EXAMINATION OF APPLICATIONS

Sections 12 to 24 deal with the examination of applications for grant of patents.

Examination of application (s. 12). Where a complete specification has been filed in respect of an application for a patent then the Controller shall refer both the application and the complete specification to an examiner for making a report to him as regards: (i) whether the application complies with the requirements of the Act and the Rules, (ii) whether there exists any ground of objection to the patent; (iii) whether the invention has already been published or claimed by any other Person.

Search for anticipation by previous publication and by prior claim (s. 13). For the purpose of submitting report to the Controller, the examiner shall make a search in the publications available in the patent office, specifications of prior applications and specifications of patents already granted. This will help him coming to the

conclusion whether the invention under examination by him has already been published or claimed or is the subject matter of existing or expired patents.

Consideration of report of examiner by Controller (s. 14). Where there are some  objections to the grant of application, the same shall be communicated to the applicant. He shall, where i-f so required by the applicant, give him an opportunity of being heard. 

Power of Controller to refuse or require amended applications in certain cases (s. 15). Where the Controller is satisfied that the application does not comply with the requirements of law, he may either (a) refuse to proceed with the application; or (b) require the application, specification or drawings to be amended to his satisfaction before he proceeds with the application. Further, if it appears to him that the invention claimed in the specification is not an invention within the meaning of, or not patentable under the Act, he shall refuse the application.

Power of Controller to make orders respecting division of application (s. 16). In the following two situations, an applicant may file a further application where the claims of the complete specification relate to more than one invention: (a) at any time before the acceptance of the complete specification of the first application; (b) with a view to remedy the objection raised by the Controller.

Power of Controller to make order respecting dating of application(s. 17). At any time after the filing of an application and before acceptance of the complete specification, the Controller may, at the request of the applicant, direct that the application shall be post dated to such date as maybe specified in the request, and proceed with the application accordingly. However, no application shall he post dated to a date later than 6 months from the date on which it was actually made.

Power of Controller in cases of anticipation (s. 18). Where it appears to the Controller that the invention so far as claimed in any claim of the complete specification has been anticipated was in s.13, he may refuse to accept the complete specification unless the applicant (a) establishes that the priority date of the claim of his complete specification is not later than the date on which the relevant document was published; or (b) amends his complete specification.

Power of Controller in case of potential infringement (s. 19). Where it appears to the Controller that an invention in respect of which an application for a patent has been made cannot be performed without substantial risk of infringement of a claim of any other patent, he may direct that a reference to that other patent shall be inserted in the applicant's complete specification by way of notice to the public.

Power of Controller to make orders regarding substitution of applicants, etc. (s. 20). If the Controller is satisfied, on a claim made at any time before a patent has been granted that by virtue of any assignment or agreement in writing made by the applicant or one of the applicants for the patent or by operation of law, the claimant would; if the patent were then granted, be entitled thereto or to the interest of the applicant therein, or to an undivided share of the patent or of that interest, then the Controller may direct that the application shall proceed in the name of the claimant or in the names of the claimants and the applicant, or the other joint applicant or applicants, as the case may be.

Time for putting application in order for acceptance (s. 21). For putting the application in order for acceptance, the applicant has to make the amendments as desired by the Controller. If such amendments are not made within 15 months from the date on which the first statement of objections to the application or complete specification is forwarded by the Controller to the applicant, the application is deemed to have been abandoned. Such period of making amendments can be extended to a maximum of 18 months on a request for extension being made by the applicant.

Acceptance of complete specification (s. 22). When the objections of the Controller have been satisfactorily rectified, within period mentioned in s. 21, then he may accept the complete specification.

Advertisement of acceptance of complete specification (s. 23). On the acceptance of a complete specification under s.22, then the Controller shall communicate the same to the applicant. Also he shall advertise in the official gazette the fact that the specification has been accepted. Thereupon the application and the specification with the drawings, if any, shall be open to public inspection.

Effect of acceptance of complete specification (s. 24). On and from the date of advertisement of the acceptance of a complete specification to the date of sealing of a patent in respect thereof, the applicant shall have the privileges and rights of the grant of patent. However he will not be entitled to institute infringement proceedings until the patent is sealed.