Rules 19K explained: this guide covers what it means, who it applies to, the step-by-step process, documents required, fees, due dates and penalties in India — so you can stay compliant with confidence and avoid costly mistakes.
Rules 19K to 19N cover what happens after a demand for international preliminary examination has been accepted by the Indian Authority. They set the referral to an examiner, say which claims are examined, deal with unclear applications and lack of unity of invention, fix the period for the report, require transmittal of the report on the same day to the International Bureau and the applicant, and allow refund, waiver or reduction of fees to the extent the Treaty and the agreement permit.
The application is referred to an examiner ordinarily within three months but not exceeding four months from the reference (rule 19K(1)). Claims for which no International Search Report was established are not examined (rule 19K(2)). On lack of unity, the Authority invites the applicant, at his option, to restrict the claims or pay additional fees within one month (rule 19K(5)). The report is due by the last of: 28 months from the priority date, or six months from the start period under Rule 69.1, or six months from receipt of a translation (rule 19L).
Rule 19K: the International Preliminary Examination Report
Sub-rule (1): referral to an examiner
Notwithstanding the proviso to item (i) of sub-rule (2) of rule 24B, the Examining Authority shall refer the international application, in the order in which the demand was received, to an examiner or other officer appointed under section 73(2) of the Act for preparing an International Preliminary Examination Report, ordinarily within three months but not exceeding four months from the date of such reference. How the demand is received and given the 'IPEA/IN' mark is covered in our article on rules 19F to 19J.
Sub-rule (2): claims without a search report
Claims relating to inventions in respect of which no International Search Report has been established shall not be the subject of international preliminary examination. The search stage is described in our article on rules 19A to 19E. If your application is going through this stage, our patent examination request support can help you plan the response.
Sub-rule (3): examination not carried out
The Examining Authority shall not go into the questions of novelty, inventive step (non-obviousness) or industrial applicability, and shall inform the applicant of its opinion and the reasons, if it considers that:
- (a) the application relates to subject matter on which it is not required to carry out international preliminary examination and decides not to; or
- (b) the description, claims or drawings are so unclear, or the claims so inadequately supported by the description, that no meaningful opinion can be formed on those questions.
Sub-rule (4): some claims only
If a situation in (a) or (b) applies to certain claims only, the Authority shall indicate that in the report in respect of those claims, and establish the report for the other claims.
Sub-rule (5): unity of invention
Where the Authority finds that the application does not comply with unity of invention under Rule 13 of the regulations under the Treaty and chooses to invite the applicant, at his option, to restrict the claims or to pay additional fees, it shall issue a notice:
| Clause | Content of the notice |
|---|---|
| (a) | Specifying at least one possibility of restriction which, in the Authority's opinion, would comply with the requirement |
| (b) | Specifying the reasons for which the application is not considered to comply |
| (c) | Inviting the applicant to comply within one month from the date of the notice |
| (d) | Indicating the amount of the additional fees to be paid if the applicant so chooses |
| (e) | Inviting payment of the protest fee within one month from the date of the notice, indicating the amount, as specified in the Fifth Schedule |
The applicant therefore has a choice: restrict the claims along the lines suggested, or pay the additional fees. The Fifth Schedule is named in the contents of the Rules but is not printed in the sources used for this series, so no amounts are stated.
Sub-rules (6) to (9): protest and Review Committee
- (6) Any applicant may pay the additional fees under protest, with a reasoned statement that the application complies with unity of invention or that the additional fee required is excessive.
- (7) The protest is examined by a Review Committee constituted by the Controller.
- (8) The Review Committee examines how far the protest is justified and orders total or partial reimbursement of the additional fee.
- (9) The protest fee is refunded where the Review Committee finds the protest entirely justified.
