SUBJECT- PATENT LAW
TOPIC- Examination of patent application
SUBMITTED BY - SUBMITTED TO-
MAYANK DWIVEDI DR. PRABHAT KUMAR SAHA
B.A.LL.B (HONS.)
10TH SEM
16225BLT032
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ACKNOWLEDGEMENT
I have taken efforts in this assignment however it would have not been possible without the kind
help and support of many individuals, I would like to extend my sincere thanks to all of them.
I am highly indebted to the teacher in charge Dr. Prabhat Kumar Saha for his guidance and for
providing necessary information regarding the project.
I would like to express my gratitude towards my parents for their kind cooperation and encouraged
me in completion of this assignment.
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INDEX
S.No Topic Pg.No
1. Abbreviation 4
2. Meaning 5
3. Importance of examination 7
4. Requirement of examination 7
5. Provision of patent examination 8
6. Bibliography 9
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Abbreviation
S.no Abbreviation Full form
1. WTO WORLD TRADE ORGANISATION
2. TRIPS TRADE RELATED ASPECTS OF
INTELLECTUAL PROPERTY RIGHTS
3. CBD CONVENTION ON BIOLOGICAL DIVERSITY
4. USA UNITED STATES OF AMERICA
5. FER FIRST EXAMINATION REPORT
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MEANING OF PATENT
The term patent has its origin in the Latin term “litterae patentes”. The expression meant
grant of some privileges by the government of the country to one or more individuals. So,
a patent is an exclusive right granted by the government to a person who invented or
manufactured an article according to the invented process for a limited period.
A patent is a form of “Industrial property”. The owner can sell the whole or part of this
property. He can also grant license to others to use it.
The Patent Act, 1970 does not define the term patent. Section 2(1)m of the act only says
that patent means a patent for any invention granted under this act. Patent can be defined
as the exclusive right to use or exercise an invention granted to a person for a limited
period (term of patent) in consideration of the disclosure ( complete specification) of the
invention.
In simple words , a patent is a government sanctioned monopoly right granted over a new
invention for a limited period. The person to whom a patent is granted is known as the
patentee.
What is the process for getting a patent in India?
An Indian patent application goes through the following stages:
1. Filing
2. Filing a Request for Examination
3. Publication
4. Examination
5. Grant
Once a patent application is filed in India and published after 18 months of filing the
application, the next step involves the examination of the patent application. The
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examination process starts once the applicant files a request for examination within 48
months from the date of filing of the application or the priority date whichever is earlier.
During the first examination stage, the examiner prepares the examination report
incorporating all the statutory objections for the given patent application. The examiner
performs a patent search in order to identify the prior arts relevant to the invention. The
objections are well communicated and properly defined so as to be understood by the
addressee without seeking further clarification. The First Examination Report (FER) is
generally sent to the applicant along with the application and specification within six
months from the date of publication or from the date of request for examination. The law
in place requires that the objections are supported by correct legal provisions and proper
reasoning. The objections once taken are maintained and are withdrawn only after
justifying the proper reason for withdrawal.
The examination report may either be favorable or adverse to the applicant. If the report
is favorable, the applicant has to put the application in order for grant within 12 months
from its date. If the report is adverse, it normally includes formal objections relating to
errors in the Forms or Fees and substantive objections relating to patentability
requirements. During the process, the applicant can draft a response by amending the
application in order to overcome the objections raised in the FER. The amendment can
be allowed only if it is by way of disclaimer, correction or explanation. The amendment
will not be allowed if the specification as amended describes matters which are not in
substance disclosed or shown in the specification. Alternatively, the applicant may also
request for a hearing within 1 month from the date of receiving the examination report to
explain the reasons for non-acceptance of objections to the examiner. The examiner can
also withdraw the application any time after filing of application and before the grant of
patent by filing a written request and paying the requisite fee.
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Importance of patent examination
The Patent system creates an exclusivity for a limited period to the owner of an invention.
Such exclusivity, at a first glance, may appear to restrict competitiveness in the market.
But the market loss, from this the barrier created by this exclusivity, is compensated by
the entry of new technologies in the market accompanying therewith potential for further
growth of industry However, this dynamics may be seriously impaired by the bad patents
granted to an undeserving invention. It is therefore obligatory that the exclusivity in the
form of patent is granted to only such inventions which meet the criteria laid down under
the Patents Act. Patents Act therefore, stipulates different benchmarks which need to be
satisfied for an invention to become eligible for grant. For instance, Patents Act requires
that only those inventions should be allowed for grant which fulfil the criteria of novelty,
inventive step, industrial applicability and other conditions for patentability.
Request for examination
The Patents Act, 1970 provides for examination of patent application only on filing of
request for examination by the applicant or any other interested person [section 11 B].
This request can be filed on Form-18 with prescribed fee at any time within 48 months
from the date of priority or from the date of filing of the application, whichever is earlier.
The patent application is referred to the examiner strictly in order of the requests filed.
The examiner to whom the application is referred for examination has to submit his report
to the Controller ordinarily within a period of one month from such reference but not
exceeding three months from such reference [Rule 24B (2)].
Allocation of application to examiner for examination: Once the request for examination
is received and the application has been published, the Controller shall refer the particular
application to an examiner for conducting examination and search in accordance with
section 12 and 13 of the Patents Act, 1970. Before such reference the controller has to
take the following points into consideration. In order of filing of request: Reference of
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patent application shall be strictly in accordance with the sequential order of filing of the
request for examination.
The patent examination can broadly be classified in two distinct forms,
• Formal examination
o Include Timelines of filing documents and RQs, Forms and fee, right to file, priority
rights etc.
• substantive examination
o Understanding the invention
o Sufficiency of disclosure
o Understanding the scope of claims
o Unity of invention
Provision of Examination of Patent application
The examination of patent application is conducted in accordance with the
provisions of section 12 of the Patents Act, 1970
Section 12 Examination of application (1) When a request for examination has
been made in respect of an application for a patent in the prescribed manner under
sub-section (1) or sub-section (3) of section 11B, the application and specification
and other documents related thereto shall be referred at the earliest by the
Controller to an examiner for making a report to him in respect of the following
matters, namely:— (a) whether the application and the specification and other
documents relating thereto are in accordance with the requirements of this Act and
of any rules made thereunder; (b) whether there is any lawful ground of objection
to the grant of the patent under this Act in pursuance of the application; (c)the
result of investigations made under section 13; an (d)any other matter which may
be prescribed. (2) The examiner to whom the application and the specification and
other documents relating thereto are referred under sub-section (1) shall ordinarily
make the report to the Controller within such period as may be prescribed.
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Bibliography
● https://www.jetro.go.jp/ext_images/world/asia/in/ip/pdf/guidelines_DraftSe
archExamination_04March2015.pdf
● https://www.jakemp.com/en/knowledge-centre/briefings/introduction-to-
patents
● https://www.jpo.go.jp/e/news/kokusai/developing/training/textbook/docume
nt/index/Knowledge_of_Patent_Classifications_2013.pdf
● https://en.wikipedia.org/wiki/Patent
● https://www.investopedia.com/terms/p/patent.asp
