Availing India Japan Patent Prosecution Highway for faster patent prosecution

India and Japan have announced the commencement of a bilateral Patent Prosecution Highway (PPH) programme between the two countries, on November 21, 2019, which proves to be a major breakthrough for the Make in India initiative, especially for emerging start-ups, MSMEs of India. The Union Cabinet of India, headed by the Prime Minister Shri Narendra Modi, has given its thumbs up to the proposal for adoption of Patent Prosecution Highway (PPH) programme by the Indian Patent Office (IPO)

The first phase of PPH programme is expected to be kicked off, at the earliest, between Japan Patent Office (JPO) and Indian Patent Office (IPO) on a pilot basis for next three years. As per the bilateral agreement between the Indian Patent Office (IPO) and the Japan Patent Office (JPO), Indian Patent Office will receive patent applications related to certain specific technical fields only, which includes, Electrical, Electronics, Computer Science, Information Technology, Physics, Civil, Mechanical, Textiles, Automobiles and Metallurgy while JPO may receive applications in all fields of technology.

The Patent (Amendment) Rules 2019, which was enacted on September 17, 2019, had started a new set of rules, according to which, certain applicants can apply for expedited examination of their patent applications, provided the applicants should be eligible under an arrangement between the IPO, which is under the Controller General of Patents, Designs & Trade Marks, India (CGPDTM), and patent offices of other nations. However, at that point, no provisions were there under which the applicants could apply for expedited examination of patent applications. But, the commencement of this Bilateral PPH programme shall now provide the much-awaited opportunity, of expedited examination, to applicants in India, and they can apply for the same based on the guidelines of this PPH programme.

It is foreseen that the initiation of the PPH programme will eventually result in a lot of fruitful benefits like reduction in disposal time of patent applications, consistency in quality of granted patents, and will open a new door for Indian inventors including MSMEs and Start-ups.

The commencement of the PPH programme may lead to an expected rise, at the IPO, in the grant of patents as well as the disposal of patent applications. The number of granted patents can rise up to 25,000, and the number of disposed of patents can go up to 60,000, a year, which is certainly a much-respected figure as compared to 15,000 grants and about 51,000 disposals of patent applications in the year 2018-19. A reduction of up to 12-16 months in the examination time of patent applications, is also expected, by March 2021.

Along with the accelerated disposal of patent applications, agreement on the bilateral PPH programme will, further, encourage applicants/inventors of India and Japan to apply for and obtain patents in both the countries. The success of this pilot programme will serve as a means to exhilarate other countries to enter into such PPH programmes with India.

What is the Patent Prosecution Highway (PPH)?

The Patent Prosecution Highway comprises a set of initiative actions, for providing accelerating the process of patent prosecution, through the sharing of information among patent offices of participating countries. It can serve an advantageous purpose for each participating patent office by benefitting it from the work previously done by the patent offices of the other participating countries, and hence, examination workload can be reduced and patent quality can be improved through simultaneous working.

As per the guidelines of PPH, when an applicant receives a final ruling, according to which at least one claim of the draft is allowed, from the patent office of one country, the applicant can make a request for fast track examination, in the patent office of another country, of the corresponding claim(s) of the corresponding patent application.

Important points to jot down

Here is the list of some significant points related to the bilateral PPH plan signed between the two countries, India and Japan –

• Indian Patent Office, as well as Japan Patent office, have started accepting applications from 5 December 2019.
• A limitation of 100 cases per year is imposed on the number of PPH requests, in both IPO and JPO, and the requests shall be accepted on a first come first serve basis.
• An applicant who has filed a patent application, either alone or in collaboration with any other applicant, cannot request to IPO, for more than 10 PPH per year, and the number will be reviewed after 31 March 2020.
• PPH request for expedited examination can be filed through Form 18A within forty-eight months from the date of priority of the application or from the date of filing of the application, whichever is earlier.
• An applicant can file a request for PPH, through prescribed form 5-1 under chapter 5 of the PPH guidelines.
• In case of any defects are found in form 5-1, the applicant will be able to rectify the defects or make changes in the form5-1 within 30 days from the issue of notification of defects by IPO.
• Notwithstanding the above procedure, the timelines for filing a request for expedited examination shall be as prescribed under the Patents Rules, 2003.

Author:  Astha, Patent Associate at IP and Legal Filings and can be reached at support@ipandlegalfilings.com.