Pre grant and post grant opposition proceedings, if any, may precede the grant of a patent. However, the Patent Application must be filed first in order to be granted.
According to the Patent Act 1970, which governs law pertaining to intellectual property rights in patents, patent applications must be filed and pursued within a certain time period.
A patent application must be filed within a certain amount of time in order for the patent to be granted. How does the time limit work? We will look at different provisions governing this process.
In order to appreciate this process, Section 6, 7 of Patent Act 1970 along with its sub sections are reproduced as under:
“6. Persons entitled to apply for patents:
(1) Subject to the provisions contained in section 134, an application for a patent for an invention may be made by any of the following persons, that is to say,-
(a) by any person claiming to be the true and first investor of the invention;
(b) by any person being the assignee of the person claiming to be the true and first inventor in respect of the right to make such an application;
(c) by the legal representative of any deceased person who immediately before his death was entitled to make such an application.
(2) An application under sub-section (1) may be made by any of the persons referred to therein either alone or jointly with any other person.
7. Form of application
8.
(1) Every application for a patent shall be for one invention only and shall be made in the prescribed form and filed in the patent office.
(2) Where the application is made by virtue of an assignment of the right to apply for a patent for the invention, there shall be furnished with the application, or within such period as may be prescribed after the filing of the application, proof of the right to make the application.
(3) Every application under this section shall state that the applicant is in possession of the invention and shall name the owner claiming to be the true and first inventor; and where the person so claiming is not the applicant or one of the applicants, the application shall contain a declaration that the applicant believes the person so named to be the true and first inventor.
(4) Every such application (not being a convention application) shall be accompanied by a provisional or a complete specification.”
Section 6 of the Patent Act governs the first step in filing a patent application, while Section 7 of the Patent Act governs the form of the patent application. Section 8 addresses the requirement for foreign application disclosure, while Sections 9 and 10 address the requirements for provisional and complete specification.
The publication of the patent application in a patent journal is the second step in the patent application process. Section 11A of the Patent Act of 1970 and Rule 24 of the Patent Rules 2003 govern this.
Typically, the patent application is published in the Patent Journal within 18 months of filing. However, there is a procedure for urgent publication of the patent application upon payment of an urgent fee. The urgent filing request is governed by Section 11 A (2) of the Patent Act 1970 and Rule 24A of the Patent Act 2003.
The third stage of the patent application process has begun. It entails submitting a request for examination, which is governed by Section 11B of the Patent Act 1970 and Section 24 B (1) of the Patent Rules 2003.
According to Section 24 B (1) of the Patent Rules 2003, the request for examination must be made within 48 months of the date of priority of application or the date of filing of the patent application, whichever is earlier.
To better understand this process, Rule 24 of Patent Rule 2003 and its sub sections are reproduced below:
“Chapter IV Publication and Examination of Applications
24. Publication of application:
The period for which an application for patent shall not ordinarily be open to public under sub-section (1) of section 11A shall be eighteen months from the date of filing of application or the dale of priority of the application, whichever is earlier
Provided that the period within which the Controller shall publish the application in the journal shall ordinarily be one month from the date of expiry of said period, or one month from the date of request for publication under rule 24A.
24A. Request for publication:
A request for publication under sub-section (2) of section 11 A shall be made in Form 9.
24B. Examination of application:
1.i. A request for examination under section 11 13 shall be made in Form 18 within forty-eight months from the date of priority of the application or from the date of filing of the application, whichever is earlier;
ii. The period within which the request for examination under sub-section (3) of section 11B to be made shall be forty-eight months from the date of priority if applicable, or forty-eight months from the date of filing of the application;
iii. The request for examination under sub-section (4) of section 11B shall be made within forty-eight months from the date of priority or from the date of filing of the application, or within six months from the date of revocation of the secrecy direction, whichever is later;
iv. The request for examination of application as filed according to the 'Explanation' under sub-section (3) of section 16 shall be made within forty-eight months from the date of filing of the application or from the date of priority of the first mentioned application or within six months from the date of filing of the further application, whichever is later;
v. The period for making request for examination under section 11B, of the applications filed before the 1st day of January, 2005 shall be the period specified under the section 11B before the' commencement of the Patents (Amendment) Act, 2005 or the period specified under these rules, whichever expires later.
2.i. The period within which the Controller shall refer the application and specification and other documents to the examiner in respect of the applications where the request for examination has been received shall ordinarily be one month from the date its publication or one month from the date of the request for examination whichever is later:
Provided that such reference shall be made in order in which the request is filed under sub-rule (1).
i. The period within which the examiner shall make the report under sub-section (2) of section 12, shall ordinarily be one month but not exceeding three months from the date of reference of the application to him by the Controller;
ii. the period within which the Controller shall dispose off the report of the examiner shall ordinarily be one month from the date of the receipt of the such report by the Controller.
3.A first examination report along with the application and specification shall be sent to the applicant or his authorised agent ordinarily within six months from the date of the request for examination or six months from date of publication whichever is later. In case other interested person files the request, for examination, an intimation of such examination may be sent to such interested person.
4.The time for putting an application in order for grant under section 21 shall be twelve months from the date on which the first statement of objection is issued to the applicant to comply with the requirements.”
Now, within one month of publication or within one month of the applicant's request for examination, whichever comes first, the Controller of Patents must recommend the published Patent Application to the examiner of Patents for examination. The Patent Rules of 2003, Rule 24B(2)(1), governs this procedure.
The controller of patents must refer the subject to the patent examiner, who must then deliver a report within one month after receiving the referral. Rule 24B(2)(ii) of the Patent Rules 2003 governs this exercise.
The Controller of Patent must dispose of the examiner's report within one month of receiving it, while subsequent stages are controlled by Rule 24 B (2) (iii) of the Patent Rules 2003.
The issuance of the first examination report is the following action, and it must be completed within a month of the disposal of the examiner's report in accordance with Rule 24B(3) of the Patent Rules 2003.
The applicant must now respond to the examination report and, if necessary, any additional objections raised by the controller in accordance with Rule 24 B. (iv). But no deadline has been established for it.
Setting a deadline for granting the application within six months of the date the initial examination report is issued is the next stage. This timeline is stipulated in Rule 24B(5) of the Patent Rules of 2003, and it may also be extended by a further three months under Rule B(6) of the same rules.
A patent applicant is required to complete all required compliances on time in accordance with Section 21 of the Patent Act of 1970, which sets the time for filing an application before it can be granted, or the application will be regarded abandoned.
It has not been made clear if the applicant must submit a response to the initial examination report in accordance with Rule 24 B(2)(iii) of the Patent Rules 2003.
However, the maximum period for putting a patent application in order for grant is nine months, as per Rules 24 B (5) and (6).
Due to all of these considerations, it is possible that it will take a maximum of nine months to complete the test report's needs.
Additionally, the pre-grant opposition proceeding, if any, is part of the process of granting a patent. Even in pre-grant opposition proceedings, the requirement of timely filing of the reply and evidence applies.
Nonetheless, it is the applicant's responsibility to meet the requirements of the first examination report or any further objections raised by the controller of examiner, if any, within 9 months. It is critical for any patent applicant to respond to the patent controller's objection in a timely manner.
Ajay Amitabh Suman, IPR Advocate,
The Hon'ble Delhi High Court,
Email: ajayamitabh7@gmail.com,
Mob:9990389539
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