Examination and the First Examination Report

1The applications filed under the Patents Act shall be taken up for examination as per the order in which the requests for examination are made. (Patents Act 1970, r 24B(2)(i).) Once a request for examination is made under s 11B, the application, specification and other documents shall be referred by the Controller to an examiner for making a report known as the ‘first statement of objections’. (Patents Rules 2003, r 24B(3)). Prior to the 2016 Amendment, the report was known as the first examination report. (Patents Rules 2003, r 24B(3) before the 2016 Amendment). The terms ‘first statement of objections’ and ‘first examination report’ or ‘FER’ can be used interchangeably. The Controller shall refer the matter to the examiner ordinarily within one month from the date of its publication or from the date of the request for examination, whichever is later. The report shall be made to the Controller in respect of the following matters: (Ibid, s 12(1).)

(a) whether the application and specification and other documents relating thereto are in accordance with the requirements of the Patent Act and the Patent Rules; (b) whether there is any lawful ground of objection to the grant of the patent under the Act in pursuance of the application; (c) the result of investigations made under s 13 of the Patents Act; and (d) any other matter which may be prescribed.

2The examiner shall make the report ordinarily within one month but not exceeding three months from the date of reference of the application to him by the Controller. (Patents Rules 2003, r 24B(2)(ii).) The Controller shall dispose off the report of the examiner within one month from the date of receipt of the report. (Ibid, r 24B(2)(iii).) Where the applicant files a request for examination, the first statement of objections along with the application and specification shall be sent to the applicant within one month from the date of disposal of the report of examiner by the Controller (Ibid, r 24B(3).)
Earlier the period mentioned before the 2016 Amendment used to be six months from the date of the request for examination or from the date of publication, whichever was later. Where the request for examination is filed by any other interested person, only an intimation of such examination shall be sent to such person. (Patents Rules 2003, r 24B(3).)

3The examination of an application for a patent by the examiner involves certain adjudicatory process. (Dimminaco AG v Controller of Patents and Designs (2002) IPLR 255, p 260.) Section 12(1)(b) is broadly worded to include ‘any lawful ground of objection to the grant of the patent under the Act’. Clause (c) of s 12(1) requires the first examination report to contain the results of investigations made under s 13 of the Patents Act. In this way, s 12 had a direct nexus with s 13, which details the manner in which an examiner shall make investigations for the purpose of anticipation. Together, ss 12 and 13 constitute a code of examination for examiners. (Ibid.) The examination and investigations done under ss 12 and 13 of the Patents Act shall not be deemed to warrant the validity of any patent and no liability shall be incurred by the Central Government or any officer for such examination, investigation or report. (Patents Act 1970, s 13(4).) The reports of the examiners made to the Controller shall be treated as confidential and shall not be open to public inspection or be published by the Controller. Such reports shall not be liable to be produced or inspected in any legal proceedings unless the court certifies that the production or inspection is desirable in the interest of justice. (Ibid, s 144.)

4The examiner may raise objections in the first examination report. The objections of the examiner shall be contained in a reasoned statement. The examiner has to act in a quasi-judicial manner and should give a reasoned order under s 12. In cases where a statement of objection is issued to the applicant to comply with the requirements therein, the applicant has to put the application in order for grant under s 21 within 6 months from the date on which the first statement of objection was issued. (Patents Rules 2003, r 24B(5).) Once the examiner issues his report, he will have no power to amend or delete anything that originally formed a part of the report. In Dimminaco v Controller of Patents and Designs (2002) the Calcutta High Court held that “while giving his report, the said Examiner has to act in a quasi-judicial manner” and that “when an authority, acting in a quasi-judicial manner, passes an order which affects the right of the parties such order should be a reasoned order.” (p 260) On the report before it the Court found that “The reason for such finding has not been given.” (p 260)

5In Geron v Assistant Controller of Patents and Designs (2026) the Delhi High Court held that “the Guidelines are established to ensure uniformity and consistency among examiners and controllers of the Patent Office in practices in the examination of patent applications in the relevant field. The role of Guidelines is not rule-making; however, they play a significant role in the examination process for patent applications at the patent office. Thus, reliance of the Controller on the Guidelines cannot be said to be erroneous unless the relevant portion of the Guidelines relied on by the Controller is proved to be wrong or is inconsistent with the Patents Act.” (para 19) The Court observed that “such Guidelines are to be timely updated to incorporate legal and technological developments. Otherwise, the gap between judicial positions on specific subject matter and patent office practices widens and may lead to errors in examination.” (para 19)

6In Pioneer Hi-Bred International v Controller of Patents (2026) the Delhi High Court held that “this is a case of incomplete examination of the entire set of claims and therefore, the matter deserves to be remanded” (para 13), and directed that the “Respondent shall carry out complete examination of the entire set of claims” (para 18).

7As an invention shall be regarded as new if it does not form a part of the state of the art, the examiner has to determine novelty of the invention by making a search for anticipation as mentioned in s 13. The fact that the examiner shall make an investigation under s 13 for the purpose of ascertaining novelty does not mean that the power of the examiner is confined to matters illustrated in that section, as the report of the examiner may deal with a wide array of matters detailed in s 12(1).

