Section 12-21: Patent Examination Process (India Patents Act)
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- Опубліковано 10 лют 2025
- The patent examination process under the Indian Patents Act can be complex and time-consuming, with various procedures and timelines to follow. Sections 12, 13, 14, 15, and 21 of the Act provide detailed information on the examination process and associated timelines.
Additionally, Section 14 and 18, along with the associated rules, offer applicants ample opportunities to present the merits of their application and overcome objections raised by the patent office. These sections play a crucial role in securing a patent grant and are essential for patent stakeholders to understand.
In this informative video, we'll delve into the intricacies of the patent examination process under the Indian Patents Act, focusing on Sections 12, 13, 14, 15, and 21. We'll also discuss the importance of Sections 14 and 18 in presenting the merits of your application and overcoming objections raised by the patent office.
Moreover, we'll cover Section 13, which outlines the category of documents that can be used as prior art against an application. By understanding these sections and rules, patent stakeholders can navigate the examination process with ease and improve their chances of securing a patent grant.
So, watch this video now to gain valuable insights and information on the patent examination process under the Indian Patents Act. Don't forget to subscribe to our channel for more videos on patents and intellectual property.
If you're studying to become a patent agent, this video is an essential resource to help you pass the patent agent examination. You'll gain a comprehensive understanding of patent law and procedure and be able to advise clients on their patent filing strategy effectively.
Don't miss this opportunity to deepen your knowledge of patent law and procedure. You can watch this video now and take your first step towards becoming a successful patent agent.
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You've done real hard work to provide this useful content
Thank you Sandip.
Thanks
Hello Avinash, I am really touched by your gesture. But, you really don't need to pay anything. Let me know, how can I transfer it back to you. With kind regards :-)
thank you mr abhay sir you made me this topic very easy for me while i saw this syllabus in my text its seems like impossible to digest but you made it easy to digest.
All the best! Please ensure to like the video.
Sir please explain the difference between sec 9 and sec 17 w.r.t post dating of the application
Hello sir, facing difficulty in section 19 , It will be great help if you detail it
If your invention can't be used without infringing another patent, the Controller may require you to insert a public notice in your patent application. If the issue with the other patent is resolved, you can request to have this notice removed.
(1) What Happens If Your Invention Can't Be Used Without Infringing Another Patent?
--> When you apply for a patent, the Controller investigates whether your invention can be used (or "worked") without infringing on an existing patent.
--> Risk of Infringement: If the Controller concludes that your invention can't be used without infringing another patent, they might require you to include a public notice in your patent application. This notice will inform the public that using your invention might require permission from the owner of the other patent.
--> How to Avoid This Notice:
(a) Challenge the Other Patent: You can avoid this notice if you can prove to the Controller that the claim in the other patent isn't valid.
(b) Amend Your Application: Alternatively, you can change (amend) your patent application to the Controller's satisfaction so that it can be used without infringing the other patent.
If you've included a reference to another patent in your application and then:
(a) The other patent gets revoked (cancelled) or expires;
(b) The other patent's relevant claim is removed (amended);
(c) A court or the Controller decides that your invention doesn't actually infringe the other patent;
Thank you sir
Sir..Why controller wants to insert the other reference for public if it is infringing the other parent....the controller can just refuse the patent......I am actually don't understand the significance of inserting other reference in the applicant application. (If it is simply infringing other... the patent should not be grant...isn't it?)
@@SnehaKumari-zt3yoOkay, so here is your confusion - the patent in question is "not infringing", but a person who may use this patent (technology) may end up infringing some other patent. Hence a disclosure or disclaimer or a warning to the end user that you may want to check other patents also for licensing before using this particular patent.
Let's consider an example to illustrate this:
The patent in question covers an improved chair design with four legs, a seat, and a back support. This design builds upon and improves a previously patented chair design that only has four legs and a seat. Therefore, the end-user of the improved chair design (patent in question) may inadvertently infringe on the original patent for the basic chair design (four legs and a seat) by using the improved design.
To mitigate this risk, the control insists to include a disclaimer, or warning in the patent documentation advising end-users to:
- Verify licensing requirements for the original basic chair design patent.
This notification will help ensure that end-users are aware of potential patent obligations and can take appropriate steps to comply with existing patent rights.
