Intellectual Property Rights - Law and Practice · Patent Documentation, Examination and Infringement

Examination of Patent Application under Section 12

Updated 11 October 2026 · Fact-checked

Under Section 12 of the Patents Act, 1970, once a valid request for examination is made under Section 11B, the Controller refers the application to an examiner. The examiner reports on compliance, lawful grounds of objection and the Section 13 search. If the report is adverse, Section 14 requires the Controller to communicate the objections and offer a hearing.

Understand Examination of Application under Section 12

A patent application does not go straight to grant. After it is filed, nothing is examined until the applicant (or another person entitled) files a request for examination in the prescribed manner under Section 11B. Section 12 starts at that point.

Once the request is made, the application, the specification and the related documents are referred at the earliest by the Controller to an examiner. The examiner is a technical officer of the Patent Office. The examiner does not grant or refuse. The examiner only makes a report to the Controller.

The report must cover four matters: (a) whether the application, specification and related documents comply with the Act and the rules; (b) whether there is any lawful ground of objection to grant; (c) the result of the investigation under Section 13 (search for anticipation by prior publication and prior claim); and (d) any other matter that may be prescribed.

The examiner ordinarily reports within the period prescribed. Before the 2005 amendment, this period was eighteen months from the date of reference. Now the Act leaves it to the rules. The report that comes out of this process is commonly called the First Examination Report (FER).

The Controller then acts on the report. If the report is adverse to the applicant, or needs an amendment to the application, specification or documents, Section 14 applies. The Controller must communicate the gist of the objections to the applicant as expeditiously as possible. If the applicant asks within the prescribed period, the Controller must give an opportunity of being heard. The examination does not guarantee validity. Section 13(4) says the examination and investigation do not warrant the validity of any patent, and the Central Government and its officers incur no liability for them.

Key rules to remember

Trigger for referral: Request for examination under s.11B (sub-s.(1) or (3)) → Controller refers application to examiner at the earliest; Without a valid request, Section 12 does not begin.
Matters in the examiner's report (s.12(1)): (a) compliance with Act and rules; (b) lawful ground of objection to grant; (c) result of s.13 investigation; (d) any other prescribed matter; Learn as four heads. Head (c) links to Section 13.
Time for the examiner's report (s.12(2)): Examiner shall ordinarily report within such period as may be prescribed; The Act does not fix the number of days. The period is in the Patents Rules. Do not quote the old eighteen-month period as current law.
Scope of Section 13 search: s.13(1): Indian specifications (a) published before filing date, (b) with earlier priority/filing date but published on or after it; s.13(2): publication in India or elsewhere in other documents before filing date; Section 13(3): an amended specification before grant is examined and investigated in the same way.
Controller's duty on adverse report (s.14): Adverse report or amendment needed → communicate gist of objections as expeditiously as possible → hearing if applicant so requires within prescribed period; The hearing is on request. The time limit for reply and hearing request is in the rules.
No warranty of validity (s.13(4)): Examination and investigation ≠ warranty of validity; no liability on Central Government or officers; Useful conclusion line in any answer on the effect of examination.

How to solve Examination of Application under Section 12 questions

Use this method for any question on examination of a patent application, whether it is a theory question or a short case.

1Identify the stage. Check that a request for examination has been made under Section 11B. If it has not, say that Section 12 is not yet triggered.
2State the referral. The Controller refers the application, specification and related documents to an examiner at the earliest.
3List the four matters in the examiner's report under Section 12(1)(a) to (d). Tie each one to the facts given.
4Bring in Section 13 where the facts mention prior art, earlier filings or searches. Say which sub-section applies: 13(1) for Indian specifications, 13(2) for other publications.
5Move to Section 14. If the report is adverse or needs amendment, the Controller communicates the gist of objections and, on request within the prescribed period, gives a hearing.
6Apply the facts: who must do what, and by when. Where the time limit is in the Rules, say it is 'as prescribed' unless the question gives it.
7Conclude: what the applicant should do (reply, amend, ask for hearing) and note that examination does not warrant validity under Section 13(4).

Quickest way: Request → Refer → Report → Respond

When to use it: Use when you have limited time, for a short note or a 5-mark answer.

Request: Section 11B request starts examination.
Refer: Controller sends the application to an examiner at the earliest.
Report: examiner covers compliance, lawful objection, Section 13 search and prescribed matters; reports within the prescribed period.
Respond: if adverse, Section 14 gives the applicant the gist of objections and a hearing on request.
Close with one line: Section 13(4), no warranty of validity.

