A patent is an intellectual property that is exclusively granted to the inventor for his invention considering three factors i.e. novelty, usefulness, and non-obviousness. A sovereign body is authorised to issue a legal document to the inventor to make, sell and use his invention for a particular number of years which is usually for 20 years.
The main purpose for providing patent rights is to encourage the inventor for more such innovation that can be the reason for advance technology, growth and development of the country. Therefore, it is necessary to expedite patent approvals for encouraging more patent registration and innovation.
Patent Rules for Global Requirements
The Patent Rules in 2016 were amnded to consider the necessity to keep up the pace with the global requirements for granting a patent within limited time. Considering this the provision was introduced for expedite patent approval for that inventor who has signified India as a competent International Searching Authority or elected as an International Preliminary Examining Authority in the related international application or where the applicant is to establish a Start-up.
The categories of applicants who can apply for expedite patent examination have been further expanded under the Amendment rules published on December 04, 2018.
What is Expediting Patent Approval?
A request for conducting or seeking approval for expediting patent is an application filed to the Indian Patent Office to expedite patent process for the already filed patent application. The expedition approval is filed under rule 24C of the Patent Rules, 2003.
Parties Associate
The applicants who are eligible to file for seeking approval for expediting patent can be the inventor himself or any third party interested. Now it is the responsibility of the Indian patent office[1] to consider all the applications for examination in the order in which the requests are filed.
Time Limit
The inventor is bound to submit the application within the time limit which shall otherwise be treated as abandoned by the applicant. Under the expedited patent approval examination, it is mandatory for the patent examiner to give the First Examination Report (FER) to the applicant within 1 month but not beyond 2 months from the date of reference of the approval application to the patent office examiner for examination by Controller.
Eventually, the final disposal of the patent expedite application is to be done within 3 months of the filing of answer to the First Examination Report.
Who is the Applicants Eligible for Expedite Patent Approval?
- The applicant approving for patent expedite has elected India as an International Searching Authority (ISA) or as an IPEA in his PCT application.
- In the given rule 2(fa) of the Patent Rules, 2003 the applicant is a small entity.
- In the provision of rule 2(fb) of the Patent Rules, 2003 the applicant is a Start-up.
- The claimant is a female natural person.
- According to section 2(1) (h) of the Patent Act, 1970 in case of an Indian applicant the applicant is under the government undertaking, or in case of a foreign applicant he is in a similar entity.
- The applicant is qualified under an arrangement for dealing out with an international application in conformation with an agreement between Indian patent office with other patent office which is participating.
Read our article:A Complete Outlook on the Patent Registration Documents
What is the Procedure to Expedite Patent Examination?
The procedure to expedite Patent Examination requires due attention and compliances, which are explained below in detailed:-
Form 18A Application
An applicant can seek approval requesting for patent expedite examination by filing Form 18A in accordance with the rule given under 24C in the second schedule of Patent Rules, 2003. He can apply for the approval with the prescribed fee by electronic transmission as given in the first schedule and must be duly authenticated within the time period of 48 months from the date of filing of appplication or the priority date application whichever date is earlier.
Under the Rule 24A of the Patent Rules, 2003
An approval request for expedite patent examination shall go along with a request Under Rule 24A of the Patent Rules, 2003 for early publication except where a request for publication has already been applied or the application has been published.
Conversion of Request
Moreover, a request for normal examination can be converted into a request for patent expedite approval examination by paying the prescribed fee and giving the required document.
Controller’s Duty
After the filings of the request for expedite patent examination and the publication of the application, it is the Controller’s duty to refer the request for approving the examination together with an application to the examiner in the order of all the requests.
Patent Office Examiner
Then it is requisite for the patent office examiner to examine the expedite patent application and make a report of it within one month but not taking more than two months from the reference date of the application to him.
The Controller’s Action
The controller can dispose-off such report of the patent office examiner within the period of one month from the date of receipt report and if required the Controller can issue the first statement of objections within fifteen days from the date of disposal of the report.
Response within Time
Now finally within 6 months from the date of the examination report a reply to the first objection statement is to be filed or the reply should be filed within an extended period of 3 months because the patent office examiner examines in the order in which it has received the responses.
Furthermore, the Controller can dispose-off the application of expedite patent examination within a time period of three months from the receipt date or the last response to the first examination report or within the time period of three months from the last date to put the application in order for grant. Though, where pre-grant opposition is filed the time limit shall not apply in that case.
Conclusion
The inventor has got the right to request or seek approval for expedite patent examination. The applicant can request the Indian Patent Office for early publication of his application. Such a request for publishing early permits the publication of the patent application before the 18 months time period from the priority date. The Indian Patent Office usually publishes the application within 1 month from the date of request.
It is imperative to broaden the categories of applicants who can seek the approval to expedite patent examination. Therefore, considering the ultimate purpose of grant of patent and to encourage the invention process it is really important that the patent office examiner approves genuine requests to expedite patent application and motivate the inventor for more such inventions.
Read our article:Conduct a Patent Search in India to make sure invention is original
