If you are new to the world of patents, chances are that you are wondering how long it takes to get a patent. And when you come to know that getting a patent may take years, the next question that your mind asks is, why? Why aren’t patents registered right away?
We have faced such questions a number of times. Therefore, we decided to answer these questions and put a full stop to your queries.
So, why does patent grant take so long?
Patent grant takes time because of: 1) procedural delay that includes many steps such as patentability search, drafting, filing of provisional & non-provisional application, publication, examination, office actions & their replies, etc. 2) Backlog created due to lack of manpower in Patent office.
Patenting process is not a straightforward registration process. It involves complex steps. Each step plays a vital role in the process and can’t be skipped. Let’s decode the patenting process in detail and understand why you have to wait so long for a patent grant?
To patent an invention, the procedure starts right at the idea phase and ends at the grant or refusal phase. From the start to the end of this procedural timeline, you have to go through many steps that take time. As the situation varies from case to case, we have tried to cover general steps.
The First 7 delays discussed below can be classified under procedural delay & 8th one under backlog.
1. Provisional Patent Application:
Once you get an idea, you run to the patent office or to its website and secure a filing date for your invention. This is nothing but the filing of the provisional patent application. You may ask, why do you have to file a provisional application? Why not file a complete or non-provisional application?
The answer is that many a time we don’t have our invention ready to file and we just have a rough idea of the invention. As you may be aware, in patents, dates are very important. This is to ascertain, who came up with the idea first.
Therefore, even when your invention is not ready to file a complete specification or non-provisional application, you can secure the date also called the priority date or filing date depending upon the situation.
Now, coming back to our main question of delay, the provisional patent application may take a week or even more than a week in drafting. You yourself may choose to draft it or may choose to hire a patent attorney.
2. Patentability Search:
Once you have worked upon your invention and you know what works in it and what doesn’t. You are ready to file a non-provisional patent application. However, before filing the non-provisional application, you should conduct a patentability search.
The patentability search is helpful in many ways. It helps you in:
- Knowing whether someone has already come up with the same idea as yours.
- Knowing the inventions available which are closest to your invention.
- Knowing how to proceed with your invention including how to draft your patent application.
- Designing your claims around the already available inventions. This way, your invention defined in claims becomes distinguishable over prior art found in patentability search.
- Knowing whether your idea is worth pursuing a patent.
- Providing a direction to your patent application.
You should note that no patentability search is perfect and there are always chances of missing important prior arts. You yourself can conduct the patentability search. However, it is advisable to take the help of a patent professional to conduct it as the professional would be able to un-earth better prior-arts than you.
The process of discovering how your invention works or prototyping a working model may take a month or even more.
Furthermore, the step patentability search may take up your 2 to 3 weeks.
3. Drafting of Non-provisional Patent Application
Non-provisional patent application consists of the complete specification. After knowing how your invention works and conducting the patentability search, you are ready to file your non-provisional patent application.
Note: The non-provisional patent application can be filed within 12 months of the filing of the provisional patent application.
Since, your invention will be read, understood, and defined based on the complete specification filed along with the non-provisional patent application, it’s preferable to draft it very cautiously.
There is no bar whether you draft it or a patent attorney to draft it for you. However, if you want to utilize your future patent commercially as much as possible, drafting by a professional would help.
If your purpose is to get a patent just for the sake of having a patent, you can yourself do it with a little bit of learning.
Anyway, the step of drafting the complete specification may take 3-4 weeks or even more.
Your patent application (i.e. non-provisional patent application) is examined only after the application is published. So, you can do nothing but wait till the publication of your application.
The logic behind publishing your patent application for the public is that anyone having issues with your invention may come forward and register his/ her case in the patent office. This is called pre-grant opposition.
Therefore, to allow people to register their opposition, there is usually a gap of some time between publication and grant of a patent. In India, this gap is 6 months. So, it doesn’t matter if your application was examined the very next day after the publication and subsequently met all the requirements. you will still have to wait for at least 6 months before you get a patent certificate in hand.
Normally, the patent application is published after the lapse of 18 months from filing. So, this way, the fastest patent grant will take at least 24 months.
It is not an automatic process, unlike publication. A request has to be filed for the examination.
Now, let’s suppose your patent application has been picked up by the examiner. This process is based on a first-come, first-serve basis. So, anyone who files a request for examination early gets his application examined early.
Examination by the patent examiner & response from the patent applicant is like negotiating a deal. Following this principle, there are high chances that your application will be rejected in the first examination report. That’s perfectly natural and you shouldn’t be discouraged by the rejection.