Cross-reference slips in the printed text. Sub-rule (7) refers to "the protest referred to in sub-rule (5)", but the protest is dealt with in sub-rule (6). Sub-rule (9) refers to "the Review Committee referred to in sub-rule (6)", but the Review Committee is constituted in sub-rule (7). The text is printed that way; read the references as pointing to sub-rules (6) and (7) respectively.
Rule 19L: period for the report
The period for establishing the International Preliminary Examination Report shall be:
- twenty-eight months from the priority date; or
- six months from the period specified under Rule 69.1 of the regulations under the Treaty for the start of the international preliminary examination; or
- six months from the date of receipt by the Examining Authority of the translation furnished under Rule 55.2 of the regulations under the Treaty,
whichever expires last.
The rule does not state a consequence if the Authority overruns the period. The "whichever expires last" test means the latest of the three dates applies.
Rule 19M: transmittal
The Examining Authority shall transmit one copy of the International Preliminary Examination Report and its annexures, if any, to the International Bureau, and one copy to the applicant, on the same day.
Rule 19N: conditions for and extent of refund
The fee paid by the applicant may be refunded, waived or reduced to the extent and in accordance with the conditions specified in the Treaty or the regulations under the Treaty and the agreement entered into between the Indian Patent Office and the International Bureau. The Rules themselves do not set a percentage or an amount; the answer lies in the Treaty, its regulations and the agreement, which are not part of the sources used for this series.
| Rule | Subject | Key period |
|---|---|---|
| 19K(1) | Referral to examiner | Ordinarily three months, not exceeding four months |
| 19K(5) | Unity of invention notice | One month to restrict claims, pay additional fees and pay protest fee |
| 19L | Report | 28 months from priority, or six months from the start period or from the translation, whichever expires last |
| 19M | Transmittal | Same day to the International Bureau and the applicant |
| 19N | Refund, waiver, reduction | As per Treaty, regulations and agreement |
A worked example
Verdant Grain Systems makes a demand for international preliminary examination of an application claiming a seed sorter and a dust filter. The Authority finds that the two do not satisfy unity of invention and chooses to invite the applicant to restrict or pay. Its notice suggests one way to restrict the claims, states the reasons, asks for compliance within one month, states the additional fee, and invites payment of the protest fee within one month. Verdant pays the additional fee under protest with a reasoned statement. The Review Committee finds the protest justified in part and orders partial reimbursement of the additional fee.
For claims on which no International Search Report was established, rule 19K(2) means no preliminary examination takes place. The report is established within the period in rule 19L and one copy goes to the International Bureau and one to Verdant on the same day.
Link to the national phase
The report does not end the process. An application designating or electing India continues into the national phase under rule 20; see our article on rule 20 and our guide on patent examination. The Act-side framework is in our article on section 2 (Convention, PCT, priority date and interpretation).
Need help with the examination stage?
Unity of invention notices and protest decisions carry one-month deadlines. If you want a second opinion on how to respond to a notice and what to do about the claims, you can contact us about patent examination request support.
Key takeaways
- Referral to an examiner is ordinarily within three months, not exceeding four.
- Claims with no International Search Report are not examined.
- On lack of unity, the applicant may restrict the claims or pay additional fees within one month, and may pay under protest.
- Two cross-references in rule 19K(7) and (9) point to the wrong sub-rules in the printed text.
- The report period is 28 months from priority or the two six-month alternatives, whichever expires last.
- The report goes to the International Bureau and the applicant on the same day.
- Check amendments after the Second Amendment Rules, 2024.
Read next
- Rules 19F to 19J: preliminary examining authority and demand
- Rule 20: national phase applications designating or electing India
- Patent examination process: request, FER, hearing
- PCT route for filing international patent applications
Disclaimer: Based on the Patents Rules, 2003 as consolidated up to 21 September 2021 and as amended by the Patents (Amendment) Rules, 2024 and the Patents (Second Amendment) Rules, 2024, as consulted on 2 October 2026. Later amendment rules, forms and fees should be checked in their current form. This article is general information, not legal advice; check the official text before acting.