8:06 how is this case different from 13(1)(a) ? Or are they the same? If different, plz clarify the difference between "anticipated" and "published".
You have not discussed the Section 21 in this session. Can you please discuss this in simple words?
Hi Sir
very nice informative video...
Thanks for sharing this important information..
Sir can you please reply, how i can process for expedite examination, Which form required for it and what it cost
If you are eligible, you may use Form 18a along with request for early publication Form 9
Section 13 a talks about anticipation by publication and sec 13 b talks about anticipation by priority claiming
Is Response to FER timeline is changed to one month as per 2024 amendment?
@@Utopia_of_Joy no
Provided further that in case the first mentioned application has already been referred for examination, the further application shall have to be accompanied by a request for examination, and such further application shall be published within one month and be referred to the examiner within one month from the date of such publication........@AbhayPorwal Sir for the divisional application, when the main application is already in examination, do we need to file seperate request for publication along with request for examination? or only filing request for examination along with the further application can make the further application published within the 1 month and then referred for examination in another 1 months. .. please help
No, only request for examination is enough.
@@AbhayPorwal Thank You Sir
@@ArDutta-12 the more I think of it, the more it seems challenging. The wordings of the act from the times when divisional application was sought or thought to be filed only when controller raises objection on unity of invention, but with latest amendments and clarification, you can file a divisional application in response to a provisional application as well - in such cases the parent application is a provisional application which never gets examined and published...so i would infact go with the understanding and concept that divisional application is an independent application hence do what you do with an independent application. However, in case you file a divisional application upon objection by controller then no need to file request for publication for examination.
I hope i was successful in confusing the heck out of you :-))
@@AbhayPorwal ok. Sir, i am trying to get my head around it.. please tell me if my understanding is correct.. if i file divisional application on my own before it is published or examined.. then i file separate publication for both, bt once its is published and then getting examined, and controller raises objection and i remedy using divisional application, then i file RFE for the further application, no more publication in this case
Sir, What if the application is rejected on grounds of Sec 3. At what stage is this decision taken and what are remedies available to the applicant?
All objections come at the same time when the first examination report is issued - you have to respond to each objection one by one providing your arguments on why such objection should be withdrawn
Very informative
Hello sir!I had requested for examination one year back and filled form 18 and submitted everything properly as well. However, I am yet to hear from IPO. What could be the reason for not coming up with examination report for so long?
@@tanushreechakravarty186 backlog, queue and resource shortage
hello sir...... how come later videos are not in sequence ....after video 13 in playlist rest videos are not in order ??
The videos actually follow a definite storyline. I usually introduce the next video at the end of the existing one.
@@AbhayPorwal Sir in video 12 in playlist we end at section 21 but in next video we jumped to section 29 anticipation.......you have covered sec 25,26,28 in different places much later.....i am not able to understand why is that ?
@@Live_Free_2024section 29 to 34 are related to examination hence they are taught next to examination series. Thereafter we talk about of mention of inventors because that happens before grant of patent.
Hi Sir, if such question comes
“Your client has filed an application for patent. They received first examination report from the Controller of Patents with the objection that “your said application contains the claims from 8 to 15 distinct from rest of the claims not falling under the single inventive concept”. Advise your client suitably about the provisions in the Patent Act in this regard. “
Then what should be the ideal answer.
Do we have to mention about the FER reply timeline and hearing process mentioned in rule 28?
The essence of this question is to check if you understand the concept of unity of invention - all claims should be related to single inventive concept. Accordingly, you are required to remove the 8-15 claims from your current application and if required file a divisional application application as per section 16. You can only mention this much in your FER response, because there is nothing else is provided in the question. No point talking about other timelines and deadline.
@@AbhayPorwalokay sir thank you
Sir more than 4 months have passed but the application status still says Application referred u/s 12 for examination. So what can be the reason? and what should I do?
Since as per the video I could understand that the FER has to be provided back to the applicant within 4 months (3 + 1).
That’s very normal as per the ongoing backlog at patent office.
Thanks @AbhayPorwal for the reply, So do I need to do anything? and if not then how much do I need to wait?
Nothing to be done, the applications will be taken as per queue. You will hear from the office in 4-12 months time frame.
