Section 144 of the Patents Act, 1970
Reports of examiners to be confidential
Section 144 makes an examiner's report to the Controller confidential and shields it from production in court without judicial permission.
Official legal text
The verbatim statutory text of this provision is reproduced from the official source and checked by our legal reviewer before it is published here. Until that check is complete for this page, read the exact wording directly from the official source linked below — it is the only version that governs.
Read this as a plain-language summary. If it and the official text, or a relevant Gazette notification, say different things, the official text and the notification are what count.
What this section says, in plain language
When an application is examined, the Examiner prepares a report for the Controller under Sections 12 and 13 on novelty, inventive step, patentability and the search results. Section 144 says that report is an internal document. It is not open to public inspection, the Controller does not publish it, and it cannot be produced or inspected in a legal proceeding unless the court certifies that production or inspection is desirable and ought to be allowed.
The reason is institutional. The Examiner has to write frankly about weaknesses in an application, including tentative views that may later be dropped. If every draft opinion were freely discoverable in later litigation, examination would become cautious and defensive, and the quality of the search would suffer. The section protects candour inside the office rather than protecting the applicant.
It is important to separate two things that are often confused. The Examiner's report to the Controller is the internal document this section covers. What reaches the applicant is the First Examination Report, which is the Controller's communication of the objections under Section 14 and Rule 28A. The applicant obviously receives that and must answer it. In current practice the Patent Office also puts the First Examination Report and the applicant's reply on the public file after issue, in the interest of transparency, and third parties routinely read them when preparing an opposition or a revocation petition.
The court's power to lift the protection is real but conditional. A judge hearing a revocation petition or an infringement suit can certify that the internal report should be produced, for instance where a party alleges that the grant was obtained by suppressing information. Until that certificate is given, a litigant cannot demand the report as of right by ordinary discovery.
Section 144 also works with Section 76, which bars officers and employees of the Patent Office from furnishing information about applications except as the Act allows, and with Section 143, which keeps the file itself closed before publication. Together they define how much of the examination process the outside world gets to see, and when.
Why this section matters
Applicants and their agents, opponents preparing a pre-grant or post-grant opposition, and litigants in revocation and infringement proceedings.
From the moment the application is taken up for examination and for as long as anyone tries to use the examination record in a dispute.
Confidentiality for the Examiner's internal report and a bar on producing it in legal proceedings unless the court certifies otherwise.
Parties who build a case on obtaining the internal examination report may find they cannot get it, and must rely instead on the published First Examination Report and the prosecution correspondence.
How it works in practice
A revocation petition that asked for the wrong document
Vashisht Diagnostics Pvt Ltd of Hyderabad was sued for infringing a granted patent on a lateral flow test strip. In its counterclaim for revocation it argued that the Examiner had initially found the claims obvious and had been persuaded to change position without any real amendment. Its counsel applied for production of the Examiner's internal report to the Controller. The patentee objected, pointing to Section 144. The court noted that the internal report is not producible unless the court certifies that production is desirable, and asked what the company could show from material already available. Counsel then examined the published First Examination Report, the applicant's reply and the hearing notice, all on the public file after grant, and found that the amendment relied on had narrowed only the preamble. That public record carried the argument on obviousness without any need for the confidential report. The lesson is practical: build the case from the prosecution history you can lawfully obtain.
Simplified illustration only. Actual legal outcomes depend on the facts.
Key points to remember
- The Examiner's report to the Controller is confidential and is not published or opened for inspection.
- It cannot be produced or inspected in a legal proceeding unless the court certifies that it should be.
- This is different from the First Examination Report sent to the applicant, which the applicant must answer.
- The prosecution file, including the examination report issued to the applicant and the reply, is generally available on the public record after issue.
- The protection encourages examiners to write frankly during examination.
- Section 76 separately restrains Patent Office staff from disclosing information about applications.
Common mistakes and misunderstandings
- Assuming the whole examination process is secret. The objections communicated to the applicant and the reply become part of the public prosecution record.
- Treating a First Examination Report as the confidential internal report. They are different documents with different rules.
- Believing an internal examination report can be obtained by ordinary discovery in a patent suit. It needs a certificate from the court.
- Expecting confidentiality to protect an applicant from having the prosecution history used against it on claim construction.
Connected provisions
- ActSection 12Examination of application
- ActSection 13Search for anticipation by previous publication and by prior claim
- ActSection 14Consideration of report of examiner by Controller
- ActSection 143Restrictions upon publication of specification
- ActSection 76Officers and employees not to furnish information, etc.
The Patents Act sets the requirement; the Patents Rules, 2003 set the procedure that carries it out. Parliament passes the Act and the Central Government makes the Rules, so the two are separate instruments. We list the connected rules here to take you from the principle to the paperwork.
Forms, deadlines and fees
Where a fee is payable under this provision, the figure comes from the First Schedule. Categories of applicant are charged at different rates, and electronic filing is treated differently from paper filing, so an accurate number can only come from the Schedule in force on the day you file. How Indian patent fees work.
Related judgments
Case summaries are published only after a qualified reviewer has checked the judgment, the citation and the way the holding is described. Nothing has cleared that review for this provision yet, so nothing is listed here. We would rather show no case note than one that misstates what a court decided. How case notes are prepared.
Questions people ask about Section 144
Is a First Examination Report confidential in India?
The Examiner's internal report to the Controller is confidential under Section 144. The First Examination Report issued to the applicant is a different document: it communicates the Controller's objections and the applicant must reply to it within the period allowed by Rule 24B. In current practice the Patent Office publishes the First Examination Report and the applicant's reply on the public file after issue, so competitors and opponents can and do read them. Do not assume that anything written during prosecution will stay private.
Can I get a copy of the examiner's report in a patent lawsuit?
Not as a matter of right. Section 144 bars production and inspection of the Examiner's report in legal proceedings unless the court certifies that production or inspection is desirable and should be allowed. A party wanting the report must persuade the court that there is a real reason for it, such as an allegation that the grant was procured by suppression. In most disputes the publicly available prosecution history is enough to make the argument, and courts prefer parties to use it.
Why does the law protect examination reports at all?
Because examination works best when the Examiner can record doubts openly, including views that are later abandoned. If every internal note could be dragged into litigation years afterwards, examiners would write defensively and the search and analysis would become less useful. The section protects the integrity of the examination process, not the applicant's commercial interests. Section 76, which bars Patent Office officers from furnishing information about applications, serves the same institutional purpose.
Does this section stop an opponent from seeing my objections?
No. An opponent in a pre-grant or post-grant opposition can generally see the examination report issued to you and your reply once these are on the public file, and will often use them to frame grounds under Section 25. What the opponent cannot demand is the Examiner's internal report to the Controller. Applicants should therefore write replies to examination reports assuming a competitor will read them closely, because admissions made during prosecution can be used on claim construction later.
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