India: Expedited Examination Requests Limited To 1000 In Number
The Patents (Amendments) Rules, 2016 (hereinafter referred to as Rules) that came into force on May 16, 2016 introduced the provision for Expedited Examination under Rule 24C of the Rules.
Further, the Indian Patent Office (IPO) by way of a Public Notice on June 14, 2016, have notified that the number of requests for expedited examination to be received on or before December 31, 2016 has been limited to 1000 requests.
Applications for Expedited Examination shall be taken up on a first come first serve basis and the same can only be done via e-filing procedures only. Strict time frames shall enable swift disposal of the abundant pending cases before the registry, which were reported around 2,37,029 as on February 1, 2016.
A quick recap of the new provision: As per the Rules, applicants seeking expedited examination of their applications, may file a request in Form 18A along with the specified fee and within the prescribed period of forty eight months from the date of priority or from the date of filing the application, only via electronic transmission.
An expedited examination request may be filed on any of the following grounds:
a) Applicant has indicated India as the competent International Searching Authority (ISA) or as International Preliminary Examining Authority (IPEA); or
b) Applicant is a startup.
SUMMARY OF EXPEDITED EXAMINATION TIME FRAME:
· The Examiner shall make a report for the concerned application within 1 month, but shall not exceed 2 months from the date of reference of the application to him by the Controller;
· The Controller shall dispose of the report of the examiner within 1 month from the date of receipt of such report by the Controller;
· A First Statement of Objections shall be issued by the Controller to the applicant or his authorized agent within 15 daysfrom the date of disposal of the report of examiner by the Controller;
· Reply to the first statement of objections and subsequent reply (if any) shall be six months from the date on which the first statement of objections is issued. However, the time limit is extendible for a period of three months on a request for examination made in Form 4, before the expiry of six months period.
· The Controller shall dispose of the application:
o Within 3 months from the date of receipt of last reply to the first statement of objections; or
o Within 3 months from the last date to put the application in order for grant in terms of the Act, whichever is earlier (this time limit is not applicable in case of a pre grant opposition).