Step by Step Guide for Getting a Patent Granted
Getting a Patent is a long process and involves various steps. The disclosure has to be made to the public in all forms. The whole process from the filing of the patent till the grant of the patent requires more or less around 3-4 years and all steps are bound by respective deadlines, failing of which can result in loss of patent application.
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Step 1- Patentability Search- Prior Art Search
This is the first step for any inventor who wants to get ahead with the patent application. This process is very important since this helps the applicant to know if there is any such previous application being filed or is under examination to save any such litigation cost which might occur if such search has not being done by the applicant. This process is not mandatory but constitutes an important part for the start. The inventor will have the option to amend the patent application if they find that they have the same claims as others based upon the prior art search.
Step 2- Patent Drafting
The next important step is patent drafting. The applicant has the freedom to either file the provisional application or the complete specification. If the application is still in the nascent stage, it is advised to file a provisional application. This application helps the applicant to secure a priority date over other inventions. This is beneficial since securing the filing date makes an important development with regards to it being the prior art. Also filing a provisional application gives the applicant an added advantage of 12 months to file the complete specification. This 12 month time can be used for more research or getting investment for the inventions. It has to be made very clear that the scope of the provisional application must align with that of the complete specification. The scope of the complete specification must not go beyond the provisional application.
Step 3- Filing of the Patent Application
The filing of the patent application comes up after the drafting of the patent application has been done. The application is provisional, the applicant gets 12 months more time for filing the complete, as specified earlier. The applicant, if he wishes to file in another country under the Convention Route, gets 12 months from the priority date/date of filing (whichever is earlier). Similarly, if the applicant has filed the PCT application, the time limit to enter the national phase is 31 months from the international filing date.
Step 4- Publication
The patent application, after getting filed in the patent office will now be published in the patent journal that is released every week from the Indian Patent Office. The application will be published within 18 months from the date of filing/priority date (whichever is earlier). The patent application can be published in an expedited manner if the request for early publication is made as per Form 9. Ordinarily, the application can be made published within one month of the request.
Step 5- Examination
The publication of the patent application happens automatically, but it will not be for examination. The examination will only occur when the request for the examination will be made as per Form 18. Only when a Request for Examination (RFE) is received, will the application be queued for examination. So, the earlier the applicant makes the RFE request, the earlier the application may be examined by the examiner. The applicant also gets the option to get the expedited examination done as per Form 18A. But this examination is only available to those if the applicant is either a startup, or the applicant chose the Indian Patent Office as the International Search Authority (ISA) or International Preliminary Examining Authority (IPEA) during their international application (PCT application).
Step 6- First examination Report
After the examination is done, the scrutiny of the application will be done by the examiner to ensure that the application is in accordance with the patent act and rules. The examiner also performs a search to understand similar technologies to ascertain if the invention would satisfy the patentability criteria. After scrutinizing, the examiner will provide the first examination report (FER), which will provide the details of the patent and objections, if any. The applicant will need to respond to the FER. In the process, the applicant can also be called for a hearing. The period under which the applicant will need to respond will be 6 months which can be extended for 3 months by the applicant by filing a request for an extension of time (Form 4).
Finally, after the response, if the examiner is satisfied, he may order the grant of the patent for 20 years from the date of filing or priority (whichever is earlier). The applicant will need to provide the renewal fees payable from the 3rd year onwards, as prescribed by the patent office.
Author: Saransh Chaturvedi (an advocate) currently pursuing LLM from Rajiv Gandhi School of Intellectual Property Law (IIT Kharagpur). In case of any queries please contact/write back to us at firstname.lastname@example.org.