Patent Prosecution Highway Between India & Japan


First and Significant Step for India Towards Global Integration in field of Patent Examination

By Kshitij Malhotra, Partner


In October 2018, both the Indian and Japanese governments decided to start a bilateral Patent Prosecution Highway (PPH) program on pilot basis. Pursuant to the signing of the agreement, last month the Union Cabinet of the Indian government approved the proposal for the adoption of the PPH pilot.

Subsequently on 5th of December, the pilot program commenced, initially for a period of three years. In addition, both the Japan patent office (JPO) and the Indian patent office (IPO) released the procedure guidelines[i] for the applicants interested in participating in the pilot PPH. These guidelines outline the details for implementing the PPH pilot in both the countries.

One of the main consequences of the PPH is that now Japanese corporations can request expedited examination process in India, based on their applications which are found to be patentable in Japan. Likewise, Indian applicants would also be able to request expeditious examination of their patent applications filed at JPO.  

Let us start this article by looking at the basic ingredients of the pilot PPH, especially the eligibility criteria, procedure, expenses involved and documents required for applicants to participate in the pilot.


The first major aspect of the PPH is the criteria of eligibility set to a patent application to participate in the PPH. The eligibility criteria is bifurcated into two parts. First is common criteria applicable to applications at both the IPO and JPO. Second is the unique criteria applicable individually at both of the respective patent offices.


The criteria common to applications submitted at both the JPO & IPO acting as either Office of Earlier Examination (OEE) or Office of Later Examination (OLE) are summarized as follows.

  1. Common priority date: The guidelines stipulate that both the applications at the OLE and the OEE shall have the same earliest date (whether this is a priority date or a filing date).
  2. Origination at either JPO or IPO: The guidelines further state that the earliest patent application should be initiated in the office of the IPO or the JPO [acting as a national office or, under the PCT, acting as a Receiving Office (RO)].
  3. Claim determined to be patentable: This requirement wants that at least one corresponding application exists in the OEE and has one or more claims that are determined to be patentable/ allowable by the OEE.
  4. Correspondence of claims: According to the guidelines, all claims on file as originally filed or as amended, for examination under the PPH must sufficiently correspond to one or more of those claims indicated as allowable/patentable in the OEE.

The guidelines further stipulate that substantive examination of the OLE application for which participation in the PPH is requested has not begun. Substantive examination is considered to have begun when the Examiners accept its designation in JPO or the application is allotted for examination to an Examiner in IPO.

The guidelines go on to list around 12 situations in the guidelines where the PPH may be applicable, and illustrative explain 3 situations where the PPH is not available. 2[ii] out of these 3 cases relate to cases where the priority application originates from a 3rd patent office other than IPO and JPO.


 As mentioned above, in addition to the common requirements, both the participating patent office have also listed out individual criteria, applicable to each of the patent office. The IPO specific criteria is enunciated as below:-

 Technical field: 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 (Excluded Chemistry & Pharmaceutical).

  1. Publication at IPO: The guidelines require that the application has already been published or a request for publication has already been filed.
  2. Expedited examination request on record: The guidelines require that within forty-eight months (*from the date of priority of the application or from the date of filing of the application, whichever is earlier) a request for expedited examination shall be made in Form 18A which shall be submitted by electronic transmission.
  3. Additionally, the guideline requires that an applicant must file the relevant forms and documents instructing the IPO[iii] to enter the application into the PPH. Further, the applicable fees ~ USD 850/- in case request for examination is not submitted, or ~ USD 575/- in case a request for examination is already on record is to be paid.

The discounts for special category of applicants, such as individuals, small entities, and start-ups will also be applicable.

The guidelines also list the additional criteria applicable at JPO. At JPO there is no restrictions on the technical field. Further, JPO does not have any excess fees for participating applications in the PPH.


The guidelines enlist that in order to apply for participation into a PPH, an applicant is required to submit form 5.1 at the IPO and corresponding form 5.2 at JPO. In addition, the following documents are required to be submitted: –

  • 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 in appropriate language and a self-certification of the translations.
  • Copies of all claims determined to be patentable/ allowable by the OEE and translations of them in appropriate language and a self-certification of the translations.
  • Copies of references cited by the OEE examiner (both the JPO and the IPO, the Applicant is required to submit the copies of only the non-patent references cited by the IPO examiner and the JPO examiner, respectively, along with the PPH request.)
  • A Claim correspondence table (which indicates how all claims in the OLE application sufficiently correspond to the patentable/allowable claims in the OEE application).

