Patent Prosecution in India- by Pallavi Bhatia

Introduction:

Patent prosecution stage of patent application has a crucial step of receiving first examination report (now will be called as FER) for the application from the Patent Office. Generally, timeline for filing FER Reply  is 6 months from date of receiving of FER, this time can be extended up to 3 months by filing form-4 within the initial 6 months of receiving of FER. Applicant is bound to reply all the objections which has been cited by controller.

1. Objection of broadening of preamble and title– As Indian patent provides the mandatory requirement of filing application with title of the invention and claims of the invention. Now claims are provided with preamble which defines the subject matter of the invention, so sometimes patent office is skeptical for broadening of the preamble for example-

A vehicle comprising;

a traction assembly control system,

Now in this independent claim invention is about the traction assembly for a saddled type vehicle, but applicant in preamble indicates that this invention is having the scope which is extending to any vehicle it can be saddle type, three-wheeler or 4-wheeler. So that’s why now this practice is getting objected by patent office. Similarly for this invention there can be title which is “A vehicle” so that title can also be objected by the patent office because subject matter of invention is to provide traction assembly.

• Extension of time for response- the statutory time limit which is provided by patent law for filing of response to FER is 6+3 months, but in recent judgment in European union represented by European union Vs Union of India, Hon’ble Justice Prathiba M. Singh gave relief to the applicant in which there was mistake of patent agent in not filing response to FER and then application was abandoned because of lapse of statutory time. So now it was on the applicant to prove that it was mistake of patent agent in filing response. In this case relief was given to the applicant. Hence it initiated the new jurisprudence in the law.

• Filing of petition for more than one objection– As per Patent rule, 2003  certain time limit for filing of forms has been provided, such as for filing of form 3 the time limit under rule 12 is 6 months, but if applicant failed to file in 6 months, then, applicant needs to file petition for the form for delay for not complying the requirement of the office. One of the disadvantages of this is that there is certain fee which is attached to it. so, it may increase the burden on applicant economically.
• Reduction in time for filing of response- As with in the 48 months from priority date, applicant needs to file form 18 for examination of application. Then after that under rule 24B sub rule (ii),(iii) and (iv), controller can take maximum time of 5 months to dispose the FER to applicant and then applicant have 6+3 months to file response to FER. Hence it took almost 61 months to get grant in FER response stage. And total 240 months (20 years) are the time limit in which applicant can enjoy the monopoly for the patent, and it took almost 61 months to get grant so finally applicant got 179 months of right, but this is when applicant is getting grant in FER stage itself. But if the reply to FER is filed in 1^st month of receiving of FER then it can help the applicant to get more time to enjoy monopoly. 

Conclusion:

With the increasing patent applications and also the rapid growth in start-up culture in India, technology is overlapping and now the dynamics of patent office are also changing because they also have to be diligent enough to grant the application which are not of similar subject matter and also increasing litigation in patent indicates that applicant are in conflict with patent office, if the reasoning provided by patent office in granting the application is vague or providing ambiguity in granting of two patent application on similar subject matter. Hence these are certain new developments in patent application stage in which patent agent, applicant and also patent office needs to be more diligent in performing duties.

DISCLAIMER- 

The views are that of author’s own and not necessarily the views of IPTSE Academy. This blog is a platform for academic discussions and hence authors have been given flexibility to convey their thought process.

AUTHOR:

Pallavi Bhatia,

Student of Rajiv Gandhi School of Intellectual Property Law,

IIT Kharagpur