EARLY PUBLICATION OF PATENT APPLICATION: A PROVISION NOT TO BE MISSED!November 22, 2021 By Khyati Dave
India in view of other countries has slow prosecution of patent applications, though the efforts are being made to make it quicker and we are witnessing it getting better and better. When we consult an enthusiastic entrepreneur or a company for filing their patent application, one of their most important concerns is how to expedite the patent prosecution in order to receive the grant of the patent as soon as possible. Here, we would like to suggest the best tool to expedite patent prosecution!
Many provisions are provided under patent act to expedite the prosecution including the provision of the filing for request for early publication and filing of request for expedited examination. While filing of request for examination has certain eligibility criteria, the provision of filing of request for early publication is open for all by paying prescribed fees under the patent act.
Generally, once the patent application is filed it is not ordinarily open to the public until eighteen months from the date of filing of application or the date of priority of the application, whichever is earlier. The period within which the Controller is required to publish the application in the e-journal of the official gazette of Patent Office is ordinarily within one month from the date of expiry of specified eighteen months period.
In order to omit the fixed period of eighteen months, a request for early publication is required to be filed on Form-9, under sub-section (2) of section 11A in accordance with the rule 24A. The applicant may request the Controller to publish his application at any time before the expiry of the period of eighteen months on Form-9 along with payment of the prescribed fees and subject to the provisions of sub-section (3) of section 11A, the Controller is required to publish such application as soon as possible, within one month from the date of request for publication under rule 24A.
The fees for filing a request for early publication is INR 2,500 for a natural person or start up or small entity and INR 12,500 for others alone or with a natural person or startup or small entity (ies).
Such fees are manageable and are definitely worth it when it helps to cut-off such a long time period within the total time period of the prosecution of the patent application, because the earlier the patent application will get published the quicker it will allow to file the request for examination to put the patent application under examination. Also, if the patent is granted, the patentee can claim the damage from the date of publication, hence the earlier publication provides better protection against the infringing party. Moreover, if the applicant wishes to show the details of the invention to the potential buyer of the patent, it can be done as soon as the patent application is published giving the applicants the opportunity to reap the rewards of their long-term hard work at the earliest opportunity.
Therefore, such an excellent provision should not be missed by any applicant who has taken all precautions to file the patent application and aspires to get their patent granted at shortest possible time.