Once an application for PPH is received at OLE, the office receiving the request will scrutinize the application and in case there are informalities, will notify the applicant to correct the defects and pay the prescribed fees.


The official circular issued by the patent offices list the following limitations to the acceptance of application submitted at the IPO.

  1. The number of the requests for the PPH pilot are limited to 100 cases per year.
  2. The IPO would not allow any applicant (either alone or jointly with any other applicant) to file more than 10 PPH request per year.

On the other hand, JPO has not put any such limitation on the number of PPH requests that can be filed by a single Applicant.


The IPO-JPO pilot PPH is a first step towards any bilateral cooperation that IPO has gotten into with any patent office of the world. The step is significant as for the first time IPO has taken an innovative approach of globally integrating the IPO with global patent systems. The step is even more significant as it tries to do so by balancing the fear of autonomy of patent examination.

More significantly, the guidelines make it clear that the pilot IPO-JPO PPH is only limited to expediting applications for examination. The corresponding legislative patent rules instituted in India for legally sanctioning the PPH also make sure that under the bilateral PPH, IPO is only obliged to expedite examination and the provisions of the Indian laws (such as statutory subject matter, examination procedures etc.) will still be applicable during examination. It will be interesting to see how the IPO examines the application in the pilot and how far it relies on the examination reports issued by JPO while granting the participating applications.

At present the time taken to issue first office action at IPO is around 24-36 months from date of requesting examination. Under the expedited system the IPO is required to issue the first office in one month from date of requesting. The PPH will allow Japanese corporations to expedite examination of their applications for an early grant.

At the writing of this article, already 75 PPH applications have been received by the IPO. The numbers at JPO are unknown.

[i] http://www.ipindia.nic.in/writereaddata/Portal/News/591_1_PPH_Procedure_Guideline_combined_20191128_final.pdf

[ii] Reference cases F and G on page 25 & 26 respectively

[iii] Form 5.1 is required to be submitted at IPO

Patent (Amendment) Rule, 2019

Patent (Amendment) Rules, 2019

By Chandan Kumar, Patent Associate and Moumita Roy, Associate

The Department for Promotion of Industry and Internal Trade, Ministry of Commerce and Industry has introduced Patent (Amendment) Rules, 2019 effective from 18th September, 2019.

Prior to the implementation, the authority had published the draft rule for suggestion and objections of the stakeholders. The basic changes brought about by the Patents Amendment Rules, 2019 are summarized for a ready reference as under:

  1. Transmission of documents by patent agents

The second change has been implemented in Rule 6(1) and that is:


Previous Rule

New Rule


Rule 6(1A) …patent agent shall file, leave, make or give all documents only by electronic transmission duly authenticated, including scanned copies of documents that are required to be submitted in original: a patent agent shall file, leave, make or give all documents only by electronic transmission duly authenticated The sentence “including scanned copies of documents that are required to be submitted in original” has been omitted.

Provided that any document, if asked to be submitted in original, shall be submitted within a period of fifteen days, failing which such documents shall be deemed not to have been filed.”

This means that going forward; the patent attorneys are not required to submit the originals of the documents required in original at the patent office within 15 days of the uploading of such documents on the electronic server of the patent office. Instead, they are required to submit the originals when asked so by the patent office that too within 15 days of such asking.

  1. Documents for small entities and startups

The next change has been implemented in Rule 7 Proviso (ii). The change has broadened the scope of

Rule 7 – Second provision …Provided further that in the case of a small entity, every document, for which a fee has been specified, shall be accompanied by Form-28 “Provided further that in the case of a small entity, or startup, every document, for which a fee has been specified, shall be accompanied by Form-28.” Provision amended to include startup along with the small entity
  1. Expedited Examination

A major change brought about by the new rules is that now in addition to startups and applicants designating India as ISA or electing India as IPEA in their corresponding PCT applications, the option of seeking expedited examination is now available to a wide category of applicants. According to the Patents (Amendment) Rules, 2019 rule 24 C is substituted to read as follows:

Rule 24C Only

i) startups &

ii) applicants indicating India as ISA or electing India as IPEA in a corresponding PCT application allowed to file a request for expedited examination.

Entities allowed to file a request for expedited examination:

1.      startups;

2.  applicants indicating India as ISA or electing India as IPEA in a corresponding PCT application

3. Small entities / MSME’s;

4. Female applicants/co-applicants;

5. Departments of the Government;

6. Institutions owned or controlled by the Government by way of State/ Central legislature;

7. Institutions wholly or substantially financed by the Government;

8. Government companies as under the Companies Act;

9. Application pertaining to a sector which is notified by the Central Government on the basis of a request from the head of a department of the Central Government; and

10.  Applicants of those countries whose patent offices are in an agreement/arrangement with the Indian patent office.

Eight new classes of applicants can file a request for expedited examination.