The examiner goes through your application thoroughly. He conducts a patentability search irrespective of the patentability search conducted by you in the early stage. Finally, the examiner prepares a first examination report (FER) which consists of detailed objections raised by him.
During the examination, the examiner checks whether your patent application fulfills the requirements laid down by the law of the land to get a patent.
Once you get the examination report from the patent office (first office action or first examination report), you have to suitably rectify your patent application based on the objections raised by the examiner.
To reply, you get a period of 6 months in India. You can also get an extension of 3 months with an extension fee. So, effectively you get 9 months of time to respond in India.
Once your response is received by the patent office, the examiner should take up your application for re-examination in a month but often this doesn’t happen always. In fact, it may take way more time than a month.
Now, based on your reply, the examiner re-examines the patent application and raises objections based on what requirements aren’t met in your patent application. Then, you receive a second office action or second examination report (SER).
If requirements are not met at the time of SER, the patent office calls you for a hearing, and accordingly the decision is taken upon the fate of your patent application.
1. In India, at most, you get two office actions, and then you are called for hearing either virtually or physically. On the other hand, In USA, there can be more than two office actions before any decision is taken up. 2. To reply in USA, normally, you get 3 months to reply and 3 more months with extension fee. That's a total of 6 months effectively.
Normally, this process of examination and then going back & forth can take up more than a year in India.
As it has been told that you should file an early request for examination to get early office actions. In general, in India, you are allowed to file the request for examination within 48 months of the filing of your patent application.
This way, depending upon the timing of your request, it’s possible that the examination of your patent application starts after 4 years. That’s a lot of delay.
6. Different Procedures for Different Types of Applications
So far, the delay that we have discussed is from the perspective of the ordinary patent application. If you consider PCT application, the delay is even more.
The PCT application is not examined before the lapse of 30 or 31 months from the priority date. In the case of India, this period is 31 months. Therefore, In the case of ordinary application, it can be taken up for examination soon after the publication.
After the lapse of 31 months, delays are due to the same factors as that of ordinary applications which we have already discussed in detail.
Another type of application is convention application. Delays in this case are almost similar to that of an ordinary application.
7. Secrecy Directions
No country in the world wants a great technology of national importance to slip away just like that.
So, most countries have provisions for screening and shortlisting patent applications that are of national importance like defense. Here we will discuss an Indian example.
In India, it’s section 35 of the Indian Patent Act, that imposes secrecy direction on such patent applications.
No publication of the application happens if these directions are applied to the application. This is to ensure that such technology does not fall into those hands that might do harm to the country.
If by any chance these secrecy directions are not applied to the application and the publication happens, such directions can still be imposed anytime before the grant.
As you may have understood by now, that till these directions are in force on your application, no further processing can take place.
However, there is hope in section 36 of the Indian Patent Act, which ensures periodical review after a fixed interval upon the request of the applicant. If anytime, it is found that the technology of patent application is not harmful to the country anymore, these secrecy directions may be revoked.
This scenario happens in rare cases, but if imposed on your patent application, this can add a significant but unknown delay in the grant of your patent.
Further, section 4 of the Indian Patent Act contributes to the delay if your patent application happens to attract its provisions. Subject matters related to atomic energy are covered under this section.
If the examiner thinks that your application attracts provisions of section 4 or 35 of the Indian Patent Act, then the application is sent to the concerned department of the Indian Government for review.
This review also causes delays in the patent grant. Because even if your application is found to not have been attracting the provisions of section 4 or 35, the review period itself is an added delay.
8. Delay Due to Backlog In Patent Office
Discussion of delay in the patent grant is incomplete without discussing the delay due to backlog in the patent office.
Patent filings rise or drop quickly, but it’s a hard and time-consuming process to hire and train manpower. Not having a sufficient number of examiners in the patent office, contributes to the backlog of applications. This further adds delay to the normal patenting procedure.
In India, with awareness among common people and with the changed policies of various institutions, patent filing is increasing every year. However, there is not sufficient manpower to deal with this volume of applications. The result is more delay in the patent grant.
In recent times, progress has been made in this regard. There has been hiring of patent examiners in Indian Patent Office. This has helped in reducing the pendency of patent applications. In 2022, the number of examiners in the Indian Patent Office stood around 600 compared to more than 13,500 examiners in China and more than 8000 examiners in USA.
You should note that countrywise comparison of the number of examiners doesn’t show the full picture. To understand the complete situation, you should know how many applications are filed in those countries every year. In China, the number of applications filed every year is more than 1.5 million while in USA, this number is more than half a million.
