Incomplete Response to IPO FER Dooms Indian Patent Application.
06 May 2024
Patent Laws in India >> Intellectual Property Rights
Patent applicants in India beware! A recent court case highlights the importance of thoroughly responding to a First Examination Report (FER) issued by the Indian Patent Office (IPO). Failing to comprehensively address all objections raised in the FER can lead to your application being deemed abandoned, with limited recourse for appeal.
The applicant, in this case, argued that their response to the FER, though not complete, should have prevented the application from being abandoned. They contended that the IPO should have issued a rejection under Section 15 of the Patents Act, allowing them the opportunity to appeal.
However, the court sided with the IPO. The applicant's partial response to the FER was deemed insufficient to fulfill the requirements set forth in the report. Consequently, the application was abandoned under Section 21(1) of the Patents Act.
This decision is crucial because Section 117A of the Patents Act restricts appeals against orders issued under Section 21(1). As a result, the applicant lost their chance to challenge the abandonment in court.
Key Takeaways for Applicants
- Failing to comprehensively address all objections raised in a FER can lead to your application being abandoned.
- An incomplete response is not sufficient to prevent abandonment under Section 21(1) of the Patents Act.
- Orders issued under Section 21(1) cannot be appealed under Section 117A.
This case serves as a reminder to applicants to carefully review and respond to all objections raised in a FER within the designated timeframe. Consulting a patent attorney can ensure a comprehensive and timely response, maximizing your chances of a successful patent application in India.