Can the Indian patent office restrict the examination to certain set of claims?

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A patent application is queued for examination once the request for examination has been made in the prescribed manner under sub-section (1) or sub-section (3) of section 11B. During the examination, the Patent office examines the patent application and issues a first examination report (FER), which is communicated to the Applicant. The objection raised in the FER may be with respect to novelty, inventive step, sufficiency of disclosure, formal requirements and unity of invention, among others.

The IPAB on its order dated 27th October 2020, had set aside the impugned order of the respondent (THE CONTROLLER OF PATENTS) against the patent application numbered 531/DELNP/2013 (hereinafter referred to as “the Current application”) and granted a patent to the applicant (UNIVERSITY OF COPENHAGEN). During examination of the current application, Examiner had raised objection that the claims lack unity of invention under section 10(5) and additionally restricted the examination to only a chosen set of claims. Section 10(5) of the Indian patent act mandates that a single patent application should relate to single invention or to a group of inventions linked so as to form a single inventive concept.

Fact of the case

A National phase application numbered 531/DELNP/2013 based on the PCT International application was filed by the applicant. A first examination report (FER) was issued on 02 July, 2018. One of the objections communicated in FER are as follows:

“In view of the plurality of distinct inventions (see Para under heading- Unity of invention), the search and examination u/s 12 and 13 of the Patents Act, 1970 (as amended) has been deferred with respect to groups of inventions II to VII containing claims 22 to 28. Hence, present examination report is restricted to Invention I having claims 1-21 only.”

 

 Further, a hearing was conducted and the Appellant filed written arguments along with amended set of claims at the Patent Office within the stipulated time. An impugned order was issued by the respondent on 06 March, 2020.

IPAB’S DECISION

Therefore, while the objection with regard to ‘unity of invention’ can well be taken if the plurality of invention is found to have been claimed but restricting the examination to any chosen set of claims by the Controller is not mandated by the Patents Act,1970, particularly so when the fee in respect of examination of all the claims are paid by the applicant.

A review of the International Search Report in respect of this application in International Phase, we notice that International Seraching Authority (ISA) has found the lack of “unity of invention” and searched only the first set of claims i.e. claims 1-21. Further, ISA objections on ‘Unity of Invention” are verbatim matching with that raised by the learned Controller in the instant application.

 

CONCLUSION:

During the examination of the patent application, the search and examination of all the claims has to be carried out irrespective of the fact whether the patent application relates to a plurality of invention. The Controller may raise objection for lack of unity of invention under section 10(5) and instruct the Applicant to elect the set of claims the Applicant desires to retain and subsequently file a divisional application for the other set of claims. However, in practice the Controller restricts the search and examination to chosen set of claims without any intimation to the Applicant. Moreover, the examination report issued should not be a verbatim matching with search report issued by the other patent office as the patent law varies for each jurisdiction.  For example, the WIPO conducts a search for only first set of claims, as the ISA (International search Authority) is under no obligation to examine the multiple set of claims once a single fee is paid. They intimate the same to the Applicant and conduct a further search on receipt of the corresponding fee. On the other hand, the India Patent Act and Rules mandates to examine all the claims as the fee for all the claims are paid prior to issuance of the FER and forbids the examination of selected set of claims as per the convenience of the Controller.

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