Is Delay in Patent Grant Good For you?
At this point, having gone through the reasons for the delay, you may be having the next questions. You may be wondering, what’d you lose if you don’t get your patent fast? How’d you stop others from copying your product or idea when you yourself don’t have a patent? Is there any way out to get a patent fast?
Let’s address your questions now.
Contrary to your assumption, a delay in getting a patent may actually be beneficial for you. But how?
Cost Factor: First of all, you should understand that patenting is a costly affair. Although, government fee has been slashed in various categories in India, hiring a patent attorney can be expensive for you.
At the idea stage, by filing a provisional patent application, you secure a priority date. This way, you also get time to work on your invention. Now that you have time, you can be sure whether you really want to pursue and spend money on the invention or not. Because with time you will understand the working of the invention and its worth.
Furthermore, you may get investors on board or your business may grow. Either way, your chances of funding costly patent procedures will increase.
Enforcement of Patent Right: Another thing to note is that a patent is a negative right. In other words, it doesn’t give you right to make, sell, use or import the patented product but you can stop others from doing so. Let’s take an example to understand it.
Why is patent a negative right?
Let’s assume, you have got a patent for a drug. Now, that doesn’t give you right to manufacture the drug, automtacially. You may have to go through many regulations, obligations, etc. However, you can definitely stop others from making, using, selling or importing it. So, a patent excludes others. In that sense, it is considered a negative right.
So, how do you enforce your patent right and stop others from exploiting it? Well, you have to sue them. Suing someone is again a costly affair. Therefore, it’s better to wait and build financial muscle to be able to sue someone effectively.
Now, what happens when you are yet to receive a patent? In this case, you can simply send others a letter stating that they are infringing your patent that is pending with the patent office.
In most cases, such a letter is enough to scare people off. In fact, many people who are using your invention aren’t even aware of the difference between a published application and a granted patent.
Commercial Factor: Next point to look at is that based on commercial life of a technology, either you could benefit or sustain loss from the delay in the patent grant.
Let’s see both cases.
1. The Benefit: In case, where the patented technology has longer commercial life, the delay in grant may actually be beneficial for you.
For e.g., Once your application has been accepted and is on the file of the patent office, you may advertise, promote, and sell your invention. Further, in case someone is copying your invention, you need not worry.
In fact, the person copying your invention is doing marketing free of cost for you. He creates the consumer base and builds the market. Also, if the person copying builds his business well, he will be in a better position to pay you the damages.
Once, the patent is granted to you, you can take over the market including that of the person copying your product.
Further, If you don’t want to make your own product, it’s still great. You will be in a favorable position to negotiate the deal. You can bargain for a higher price in exchange for a license. Or, you sell the patent rights at a higher price. The Person copying has already invested resources in the patented product. Therefore, it will suitable for him to crack a deal with you to save his business & investment.
Note: You can maximize your compensation for the infringement by getting your patent application published early. Because the damage due infringement is calculated from the date of publication. The logic behind doing so is that only after publication people come to know about your invention. Before publication there is no way for the people to know that the invention they are using belongs to you. So, technically they are not at fault when they use your invention before publication. In India, you can get you patent application published early by filing up a form-9 along with prescribed fees. Usually, within 3-4 weeks of such request, the patent application is published.
2. The Loss: If the patented technology has a short commercial life then the delay may be detrimental for you.
For. e.g., imagine a scenario in which a model of a product was using your invention. Further, before you could get a patent for it, the model was replaced with a new model which doesn’t use your invention.
This way, you couldn’t stop the person from copying your invention. Further, you couldn’t exploit your invention commercially as the commercial life of your invention is already over.
Ability to Amend: With time you may come to know about new competitors and new aspects of your invention. In this case, the delay allows you to amend your claims (as allowed under the provisions of the law) to cover the best possible scope of your invention.
In this article, we have listed general factors that can contribute to the delay in granting a patent. It’s by no means an exhaustive list, however, it’s enough to give you an idea about the patent application process in terms of the time it takes.
The same is reflected in the figure below, which shows countrywise average time taken to grant a patent. It’s an average of 76 months for India. The important thing to keep in mind is that in recent times, the situation is improving.
This article has only dealt with the delay aspect of the application process. You would be glad to know that there is a way out. There are ways that allow you to bypass these delays. Having this in mind, we have written an article for you that discusses 3 ways to fast-track your patent application in India. Our aim is to educate the masses about intellectual property. We hope that you have had a good read. Explore our website for other queries.