Our patent office recently issued a circular relating to examination of patent applications and consideration of examiner’s report by the Controllers. This circular provides an insight into the current process of examination of a patent application and also provides concrete steps to reduce the delay (at the patent office) in examination. In my opinion, this is a very welcome step and long overdue. PS: We had, in one of our previous post provided suggestions for improving the working of the patent office and we are happy to note that the circular incorporates a few of those suggestions including the one for providing a detailed order with reasons for rejections/acceptance.
The circular provides an instance of undue delay: “..[O]fficers acting as Controllers are unduly spending considerable time in reinvestigating the report of the Examiner and at times over-rule the opinion of the Examiner without recording sufficient reasons for such over-ruling in the file.”
A summary of standing instructions issued for examination in the circular is provided below:
i. Classification of patent applications according to subject matter group at the time of receipt of application.
ii. Determination of priority date on a claim basis (rather than entire application).
iii. Responsibilities of Examiner:
- To conduct comprehensive investigation of an application and prepare a report under section 12;
- Report to quote relevant pieces of prior art effecting patentability of a claim and provide an extract thereof. No frivolous objections;
- To conduct an inter-office search covering all four patent offices;
- To raise objections rather than comment on missing forms.
- The Examiner’s report will: Be a permanent part of a file’s note sheet and non-editable at the Controller’s end; Include a draft summary/gist of objections-this gist editable at Controller’s end; Include any amendments to the complete specification;
- Examiner to comply with these instruction to submit the report to the Controller.
iv. Responsibilities of the Controller:
- To consider the Examiner’s report on a prima facie assumption as exhaustive;
- Add to the gist if in his opinion Examiner has missed a major point on patentability;
- Overrule Examiner-but need to record reasons for the same in note sheet;
- Conduct hearings on the application: Examiner may be present and sign the note sheet; Controller to record minutes of the what transpired in the meeting in the note sheet; Responsibility of rejecting/accepting an application lies with Controller;
- In case Controller refuses an application, it will be noted in the note sheet and a reasoned order of refusal to follow within reasonable time;
- Controller solely responsible for petitions under rules 137, and 138; Forms 4, 6, and 8, and form 13. (See details of the rules and forms in the patent office manual).