Patent Process

Step 4

Patent Application Examination

At a certain point of time (usually after 18 months of initial filing as per patent laws that are TRIPS compliant, such as that of India, USA etc.) after the patent application is filed and published by the Patent Office in its Journal. This is essentially done with a view to inform the general public about your intention to acquire the patent on your invention and provide an opportunity to any interested party to file a pre-grant opposition. If a pre-grant-opposition is filed by someone, you would be so informed through your Patent Agent and appropriate replies and counter statements for each objection raised on various grounds would be required to be filed within stipulated time. Upon successful counter or if there is no pre-grant opposition is filed within the stipulated time, your application proceeds for further processing or else deemed to be rejected. The application is eventually examined by a Patent Examiner should there be no pre-grant opposition or when it is successfully triumphed over the pre-grant opposition. In this process, patentability claim is assessed on three important criteria, namely a) novelty,, b) non-obvious and c) usefulness.

The patent is expected to meet first and foremost the novelty criterion. This is to say if the Examiner finds any prior art reference which substantially contains the features of the invention which are claimed in the patent application, the novelty criterion is lost and the application is rejected without any further proceedings. It is also important to note that your application must be filed within one year of the first public use or disclosure, sale or offer for sale of an item embodying your invention since these activities by themselves if carried on for too long destroy the novelty feature of your invention and your application may be rejected.

The second most important test, an application must pass is whether the invention is obvious. The Examiner may rely on his findings screening through other patents, on-patented literature and other prior art references. Although this involves a subjective judgment of the Examiner, the premise on which this test is applied assumes that a person ordinarily skilled in the art would not find the invention as ‘obvious’.

Finally, the Examiner would also tend to see the present day utility or usefulness of the invention. At the end of this examination, the Patent Office would issue its 'First Examination Report' which may have several objections raised by the Examiner citing several provisions of the patent law and / or published reports of the prior art. You or your Patent Agent is required to provide necessary explanations for each objection raised within the stipulated time. If the Examiner is not entirely satisfied with your answers and / or needs further clarifications, amendments etc., s/he may call for a personal hearing to settle the issue.

After the above patentability criteria being found met, the next consideration is usually the priority date decided upon the date of filing. It is likely that your competitors on their own or by false imitation of your invention also file a similar application. The Patent Office is thus under obligation to decide upon which of two pending applications for the same invention should be allowed to issue. This is precisely the reason, why you are advised to file your patent at the earliest.

Step 5 >>>>

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