Understanding The Oral Hearing Process Of Indian Patent Examination

Indian Patent Law prescribes that each patent application should be granted after a substantive examination. In India, the examination process starts after filing a formal request for examination only. That is why each patent application is taken up for examination in order of the date of Request for Examination and not by the date of filing of the patent application.

After conducting the substantive examination, the Indian Patent Office (IPO) issues a First Examination Report (FER). A response to the FER becomes due within 6 months from the date of issuance of FER; this due date can be extended by a maximum of 3 months upon filing a request for extension with the prescribed fee. It is pertinent to note here that the request for extension needs to be filed before the expiry of the initial 6 months period provided for responding to the FER. That is the request for extension cannot be filed retrospectively. The request for extension can be filed only once and it is not possible to take repeated extensions.

The IPO may also issue a Subsequent Examination Report (SER) if required, once a response to FER is filed. The response to SER is also due within 6 months from the date of issuance of FER (not SER) which as explained above can be extended by a maximum of 3 months. Also, SER cannot be issued after the expiry of the extendable FER response period, i.e., 6 + 3 months. There used to be instances where SER was issued so close to the due date that there was no sufficient time for an applicant to respond to SER. The practice of issuing SERs is therefore discouraged by the patent office itself. And according to an estimate, only about 0.33% of patent applications receive SER.

If there are any outstanding objections even after filing a Response to FER or SER as the case may be, the IPO provides at least one more opportunity to Applicant in form of an oral hearing before taking any adverse action on the patent application. In view of natural justice, the Patent Office generally issues a hearing notice to the applicant even if the applicant has not requested the oral hearing. However, as a best practice, it is always recommended to include a request for an oral hearing in the Response to FER or SER.

The typical process of an oral hearing is as follows. A Controller who is an officer senior to examiner issues a notice of hearing inviting the applicant to attend the hearing on a scheduled date for the hearing. The gap between the date of notice and the date of hearing typically varies from 10 to 30 days or sometimes more. It is possible to seek an adjournment of the oral hearing in case the Applicant needs more time due to some justifiable reasons. The adjournment can be sought twice at the most. With each adjournment request, a fresh hearing notice is issued notifying the new date of the oral hearing. In practice, the average gap between the original date of hearing and the new date of hearing is around 1 month. Also, the Applicant is supposed to inform the Controller in advance about the intention of attending the oral hearing which can be attended physically or through video conference upon request. The request for attending oral hearing through video conference can also be specified at the time of submitting the Response to FER. In the case of hearing through a video conference, the Controller sends a web link for the video conference in advance. On the day of the oral hearing, the Applicant attends the oral hearing and presents arguments and/or documents to overcome the outstanding objections. Written submissions in respect of the oral hearing become due within 15 days from the date of the oral hearing. The due date for written submissions can be requested to be extended by one month, but this extension is subject to the discretion of the Controller.

As such, there is no provision of ex-parte oral hearing at the IPO. Once the oral hearing is notified, it needs to be attended; otherwise, the patent application is considered abandoned. In some cases, the IPO goes on to issue a refusal order for non-attendance of hearing due to divergent practices prevalent amongst the 4 branches of IPO or different interpretations by different Controllers. The option of directly filing written submissions by skipping the oral hearing is also not available as such. In practice, if outstanding objections are minor or formal in nature, the Applicant may directly file written submissions after taking due approval from the Controller to avoid appearing for the oral hearing. However, in case of substantial outstanding objections, the Controllers are unlikely to accept a request for direct written submissions.

The IPO can directly proceed to grant a patent if all objections of the examination report are successfully addressed in the response to the examination report. It is pertinent to note here that there is no advance notice of grant in India. The grant of a patent may sometimes come as a surprise. It is therefore advisable that any pending activity, such as filing of divisional applications or voluntary amendments or corrections if any required, should be preferably completed at the time of responding to the examination report. In a few cases, some Controllers prefer to call or send an email communication indicating the pending formal requirements at the time of grant, and request the applicant to comply with the same. If the applicant complies with such requirements in response to said call or email, the Controller may proceed to grant a patent.

No application can be directly refused after filing a response to the examination report. One opportunity in the form of an oral hearing is always provided before taking a decision on the application. According to an estimate, about 50% of the examined patent applications in India are directly granted after filing the response to examination and the remaining 50% go through the oral hearing process across all technical areas; the percentage may vary according to the technical area. For example, mechanical inventions will have fewer chances of going through an oral hearing process as compared to computer-related inventions due to objections relating to the non-patentable subject matter. To further understand prevailing trends consider a sample of 300 patent applications in India, all 300 of them will be issued FER and only 1 is likely to be issued SER. Further, 150 applications will be directly granted after filing a response to FER/SER and the remaining 150 applications generally go through the oral hearing process. Taking into consideration the average grant rate at the IPO which was as high as 82% in the calendar year 2019, a total of 246 applications will be granted and only 54 applications will be refused in the above-mentioned sample. Here the assumption is no application is left abandoned and all are examined by the IPO.

To summarize, every patent application in India receives at least one office action which is in the form of FER, i.e., first office action. SER which can be equated to a Second office action is very uncommon. In about 50% of the cases, FER is followed by an oral hearing, which is akin to examiner interview, to settle outstanding objections after filing a response to the FER. As such it is compulsory to attend the oral hearing and thereafter file written submissions; otherwise, it may lead to loss of right for the Applicant.

Understanding The Oral Hearing Process Of Indian Patent Examination by Joginder Singh