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Information Bank

Patents

Status of a Patent Application

Introduction:

Following the submission of a patent application, the option to check the status of the application is at the applicant’s disposal. It is advised that the application be closely monitored to ensure that updates or deadlines are not missed and additional requirements, if any, can be met. Understanding the various application statuses can assist the applicant in taking the appropriate action in accordance with the corresponding status.

Types of Statuses of a Patent Application:

  1. Application Does Not Exist/ Not Yet Published: Generally, a patent application is published by the Indian Patent Office (IPO), 18 months following the patent’s filing date or priority date, whichever is earlier. This is the status that can be anticipated if 18 months have not passed since the priority date or date the patent application was filed. 
  • Application Published: After 18 months from the priority date or application filing date, whichever is earlier, only the applications which are complete are published. This status indicates that the patent application has been published in the official gazette and has been made available for public scrutiny by the IPO.
  • Application Awaiting Examination: When an application is in this stage, it signifies that the applicant has submitted a request for examination and the application is awaiting the examiner’s assessment. Such a request must be filed within 48 months from the date of priority or date of filing, whichever is earlier. Failure to comply with the same shall result in the application being considered as withdrawn.
  • Application Examined [First Examination Report (FER) Issued]: This status implies that the application has been assessed and the First Examination Report has been issued by the Controller. The response to the FER must be submitted within 6 months from the date of FER. The response time is extendable by 3 months.
  • Application in Amended Stage: If any amendments are file in response to the FER, the application will be displayed as being in this stage. These amendments must be submitted with 6 months from the date of FER. A 3-month extension is available, however, if the response is still not filed, the application is deemed to be abandoned.
  • Abandoned: The application is discontinued and cannot be resurrected once it gets abandoned. This abandonment occurs at two instances:
  • Section 9: Failure to file a complete specification with 12 months following the date of filing for provisional specification shall result in the application being abandoned.
  • Section 21(1): If the application for the grant of patent is not put in order within 6 months from the date on which the FER was issued, the application gets abandoned.
  • Withdrawn: An application stands withdrawn on two occasions:
  • Rule 26: When a voluntary request for withdrawal is made by the applicant pursuant to sub-section (4) of Section 11B in Form 29. Such request shall be made within 48 months from the date of priority or filing, whichever is earlier. This legally permitted time frame is not subject to any exemption or extension. The applicant can request for a 90% refund of the examination fees, from the Patent Office before the FER is issued.
  • Section 11B (4): When the Request for Examination (RFE) is not provided within 48 months following the date of filing or priority, whichever is earlier.
  • Application Refused: The application stand refused under Section 15 once the Controller is satisfied that it does not adhere to the standards of The Indian Patent Act, 1970.
  • Granted: This status indicates that all objections to the application have been surmounted. Consequently, the patent is granted and published in the official Patent Gazette. After the grant, the patent holder is obligated to renew their patent from the 3rd year onward by paying an annual renewal fee. In India, a patent may be renewed for 20 years from the date of first filing.

Conclusion: It can be disastrous to miss the deadlines of a patent application. Once a deadline is missed, no statutory remedy can revive the application. Therefore, it is imperative for an applicant to comprehend and be cognizant of the current status of their application. They must exercise greater caution to retain legal rights over their priceless inventions and be vigilant of the application timelines.