Patent Prosecution Highway: A Fast-track to Patent Examination

At the 2018 Summit held between Japan & India, the two countries have perceived a close collaboration in Intellectual Property Rights in order to realize the true potential of the economic-partnership between the two for a prosperous future. The Countries have agreed to launch a bilateral Patent Prosecution Highway program on a pilot premise in certain recognized fields of innovations in the principal quarter of FY 2019.¹The initial dialogue between the two countries began in 2015. The JPO (Japan Patent Office) has been advancing the collaboration for quick acquisition of IP rights in India through a Memorandum of Co-operation (MOC) signed with the DIPP, MCI in July 2015. In May 2017, the JPO concurred the amended action plan thereby increasing the fields for participation with the Office of the Controller General of Patents, Designs, and Trade Marks. Consequently, the First Review Meeting on IP was held where JPO and DIPP embraced a joint articulation with respect to their IP participation in September 2017. The Second Review Meeting took place on August 22, 2018, in Tokyo, on account of the proceeding and reinforcing the association between Japan and India through observing the advancement of the action plan. An official statement along with a few details was released during the Japan-India Summit in 2018.²

The Union Cabinet of India on 20th November 2019 approved the proposal for adoption of PPH (Patent Prosecution Highway) programme between IPO (Indian Patent Office) and patent offices of other countries. Indian Patent Office may receive patent applications in certain specified technical fields only, namely Electrical, Electronics, Computer Science, Information Technology, Physics, Civil, Mechanical, Textiles, Automobiles and Metallurgy while JPO may receive applications in all fields of technology. The programme would first be conducted between India and Japan on a pilot basis for a period of 3 years.³ As the term ‘highway’ suggests, this programme is fundamentally a fast-track process for inventors to get their inventions examined in a quicker and easier way. As per the PPH programme, patent offices of participating countries have concurred that when a candidate gets a final decree from a first patent office that at least allows one claim, the same candidate may demand an expedited examination of the relevant claim(s) in a subsequent patent application pending in the second patent office⁴. However, this is not the first time that a programme like this is being implemented. In July 2006, the first PPH programme to expedite the process of granting patents within the countries was commenced between USPTO (the United States Patent and Trademark Office) and JPO (Japan Patent Office) ⁵.

The DIPP’s (Department of Industrial Policy and Promotion) main intention behind accepting the proposal is not just to accelerate the examination of patents thereby reducing the heavy backlog that different patent registries in the country face but also to improve the quality of search and examinations of different patent applications received.⁶ TheRule24(c) of the Draft Patent Rules, 2003 which provides the criteria to request for an expedite examination will have to be correspondingly amended to include PPH applications under it. It is right now restricted to only a few applicants like startups, small entity, and female natural person etc.⁷

It will be beneficial for Indian startups and other MSME’s to get a speedy examination of their patent applications in Japan once they’ve been granted in India. The PPH with Japan is just a pilot programme for a period of 3 years and such agreements will be concluded with different countries in the future which makes it even more desirable for inventors as it will be easier for them to go for an expedited patent examination in different regions and major market areas.⁸

The benefits of PPH can be observed empirically as well. Post the PPH between the U.S. and EU, there has been a reduction in the pendency of patent applications in the U.S. For instance, the average number of patent office actions before disposal of a case has dropped from 2.7 (for non-PPH cases) to 1.7 (for PPH cases). Thus, PPH has in-fact worked out in other regions prior to its implementation in India.⁹ Nevertheless, the pilot programme between India and Japan has received criticisms from different analysts. According to them, the Indian patent examiners might get lackadaisical while evaluating any application and grant the patent just by relying on JPO’s examination report. This becomes problematic as the provisions concerning ‘Non-Patentability’ are stricter in India than Japan or any other country.¹⁰ Their disproval arises from the concern of dilution of patent laws in India due to the ‘harmonization’ of patent laws of both the countries. However, there lies a very evident argument against this which we shall discuss in the next portion.

The three primary terms ‘New’, ‘Inventive’ and ‘Industrial Application’, give the three fundamental criteria to patentability in the context of India as well as any other country. The TRIPS Agreement requires its member countries to make patents available for any such inventions, whether it is a product or a process, in all fields of technology without discrimination, subject to the three above-mentioned tests of novelty, inventiveness and industrial applicability.¹¹ Thus, when JPO’s examiner grants a patent to an invention, the Indian registry’s work of inspecting the application of three primary requirements gets reduced and this shall result in saving a lot of time. Moreover, PPH simply allows expedition of an application under Section 24(c) of the Indian Patents Act and in no way guarantees the patent being granted, as the examiner will further have to examine if the patent application is in compliance with the Indian Patents Act, 1970.

Another possible problem that can arise is in relation to the PPHs of other countries. For example, if Japan grants/expedites the examination process of any patent because of its PPH with the U.S. because the patent had already been granted in the U.S. Now, the examination of the same patent in India will also be expedited because of its PPH with Japan, in a way creating a multi-country and indirect impact even though the formal agreement is a bilateral one.

However, these problems and criticisms can be corrected by proper guidelines. As mentioned in the press release by the Cabinet, the patent offices will frame the guidelines for implementation of the programme.¹²Hence, it is suggested that the patent offices hold keep these potential problems in mind while framing the guidelines.

To conclude, the idea of PPH has a lot of potential in improving the quality of the examination of patents as well as reducing the pendency of the patent applications in India, however, it should not be implemented in a hasty manner and should come into force only after specific and proper guidelines are in existence.

Author: Apoorv Dixit, a 3rd-year student at NALSAR University of Law, Intern at Mumbai Office at IP and Legal Filings and can be reached at support@ipandlegalfilings.com.