Obtaining a patent involves going through elaborate patent prosecution procedures. The patent examination process entails the review of your patent by the examiner, which is followed by the issuance of a First Examination Report (FER). However, if your answers do not resolve all the objections, the examiner subsequently forwards the case to the Controller of Patents. Consequently, the Indian Patent Office (IPO) notifies you officially of the hearing date. This is a critical point in IP hearing procedures in India, because the patent office hearing provides you with the opportunity to counter both technical and legal objections raised. You have to show the Controller of Patents that your invention meets all the requirements laid down by the statutes. This article shows how you should prepare for and successfully present your case at the patent hearing.
What Happens During a Patent Hearing?
A patent hearing is a formal quasi-judicial process that takes place under the Indian Patents Act, 1970. In this regard, the Controller of Patents serves as the decision-making authority for such hearings. Specifically, well prior to the hearing, the Controller provides a formal notice regarding any pending objections. For the most part, these objections relate to novelty, inventive step, industrial applicability, non-patentable subject matter, or clarity of claims.
In the course of the hearing, the applicant or his/her authorized agent makes an oral presentation of the case. You should counter all the objections mentioned in the hearing notice. The Controller will assess your arguments, consider prior art citations, and raise relevant questions. Modern patent prosecution largely depends on the use of the digital system. At present, the Indian Patent Office holds most of the hearings online using the video-conferencing system.
How to Prepare for a Patent Office Hearing
Preliminary preparation plays a crucial role in successful outcomes in any patent oral hearing.
1. Analyze the Hearing Notice
To begin with, make sure that you carefully analyze the hearing notice. In particular, find out all the specific objections formulated by the patent examiner. Relate each objection to the appropriate provisions of the Patents Act, 1970. Additionally, pay great attention to the prior art documents and technical feature mapping.
2. Create a Comparative Feature Matrix
Managing rejections based on the cited prior art in patent hearings involves careful analysis. You should create a table of comparative feature matrices. Put your independent claims in the first column and the technical features of the cited prior art in the parallel columns.
3. Draft Claim Amendments
In advance of your hearing, make sure to draft your narrow and defensive claim amendments. Your amendments should be well-supported by your original specification. Furthermore, do not introduce any new matter, because Section 59 explicitly prohibits any expansion of claim scope.
4. Make use of Patent Agent Role in Controller Hearings
A patent agent plays an invaluable role in Controller hearings. For instance, he/she is thoroughly familiar with patent jurisprudence, technical aspects, as well as administrative practices. He/She develops the right legal strategy, manages the hearing process and presents the case technically to the Controller.
Navigating Patent Hearings Before the Controller: Key Strategies
When making your presentation before the Controller of Patents, you will need to employ the scientific and legal aspects.
Dealing With Objections of Prior Art During Patent Hearing
Examiners tend to use objections of anticipation/ no novelty under Section 2(1)(j) in rejecting claims. To rebut such objections, you need to show that the prior art cited does not teach every single element contained in the claim. Consequently, if a technical element is missing in any prior art document, your claim successfully establishes novelty. Show how your invention solves a problem which prior art failed to solve.
How to Make an Argument of Inventive Step Before Patent Controller
In making an argument for inventive step under Section 2(1) (ja), you need to make the case that your invention shows some technical advancement or economic significance or both, which are not obvious to a person skilled in the art (PSITA).
To that end, to effectively present an argument for inventive step before the patent Controller, consider the following key strategies:
- Define the PSITA Accurately: Define the technical skill level of a Person Skilled in the Art in your field.
- State the Specific Technical Problem: State the specific technical problem present in the prior art solutions.
- Show Technical Advancement: Explain how your claimed feature gives a technical solution to the problem.
- Show Unexpected Technical Effect: Empirical data, lab test results or comparative graphs showing synergy effect or performance increase.
- Show Hindsight Approach: Combining more than one prior art illegally uses the hindsight approach.
Dealing with Objections Raised in Hearing at the Patent Office
Apart from objections of prior art, another type of objection raised is that of statutory exclusions under Section 3 of the Patents Act. In the case of inventions pertaining to software (under Section 3(k)), stress should be on the hardware aspect, technical contribution, and technical effect in industry. As far as inventions pertaining to chemicals or pharmaceuticals (Section 3(d)) are concerned, provide evidence to prove enhanced efficacy.
Virtual Patent Hearings Video Conferencing Guidelines
Patent hearings at the Indian Patent Office happen nearly always through video conferencing. Following virtual patent hearings video conferencing tips ensures that you have a flawless presentation.