@@AbhayPorwal Thanks
Sir, Sec 17, 20, 21 pls explain
Section 17 talks about power of controller to post date the application upon request from the applicant - you can push the filing date by 6 months.
Section 20 - there is a detailed video on this channel - it is about changing the applicant of an application based on various develoments.
Section 21 - Talks about a definite time-period within which the applicant is required to comply with the objection/requirements as raised by the controller during FER.
@AbhayPorwal thanks for your time sir
Sir this video explanation is quite difficult to understand, when compared to the other videos. What to do?
Arey!! That breaks my heart! Patent examination is a straightforward process. First you understand the basic steps in the examination process, to-n-fro between controller and applicant. Second you understand how examination happens, section 13.
Why does the inventor need to take into account publication date to disprove anticipation? Wouldn't the priority date of his claim need to be before the *priority date* of the anticipating document? Publication occurs 18 months later so even if inventors priority date is before publication date but is after priority date of anticipating document then the patent can be rejected.
Section 13 is divided in two parts:
First, Indian Publication (India Patent) AND Second, Other publication in India or elsewhere (Everything else)
As per first, Anticipation can be based on prior publication or prior claiming
Prior Publication - Publication of patent applications before the date of filing of your application
Prior Claiming - Claimed by patent application published on or after filing date of your application - provided, the priority of other claims is before your priority date.
As per Second: Publication (in india or else) before the filing date of your application
Sir,
Under section 21, why controller decision is not appealable? Please clarify
There is no action that the controller has taken as per section 21 - the application is getting abandoned because the applicant hasn't complied with all the requirements within the timeline (6 months + extension). So, what are we going to appeal against? It's the applicant who hasn't respected the timelines.
@@AbhayPorwal Thank you sir
Sir for design patent. Case is in Amended case of controller means
When a case is referred to as an "Amended Case of Controller," it typically means that the Controller of Designs has issued a decision or requirement for amendment regarding the original design application. This may arise when the Controller finds issues with the application, such as:
Non-compliance with formalities (e.g., incorrect or missing information).
Non-conformity with statutory requirements, like clarity in representation or differentiation from prior art.
Objections related to novelty or originality of the design.
Once the Controller issues such objections or requirements, the applicant must file an amended application or respond to the Controller's concerns. The amended case then refers to the application after these changes or responses have been made, and it’s resubmitted for further consideration by the Controller.
@@AbhayPorwal but not received any letter for this
@@ganeshkailasbadgujar887 check your emails for the statement of objection
hi can u explain about amendments of 2021, 2019, 2020
Uploaded a #short for summarizing the changes as per your request - Do watch it, like and share 🙂
hey Abhay Porwal sir, that my controller allotted wrong field of innovation, so i could i correct that, and also i mentioned properly in my documents
Do you mean the classification?
@@AbhayPorwal yes sir
@@TSRAKESH This is based on the field of invention and the patent office's interpretation of your subject matter. If you believe that the classification is entirely off the mark, you may reach out to the patent office with form 30 (not sure if form 13 can be used) to place your request - This is my best guess, so please do your own due diligence.
@@AbhayPorwal thank you for the greatest advice i will try once
And sir what is the difference between 18 (2) and 18(3) arent they saying the same course of action? Please clarify
Hello, the course of action is exactly the same in 18.2 and 18.3, but the use casea are different -
basically, 18.2 caters to invention being claimed in other indian applications published on/after filing date of your application
whereas 18.3 refers to cases where the invention is anticipated and claimed in indian applications published before the filing date of your invention ( but after your priority date).
Same course of action will be taken as provided by 18.2
please elaborate 18(3) by an example
Sir pls explain the mark 9:37 that validity of claims can be questioned
The claims can be invalidated or get rejected based on novelty and obviousness of the subject matter. Basically, filing an opposition against a patent, under section 25(a), 25(b) or 64
Sir in new ammendment regarding section 16 Do we need to include main invention in divisional application sir please clarify
What goes in the divisional application hasn't changed. What the new amendments say is that divisional can be derived from provisional application as well.
Thank you Sir
Please feel free to post queries, I will respond with the best of my abilities.
@@AbhayPorwal Sure sir
Sir I have one question
If I have filed the patent on invention A then I come to know that somebody has also filed the patent on same invention A before my filing date but that application filed before my filing date is not yet published so would that patent anticipate my application.
