The Patent Act, 1970 comprehends several proceedings from filing of the application till the grant of the patent. Examination of the patent application is one such process. In general, once the patent application is filed, a request for examination is filed in Form 18 u/r 24-B within 48 months from the date of priority. The filing of request for examination is followed by examination of the patent application by the controller.
Conventionally, the timeline for the grant of a patent was tedious and overlong. A provision to file for an expedited examination of application has been provided u/r 24-C of the Patent Rules, 2003 with amendments in 2016 and 2019. An expedited examination of application is filed in Form 18-A. A request for expedited examination of patent applications has to be filed along with a request for publication unless already published. In addition, a request for examination filed can also be converted to an expedited examination by filing Form 18-A under applicable grounds.
The grounds to apply for expedited examination include:
- India has been included as competent ISA or has been elected as IPEA
- Small entity
- Start-ups
- Natural person
- Department of Government
- Institution established by government
- Government company
- Institution financed by the government
A significant reduction in the span of grant of the patent is seen with expedited examination of patent applications. Under expedited examination of patent application, the examiner examines the application and makes a report within 1 month but not exceeding 2 months. Further, the controller issues a first statement of objections within 1 month from the date of receipt and the controller shall dispose the application within 3 months from the date of receipt of last reply to the first statement of objections,
The expedited examination of patent applications was introduced for start-ups initiatives under the 2016 amendment of Patent Rules, 2003. Later, the grounds were expanded under the 2019 amendment of Patent Rules, 2003. On filing a request for expedited examination, the applicant receives the first statement of objections within 2 months from the date of receipt and the applicant may receive a grant within 1.5 years from the date of filing/priority.
To promote start-ups, the IPO & DIPP has been taking many initiatives to speed up the patent grant process. A request for expedited examination has to be filed along with Form 28 and evidence for start-up which include a certificate of recognition by DIPP has to be filed.
The grant of a patent under expedited examination for start-ups assists in generating revenue for the research and development. Additionally, the grant of a patent assures authenticity of the invention for the investors. The grant of patent further provides complete protection against infringement which is a crucial aspect for start-ups. The market-value and market-presence are increased for the invention of a granted patent. With an early grant of patent, a complete public disclosure of the invention becomes feasible. Essentially, misuse and duplication of an invention can be prevented at a faster rate. Also, fast-tracking of examination and grant of patent application keeps the competitive inventions at check. For start-ups having patent rights, the company value is increased potentially in the market.
The expedited examination of patent applications has brought in an accelerated timeline for patenting procedures. The global IP standards are being coped with expedited examination of patent applications. In case of start-ups, filing an expedited examination of patent application followed by an early grant attracts funding and prevents counterfeiting of their invention. In addition to providing protection to the invention, the competition with the existing market is withstood upon grant.Â
By Anagha MS
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