borne in mind that if the invention is not sufficiently disclosed and the subject matter of the claims is not enabled, it may lead to rejection of the application. Therefore, a balance must be struck. Voluntary amendment of the as-filed specification after filing is not always allowed. The scope of amendments that may be allowed is restricted by section 59 of the Act. Therefore, care must be taken at the time of filing of the specification to ensure that it is carefully drafted. Another common error is disclosure of information related to corresponding applications filed in other jurisdictions that applicants fail to provide. Material information not disclosed can lead to refusal of an application and is a ground for opposition and revocation of patent. Another matter of concern is the strict adherence to timelines, failure of which may lead to fatal consequences. In your view, what skills and technologies are most useful when it comes to bolstering the odds of success during patent prosecution? Once a patent application enters into the examination stage, its fate depends in the hands of the examiner concerned. Therefore, it is very crucial for an applicant or patent attorney to handle the examination/hearing stage of an application skilfully. Communication skills play a very important role in patent prosecution. Clear, to-the-point and effective communication is a must. Each of the objections raised in the examination report must be carefully addressed. The prior arts must be properly studied so as to be able to clearly differentiate the subject matter of the invention in question from the cited prior arts. The differences and the arguments must be clearly represented without leaving scope for any ambiguity. It is also important that no statement be made, in writing, at any stage of the prosecution that may act as an estoppel at a later stage, such as during litigation. During hearings, the objections raised must be clearly understood before presenting a reply. Replies must be precise and to-the point unless a detailed answer is sought by the Controller. The applicant or attorney must utilise the opportunity efficiently. Keeping a tab on all the timelines once a patent application is filed until grant is very important to ensure that they are strictly adhered to. Continuous follow-ups with the IPO and self-audit of files on the IPO website are also important. During your time as a practising IP lawyer, what significant changes have you observed in the way that patent prosecution is handled? Two decades ago, only processes were patentable in respect of inventions relating to pharmaceuticals, food, drugs and substances produced by chemical process. Since 1 January 2005, patents are open to grant in all categories of inventions, which has made a significant impact in India. Comprehensive e-filing services, including hearings through video conferencing, have facilitated inventors and applicants, which have in turn enhanced patent filing in India. Recording of hearings also help avoid misuse of the system. Early disposal of the applications has changed the whole working of IPO and has reduced the grant time. The search engine InPass has vastly improved and every document filed with the IPO gets uploaded in the concerned file wrapper within the same day . Several kinds of applicants can avail discounted official fees and expedited examination as mentioned above. This has given a boost to filings by start-ups and educational institutes. The IPO has published guidelines for Computer Related Inventions (CRIs), pharmaceutical and biotechnologyrelated inventions and inventions based on traditional knowledge. It has also published an updated Manual for Patent Practice and Procedures. The Act requires approval from the National Biodiversity Authority for any biological material obtained from India, obtaining which used to delay the grant of the application. This process has now been streamlined by the IPO. In recent times, the IPO has allowed grant of patent right to a right holder even when the approval from NBA has been under process. 24 LAWYERMONTHLYMARCH 2023 India is an IP friendly nation and has shaped and defined its laws and standards as per its global obligations under various treaties.
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