Accordingly, the expedited examination scheme is extended to a new set of applicants. These include Medium Small & Micro Enterprises or MSMEs, applications with female applicants/ co-applicants, Government departments, Institutes owned or controlled by the government, and government companies.

In addition, the expedited examination has been extended to certain sectors which the government may notify from time to time as priority sectors. Applicants in priority sectors may be taken up on priority by the patent office, if the applicants so choose.

Moreover, the scheme is also now available to patent applicants of the countries where the Indian government has a special arrangement with a foreign patent office. See point 10 above. Initially, the draft rules had suggested that such priority in the examination will only be applicable in case of applications filed in India through PCT route. However, the notified rules have extended the scheme to non-PCT national phase applications also.

 At present, the Indian government already seems to have a special arrangement with Japanese government in this regard. That means that Japanese companies that have got a favorable grant at the Japanese patent office may ask for expedited examination in India.  

  1. Transmittal fees and Certified copy fee no longer applicable

Under the new rules, PCT applicant will no longer have to pay a transmittal fee to the Indian patent office when filing PCT applications through the e-PCT filing module. The transmittal fee previously ranged from ₹ 3200 Rupees to ₹ 17600 depending on the nature of the applicant and the mode of filing the PCT application.

On the other hand, individuals and Startups paid ₹ 3200 when filing the PCT through the ePCT filing module, small entities paid ₹ 8000 and large entities would shell out ₹ 16000. These fees have now been scrapped. If however, the PCT application is filed physically with the patent office, the same fees as earlier would applicable. The change reads as under:

FIRST SCHEDULE – Entry 48A Transmittal fee for International application (for ePCT filing). Individuals & startups – 3200 INR

MSME’s – 8000 INR

Large  entities/ 16000 INR

No fee payable 48A inserted after entry number 48 – Transmittal fees for ePCT filings no longer payable
  1. No fee is payable in Procuring DAS code and transmitting priority document electronically has been

First Schedule of the amended rule has made in the Rule 49A which looks like as under:

FIRST SCHEDULE – Entry 49A For the preparation of a certified copy of the priority document and e-transmission through WIPO DAS.

Individuals & startups – 1000 INR + 30 INR per  extra page in excess of 30

MSME’s – 2500 INR + 75 INR per extra page in excess of 30

Large  entities/ ONP -5000 INR + 150 INR per extra page in excess of 30

No fee payable 49A inserted after entry number 49 – No fee payable for procuring DAS code and transmitting priority document electronically
  1. Changes to the format of Form 18A

Changes have now been made to the format of Form 18A to include the entire category of applicants to whom expedited examination is now available along with the documents that each of these types of applicants would have to adduce at the time of making the request.

SECOND SCHEDULE – Form 18A Only startup and applicants indicating India as ISA or electing India as IPEA in a corresponding PCT application identified in Form 18A 8 additional categories  of applicants added to Form 18A NA

We will be covering some of the aspects of new rule changes in our further articles.


Analysis of Recently Published Annual Report of Indian IP Office

Analysis of Recently Published Annual Report of Indian IP Office

By Kshitij Malhotra, Partner

                In July this year, the Office of Controller General of Patents, Designs & Trademarks or CGPDTM, the administrator of Indian IP Offices, issued its annual report for financial year 2017-2018[1][2]. The report is considered by many as one of the authentic sources of information about developments of IP in the country, and despite coming out a year after completion of the concerned fiscal, the report is widely awaited. The present report of 2017-18 fiscal is significant, as it is first official account, after the Indian IP offices undertook major administrative reforms in fiscal year 2016-17. The instant article investigates some key information reflected in the report.

                Context of the present report

                Just to give the readers a context of the significance of this report, the growth of number of IP filings in India has been stagnant for last 5-6 years. Many have attributed the main reason of the sluggishness to be the delays in examination and granting IP rights. Some reports, as recent as 2017, suggested that around 232,000 patent applications lay pending at the IP offices[3].

                It is interesting to note that in year 2014, plagued by the problem of pendency of its patent applications, Japanese corporation, NITTO DENKO[4], had sued the Indian government for delays in patent grant procedure. The High court of Delhi looking into the matter ordered formation of a high-level committee to investigate the problem. The committee recommended various emergency administrative reforms in the Indian IP set up.

