Examination and Opposition

 

Request for examination: In ordinary applications or PCT or Convention applications, the time period to file the request for examination is Forty eight (48) months (strictly non extendible) from the date of filing or priority, whichever is earlier.

 

In case of Divisional applications the time period to file the request for examination is Forty eight months (strictly non extendible) from date of filing or priority of first mentioned application, or within six months from date of filing of further application, whichever expires later.

 

No means to expedite examination of applications since applications are examined in the chronological order in which the requests for examination are filed.

 

For urgent cases, it is advisable to file the Request for examination simultaneously with filing the application.

 

Examination Reports

 

The First Examination report is issued within about 3 years of filing of the Request for Examination.

 

The total time period to comply with the objections of the examination report is 12 months from the date of issuance of the examination report.

 

It has to be noted that the complying of all the objections have to be within the 12 months period. No further time period is given beyond this period.

 

If the Examiner is not satisfied with the reply to examination report he may issue a second or third examination report within the 12 months period. No extra time is provided to reply to the additional reports.

 

After the expiry of the said 12 month period or even before that if the Controller along with the Examiner are not satisfied with the reply provided, they may provide the Applicant with a hearing.

 

It is quite common to have oral proceedings in India and the costs are not as expensive as other countries.

 

Amendments

 

Applicant may apply a request in Form-13 with prescribed fee.

 

Amendments shall be only for the purpose of incorporation of actual fact.

 

Amendments are possible only by way of disclaimer, correction or explanation.

 

The amendment must not beyond the scope of invention as well as the original claims. In particular no amendment of complete specification shall be allowed the effect of which would be that any claim of the specification as amended would not fall wholly within the scope of a claim of the specification before the amendment.

 

It implies that narrowing is possible, broadening and new claims not possible.

 

Amendments can be filed anytime before grant. However it is advisable to file amendments before or with the Request for Examination so that the appropriate set of claims is examined.

 

Unity Of Invention

 

Claim(s) of a Complete Specification shall relate to a single invention, or to a group of inventions linked so as to form a single inventive concept.

 

If claims relate to a plurality of inventive concepts it may be objected on ground of lack of unity of invention.

The examiner refers to the same in his report. The application may be divided in order to meet the objection of plurality of distinct inventions.

 

The determination whether a group of inventions is so linked as to form a single general inventive concept shall be made without regard to whether the inventions are claimed in separate claims or as alternatives within a single claim.

 

One independent claim in each category is allowed. In some cases more than one independent claims are also allowed in the same category but it is not common practice.

 

Independent claims of different categories must relate to a single inventive concept.

 

For example:

 

Claims for a product and process specially adapted for manufacture of the product.

Claims for a process and apparatus or means specifically designed for

A locking system containing plug and socket wherein separate independent claims for a plug and socket may constitute a single inventive concept.

In case of a drug or pharmaceutical product, claims may be directed to a drug or pharmaceutical product, a process of making the product, a composition containing the drug.

 

Oppositions

 

Pre-Grant Opposition

 

• Can be filed by any person by way of representation.

• Time period: Anytime after publication of patent Application but before the grant of Patent.

• The representation shall include a statement and evidence, if any, in support of such representation and a request for hearing, if desired.

• The Controller shall consider the representation only after a Request for Examination for that Application has been filed.

• Hearing before the Controller

 

Post-Grant opposition

 

• Can be filed by any interested person by way of Notice of Opposition.

• Time Period: within 12 months from the date of publication of Grant.

• On receipt of Notice of Opposition, an Opposition Board is constituted by the Controller, consisting of officers as he may determine.

• Hearing before the Controller on recommendation of the Opposition Board.

 

Opposition Board

 

• Constituted by the Controller after receipt of Notice of Opposition

• It consist of three members with one of them as Chairman

• An Examiner may be a member of the Board, however that examiner who was part of the prosecution proceedings for the grant of patent shall not be included.

• The board shall examine such notice and all the documents filed by the opponent as well as the patentee.

• The Board shall submit report on each ground.

• The Opponent shall file a written statement setting out the nature of the Opponents interest, the facts upon which he bases his case, relief which he seeks and evidence and delivers a copy to the patentee.

• If the patentee desired to contest the opposition he shall file a reply statement and evidence within a period of 2 months from the date of receipt of written statement of opponent.

 

Grounds of Opposition: 

 

• Wrongful obtaining of invention

• Claimed invention already published in India or elsewhere before the filing date.

• Claimed invention is already claimed in a complete spec which is published later than claimed invention but its priority date is earlier than claimed invention.

• Claimed invention was publicly known or used in India before priority date. For the purpose of this clause the invention would be deemed to have been publicly known if the product is imported into India before the filing date except when such importation is for the purpose of reasonable trials and experimentation.

• Claimed invention is obvious.

• Claimed invention is not an invention as per the Act.

• Complete specification does not sufficiently and clearly describe the invention.

• Applicant has failed to disclose information under section 8 or has furnished false information.

• In case of convention application the application was not made within 12 months from the date of first application.

• Complete spec does not disclose the source or geographical origin of biological material used in invention.

• Invention is anticipated having regard to the traditional knowledge