Please reply me
As per the clear categorisation in section 13, anticipation in cases only when the application is published before the filing date of your invention - other wise it has to be considered as prior claimed.
In anycase - first to file takes the cake.
@@AbhayPorwal Sir what about section 13 (b) ..if any specification is filed before my filing date but published after my filing date
@@nutanpawar9034 that talks about "claimed"
@@AbhayPorwal sorry sir I am not cleared
When I filed the patent then I come to regarding another patent which is not yet in public domain ..so as it is not in public domain so will that patent will anticipate my patent ...
Sir please clarify me
Hello sir 😊 Could you please explain section 21(2) sir?
S21 lays out the specific timeframes (6M) within which certain obligations need to be fulfilled.
S21.2 comes into play when there's an ongoing appeal at the High Court related to your main invention. If such an appeal is pending, the time period mentioned in S21.1 can be extended for divisional application/patent-of-addition. This extension provides additional time to fulfill the obligations required for patent grant, considering the ongoing legal proceedings on your main patent.
Examples of appeals on Main Invention: objections from Third Parties; Infringement Disputes; Claim Interpretation; Revocation of a Patent.
In each of these scenarios, if an appeal is filed, the patent-related proceedings could end up in a High Court. S21.2 allows for an extension of the time within which you need to fulfill certain obligations related to your patent (divisional/patent-of-addition) application. The purpose is to accommodate the additional time needed due to the ongoing legal proceedings.
Thank you so much sir 😊 It was really helpful ☺️
@@yeshu_03 Glad that it helped. Feel free to keep putting queries.
@@AbhayPorwal Sure sir ☺️😊 And could you please explain Section 21(3) too sir?
[In case, the time within which the appeal mentioned in sub-section (2) may be instituted has not expired, the controller may extend to such further period as he may determine as prescribed under sub-section (1)]
I couldn't interpret this part sir!
@@yeshu_03This is the case where the appeal at HC is not yet filed, but the time-window to file such an appeal is still open, in such case, the controller may grant an extension to the applicant to comply with the requirement as per section 21. Remember, we are talking about appeal with regards to any dispute that may arise around the main patent application (or patent of addition) - the appeal has nothing to do with the patent office as such.
Sir wouldn't the clause for sec13(1b) be claimed before application due to earlier filing date and later publication? i am getting confused in this part
They are talking about invention being claimed in other Indian applications which are published or after the filing date of your invention --- BUT have filing/ priority date befor your filing date.
Hi abhay plz confirm that we can take extension of 2 months for submission of reply to FER is only through petition 138 within due date?
Or do we need to submit form 4 ?
Form 4, rule 24b.6, rule 138 doesn't apply to it. The reading of rule 138 exclude 24b.6.
But there have been a judgment from the court, where they directed control to allow extension by applying 138.
What does 'wrongfully ontained' really mean? I understand it as, an inventor filing a patent application without the consent of other inventor.
I doubt if a process of, any other person who is not at all a T/F inventor filing a patent application, also called as 'wrongfully obtained'. Please clarify
Wrongfully obtain means you took the invention illegally, without concent, basically in contravention of the T/F inventors.
So, is it applicable for inventors of the same invention. If A files without the consent of B?
@@trivenisandhi2199 yes
what is the least time in which the patent can be granted(with timelines) ,please reply fast sir I have exam tomorrow🙏🙏
No patent shall be granted before the expiry of 6 months from the publication date. So a minimum time of 6 months has to lapse after the publication date.
@@AbhayPorwal Thanks sir,you are very kind🙏🙏
What is the exact meaning of claims? Pls explain
the boundaries of your invention. Think of a real-estate property - you have boundaries around it to let people know what do you own! Similarly, in patents also you need to define your boundaries, how do you do it? By specifically describing all the nuts and bolts of your invention - the objective and limitations.
@@AbhayPorwal thank you so much sir
Sir i am not able to understand section 17.2
It's more like a 'penalty', so, after the filing the application (specification or other documents) - controller has instructed you to make changes to comply with the requirements of the act - in such cases, "the date" may be considered as the date by when all the requirements are met.
Okay sir.. thank you so much😊
Sir are all the sections in last chapter important?
