Choosing India as International Search Authority (ISA) and International Preliminary Examining Authority (IPEA): Who Can and Who Cannot

It is long since October 15th, 2013, that India started to work as International Search Authority (ISA) and International Preliminary Examining Authority (IPEA).  Agreement between the Indian Patent Office (IPO) and the International Bureau (IB) of the World Intellectual Property Organization (WIPO) in respect of the same can be accessed here. With the introduction of Patent (Amendment) Rules, 2016, that took effect from May 16, 2016, India has brought in provision for Expedited Examination of Patent applications for which request may be made on any of the following grounds, namely:-

 (a) that India has been indicated as the competent ISA or elected as an IPEA in the corresponding international application; or

(b) that the applicant is a startup.

So as to better understand the eligibility to request for expedited examination, it is important to understand which states can choose India as competent ISA and IPEA. In the above referred agreement, article 3 that deals with Competence of Authority makes it clear that the India shall act as ISA and IPEA for any international application filed with the receiving Office of, or acting for, any Contracting State specified in Annex A provided other requirements are fulfilled. Annex A states that India; and any State that the India will specify can choose India as competent ISA and IPEA. As India has not specified any other state than India that can choose India as ISA and IPEA, as on now India is the only state with the receiving Office of, or acting for which international application may be filed in order to select India as competent ISA and IPEA.

So as per the existing scenario, for Indian Applicants, any of the Austrian Patent Office (AT), Australian Patent Office (AU), European Patent Office (EP), China Intellectual Property Office (CN), United States Patent & Trademark Office (US), Swedish Patent Office (SE) and India (IN) can be chosen as competent ISAs and IPEAs but India can be chosen as ISA and IPEA only for international applications filed with the receiving Office of, or acting for India.

About the Author: Swapnil Patil, Patent Associate at Khurana & Khurana, Advocates and IP Attorneys and can be reached at:swapnil@khuranaandkhurana.com.

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