                Accordingly, in fiscal year 2016, the government implemented various changes[5][6]in the rules governing IP registration. Some of these reforms included reducing the statutory acceptance period of patents by half, improving e-filing systems for filing IP applications, change of opposition procedures, increasing the strength of patent & trademark examiners, centralizing examination process, coordinating allocation of patent & trademark applications among the four branches of the IP offices in a better manner, and other similar reforms.

                Although it is little farfetched to anticipate that the 2017 fiscal data would have been significantly influenced by the measures taken in preceding fiscal, still it will be interesting to analyse the data to locate any positive indicators that augur well for users of patent & IP system of the country.

                Overall Filing Trends of Patents, Designs & Trademarks

                The charts below show the overall filing & issuance trends at the Indian IP offices in 2017 fiscal year as compared to last 5 years.

Chart 1: Overall IP filing trends at Indian IP office

                As you can see, the overall number of filings in fiscal year 2017 has remained almost same as compared to 2016 fiscal. In 2017-18, 46,846 patent applications were filed, which increased marginally by around 3 percent only as compared to 2016 fiscal. Similar marginal growth is observed in design and trademark applications. The story seems little better when it comes to number of issuance of IP rights.

Chart 2: Overall IP registration trends at Indian IP office

                As seen in Chart 2, the data for number of IP registrations shows that the number of IP rights issued to various applicants increased reasonably in 2017 fiscal. The number of granted patents increased by 32.4 percent, while the number of design registrations increased by 21 percent. The number of trademark registrations also shows a significant increase of around 20 percent.

                Looking at the data, it is fair to conclude that the administrative reforms in 2016 fiscal, do not seem to show a significant early impact on the IP filings scenario in the country. However, they do seem to suggest more effectively towards the patent offices working effectively to resolve the backlog. This is in consonance with the feeling among IP practitioners in India, who have observed a markable improvement in working of the IP offices on the ground.

                Since the suggestions of the committee instituted post NITTO DENKO ordered a special focus on reforms in patent examination and grant procedure, the next part of this article analyses the fiscal data of 2017 to identify deeply the potential impact of the 2016 reforms[7]on patent examination in the fiscal.

                Trend of Patent Filings by Foreign Applicants

                As you might be aware, in India, around 70-80 percent patent applications are filed by foreign applicants. Since one of the majority users of the patent system in India are foreign applicants, it would be interesting to see impact of the 2016 reforms on foreign companies filing in India? The chart below shows the filing trends based of Paris Convention and PCT applications in India.

Chart 3: Trends of no. of applications filed through PCT/ Convention route in India in last 5 years

                As shown in chart 3, the PCT/ Paris Convention applications form a major share of the patent filings in India. Further, the trends indicate that the number of applications remained almost same in fiscal 2017, as compared to previous year, i.e., fiscal 2016. Again, the trends are early indicators, but, seem to show no significant immediate impact of the reforms of 2016 on the patent filings from foreign applicant.

                Such a trend could be indicative of various factors in play. The first being that the foreign applicants, who started to use Indian patent offices extensively post the 2005 landmark reforms which introduced many changes like product patent regime, allowance of pharma patenting and the like, might be on standby mode to see real impact of the recent reforms before starting to use the system again. 

                The next set of trends look into comparing the number of applications filed from companies of top 5 patent offices, at the Indian patent office. Three sets of data are looked into keeping the Japanese perspective in mind. The first is comparing trends of Japanese applicants in India verses their American and European counterparts. The second is comparing the trends of Japanese applicants in India with their Korean and Chinese counterparts. The third set of data is identifying the top foreign applicants filing patent applications in India.

Chart 4: Trends of no. of applications filed with Japanese, American and European applicants in India in last 5 years

Chart 5: Trends of no. of applications filed with Japanese, American and European applicants in India in last 5 years

                It should be noted that the American and European companies majorly filed in India between 2005 and 2015, followed by Japanese applicants, who started to file in India majorly after year 2008. However, from the charts above, the trends seem to indicate that the number of applications from Japan have in fact decreased in last 5 years. This trend is also seen among American and European applicants, i.e., applications with US and European priority in India have decreased.

                Nevertheless, the main reason for the decline of patent filings from Japan, US and Europe seems to be indicative of many factors. A first factor could be degrading of economic activities of these countries in India. The other factors could point towards persisting negative sentiments of Japanese, European and American corporations on the IP ecosystem in India. However, Foreign Direct Investment data or FDI data seem to point towards the latter rather than former.

                On the contrary, the data in chart 5 seem to indicate an increased patent filing from China and Korea at the IPO in recent years. As shown in chart 5, the patent applications from Korea have increased, while those from China remained constant but increased overall since 2013. The increased filings could generally point towards higher economic activities in these countries among various other reasons. The other could point towards special significance of the companies in these countries towards economic activities in India.

