The Indian Government has taken up initiatives to reduce the time taken to examine patent applications. One of these initiatives was the option of the expedited examination of patent applications in which the application examination is done within an expedited period of time that is approximately less than 12 months. It was introduced in the Amendment Rules 2016 which were amended in 2019. It facilitates the below mentioned applicants (applicants must qualify as one of the following for an expedited examination):
1. A Start-up
Startup is the entity that is recognized by Department for Promotion of Industry and Internal Trade (DPIIT). The entity needs to fulfill a few criteria to be recognized as a startup. They are as follows:
I. Any company which is incorporated as a Private Limited Company or Registered as a Partnership firm or Limited Liability Partnership (LLP)
II. Less than 10 years of incorporation of the firm
III. Less than INR 100 crores turnover in any of the last Financial years
IV. Entity should not have been formed by splitting up or reconstructing an already existing business
V. Working towards development or improvement of a product, process or service and/or have scalable business model with high potential for creation of wealth & employment
2. A Small Entity (defined in Rule 2(fa) of Patent Rules)
Small Entity is the Small enterprise classified under the Micro, small and medium enterprise development (MSME) Act. As per Revised Classification applicable w.e.f 1st July 2020, a Small entity is an enterprise:
I. Investment in Plant and Machinery or Equipment:
Not more than Rs.10 crore and
II. Annual Turnover; not more than Rs. 50 crore
3. A female natural person (when there are joint applicants, at least one of them must be female)
4. A Government undertaking (defined in Section 2(1) (h) of the Patents Act, 1970), or government-owned, finance, or established authority/company.
5. Any application, whereby India has been chosen as the appropriate International Searching Authority or International Preliminary Examination Authority (in cases of PCT International patent application filed).
The expedited examination has to be requested by way of application through Form 18A. This request has to be accompanied by the early publication request. According to Rule 24C of Patent Rules, 2003 the examiner has to organize a report within a maximum of 2 months from the date of receipt of such a request. An ordinary application also has a provision to be converted into an expedited examination by paying the stipulated fee.
The Controller is mandated to dispose of the report of examination within 1 month of receipt of such a report. The first statement of objection shall further be issued within 15 days. The time span provided to put the application in order for a grant is 6 months from the date of the issue of the first statement of objection. An extension on the 6 months provided can be requested by way of an application made through Form 4 for a period not extending 3 months (before the expiry of 6 months). The application shall be disposed of within 3 months of receipt of the last reply to the first statement of objection or the order of grant. This period, provided for grant and disposal of application, is subjected to the pre-grant oppositions.
The main objective of the expedited examination is that the applications for which this is requested will be assigned to a different queue unlike ordinary examination queue, which already has an overflowing number of applications awaiting examination. Thus, the applications for which expedited examination is requested will be allotted to an examiner for examination significantly sooner than the applications that have been queued for ordinary examination. Once the application queued for expedited examination is allotted to an examiner, time-framed procedure is to be followed.
Authored By: Chaitanya,Patent Specialist, Operations Team