@@mitalirane817 enjoy the knowledge grasping process, don't close your mind on anything..keep reading.
Okay sir😊
Sir what is the meaning of line "where the request for examination was filed by person interested, only an intimation of such examination may be sent to such person interested" in Rule 24B? Sir pls explain it once.
What it means is this, even though the request for examination was filed by other person (other than the applicant and inventors) the examination report will be served only to the applicant and not to the other person. Only an intimation will be served informing them about the development.
@@AbhayPorwal okay sir thank you
Sir what is exact meaning of Anticipation
Anticipation: Can you predict or come up with an invention without undue effort from your side if you were provided with some information or hints in one or more documents/products. It's like guessing or predicting what things people might create to solve problems or improve our lives -depending on what information is available to them.
Pls explain me section 19 I am not getting
Section 19 : If the controller is of the opinion that "the present invention" can not be used (practiced) by anyone without infringing some other patent - than, the controller requests the applicant to put "reference" to other patent by way of a public notice in the "present invention" so that the public is aware of the other patent and the "risk" of infringement - this way anybody who has taken permission to use the "present invention" can take permission of "other patent" as well.
The applicant can argue this request of the controller by showing that the "other patent" is not valid or by amending his own "present invention" so that there is no more chance of other patent getting infringed by people while practicing "present invention".
Consider a situation when such reference was inserted in the specification of "present invention" - how do you remove it? - by informing the controller that the claims of other patents are revoked or is no longer active or the specification of other patent is amended or the patent has been invalidated.
Think of it "Chair with four leg and a back support" as the example of present invention - what other patent will be infringed when somebody uses your invention?
@@AbhayPorwal Thank you Sir
@@AbhayPorwal A chair with four legs will be other invention, isn't it?
Sir Mera patent published ho gya ab exam ke. Liya Kha se apply kru
aapka application kisne file kiya tha? Unhe request kariye examination request file karne kai liye. Please reach out me if you need any further help.
Hi Abhay, how to connect to you. I want to talk to you.
Kindly connect through Linkedin, we can take it forward from there.
Sir, I am unable to differentiate sec 20, 26, 28 and 52...
20 is for substitution of applicant
26 is in case of obtaining
28 is mention mention of inventor as such and 52 is almost same as 26.
What is the major difference?
If there is a case where A &B worked for an invention, but A was alone granted a patent. Which section do I quote to add inventor B...Please help
Please do watch videos covering these sections and concepts. Here is a gist/objective of these sections.
Section 20 - This is applicable before grant of the patent - where you wish to change the applicants - you request the controller on F6 and supporting documents of how rights are being transferred to another party. This section is also applicable when out of the original applicants, only a few are surviving - so the application can proceed in the name of survivors (effective applicants)
Section 28 - This is also applicable before grant of the patent. In can you want to add names of inventos in the patent certificate - you use this section. This is not about adding or deleting inventors from the application, but only to patent certificate for accademic/credit purpose.
Section 26 is applicable post grant. In case, an inventor opposes a patent using post-grant Opposition on the ground that the invention was his and it was wrongfully obtained from him. He can place a request and controller can transfer the patent to his name.
Section 52 is applicable post grant. Here the Opposition happens using section 65 on the wrongfull obtaining of invention. Here also, upon request of the applicant/opponent or order of the court - the patent gets transferred to the applicant/opponent name - he has to file the documents again though.
@@AbhayPorwal Thank you so much.
sir aap jo bool rhe ho accha lg rha hai smjh nhi aarha bss
Kaise kaise feedback dete ho aap log!! Samaj kyu nahi aa raha hai? Let ke know, I will try to provide some more details.
Actually sir aapne toh accha smjhaya hai but ye feild nhi hai meri or college ne mandatory kr rkha hai to interest hi nhi bnn rha @@AbhayPorwal
Concepts Samaj lijiye, the IP knowledge will be useful if you pursuing law@@surajomar4110
thank you sir but I am a pursing Engineering@@AbhayPorwal
In that case, just get a broad understanding of what are IPRs and different types of IPRs. No need to get into the administration/process part. @@surajomar4110
Sir pls explain section 13(4)
Basically, there is no warranty given for the patent's validity just because the patent officials granted the patent. So, the patent officials can't be held liable or responsible if the patent gets challenged or invalidated later on.