                The chart 6 below summarizes the top 10 applicants at the IPO in fiscal year 2017.

Chart 6: Top 10 foreign applicants at IPO in 2017-18

                The trends indicate that although the greatest number of patent filings in India are from American applicants, big European corporations seem to have overtaken the Americans in taking the top spots. It is interesting to note that two Japanese corporations, Mitsubishi Electric and Honda Motors, also feature in top 10. Their increased filing in India could be attributed to increased economic activities of Japanese corporations in India in recent years.

                Trend of Patent Examination in Fiscal 2017-18

                A part of patent reforms in year 2016 focused especially on hiring junior examiners in order to build a higher capacity at the patent offices. Accordingly, since then the patent offices carried out special recruitment drives to hire examiners, and train them to assist various patent examiners at the patent offices. The annual report data of 2017 fiscal reflects the above fact. The data shows that at present more than 550 examiners work at the Indian patent offices, and the number of examiners at the patent offices are more than 5 times the number in 2015 fiscal.

Chart 7: Examiner strength at Indian patent offices

                The patent examination system in India now involves both the junior and senior examiner, called Controllers, working in tandem. While the junior examiners carry examination of patent applications and prepare examination reports called FERs, the controllers review them before sending to the applicant. It is believed by the patent offices that by increasing the strength of junior examiners, the senior examiners or the controllers could focus better on ensuing the quality checks of the examination report. Accordingly, it will be interesting to note if the 2017 fiscal data point towards any relation between increased capacity and the rate of office actions [examination reports] issuance?

                The chart no. 8 below shows the trends of examination of patent applications at the Indian patent offices. More specifically, the data shows the no. of applications that were examined [issued first office actions or first examination reports] and disposed, that is decided [accepted or rejected] by the IPO.  

Chart 8: Trends of no. of applications examined [OA issued] V. disposed

                As seen from the chart 8, the number of first OAs issued every year by Indian patent offices has increased considerably to more than three folds the number of OAs issued 5 years back. Similarly, the number of cases disposed [either accepted or rejected by IPO] has also increased four times as compared to the cases disposed 5 years back. This data could be indicative of a positive development for clearance of backlog of patent applications. And if the trend continues, which many IP practitioners see are in continuity, it could augur well for the IP ecosystem in India.

                Commercialization of patents

                As you might be aware, the Indian patent laws are based on a premise that a patentee is granted exclusive rights vide patents in India on condition that they would commercialize their invention in territory of India. Accordingly, Indian laws require patentees to furnish annual statements with regards to the commercialization of their patents. This is also called as “working of patents” requirement.

                The patent office annual report publishes yearly data regarding working of patents in its annual report. This edition of the report is no exception. In fact, the commercialization information of patents seems to show some interesting facts. The chart no. 9 below shows the Form 27 [the reporting form of the annual statement] information.

Chart 9: Form 27 [Working of patents] data of last 5 years

                The chart 9 shows that, firstly there seems to be growing tendencies among patentees in not reporting the Form 27 information. The second seems to be that more companies are in fact reporting that their patents are not worked or commercialized. This information could point towards the fact that foreign companies might not be actually increasing their technological transfer in India, something that could be worrisome in longer run.

                Conclusion: The IPO came out with its annual report for fiscal year in July 2019. The report is first official account of filings at Indian IP offices post the IP reforms introduced in fiscal year 2016. An analysis of the early trends from the data published in annual reports seem to point towards the fact that the reforms do not seem to have an instant effect on the growth of IP filings. Although, it should be noted that the number of IP registrations and examination of patent applications seem to have increased notably. The applicant data shows that the number of applications from foreign applicants seem to be same as compared to fiscal year 2016. The number of applications filed by Japanese corporations have in fact reduced. On the other hand, those from Chinese and Korean companies have increased in last few years. The top 10 applicants are dominated by European corporations, however, there seems to be a trend that more and more companies are tending towards not commercializing their patents in territory of India.

