Once you have filed a patent application, there are 2 possibilities:
1. The patent application gets granted.
2. The patent application gets rejected.
Both the outcomes can take from a few months to several years depending on the backlog at the Patents Office. However, let’s look at what you as an inventor can do in these scenarios.
If the patent gets granted, you have to pay a certain maintenance fee (called annuities) each year to maintain the patent until the expiry of the term of the patent (20 years from the earliest filing date).
If the patent, however, gets rejected by the Indian Patent Office, your application enters a patent prosecution phase. This basically includes responding to rejections from the Patent Office and/or attending hearings with the Controllers at the Patent Office.
Once the patent application is rejected, you will receive a document called a First Examination Report (FER) from the Patent Office. The FER lists, in detail, the reasons for the rejection of the patent. The underlying reason for rejection is that there are either formal (clerical or non-technical) or substantive (technical) objections pending against your patent application.
You need to review each section and understand each objection. Some common reasons for rejections could be the following:
1. Novelty and/or inventive step
2. Section 3(k) requirements (your idea may be an exception to patentability)
3. Clarity requirements (subject matter not clear)
4. Formal objections (any non-technical issues)
There are several more types of objections/rejections possible but these are some of the frequently experienced objections.
You need to prepare and file your response to the First Examination Report in which, you need to address each objection by either making amendments and/or submitting arguments. If you are unsure of how to prepare a response, it is recommended to hire a patent agent or a patent attorney to prepare one and file it with the Patent Office.
It’s also recommended to file a response as soon as possible because Indian Patent law provides for only 6 months for the entire prosecution cycle and if all objections are not resolved, the patent application can be refused by the India Patent Office. While there is a provision for filing extension for another 3 months (total 9 months), it is advised to expedite your responses to leave room for any further objections to be addressed.
If the Controller is satisfied with the response and there are no further issues, your patent application is said to be in order for grant and proceeds further towards a grant. If there are still impending issues, the Controller may invite you for a hearing (face to face discussion) to discuss the issues.
You should ensure that you prepare well for the hearing with additional fallback proposals for each rejection. This would help you and the Controller to seek a middle-ground successfully. After the hearing, you need to submit another response called a ‘Written Submission’ within 15 days of the hearing (extendable by 1 month at the discretion of the Controller)
If the Controller is satisfied, the patent application will be granted. If not, you may receive additional Examination reports or hearing requests.
Once the application is granted, you would need to pay annuities as discussed above.
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