Step 6: Examination of patent application
The examination of a patent application is the process in which a patent office reviews the application to assess its compliance with patentability criteria which includes evaluating the invention’s novelty, non-obviousness, utility, and sufficiency of disclosure. The results of the examination are communicated in the office action.
What happens in the Examination of a patent application
- Filing of patent application: The patent application is submitted to the relevant national or regional patent office. The application includes a description of the invention, claims defining the scope of protection sought, and any necessary drawings or supporting materials. The applicant usually pays filing fees at this stage.
- Formality Examination: The patent office conducts a formality examination to ensure that the application meets the required formal requirements. This includes verifying that all necessary documents and information have been provided and that the application is filed within the prescribed time limits.
- Prior Art Search: A patent examiner or a search authority appointed by the patent office performs a search for prior art. The prior art includes existing patents, scientific literature, and other publicly available information that may be relevant to the claimed invention. The search aims to identify prior inventions or technologies that may affect the patentability of the claimed invention.
- Substantive Examination: The examiner evaluates the patent application’s compliance with patentability criteria, such as novelty, inventive step (non-obviousness), and industrial applicability. The examiner reviews the claims in detail, compares them with the prior art found during the search, and assesses whether the invention meets the necessary requirements for patent protection.
- Office Actions: If the examiner identifies issues with the patentability of the invention, an Office Action is issued. The Office Action outlines the reasons for rejections, objections, or requests for further clarification or amendment. The applicant is given an opportunity to respond to the examiner’s concerns and make amendments or arguments to support the patentability of the invention.
- Amendments and Arguments: The applicant can amend the claims, description, or drawings of the patent application based on the examiner’s objections or rejections. The applicant may also provide arguments, evidence, or expert opinions to address the examiner’s concerns and demonstrate the patentability of the invention. This process may involve multiple rounds of Office Actions and responses.
- Allowance or Final Rejection: If the examiner is convinced that the application meets the patentability requirements, an allowance is issued, indicating that the patent will be granted. However, if the examiner maintains rejections and the applicant’s responses fail to overcome them, a Final Rejection may be issued. The applicant may have the option to appeal the decision or take other legal actions available in that specific country’s patent system.
- Grant and Publication: If the application is allowed, the applicant typically pays the necessary fees. Once the fees are paid, the patent office grants the patent, and it is published in the official patent register or database.
When the application is published in EPO Bulletin, you can file request for examination within six months from the date of publication. if you do not file it within deadline the application is deemed to be withdrawn.
The fees for examination of patent application can be paid at the time of filing patent application or along with request for examination.
when you receive the search report you are deemed to have indicated that you wish to proceed further with the application, and the examining division then assumes responsibility for the procedure
Accelerated prosecution of European patent applications (“PACE”)
We can speed up the examination of our patent application filed at EPO with a request for accelerated examination under the programme for accelerated prosecution of European patent applications (“PACE”).
up on reciving request, EPO examines patent application considering:
- the search report
- preliminary opinion on patentability (search opinion)
- your response to EPO
and it is decided if the patent application is meeting all patentability criterias and if invention is patentable.
The examiner would send the communcation to you (applicant) regarding the outcome of the examination of patent application, and objections if any. If require by EPO you may ammend the patent application : description, claims and drawings of patent application.
The EPO fees for examination is EUR1750
| Examination of Application | Responsibilities | |
| Inventor |  | the patent agent or patent attorney makes a request for examination on your behalf. |
| A patent agent or attorney |  | Making a request for examination |
| Patent office |  | receive a request for examination and examiner check the patent application for patentability and other criteria and generates search report (office action) |
Next article : Step 7: Office action- Response to objections
- Indian Patent Office, Govt. of India
- Patent Facilitator for Start-ups, Startup India Govt. of India
- Bachelor’s degree in Electronics and Telecommunication engineering.
- Author of multiple books on Patents and IPR including a best-selling book on “How to patent an idea in India” which has been selected as the “Memorable Business Book of 2018” by Amazon
- Books are included in the syllabus of Educational Institutions as textbook and reference book on subject of IPR and Patents
- For over 15 years, Prasad has helped protect the intellectual property rights (IPR) of more than 1800 clients, including individuals, entrepreneurs, and educational institutes. This includes patents, trademarks, designs, and copyrights.