8The standard of novelty required by the Patents Act is that of ‘relative novelty’. But the introduction of the definition of ’new invention’ in s 2(1)(l), which prescribes the standard of ‘absolute novelty’, raises doubts with regard to the standard of novelty followed under the Patents Act. For the purpose of determining anticipation by previous publication or previous claim, s 13 details the documents which the examiner shall take into consideration. It is pertinent to note that s 13 is confined to anticipation by prior publication as it restricts the search for anticipation to documents alone. It does not cover anticipation by prior use. It is sufficient to point out that anticipation by prior use is a ground for revocation under s 64(1)(e).

9The examiner shall make investigation for the purpose of ascertaining whether the invention so far as claimed in any claim of the complete specification:

(1) has been anticipated by publication before the date of filing of the applicant’s complete specification in any specification filed in pursuance of an application for a patent made in India on or after 1 January 1912; (Patents Act 1970, s 13(1)(a).)

(2) is claimed in any claim of any other complete specification published on or after the date of filing of the applicant’s complete specification, being a specification filed in pursuance of an application for a patent made in India and dated before or claiming a priority date earlier than that date; and (3) has been anticipated by publication in India or elsewhere in any other document, other than the those mentioned in clause (1) and (2), before the date of filing of the applicant’s complete specification. (Ibid, s 13(1)(b).) (Ibid, s 13(2).)

10The first and the third clauses pertain to anticipation by prior publication whereas the second clause pertains to anticipation by prior claiming.

11If the First Examination Report received by the Controller is adverse to the applicant or requires any amendment of the application, specification or other document to ensure compliance with the provisions of the Patents Act or the Patent Rules, the Controller shall communicate as expeditiously as possible the gist of the objections to the applicant. The Patents Rules 2003 envisages different procedures in cases of anticipation by prior publication and anticipation by prior claiming.

12If the investigations by the examiner reveal that the invention claimed in the complete specification is anticipated under ss 13(1)(a) or 13(2), the Controller shall communicate the gist of the specific objections to the applicant and afford an opportunity to the applicant to amend his specification. (Patents Rules 2003, r 28(1).) If the applicant contests any of the objections raised in the report or if he files again his specification along with his observations as to whether or not the specification is to be amended, the applicant shall be given an opportunity of being heard, provided he makes a request for hearing 10 days before the final date of the period referred to under s 21(1) of the Patents Act or within such shorter period as the Controller may allow. (Patents Act 1970, s 14; Patents Rules 2003, r 28(2).)

13Rule 28 of the Patents Rules 2003 governs the procedure where the applicant contests any of the objections communicated to him by the Controller. If the applicant requests for a hearing within one month from the date of communication of the gist of objections or the Controller grants a hearing whether or not the applicant re-filed his application, the Controller shall fix a date and time for hearing having regard to the period remaining for putting the application in order, or other circumstances of the case. (Patents Rules 2003, r 28(3).) The applicant shall be given 10 days’ notice of such hearing or such shorter notice as the Controller deems fit and the applicant shall notify the Controller whether he will be attending the hearing. After hearing the applicant or without hearing the applicant if he does not want to be heard, the Controller may specify or permit such amendment to the specification as he thinks fit and may refuse to grant the patent unless the amendment so specified or permitted is made within such period as he may fix. (Patents Act 1970, s 15; Patents Rules 2003, r 28(5).)

14If it appears to the Controller that the invention claimed in the complete specification has been anticipated under ss 13(1)(a) or 13(2), he may refuse the application. However, the Controller may not refuse the application, if the applicant shows to the satisfaction of the Controller that the priority date of the claim of his complete specification is not later than the date on which the relevant document was published or if the applicant amends his complete specification to the satisfaction of the Controller. (Patents Act 1970, s 18(1).) If the Controller is satisfied that the invention is anticipated by prior publication under s 13(1)(a) and the other complete specification was published on or after the priority date of the applicant’s claim, he may require a reference to be made to the other specification following the procedure under s 18(2), unless the applicant is able to show that the priority date of the applicant’s claim is not later than the priority date of that specification. (Ibid, s 18(3).

15If it is found that the invention claimed in the complete specification is anticipated under s 13(1)(b) of the Patents Act, the applicant shall be informed about the same and an opportunity shall be afforded to amend his specification. If the applicant’s specification is found to be in order for grant except for an objection raised under s 13(1)(b), the Controller may postpone the grant of the patent and allow a period of two months to the applicant to remove the objection. (Patents Rules 2003, r 29(2).)

16If the applicant makes any amendment consequent to the objections, the amended specification shall be examined and investigated in like manner as the original specification. (Patents Act 1970, s 13(3).) There may be as many correspondences as necessary between the applicant and the Controller after the first examination report is issued, but the time for meeting the objections and putting the application in order shall be done within 6 months from the date of issue of the first examination report. (Ibid, s 21; Patents Rules 2003, r 24B(5).) If the applicant fails to put the application in order within such time, the application will be treated as abandoned.

17If the Controller is satisfied that the invention is anticipated by prior claiming in another patent, he may direct that a reference to that patent be made in the applicant’s complete specification. Before such a reference is made, the Controller shall inform the applicant and shall give him an opportunity to amend his specification. (Patents Rules 2003, r 29(1).)