[1]Indian financial year is from 01st April to 31st March of succeeding year

[2] Full 2017-18 Annual Report available @ URLhttp://www.ipindia.nic.in/writereaddata/Portal/IPOAnnualReport/1_110_1_Annual_Report_2017-18_English.pdf



[5]Patent Amendment Rules of July, 2016 available @ URLwww.ipindia.nic.in/writereaddata/Portal/IPORule/1_42_1_Patent__Amendment_Rules_2016_16May2016.pdf

[6]Trademark Amendment Rules of July, 2016 available @ URLhttp://www.ipindia.nic.in/writereaddata/Portal/IPORule/1_69_1_312_1_TRADE_MARKS_RULES_2017__English.pdf

Expedited cases
Expedited Examination in India
Expedited Examination in India
Expedited Examination in India

Expedited Examination System in India and its Possible Effects on Foreign Applicants

Expedited Examination System in India and its Possible Effects on Foreign Applicants

By Vijeth Bhat, Patent Associate

In the newly amended Patent Rules 2016, considerable emphasis was given to establishing an expedited examination regime. There were certain provisions regarding filing expedited or accelerated examination in which the application is supposed to be taken out of the normal queue and examined.

Although these provisions have been directly proposed for startup companies, interestingly, big Indian corporates also stand to gain from these provisions. Especially, companies, who have filed a corresponding PCT application with India as the International Search Authority (ISA) or International Preliminary Examination Authority (IPEA), could also use this route to expedite the examination of their corresponding domestic patent application.

The expedited examination procedures suggest a patent grant within a time frame of 12-15 months of submitting such expedited request. The condition being that the applicant must satisfy the criteria mentioned above, i.e.,

  1. the applicant should be a startup company or
  2. the applicant should have selected India as an ISA or IPEA at the international stage.

It is believed that the IPO will extend the expedited examination provisions to foreign applicants as well in future.

An applicant may file a request for expedited examination in Form 18A along with the fee of Rs. 8,000/- for individuals and startups. 25,000/- for small entity and Rs. 60,000/- for others.

The newly amended patent rules also allow applicants who have already filed a Request for Examination (RFE) under rule 24B (in Form 18) to convert it into a request for expedited examination under rule 24C (1).

Below table shows some of the recent cases that were granted in Expedited Examination Procedure:

Expedited Examination in India

Nevertheless, above trends are showing that the patent office is issuing first OA within 4-6 months of submitting the request for expedited examination to domestic Indian companies. This has been unprecedented and a positive step for expediting the patent grant in India.


Implications of Expedited Examination for Foreign Applicants

Department of Industrial Policy and Promotion (DIPP) has amended Patent Rules 2003 with effect from 1st December 2017 called as the Patent (Amendment) Rules, 2017[i]

According to the Patent (Amendment) Rules, 2017:

(i) “Startup” means

(a) an entity in India recognised as a startup by the competent authority under Startup India initiative,

(b) In case of a foreign entity, an entity fulfilling the criteria for turnover and period of incorporation/ registration as per Startup India Initiative and submitting declaration to that effect.

Explanation: In calculating the turnover, reference rates of foreign currency of Reserve Bank of India shall prevail.

Previously, the foreign startup entities were not considered to be eligible to file a request for expedited examination. With these amendments in the rules, foreign applicants that are startups can now obtain patents expeditiously as they will now be eligible to file a request for expedited examination.

The new expedited examination mechanism might lead to Indian competitor companies getting an advantage by getting early patents and using them against foreign competitors. In light of the expedited examination system, the foreign applicants could look into possible transferring IP rights of specific technologies to Indian subsidiaries and first filing in India as a way to obtain early patent rights, if needed in some specific cases.

Disclaimer: The above article should not be constituted as legal opinion.




Filing your Patent outside India – Be Cautious of the Foreign Filing Restrictions


 Filing your Patent outside India – Be Cautious of the Foreign Filing Restrictions

By Garima Rai, Senior Associate

Over last few years, more and more Indian applicants are applying for patents outside India. This trend is shown by the increase in the number of patent applications filed by Indian nationals at the US Patent & Trademark Office[i], the nodal office granting patent rights in the US. The charts below show the stats of patents filed by and granted to Indian nationals at the USPTO. Interestingly, the number of patent applications filed by Indian nationals in the US these days is comparable to the number of domestic patent applications filed by Indian nationals at the IPO[ii].

Source: USPTO Annual Report

 There could be many reasons for such selection. One of the reasons could be the essential market of the product embodied in the patent. Another reason could be faster patent prosecution. In comparison to rest of the world, the patent prosecution time is generally much lesser at the USPTO. Typically, the first office action is issued within 12-18 months from the filing of a patent application at USPTO.

Another important factor that affects the decision of the applicant to first apply for patent in the US might be domain of the technology. Although the criteria regarding patent eligibility are becoming stricter in US as well in light of landmark cases like Bilski v. Kappos[iii], Mayo v. Prometheus[iv], and Alice Corp. v. CLS Bank International[v], the general feeling is that the USPTO considers most of the inventions as patent eligible unless it specifically falls under excluded subject matter. This might also be true for software inventions, which are generally patent ineligible subject matter in many countries including India. In comparison, software inventions are usually patentable at the USPTO, provided the software invention qualifies the various tests laid out by US Supreme court.

