Lawyer Monthly - March 2023

How can an applicant best increase their odds of having their application accepted by the IPO? In order to increase chances of a patent application being accepted by the IPO, some general considerations that must be kept in mind are as follows: Many inventions are rejected on the basis of the subject matter of the invention, which should not fall under sections 3 and 4 of the Patent Act, i.e. must fulfil the criteria of eligibility. For example, pharmaceutical inventions are generally objected under sections 3(d) and 3(e); sufficient data must be provided in the specification to justify the technical advancement over the prior art for 3(d) and synergy in case of a composition, combination or formulation comprising multiple ingredients for 3(e). As mentioned above, CRIs are objected under section 3(k). It is important to show technical effect of the software to overcome 3(k). It is also important to show a hardware component. For devices that are likely to be objected under section 3(f), it must be ensured that it is not a mere arrangement or re-arrangement of a known device. The device must be new and also all its components must act together to produce the desired technical effect. With respect to inventions where biological material is used, a common objection raised is with respect to NBA (National Biodiversity Act) permission. An applicant must ensure that if the subject matter involves use of any biological resource obtained from India, its complete details are provided in the specification and NBA permission is taken, if required, to avoid an objection during the examination stage that normally delays grant. Enablement is also a very common ground for objection. The claims must be supported with sufficient data and information in the specification. Use claims and method of treatment claims are not allowed in India and must be avoided. An applicant must ensure that all the formal requirements of an application are complied with and that there is strict adherence to the various timelines. Requirement under section 8 ‘Statement and Undertaking’ must be taken care of by providing the details of the corresponding foreign applications within the stipulated time. Strict adherence to the stipulated timelines with respect to each of the procedures involved must be observed to avoid formality objections. What are the most common mistakes that you see made during patent prosecution, and how do you help your clients to address these? One of the most common mistakes committed by applicants is that they do not disclose sufficient data while filing the complete specification. It must be The time period for filing request for examination (RFE) is 48 months from the earliest priority date. Once an RFE is filed, the application is examined between six months’ to one year’s time. The first step towards expediting the process is to file for RFE as soon as possible. The IPO has taken several measures to increase transparency in the process and decrease delays in prosecution. The entire process from filing to grant is now conducted online, including oral hearings and also opposition hearings that are held through video conferencing. File wrappers of published applications are available online for public to access. Dynamic online utility services provide updated information about the status of an application. Vide noticed as of 16 January 2023 that the IPO is undertaking hearings in pending matters in an expedited manner. In addition to these, there are certain categories of applicants who can avail of expedited examination provisions as mentioned above. One of the most common mistakes committed by applicants is that they do not disclose sufficient data while filing the complete specification. MY LEGAL LIFE 23

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