What happens after I request examination of my patent application

Question

I filed a request for examination of my patent application and want to understand the FER process and how to respond. I have been reading conflicting things online and I would like to understand what Indian law actually says about this, which Act and Section applies, what the realistic timelines and costs are, and what I should be doing right now to protect my position. If the matter can be resolved without litigation I would prefer that route, but I want to know what my rights are before I agree to anything or sign any document.

MyVakeel Legal Desk · Accepted Answer

What happens after I request examination of my patent application is governed in India primarily by Patents Act, 1970, Section 12, Patents Act, 1970, Section 13 and Patents Act, 1970, Section 21. The short answer is set out below, followed by the practical steps most people in this situation need to take. Read it alongside the specific provisions named, because the exact relief available to you turns on the facts you can prove on paper.

Section 12 of the Patents Act, 1970 requires the Controller to refer the application to an examiner once a request for examination is filed under Section 11B, who conducts a search for prior art and assesses novelty, inventive step and industrial applicability of the claimed invention.

Section 13 requires the examiner to check whether the invention has already been published or claimed in any earlier application in India, and the results of the examination, including any objections, are communicated to the applicant as the First Examination Report, commonly called the FER.

Section 21 requires the applicant to comply with all requirements raised in the FER within a prescribed period, currently six months from the date of the FER (extendable by three months on request), failing which the application is treated as deemed to be abandoned, a strict and commonly missed deadline.

Responding to an FER typically involves amending the claims to overcome cited prior art, arguing distinguishing technical features, addressing Section 3 objections if any, and complying with formal requirements; if the Controller remains unsatisfied, a hearing under Rule 129 may be offered before a final decision to grant or refuse the application.

What to do next: 1) Track the six-month statutory deadline for responding to the FER carefully; 2) Amend claims to distinguish the invention from the cited prior art; 3) Address any Section 3 patentability objections with technical arguments; 4) Request a hearing if the response does not resolve all objections.

If the other side has already issued a notice, filed a case or set a deadline, treat the matter as time-sensitive — most remedies under Patents Act, 1970, Section 12 carry limitation periods, and a delay you cannot explain weakens an otherwise strong case. You can post the details on the MyVakeel forum for a practising advocate to review, or book a paid consultation with a Bar Council verified lawyer in this practice area.