Patent Prosecution Highway (PPH): A landmark in the history of patent prosecution in India

A Bilateral Patent Prosecution Highway (PPH) pilot program has commenced between the Indian Patent Office (IPO) and the Japan Patent Office (JPO) on December 5, 2019. The Indian Patent Office website has also published the Procedure Guidelines to file a PPH request under the Patent Prosecution Highway Pilot Program between the Indian Patent Office (IPO) and the Japan Patent Office (JPO) which can be reached at the following link: Procedure Guidelines For Patent Prosecution Highway (PPH)

The said guidelines are issued to address the procedures that applicants need to follow while requesting for expedited examination under the PPH pilot program.

Applicants can request expedited examination by a prescribed procedure including submission of relevant documents on an application which is filed with the Office of Later Examination (OLE) and satisfies the requirements described in these guidelines under the PPH pilot program between IPO and JPO based on the application which is determined to be patentable by the Office of Earlier Examination (OEE).

In these guidelines, the Office of Later Examination (OLE) with which applicants file a PPH request and the Office of Early Examination (OEE) which determines patentability of claims of an application before the OLE are as follows:   

 
Office of Later Examination (OLE)
Office of Early Examination (OEE)
PPH request to the IPO
IPO
JPO
PPH request to the JPO
JPO
IPO

When filing a request for the PPH pilot program, an applicant must submit information in the prescribed Form presented in Chapter 5 of these guidelines, to the OLE. While submitting a request to Indian Patent Office under the said PPH program, the following points are to be noted:

  • The number of the requests for the PPH in IPO will be limited to 100 cases per year on first come first serve basis.
  • An applicant who has filed a patent application, either alone or jointly with any other applicant, shall not file more than 10 PPH requests to IPO per year.
  • Request for assigning special status for expedited examination under the PPH is required to be filed online in prescribed form 5-1 under chapter 5 of the PPH guidelines. When the OLE decides that the request is acceptable, the application is assigned a special status for an expedited examination under the PPH.
  • An applicant/Authorized agent can file the request for expedited examination on Form 18A only after the request for assigning special status filed on form prescribed in chapter 5 is accepted by the Indian Patent office. the decision on acceptance/rejection/defect noticed shall be communicated to the Applicant/Authorized agent through email as well as message on e-filing portal.
  • In case of defects in form 5-1, the applicant will be provided opportunity to rectify the defects 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.

Further Requirements for the PPH request to the Indian Patent Office:

  • Under this PPH Pilot Program, the IPO will receive Patent applications only in the technical fields of Electrical, Electronics, Computer Science, Information Technology, Physics, Civil, Mechanical, Textiles, Automobiles and Metallurgy.
  • The application under PPH may be filed in accordance with the provisions of rule 24C(1)(j) of Patents Rules 2003.
  • Except where the application has already been published under sub-section (2) of section 11A of the Patents Act, 1970, or a request for publication under rule 24A has already been filed, a request for expedited examination shall be accompanied by a request for publication under rule 24A. (rule 24C (3), the Patents Rules, 2003)
  • A request for expedited examination shall be made in 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.
  • The request for expedited examination in Form 18A shall be submitted by electronic transmission.
  • The prescribed fee for expedited Examination shall be paid as prescribed under item no. 14A or 14B as applicable, of the First Schedule of the Patents Rules, 2003.
  • When an applicant files a request for an expedited examination under the PPH pilot program to the IPO, an applicant must fill the form shown on 5.1 as “Information for PPH request to the IPO (IPO as OLE, JPO as OEE)”.

Documents to be submitted by the Applicant in Indian Patent Office (if IPO as Office of Later Examination):

(a)Copies of all office actions (which are relevant to substantial examination for patentability in the OEE) which were issued for the corresponding application by the OEE, translations of them and a self-certification of the translations.

(b) Copies of all claims determined to be patentable/allowable by the OEE and translations of them and a self-certification of the translations.

(c) Copies of references cited by the OEE examiner: If the references are patent documents, the applicant doesn’t have to submit them because the OLE usually possesses them. When the OLE does not possess the patent document, the applicant has to submit the patent document at the examiner’s request. Non-patent literature must always be submitted.

(d) Claim correspondence table which indicates how all claims in the OLE application sufficiently correspond to the patentable/allowable claims in the OEE application.

Benefits of Patent Prosecution Highway:

  • PPH will allow applicants to leverage allowance of claims from one office to another leading to an increase in domestic patent filings.
  • PPH will result in expeditious granting of patents in India
  • Expeditious examination through PPH shall result in high allowance rates and
  • significant cost savings would enable applicants to successfully and efficiently take advantage of their inventions in India.
  • PPH would encourage foreign applicants to enter the Indian market.

Author: Dr. Shikha Tejswi, Sr. Principal Associate at Khurana & Khurana, Advocates and IP Attorneys. In case of any queries please contact/write back to us at shikha@khuranaandkhurana.com

References:

[1] The Patents Rules, 2003, as amended by the Patents (Amendment) Rules 2016;

[2] Procedure guidelines for patent prosecution highway (PPH);

[3] http://www.ipindia.nic.in/newsdetail.htm?593

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