Ashima: Sir! A PCT national phase application needs my attention but as usual I have question.


Dr. Dewan: Please ask your queries Ashima!


Ashima: What is the deadline for request for examination for a PCT national Phase application? Is the substantial examination queue ordered by actual filing date or date for request for examination?


Dr. Dewan: The deadline for making a request for examination is 48 months from the earliest priority date. The substantial examination queue is ordered by date of request for examination.


Ashima: How long will it take for patent applications to be published after PCT national entry?


Dr. Dewan: Nowadays, the patent applications are published within a few months after PCT national entry. The requirement is that the publication must take place shortly after the expiry of 18 months from the earliest priority date of the application.


Ashima: What is the time limit for response to OA/appeal to a Decision of Rejection?


Dr. Dewan: The time limit for response to an office action or a decision of rejection is 6 months normally which can be extended for a maximum period of another 3 months, but the request for extension must be filed within the 6 months period.


The time limit for filing an appeal to a decision of rejection is 3 months from the date of rejection.


Ashima: How many rounds of office action on an average are issued before conclusion of examination? e.g., will likely be rejected if response to first OA does not persuade the examiner?


Dr. Dewan: There are generally 2 rounds on an average before conclusion of examination followed by an oral hearing which may be further supplemented by an extended oral hearing.


Ashima: What are reasons for rejection frequently presented in an FER or an Office Action?


Dr. Dewan: Lack of novelty, lack of inventive step, lack of clarity, lack of definitiveness, non-compliance of formal requirements, subject matter not an invention.






Ashima: What kind of reasoning do you recommend in response to Inventive Step rejections? EP style, US style, JP style, CN style, or other suggestions?


Dr. Dewan: An EP style reasoning generally is useful. However, this must be supplemented by local practice and case laws.


Ashima: How does the examiner handle if there are more than one group of inventions (unity problem) in the claims, say group A claimed prior to group B?


Dr. Dewan: The Controller will ask for dividing the claims into group A or group B claims.


Ashima: Is an interview with examiner normal or rare in Indian practice, especially before hearing notice? Does the examiner welcome interview, formal or unformal? What is the procedure of schedule interview?


Dr. Dewan: There is no provision for formal interview, but some Controllers are agreeable to an informal interview over a telephone call to resolve some issues in the claims or formalities.


Ashima: What is the average time period from national entry until date of mailing of first examination report (OA)? What is the average time period from national entry until date of grant/reject of the patent application?


Dr. Dewan: The average time period from national entry is about 18 months. The average time period from national entry until date of grant/rejection of the patent application is 3 years.


Ashima: If claims are amended to similar as the scope of allowed claims in other PTOs (e.g. EPO, USPTO, or JPO), will it help accelerate the examination, or does the examiner like it, or the does the examiner usually invite the applicant to do so in the OA?


Dr. Dewan: Yes. If the claims are amended to be similar to the scope of allowed claims in other PTOs, particularly the EP, it will help to accelerate the examination. The Controller will not invite the applicant to do so, the applicant must anticipate this and do it himself.


Ashima: Is there notice of allowance issued in India? How long to paid the registration fee?


Dr. Dewan: No notice of allowance is issued and there is no registration fee.


Ashima: After rejection of a patent application, what is deadline for appeal (review)? Does the appeal (review) by a board or by the examiners?


Dr. Dewan: After rejection of a patent application, the deadline to file an appeal is 3 months and the appeal must be filed before the High Court having Jurisdiction of the Patent Office.

A review has to be filed within 2 months, but it will go before the same Controller who rejected the application in the first place.


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