Accordingly, the US is a destination of choice for India’s huge IT/ software sector to file for patents. Not to forget, the ever-growing patent market of the USA has always bestowed a competent opportunity to the patentee to exploit patent rights to their advantage.

In-house captives in India

 It is also very interesting to know that many multi-national corporations including American ones have been using their technology centers in India to add to their patent portfolio worldwide. These companies use the technology staff at their Indian centers to create solutions and directly file application for patents outside India, especially the US to protect their innovation. Some of the notable companies, which have been actively working on such model in India, are General Electric (US), Honeywell (US), Accenture (US), Google Inc. (US) and Motorola (US). Below are the data showing the number of patents granted and the number of published patent applications at the USPTO (where one or more inventors have Indian nationality) for these companies in last 5 years.

Table showing the number of patents granted and published patent applications with at least one inventor with Indian nationality; *Source: WIPS

First Filing outside India and the Implications of Section 39 of the Indian Patents Act

According to provisions in Indian Patent Laws, the Indian statutes do not provide unrestricted rights for directly foreign filing patents outside India. According to Section 39 of the Indian Patents Act,

(1) No person resident in India shall, except under the authority of a written permit sought in the manner prescribed and granted by or on behalf of the Controller, make or cause to be made any application outside India for the grant of a patent for an invention unless—

(a) an application for a patent for the same invention has been made in India, not less than six weeks before the application outside India; and

(b) either no direction has been given under sub-section (1) of section 35 in relation to the application in India, or all such directions have been revoked.

(2) The Controller shall dispose of every such application within such period as may be prescribed:
 Provided that if the invention is relevant for defence purpose or atomic energy, the Controller shall not grant permit without the prior consent of the Central Government.

(3) This section shall not apply in relation to an invention for which an application for protection has first been filed in a country outside India by a person resident outside India.

Therefore, the provisions of Section 39 require applicants to obtain a foreign filing license or first file their patent in India. This forces multinational companies operating in India having captive units in India to be cautious when a patent application for protection of an invention is first made directly outside India. The provisions require them to obtain a foreign filing license (FFL) from the Indian Patent Office or first file their application in India. Since filing Indian priority application could lead to complications in foreign prosecution, most often these companies would find the provisions of applying for a foreign filing license as more practical and appealing.

Repercussions of not following Section 39

In case an applicant does not follow provisions of Section 39, he/she may face the penal provisions under Section 40, which could lead to revocation of their corresponding patent in India. Below is the quoted section from the Indian Patents Act:

Section 40

Without prejudice to the provisions contained in Chapter XX, if in respect of an application for a patent any person … makes or causes to be made an application for grant of a patent outside India in contravention of Section 39 the application for patent under this Act shall be deemed to have been abandoned and the patent granted, if any, shall be liable to be revoked under Section 64.

According to Section 40, if a person has not complied with the requirements under Section 39, then any corresponding Indian patent application shall be treated as abandoned. In case, a patent has already been granted, it is liable to be revoked under Section 64[vi].

In addition to the above, there are penal provisions of serious nature when the requirements under Section 39 are contravened by a person. As stated, Section 118 recites as follows:

Section 118

If any person ….. makes or causes to be made an application for the grant of a patent in contravention of section 39 he shall be punishable with imprisonment for a term which may extend to two years, or with fine, or with both.

The provisions clearly state that if a person has contravened the directions under Section 39, he shall be punishable with imprisonment for a period extendible to TWO years, or fine, or both. The Indian system is crucial and secretive about inventions developed within the Indian Territory unless the invention passes the test of secrecy. If you are a company, it is better to obtain a license than have a punitive action taken against the management later on.

Obtaining FFL in case of directly filing a PCT application:

One of the questions that are also commonly asked is the applicability of Section 39, in case the applicant is desirous to file the first application as a PCT application. This question was discussed in famous case law named Puneet Kaushik V. UOI[vii].

In this case, the applicant had applied for PCT (India as the Receiving Office) and submitted an application for foreign filing license under Section 39 simultaneously at the Indian Patent Office. Among the two, the application for the license was accepted and taken on record by the IPO whereas the PCT application was not. However, the patent office later accepted the PCT application and gave a later filing date after grant of the foreign filing license to the applicant.

