Prosecution of a patent application before the India Patent Office

  1. Can a telephonic hearing be conducted with the Controller?

    Yes, it is possible to have a telephonic hearing with the Controller. However, it is subject to discretion of the Controller.

    Also, the provision of video conferencing with the Controller has been introduced, though this is also subject to the Controller’s discretion.

  2. Can a Controller’s decision be appealed or challenged when a patent is refused?

    Yes, it is possible to appeal/ challenge a Controller’s decision refusing the grant of a patent. In this regard, following options are available to the applicant:

    1. 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.
    2. The applicant may make an appeal at the Intellectual Property Appellate Board (IPAB). This appeal must be made within three months from the date of decision.
  3. Can a patent application/ patent be challenged by a third party?

    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:

    S. No. Type of challenge Where When By whom
    1 Pre-grant Representation Indian Patent Office Any time during pendency of the application, and after publication Any person
    2 Post-grant Opposition Indian Patent Office Within one year of date of publication of grant of patent Any person interested
    3 Revocation proceedings Intellectual Property Appellate Board (IPAB) Any time after the grant of the patent Any person interested
    4 Revocation proceeding in a counterclaim High Court After a suit for infringement has been filed Defendant

    Note: Section 2(1) (t) of the Patents 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.