On the Fast Track at the Indian Patent Office

Frankly, I didn’t quite believe it myself. But last month when I received a patent certificate for a patent application that I filed in April last year, my cynical approach and skepticism of the patent office and its functioning, beat a humble retreat.

Consider this, I filed a non-conventional patent application in the last week of April 2005. My client was in a mad rush to launch his product in the market and desperately required the patent grant, so as to reassure his investors and justify future expenditure on the project.

I therefore filed a request for early publication as provided by section 11 (2) of the Patents (Amendment) Act 2005 at the time of filing the application. This application was published in the official journal in the second week of August 2005. Thus, a request for early publication resulted in the application being published in 3 and a half months instead of the ‘at least’ eighteen months as is required by section 11(1), Rule 24. It should be remembered that the Patent (Amendment) Rules 2005 were in force at the time. The requirement that an application be published ordinarily within one month from the date of filing a request for early publication was introduced by the Patent (Amendment) Rules 2006, which came into effect from May 5 2006.

Following the publication, I filed a request for substantive examination in the third week of August 2005, i.e. within a week of the journal publication. A first examination report was issued in the fourth week of October 2005, that is, in approximately two months from the date of request. The examination report, in view of the Patent (Amendment) Rules 2005, then in force, stated that the application must be placed in order for grant within a period of 6 months. Accordingly, the application was to be placed in order by the last week of April 2006. This ironically happens to be exactly one year from the date of filing the application.

Again, it is pertinent to mention that the Patent (Amendment) Rules 2005 did not require that the examination report be issued ordinarily within 6 months from the date of request or publication, whichever is later. Thus the issuance of an examination report in a period of two months from the date of request indicates the Indian patent office is geared to accommodate the changes in time periods that have now been introduced by the Patent (Amendment) Rules 2006.

I filed a response to the examination report in the first week of November complying with the objections raised by the examiner and also followed it up by a telephonic discussion and finally a visit to the Patent Office in the third week of November, to iron out the pending objections. Thus the patent application was in order for grant in the last week of November 2005, a total period of seven months from the date of filing the application.

However, in view of existing procedures the application was technically placed in order for grant on the expiry of the period provided i.e. in the last week of April 2006. The application was then granted in the third week of June 2006 and the grant was recorded in the Register of Patents in the second week of September. The Patent Certificate was received by me in the last week of September 2006. As a result, the patent was granted in a period of 14 months from filing the application and a patent certificate was received in 17 months from the filing date.

From an era, not so long ago, where the time period between filing an application to grant of a patent took anywhere between 4 to 7 years and often longer, to have a patent granted within 14 months is a sign that the Indian patent office has truly evolved into a world class institution.

Having said that, it should be remembered that with the introduction of the Patent (Amendment) Rules 2006, the time period for placing the application in order for grant has been increased to twelve months from the date of issuance of the first examination report. Consequently, a patent should now realistically be granted in a period of 24 to 36 months, if one decides to be on the fast track.

Now here’s what I learnt from this experience:

1. Enclose a soft copy of your application and the drawings on a floppy or CD so as to assist the publication department of the Patent Office to publish the application early. They may or may not accept it, but the Mumbai and Delhi patent offices are warming to the idea.

2.Keep following up. Sometimes all it takes is a call every single day of the week to have your application published in time.


3.Don’t wait for the last month to respond to the FER or discuss the case with the examiner. If possible try and respond to the FER within three weeks of receiving it.
Ensure that all amended documents reach the examiner while the file is still with him.

Copyright Essenese Obhan