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.
- Once your application has been accepted as complete, it will be assigned for examination. Your examiner will review the contents of the application to determine if the application meets the requirements.
- The objections raised on your patent application would be communicated with you, by an official letter from the JPO, known as an Office Action. You would get the opportunity to make amendments or contest the objections raised.
- There is a specific time within which you will have to respond to the objections, if you failed to do so the patent application will be abandoned.
In the examination stage of your patent application at JPO, a decision is made whether the invention should be patented or not.
In the examination the patent application is checked for different requirements of patentability by Patent law:
some of the exemplary requirements are
- to check if the invention is based on technical idea which utilizes laws of nature
- if invention has novelty, inventive step or non obviousness and industrial applicability
- if the invention falls under the non-patentable inventions category that is invention against public morability. etc.
Request for Examination
| Attorney’s Fee (JPY) | Official Fee (JPY) | |
|---|---|---|
| Basic Fee (filed before March 31, 2019) | 14000 | 118000 |
| Basic Fee (filed after April 1, 2019) | 14000 | 138000 |
| 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) |
After the application is filed, the Japan Patent Office takes the application up for examination (usually in about 12-36 months). In this stage, patent examiners at JPO conduct their own search related to your invention (patent application) and issue and office action.
Accelerated Examination and Accelerated Appeal Examination
The accelerated examination system/accelerated appeal examination system is a provision to get faster grant of patent, such request can be made in certain conditions like :
Currently, the system can be applied to the following six types of applications and appeals against an examiners’ decision of refusal for the applications:
- Working-related applications: already commercialized the invention or plans to commercialize the invention within two years
- Internationally-filed applications;
- Applications filed by SMEs, individuals, universities, public research institutes etc.;
- Green-technology related applications: patent of “green invention (a kind of invention that has an energy-saving effect and contributes to CO2 reduction).”
- Earthquake Disaster Recovery Support-related applications
- The Asian Business Location Law-related applications.
Procedure for the accelerated examination and accelerated appeal examination
You can make a request for an accelerated (appeal) examination by submitting a “Written explanation of the needs of the accelerated (appeal) examination”. Request for an accelerated (appeal) examination is free of charge.
Source : JPO website link
Patent Prosecution Highway (PPH)
The PPH enables an application whose claims have been determined to be patentable in the Office of First Filing (OFF) to undergo an accelerated examination in the Office of Second Filing (OSF) with a simple procedure upon a request from an applicant on the basis of bilateral office agreements.
The purpose of the PPH is to facilitate an applicant’s acquisition of a patent at an early stage worldwide and to enhance the utilization of search and examination results between the IP Offices so as to reduce the burden of examination and to enhance the quality of examination worldwide.
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.