Step 5 : Examination of 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, inventive step, industrial applicability, and sufficiency of disclosure. The results of the examination are communicated in the examination report.
Criteria for Examination
- Novelty: The invention must be new, meaning it should not be part of the existing knowledge in its technical field.
- Inventive Step (Non-obviousness): The invention must involve an inventive step that is not obvious to a person skilled in the art.
- Industrial Applicability: The invention must be capable of industrial application.
- Legal and Formal Requirements: The application must comply with the legal and procedural requirements, including adequate and clear description, claims, and drawings.
What happens in the Examination of a patent application
Search for Prior Art
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.
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.
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.
Drafting of the Examination Report
- Based on the findings, the examiner prepares the FER. This report may raise objections if the examiner finds that the application does not meet the patentability criteria.
- The objections can be related to the technical aspects of the invention, non-compliance with procedural requirements, or both.
Examination Report: If the examiner identifies issues with the patentability of the invention, an Examination report (Office Action) is issued. This report outlines any objections, prior art references, or deficiencies identified during the examination. The applicant is given an opportunity to respond to these objections and provide counterarguments or amendments to address the issues raised.
Communication of FER to the Applicant
- The FER is communicated to the applicant or their patent agent. The applicant is given a period of 6 months (extendable for a further 3 months upon request) to respond to the objections raised in the FER.
Response to Objections
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.
- The applicant must respond to the objections by making necessary amendments to the application, providing arguments, or clarifications to overcome the objections.
- The response can include technical arguments, amendments to the claims, or both.
Conclusion
The examination phase is pivotal in the Indian patent process. It ensures that only inventions that fulfill the criteria of novelty, inventive step, and industrial applicability are granted patents. The rigorous nature of this process underscores the balance between encouraging innovation and maintaining the integrity of the patent system in India.
| Responsibilities | ||
| Inventor |  | — |
| Patent agent or attorney |  | — |
| Patent office |  | examiner check patent application for patentability and other criteria and generates First examination report |
step 6 : Response to objections or First Examination Report
- 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.