Prosecution and Opposition

1. Can the examination of a patent application in India be expedited?

An applicant may file a request for expedited examination at any time within 48 months of the date of filing or date of priority, whichever is earlier if:

a) the applicant is any one of the following:
– a start-up;
– a small entity;
– a female applicant;
– in case of joint applicants, all the applicants are natural persons, and at least one of the those applicants is a female;
– a department of the Government;
– an institution established by a Central, Provincial or State Act, which is owned or controlled by the Government;
– a Government company;
– an institution wholly or substantially financed by the Government;
or

b) the application pertains to a sector, which is notified by the Central Government

or

c) in the case of a National Phase application, India is chosen as the competent ‘International Searching Authority’ or elected as an ‘International Preliminary Examining Authority’ in the corresponding PCT application,
or

d) the applicant is eligible under an arrangement for processing a patent application pursuant to an agreement between the IPO and a foreign Patent Office.

Additionally, a request for early publication is required to be filed, in case the application has not already been published.

2. Is there a limit on the number of requests for an expedited examination that are taken up by the IPO?

Yes, the IPO entertains a limited number of requests for expedited examination in a year. This number is publicly notified at the start of the calendar year, and once the limit is met, no more requests for expedited examination are entertained. Therefore, it is recommended that the request should be filed at the start of the calendar year.

3. Is it possible to file a request for expedited examination after filing a regular request for examination?

Yes, if the conditions for filing an expedited examination are met, the applicant may convert a regular request for an examination into a request for expedited examination by making a request in the prescribed format and paying the difference in the prescribed fee.

4. How can a patent applicant expedite the grant of a patent application in India?

The following may expedite the grant of an application:

a) Filing a request for an early publication of the application (as an application is taken up for examination only after it has been published).

b) Filing a request for examination along with the application itself.

c) In case of a National Phase application, filing an express request for examination before the expiry of 31 months.

d) Filing a request for expedited examination, if the patent applicant qualifies.

e) Filing a response to the First Examination Report at the earliest.

f) Filing all the necessary formal documents at the earliest.

5. Is it possible to initiate an examination of a National Phase application before the expiry of the 31 months’ period?

Yes, an express request for examination may be filed to initiate the examination of a National Phase application before the expiry of the 31 month period.

6. Is India part of any Patent Prosecution Highway (PPH) program?

The IPO has entered into a bilateral PPH pilot program with the Japanese Patent Office (JPO) for a trial period of three years starting from November 2019.

Under this program, the IPO will receive patent applications only in the technical fields of electrical engineering, electronics, computer science, information technology, physics, civil engineering, mechanical engineering, textiles, automobiles, and metallurgy.

The JPO may receive applications in all fields of technology. A request for expedited examination is required to be filed by the applicant under the program along with necessary information and documents.

The number of requests for the PPH filed at the IPO will be limited to 100 cases per year and entertained on a first come first serve basis.

An applicant who has filed a patent application, either alone or jointly with any other applicant, can file up to 10 PPH requests at the IPO in a year.

7. Can a patent application be withdrawn in India? If yes, how?

a) An applicant may withdraw a patent application by filing a request for withdrawal at the IPO any time before the grant of the patent. If the applicant also intends to prevent the publication of the application, the request must be filed three months prior to the 18 month period from the date of filing or the priority date; or

b) An application shall be deemed to be withdrawn if:
– a request for examination is not filed; or
– a response to the examination report issued by the IPO is not filed.

8. Is there any fee for withdrawal of application?

There is no fee for withdrawal of a patent application.

9. Is it possible to obtain a refund of the application and/or examination fee, if an applicant withdraws a patent application before the examination?
An applicant can claim a refund of up to 90% of the examination fee if the applicant withdraws the application before the issuance of the examination report. The application fee is not refundable.

10. Can a Controller’s decision be appealed or challenged when a patent is refused in India?
Yes, it is possible to appeal/ challenge a Controller’s decision refusing the grant of a patent in India. In this regard, following options are available to the applicant:
a) The applicant may make an application to the Controller for the review of his decision. This application must be made within one month from the date of communication of the decision to the applicant.

b) The applicant may make an appeal at the High Court. This appeal must be made within three months from the date of the decision.
11. Can a patent application or a patent be challenged in India?

Yes, a patent application/ patent may be challenged by a third party. The provisions available for challenging a patent application/ patent have been summarized in the table below:

* Although the Act indicates that any person can file a pre-grant opposition, in view of recent jurisprudence, it is recommended that a person who is involved in the field of technology of the Patent files a pre-grant opposition.

** Section 2(1)(t) of the Act defines “person interested” as including a person engaged in, or in promoting, research in the same field as that to which the invention relates.