Processing of a patent application is a multi-step process. After the patent application has been documented and filed, the Patent examiners examine the Patent application. For this, a request for examination must be recorded in the prescribed manner with the Indian patent office.
A request for examination of Patent application is filed within six months from the date of publication of Patent application.
(For fees related to request of examination of application of patent refer- http://www.ipindia.nic.in/writereaddata/Portal/IPOFormUpload/1_11_1/Fees.pdf)
No application for a patent shall be examined unless the applicant or a patent attorney makes a request in the prescribed manner for such examination within the prescribed period.
When a request for examination of a patent application has been made by an applicant or a patent attorney, 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.
The Examiner at the patent office checks for its qualification and formal clothing according to the law of every locale. After which a preparatory judgment is passed which is called “FER or First Examination Report” which might be looking for any sort of correction or alteration, or specifically giving out dismissals if the application esteems to be not fit and qualified.
An examination report is issued by the Indian patent office. The examination report is likewise called as first examination report (FER). The examination report contains a rundown of complaints raised by an inspector of the Indian patent office. The complaints are both specialized and formal.
The candidate needs to record a response to the examination report within a year of issuance of the principal examination report.
An application for a patent shall be deemed to have been abandoned, if the applicant is unable to compile with all the requirements imposed on him by the patent examiner.
After which the patent lawyer or operators might set up a response containing contentions, clarifications that might be opposite or obliging the analyst’s needs according to the cases required which is additionally called “Office Action Response”.
If necessary, the inspector of the Indian Patent office frequently calls a candidate or his approved operator for hearing of the case. Once the inspector is happy with the response documented and the sum total of what conventions have been agreed by a candidate, the application is placed arranged by giving. In the event that the inspector is not happy with the response documented and need to meet a candidate or his approved specialist (if an operator is named) to clear up specific issues, he may call a candidate/operator for a hearing.
At long last, after various office actions and replies, the analyst will go to a judgment over the patent application. Same occasions occur amid pre and post allow restriction of a patent yet the office actions are directed by 3 substances, the candidate, the inspector and the resistance filing party.
RESPONSE TO OFFICE ACTION IN RESPECT OF INDIAN PATENT OFFICE
As per “The Patent Rules, 2003 as amended by Patent (Amendment) Rules, 2016” and opportunity to put the application altogether for allowing under “Section 21” has been lessened from a year to a half year.
The ideal opportunity for putting an application all together to allow under Section 21 of Patents Act, 1970 in situations where the principal proclamation of protests has been issued by the Office on or after 16 May 2016, might be a half year (six months) from the date on which the said first explanation of complaints is issued to the candidate to follow every one of the necessities forced under the Act and Rules made there under as per Rule 24B (5) of the Patents (Amendment) Rules, 2016.
The ideal opportunity for putting an application all together for allow under section 21 as recommended under sub-rule (5) might be additionally stretched out for a time of three months on a demand in Form-4 for expansion of time alongside endorsed charge, made to the Controller before the expiry of the period determined under sub-rule (5).
Response to the objections: General Principles The response to the examination report must be complete. The response must demonstrate that the objections raised by the analyst are not legitimate. Besides, the response must contain sufficient and successful contentions with regards to the patentability of the invention
FILING RESPONSE TO OFFICE ACTION WITH RESPECT TO USPTO
In the United States, an Office action is a report composed by an analyst in a patent examination system and sent to the patent applicant. The expression is used in numerous jurisdictions. As a rule, the candidate must respond to an Office action within 6 months from the date the Office action is issued or the USPTO will desert the application, the application charge won’t be discounted, and stamp won’t register.
Types of office action:
·NON-FINAL OFFICE ACTION: Non-Final Office Actions are always the first office actions issued for a patent application. In non-final office actions, the patent examiner states his conclusion on the patentability of the claims. After a survey of the non-final office action, the application has the choice of no less than one of the accompanying.
Contending the examiner is mistaken, and
Revising the claims to beat the inspector’s rejections. While responding to the Non-Final Office Action, the patent attorney should state in the response that the response to the office is “An Amendment/Reply to an Office Action under 37 CFR 1.111.“
FINAL OFFICE ACTION: Final Office actions are commonly second office actions that are sent by the examiner in the wake of checking on the candidate’s response to the first non-final office action. The Final Office Action may incorporate:
The same rejections as the first non-final office action or
New rejections- When responding to final office actions, the candidate has managed the same opportunities as responding to a non-final office action, with the exception of government fees must be paid if the candidate is revising the claims. On the off chance that the candidate is not revising the claims, the patent attorney should state in the response to the Final Office Action that the response to the office action is “A Reply to an Office Action under 37 CFR 1.116.”
When a final office action is issued a survey of the claims on the merits of the claims is “closed.” Therefore, to correct the claims after a non-final office action a Request for Continued Examination (RCE) is required.
Essentially, a Request for Continued Examination reopens prosecution, enabling the patent attorney to change the claims. On the off chance that the patent attorney’s amendments and arguments defeat the present rejections when filing an amendment with an RCE (amendment under 37 CFR 1.114) the following office action issued will be a non-final office action or a notice of recompense.
Be that as it may, if the amendments and arguments are not persuasive, the following office action issued will be a final office action. Because of the extra fees to alter the claims, when filing an amendment under 37 CFR 1.114 it is urgent to have a meeting with the examiner to discuss the merits of amendments.
Inventors and start-ups should understand that an average patent prosecution process includes no less than 1-2 Requests for Continued Examinations are required.
There are fees associated with filing data disclosure statements. Data disclosure statements are letters from the candidate to the patent office stating that the candidate has discovered new references that may influence the patentability of their development.
Applicants can bid an Examiner’s decision if the claims have been dismissed twice. Accordingly, if the claims were not corrected inside a response to a non-final office action, the claims are opportune to be bid. In spite of the fact that I don’t suggest filing an interest after a first final office action has been issued for start-ups, for real corporations this a strategy that they can take. Amid bid (takes 2-3 years) or Pre-Appeal Conference Request (6 months – 1 year), a board will audit the claims, referred to craftsmanship, and analyst’s rejections to decide whether the inspector’s rejections have justified.