23 August, 2017
The grant of a patent in India usually takes a time period of 3-4 years or more. Normally, the process of grant for a patent involves a major ladder comprising its examination. Bearing in mind that the patent term in India is limited to 20 years from the date of filing of the patent application irrespective of any delay in processing of the application, this significantly reduces the patent term and puts the applicants at a considerable loss.
More particularly, with the fast moving and changing technology, the real question is -> Is it really worth to file for a patent for an invention when only the patent is granted after the technology with respect to the invention, has already become obsolete or outdated?
Recent developments in Indian patent law may now help change this sentiment. The India Patent office (IPO) in 2016 has established procedures, which can advance a patent application out of turn for a faster prosecution.
Under these procedures, the IPO will advance an application out of turn for examination if the applicant under Rule 24 (C) (1) files Form 18A along with a prescribed fee. The detailed procedure for filing the request for expedited examination can be found here: Expedited examination of patent applications
The IPO has yet to report the statistics for expedited examinations conducted till now. However, based on our analysis of the published granted patents and the FERs issued after the notification of expedited examination, it is clear that expedited examination puts examination of Patents on the fast track in word and spirits.
Here are the insights from our analysis so far:
Granted Patents
Average Duration: Currently, 18 patents have now been granted under expedited examination within a minimum of 3 to 9 months from the date of a request filed, whereas under normal process it is still taking much more time.
Several patents granted were among those, which converted ordinary examination request to expedited examination request
Jurisdiction: It is seen that, the maximum number of granted patents under the expedited examinations are from Chennai followed by Delhi and Mumbai
Field of technology: Mostly, the patents granted under the expedited examination are from the field of Chemical followed by mechanical inventions.
Issued FER
Spike in Electrical/Electronics: As many as 22 FERs are issued to patent applicants under this route. We expect these numbers to grow up considering large number of high-tech innovations happening in India
Type of Applicant: Although the expedited examination procedure was initiated for the benefit of start-ups, it appears that large corporates as well are reaping the benefits of the procedure. At least 4 global MNCs have received FERS through this route in last one year.
With this move, it is incidental that the efforts taken by Patent office has to some extent brought down the average time taken to grant a patent to 1 year under this procedure.
Fast grant of the patent may be particularly helpful in several scenarios.
Litigation perspective:
For instance, if someone is infringing your patent application, then you may want to get a quicker grant in order to be able to take action.
Or even if your company is litigation-adverse, it is better to be the one building the fence than the one being fenced out.
Also, for Indian applicant, it's difficult to monetize the patent or even filing infringement suits unless the patent is granted.
Investment perspective:
- Issued patents can help companies get funding, or increase company value during acquisition.
- Issued patents can be a tool for erecting fences around a market segment.
- Or an investor may require a granted patent before they are willing to invest in your invention
Foreign applicants:
If patent grants are delayed, the entry of companies into the Indian market with their product is delayed too. As a result, applicants of such companies may take advantage of expedited examination.
Fast Allowance Equals Competitive Advantage
Pursuing an aggressive strategy to obtain patents quickly can help a company develop (or maintain) a competitive advantage. Using the expedited examination on a first application is especially helpful in determining the scope of the patentable subject matter. The prior art found during the search and the examination process can steer subsequent applications in a fruitful direction, and these applications are then more likely to issue quickly too.
These are the very few of the several benefits listed out, that an Applicant can avail by filing expedited examination for faster grants.
While the expedited examination procedure was originally launched with a cap of 1000 applications, so as to parallel the ‘Make in India’ and ‘Start-up India’ initiatives for the benefit for home-grown innovative companies, the number of applicants taking this route shows that there is need for increasing awareness regarding several benefits of this procedure.
For further information, please contact:
Neha Manoria, LexOrbis
mail@lexorbis.com