- Conduct Technical Checks Prior: Conduct checks of your internet connection, camera, microphone, and browser compatibility sufficiently early.
- Log On In Time: Connect to the official hearing link a minimum of ten minutes prior to the scheduled time. This will ensure that you do not delay the Controller.
- Behave in a Professional Manner: Dress professionally and ensure eye contact through your camera while presenting. Keep your microphone muted to prevent any disruptions.
- Organize Screen Sharing Material: Have all your comparative charts, patent specification PDFs, and prior art material opened in windows for immediate screen sharing.
- Verify Attendee Information: Your display name should have your name and Patent Agent registration number on it.
Rule 28 Written Submission After Patent Hearing
A successful patent oral hearing does not come to an end once the virtual meeting is concluded. It will be the written submission that will determine whether or not your application will receive a favorable response from the Controller.
Pursuant to Rule 28(7) of the Patents Rules, 2003, the applicant is supposed to file a written submission within 15 days of the hearing date. This document captures all the oral submissions that were made by the applicant in the hearing.
Elements of a Successful Written Submission
- Summary of Verbal Submissions: Concisely summarize all the technical discussions that were held with the Controller.
- Claim Amendments in Formal Documents: Append the final claim amendments, highlighting additions, changes, and deletions.
- Piece-meal Objection Responses: Make formal rebuttals for all the objections that were raised in the hearing notice.
- Evidence: Append evidence of empirical tests, reports, and judicial decisions that were cited during the hearing.
Failing to file the Rule 28 written submission after the patent hearing within the stipulated 15 days may compromise your entire application.
Managing Deadlines and Adjournments
Timelines govern the entire process of patent examinations. Failure to meet statutory timelines entails dire consequences for applicants under India’s intellectual property laws.
Application for Adjournment
Should you be unable to attend a hearing as a result of unforeseen situations, you may apply for an adjournment under Rule 129A. This application should be accompanied by Form 4, together with the prescribed fee, within three days before the hearing. An applicant is only allowed two adjournments, none of which should exceed thirty days.
Consequences of Missing Patent Hearing Deadlines
Consequences of failing to meet patent hearing timelines will be catastrophic for your intellectual property. Where an applicant fails to attend a hearing without a timely adjournment, the Controller assesses the application based on records available. In many cases, the Controller rejects the application under Section 15 of the Patents Act. As a result, your application will be automatically abandoned.
Patent Hearing - Protecting Your Rights
The process of getting a patent hearing involves vision, preparation, and technical understanding of the subject matter. All steps involve great precision, starting from the analysis of the hearing notice up to the submission of post-hearing briefs as per Rule 28. With the help of a registered patent agent and through statutory compliance, one can easily overcome the opposition raised by the examiner. Learn how to win your hearing in order to obtain a granted patent in India; reach out to Intellect Bastion for comprehensive assistance.
Frequently Asked Questions (FAQs)
What is a patent office hearing?
A patent office hearing is an oral hearing carried out by the Controller of Patents in a case of patent prosecution. The hearing allows the applicant or patent attorney to orally address objections that the examiner or Controller left unresolved in the examination report or hearing notice.
Do inventors need to attend patent hearings?
No, inventors do not have to attend patent hearings personally. A registered patent attorney or advocate who holds a power of attorney (Form 26) can appear on behalf of the applicant. However, inventors can attend the hearing if their technical knowledge helps them understand some technical aspects of the invention.
What is the 15-day period after the patent hearing?
Rule 28(7) of the Patents Rules, 2003 mentions this 15-day period. Applicants must submit their written arguments along with the amended claims within 15 days following the patent oral hearing.
Can you seek an adjournment of a patent hearing?
Yes, you can make a request under Rule 129A of the Patents Rules. You need to fill Form 4 along with the appropriate filing fee at least three days before the scheduled date of hearing. The Controller can adjourn the hearing twice by 30 days each time.
What are the consequences of missing a patent hearing at the office of the Controller?
If an applicant misses a patent hearing without prior permission or postponement, the Controller conducts the hearing using only the documents available on record. In such cases, the Controller issues a refusal order under Section 15 of the Patents Act, rejecting the application.
Who is eligible for representing an applicant in a patent hearing?
Any one of a registered Patent Agent under the Indian Patents Act, 1970 or an advocate authorized through Form 26 (Power of Attorney) can represent an applicant in a patent hearing.
YASHIKA KORANGA
Senior Patent Associate at Intellect Bastion
