Patent Prosecution is not merely a process of interaction between an Applicant and/or their Legal Representative and a Patent Office with respect to the patentability of an invention; for the Applicant, it is a test of the legal and technical competence they believe their Legal Representative possesses. A legal representative should have a high level of technical and legal understanding and expertise to prosecute patents, which ultimately provides significant value to the client.

The Indian Patent Office follows a well-defined patent prosecution structure, outlined in the Patent Act, 1970 and the Patent Rules, 2003, which stipulate several deadlines and other documentary requirements. In most cases, such deadlines begin with the priority date of the patent application. The patent prosecution procedure in India begins with the filing of an application for grant of a patent and continues until the application is refused or granted. Throughout the process, maintaining compliance with statutory timelines and procedural requirements is crucial to avoid lapses that could jeopardize the patent grant.

At IIPRD, we provide efficient patent filing services to Indian and International Corporate and Individual Inventors Firms. Our team of experienced professionals is dedicated to ensuring that each patent application is meticulously prepared, filed, and prosecuted in a timely manner. IIPRD has proven itself as one of the fastest firms in filing and reporting to the respective clients, emphasizing our commitment to excellence and client satisfaction. We diligently monitor all deadlines and take the necessary steps to address any issues promptly, ensuring that our clients’ intellectual property rights are protected and advanced. Our proactive approach and attention to detail set us apart as a trusted partner in the patent prosecution landscape

Following the filing of a patent in India, a separate request for patent examination via Form 18/18A must be filed with the Indian Patent Office. This request can be filed at the time of patent application filing or at any time within 31 months of the earliest priority date, according to the recent amendments. Some applicants intend to postpone the filing of a request for examination for commercial reasons, such as to evaluate commercially viability of the invention.

As a result, such applicants can take advantage of the 31-month period and file the examination request a few months or years after the patent filing date. Some patent applicants, on the other hand, desire to expedite the patent examination process by filing such examination requests along with the patent application. When combined with a request for early publication, this can cut the patent prosecution time by about 18 months.

The contents of the patent application are examined by the patent examiner to determine subject-matter eligibility, novelty, inventive step (non-obviousness), industrial applicability. The examiner also checks whether the formal requirements, as laid out in the Act and Rules, are complied with. The patent office then provides a list of objections in the form of a report known as the first examination report (FER). The patent applicant must respond to a First Examination Report (FER) within 6 months from the issuance of the FER. However, the deadline can be further extended up to a certain time period.

The Controller may grant the patent after receiving a suitable response from the applicant. If the response filed by the applicant does not satisfy the requirements laid down by the Act, the Controller shall offer an opportunity for a hearing and decide the case on its merits. Furthermore, after receiving a response to the FER, the examiner may issue additional examination reports, known as Subsequent Examination Reports (SER), which must be responded to by the applicant in a timely manner in order to progress to the grant stage.

The term of a patent in India is 20 years from the date of filing an application for grant of patent in India for both ordinary and conventional patent applications, and 20 years from the date of filing of an international PCT application for PCT national phase patent applications. Following the grant of a patent, a renewal fee must be paid in respect of the third year through to the twentieth year, and it must be paid within the deadline. The pending annuity as of the date of the grant must be paid within three months from the date of grant.

If the renewal fee is not paid within the prescribed time, the patent will be revoked, and during the period between revocation and restoration, the patent owner cannot take any action against any infringement of the invention. Our patent prosecution team at IIPRD, comprised of experienced and dedicated professionals with international experience, has been assisting clients in efficiently handling patent applications during prosecution and securing patent grants.

We recognize the strategic importance of a patent application and its impact on our clients’ business objectives. Our approach involves:

1. Preparation and Analysis of Responses: Crafting detailed and effective responses to office actions/FERs, taking into account best practices and specific requirements of the patent office.
2. Strategic Amendments: Advising on amendments and arguments to maximize the impact and likelihood of patent grant.
3. Incorporating Judicial Precedents: Staying abreast of the latest developments in the field of patents and using judicial precedents to strengthen the arguments.
4. Technical Analysis: Conducting thorough technical analysis of office actions/FERs and cited prior art references to ensure robust and well-supported responses.

Our team, which includes Patent Agents and Patent Attorneys in India, has extensive experience in prosecuting patent applications filed in the Indian Patent Office. As part of these prosecutions, we have responded to several examination reports issued by the Indian Patent Office.

We have also attended several hearings in the Indian Patent Office as part of the patent prosecution process. Our experience has helped us in thoroughly understanding the Indian Patent Act and the nuances involved in prosecuting Indian patent applications.

IIPRD has extensive experience prosecuting and successfully securing patents in foreign countries throughout the world. The Patent Agents and Patent Attorneys in our firm have substantial experience in prosecuting patent applications filed abroad in association with our foreign associates. We also provide patent prosecution support to other law firms and patent attorneys based outside India. Given the analysis required to respond to office actions and the time involved in performing the same, typically, most IP firms entrust us with preparing detailed responses to office actions.