Common mistakes in Examination of Application under Section 12

Saying the examiner decides whether the patent is granted or refused.
Students treat 'examination' as the final decision.
Fix: Write that the examiner only reports to the Controller. The Controller considers the report and disposes of the application.
Quoting 'eighteen months' as the time for the examiner's report.
Older books and notes still carry the pre-2005 wording.
Fix: Write that the examiner reports ordinarily within the period prescribed. The 2005 amendment replaced the eighteen-month period.
Stating a fixed number of days for the applicant's reply or hearing request as if it were in the Act.
Students mix the Act with the Rules.
Fix: Section 14 says 'within the prescribed period'. Quote the Act's wording. Give a number only if the question or the Rules supplied to you state it.
Leaving out the Section 13 search from the examiner's report.
Students remember (a) and (b) but forget head (c).
Fix: Learn the four heads together. Head (c) is the result of the investigation under Section 13.
Thinking the hearing under Section 14 is automatic.
The word 'opportunity of being heard' suggests a right in all cases.
Fix: The Controller gives the hearing 'if so required by the applicant' within the prescribed period. The applicant must ask.
Claiming that a clean examination report makes the patent valid.
Students equate examination with approval.
Fix: Cite Section 13(4): examination and investigation do not warrant validity, and the Government and its officers are not liable.

Worked examples

Example 1

Nirmal Pharma Pvt. Ltd., Hyderabad, filed a patent application for a new drug delivery device and then made a request for examination under Section 11B. Explain what happens next under Section 12 and what the examiner must report on.

Show the solution

Provision: Section 12(1) applies once a request for examination is made in the prescribed manner under Section 11B.
Referral: the Controller must refer the application, specification and related documents to an examiner at the earliest.
Examiner's report: the examiner reports on (a) whether the application and documents comply with the Act and rules, (b) whether there is any lawful ground of objection to grant, (c) the result of the investigation under Section 13, and (d) any other prescribed matter.
Time: under Section 12(2) the examiner ordinarily reports within the period prescribed.
Section 13 search: the examiner checks whether the claims were anticipated by earlier Indian specifications or by other publications in India or elsewhere before the filing date of the complete specification.
Conclusion: the report goes to the Controller, who considers it. The examiner does not grant or refuse the patent.

Answer: After the Section 11B request, the Controller refers the application to an examiner, who reports on compliance, lawful objections, the Section 13 search result and any prescribed matter, within the prescribed period. The report goes to the Controller for further action.

Example 2

The examiner's first report on the application of Kaveri Instruments Ltd. says the claims lack novelty over an earlier published Indian specification and that the specification needs amendment. What must the Controller do, and what can the company do? Does the report mean the patent is invalid?

Show the solution

Identify the nature of the report: it is adverse to the applicant and requires amendment. Section 14 applies.
Controller's duty: before disposing of the application, communicate the gist of the objections to the company as expeditiously as possible.
Company's right: if it requires, within the prescribed period, the Controller must give it an opportunity of being heard.
Practical response: the company can reply to the objections, amend the specification where required, and ask for a hearing within the prescribed period. Any amended specification is examined and investigated in the same way under Section 13(3).
Validity point: the report is only a result of examination. Section 13(4) says examination and investigation do not warrant validity, and no liability arises for the Government or its officers.
Conclusion: no patent has been granted or held invalid by the report itself. The Controller decides after considering the company's response.

Answer: The Controller must communicate the gist of the objections and, if the company asks within the prescribed period, give it a hearing before disposing of the application. The company may reply, amend and seek a hearing. The report does not declare any patent invalid, and examination never warrants validity.

Exam tips

Write the four heads of Section 12(1) in a list. Examiners look for (a) to (d) and the Section 13 link.
Where the Act says 'prescribed', write 'prescribed' and do not invent days. State a number only if the question gives it.
In case questions, follow the order: provision, facts, conclusion. Name Sections 12, 13 and 14 explicitly.
Distinguish the examiner's role (report) from the Controller's role (consider the report, communicate objections, hold hearing, dispose).
Finish with Section 13(4) when the question asks about the effect or value of examination.

Practice questions from Patent Documentation, Examination and Infringement

Examination of Application under Section 12: frequently asked questions

What is Section 12 of the Patents Act, 1970?

It deals with examination of the application. After a request for examination under Section 11B, the Controller refers the application to an examiner. The examiner reports on compliance with the Act, lawful grounds of objection, the Section 13 search and any other prescribed matter.

What is the First Examination Report (FER)?

It is the examiner's report on the application, prepared under Section 12 and sent to the Controller. When the Controller finds it adverse or requiring amendment, the gist of the objections is communicated to the applicant under Section 14.

What is the time limit to reply to the FER?

The Act does not state a number. Section 14 says the applicant may require a hearing within the prescribed period, and the periods are set in the Patents Rules. In an answer, say 'within the prescribed period' unless the question gives a figure.

How long does the examiner have to submit the report?

Section 12(2) says the examiner shall ordinarily report within such period as may be prescribed. The older eighteen-month period was replaced by the 2005 amendment.

Does a favourable examination report guarantee a valid patent?

No. Section 13(4) states that examination and investigation do not warrant the validity of any patent. The Central Government and its officers are not liable for them.