority date before the date of checking anticipation (Anticipation by prior Claim). 

Anticipation by Previous Publication

Rule 28 of the Patents Rules, 2003 prescribes the procedure to be followed in case of anticipation by previous publication. The examiner should conduct an investigation to ascertain whether the invention claimed in any claim of the complete specification:¹¹

• has been anticipated by publication in India or elsewhere;
• in any document before the applicant filed the complete specifications.  

Therefore, where an invention is anticipated by previous publication as per section 13(1)(a) or 13(2), the Controller can “refuse the application unless it is shown by the applicant that:

• the priority date of the claim is not later than the date on which the relevant document was published, or
• amends the complete specification to the satisfaction of the Controller.”¹² 

Where the Controller after conducting an investigation under Section 13 of the Patents Act, 1970 is satisfied that the invention which is being claimed has been published in any specification or document, the Controller should communicate the objections to the applicant and the applicant will be given an opportunity to amend the specification.¹³ The applicant, if he so requests should be given an opportunity to be heard:¹⁴

• if the objections communicated to him by the Controller are contested by him; or
• he refiles his specification along with the observations as to whether or not the specification is to be amended.

The applicant should make the request ten days earlier than the final date for putting in an application for the grant of being heard. Furthermore, the Controller may allow a request for hearing to be filed within a shorter period if the circumstances of the case demand so. 

If within a period of 1 month from the date the objections are communicated to the applicant, the applicant requests for a hearing or the Controller deems it fit to do so, irrespective of whether the applicant has refiled the application or not, date and time shall be fixed for a hearing having due regard to the period remaining for putting the application in order and other circumstances of the case.¹⁵ 

A 10 days notice must be given to the applicant of such hearing or a shorter notice that is deemed reasonable in the opinion of the Controller, in the circumstances of the case and the applicant must immediately notify the Controller whether or not he will attend the hearing.¹⁶ The hearing can also be conducted at the appropriate office via video-conferencing or audio-visual communication devices.¹⁷ 

The applicant after being heard or where the applicant did not attend the hearing or notified his desire to not be heard, the Controller can:¹⁸

• specify or permit amendment that should be made to the specification; and
• may refuse to grant the patent if the specified amendment is not made within the prescribed period.

All the relevant documents and written submissions should be filed within 15 days from the date of hearing. 

Anticipation by Prior Claim

Rule 29 of the Patents Rules, 2003 prescribes the procedure to be followed in case of anticipation by prior claim. Where an invention is anticipated by prior claim according to Section 13(1)(b), the Controller may “direct that a reference to the other specification be inserted by way of notice to the public unless:

• the applicant shows that the priority date of his claim is not later than the priority date of his claim of the other specification; or 
• amends the specification to the satisfaction of the Controller.”¹⁹  

Therefore, when the complete specification of an invention claimed in any claim of any other specification falls under Section 13(1)(b), the applicant must be informed and given an opportunity to amend his specification.²⁰ Where an objection under Section 13(1)(b) is outstanding but the applicant’s specification is in order for grant, the grant of a patent can be postponed by the Controller and the applicant be given a period of 2 months to remove the objection.²¹  

Conclusion

An invention is the discovery of something which has not yet been found or discovered by anyone. An essential attribute of an invention in the context of Patent laws is that the inventor invented, discovered or adopted it first. Therefore, the underlying principle of granting a patent to an invention is that the specification of an invention for which a patent is being sought is something new and novel. 

It is for this precise reason that a patent application is published and examined by an Examiner, so as to ascertain the novelty, inventive step and industrial usefulness of the invention and affirm that the complete specification of the invention has not been claimed previously by anyone. Therefore, the application, specification and other documents related to the invention must be in accordance with the provisions and rules framed under the Act. 

The objections that emerge on examination of the patent application are communicated to the applicant who must be accorded an opportunity of being heard and he may also make necessary amendments to the complete specification to the satisfaction of the Controller. Therefore, the examiner in charge of the patent application, in order to ascertain the novelty and originality of an invention should search for anticipation by previous publication or prior claim in relation to the subject matter of the invention. This comprises an important part of the examination of a patent application. 

After examination of the patent application a First Examination Report (FER) is furnished by the examiner to the Controller who transfers it to the applicant. The applicant must comply with the requirements within a period of 6 months from the date of the FER. This can be further extended by 3 months. 

It is during this period that the objections arising from the specification of the invention for which a patent is sought are conveyed to the applicant and the applicant is given an opportunity to be heard or he may amend the complete specification to the satisfaction of the Controller. Therefore, for anticipation, the patentee cannot be allowed to prevent what has been previously done lawfully by a man before the grant of patent.  

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Endnotes

1.  The Patents Act, 1970 (Act 39 of 1970), s. 11B (3). 

2.  The Patent Rules, 2003, Rule 24B (1)(i) available at http://www.ipindia.nic.in/writereaddata/Portal/IPORule/1_70_1_The-Patents-Rules-2003-Updated-till-23-June-2017.pdf. 

3.  http://www.ipindia.nic.in/writereaddata/Portal/IPOGuidelinesManuals/1_59_1_15-wo-ga-34-china.pdf 

4.  The Patents Act, 1970 (Act 39 of 1970), s. 12 (1). 

5.  The Patents Rules, 2003, Rule 24B (2)(ii). 

6.  The Patents Rules, 2003, Rule 24B (2)(iii). 

7.  The Patents Rules, 2003, Rule 24B (3) 

8.  The Patents Rules, 2003, Rule 24C (1). 

9.  The Patents Rules, 2003, Rule 24C (2). 

10.  The Patents Act, 1970 (Act 39 of 1970), s. 13. 

11.  The Patents Act, 1970 (Act 39 of 1970), s. 13 (2). 

12.  The Patents Act, 1970 (Act 39 of 1970), s. 18 (1). 

13.  The Patents Rules, 2003, Rule 28 (1). 

14.  The Patents Rules, 2003, Rule 28 (2).

15.  The Patents Rules, 2003, Rule 28 (3). 

16.  The Patents Rules, 2003, Rule 28 (4). 

17.  The Patents Rules, 2003, Rule 28 (6).

18.  The Patents Rules, 2003, Rule 28 (5).

19.  The Patents Act, 1970 (Act 39 of 1970), s. 18 (2). 

20.  The Patents Rules, 2003, Rule 29 (1). 

21.  The Patents Rules, 2003, Rule 29 (2).