The applicant filed an appeal at the Delhi High Court demanding the PCT application to be accorded the same date as the application date for obtaining foreign filing license. The applicant argued that since the PCT has been filed with India as Receiving office[viii], there should not be any need of obtaining the foreign filing license at the first place. Therefore, the PCT application should be accorded the same date as the foreign filing license application date.

But it was argued by the IPO that even if the PCT application is filed at the Indian Patent Office with India as the receiving office, the application is forwarded to WIPO which is an International body and the applicant is required to wait for the issuance of foreign filing license. The permission to file patent application outside India is generally granted by the IPO within 21 days from the date of such request by the applicant. To this, the court held:

“The legal consequences flowing from a PCT application filed in the Indian Patent office are that of an application filed outside India. The Receiving office is only empowered to assure that a PCT application is in conformity with all the prescribed documents under the treaty. All further processing is done by the International Bureau and the International Searching Authority.”

Therefore, it is essential on part of the applicant to understand and be cautious while filing a first application as a PCT application to avoid rather burdensome implications of Section 40 and Section 118.

Obtaining FFL in case the invention is conceived outside India:

A question that is asked commonly is the applicability of Section 39 to inventions conceived by Indian residents outside India. Interestingly, in Section 39, the sub-section 3 states that if the application for patent has been filed outside India by a person resident outside India, the requirements of sub-section 1 shall not apply. It is to say that if an inventor is of Indian origin and residing at the US, has invented his invention in the United States, and has filed a patent application at the USPTO, then the provisions of Section 39(3) preclude them from seeking permission from the Indian Patent Office. Accordingly, FFL from India is not required for inventors working for companies abroad for inventions conceived out of India.

Obtaining FFL in case the inventor (s) is/are Indian residents, the applicant is non-Indian & the application is made outside India:

There are situations when an inventor is an Indian resident but has assigned his invention rights to a foreign entity. Global MNCs have their R & D departments at multiple locations across the globe. They are often desirous to file application for a patent in their home country when the inventions are developed outside home country, say in India. The question is whether in such cases, the Indian resident inventor or the assignee is liable for obtaining foreign filing license from the IPO?

It should be noted that the provisions of Section 39 require any person making or causing to make an application outside India to obtain permission for routing the invention outside India in order to apply for a patent. The foreign assignee might argue that since he/she is not resident in India, the provisions of Section 39 do not apply, and he might be correct.

However, such assignment does not devolve the duty of the inventor as he/she could be construed as the one causing the application to be made outside India by way of assignment.

Therefore, the inventor should insist the assignee or apply himself and get the FFL before the patent application is filed outside India.

Obtaining FFL in case of joint research between Indian resident inventors and non-resident inventors:

An invention is often a result of joint research between Indian resident inventors and non-resident inventors. An inventor residing at India and an inventor residing at say Singapore may develop an innovative product working at R & D department of a company located at India and Singapore respectively. It may happen that the applicant company foresees better market opportunities at United States and is keen in obtaining exclusive patent rights in US rather than in India or Singapore. The applicant company should then file a patent application at the USPTO. In such situations, the question is whether the India residing inventor must seek permission from the IPO before the patent application is filed at the USPTO?

The answer to this question is similar to the answer in case of assignment. That is even though the assignee might be non-resident of India, the Indian inventor could still be considered to be causing an application to be made outside India without following the due process of law. Accordingly, the inventor should insist the assignee or apply himself and get the FFL before the patent application is filed outside India.

Patent rights are territorial in nature and every country follows its own procedure for protection of rights. It is essential to understand the practice followed. As described above, non-compliance of laws may lead to penal consequences and revocation of patents in some countries. Even though, Indian applicants can find good business opportunities by obtaining patent rights for their inventions outside India, they should be cautious of the foreign filing restrictions as some of the restrictions are of punitive nature. Similarly, captives of various multinational companies may see a lot of benefits in using the Indian technical workforce to add to their global patent portfolio, but they should not forget to follow proper compliance when first filing their applications outside India.

If there are specific queries, please write to us at mail@gip-india.in .


Figure 2 for aticle
Figure 2 for aticle

Decoding Patent Marking Provisions in India

Decoding Patent Marking Provisions in India

By Kshitij Malhotra, Partner and Garima Rai, Senior Associate


With the fast paced growth in technologies in today’s world, patents are considered as essential for corporations as well as individual inventors or applicants.

It is known that the general purpose of a patent is to provide exclusive right to the patent owner for manufacturing and selling a patented product. Going by the definition, patent marking relates to making the general public aware of the fact that a product has been patented or a patent has been applied for the product.

When a person applies for a patent or has been granted a patent, it becomes very important to protect its rights on a product, as well as the rights of the competitor to know that a patent exists on that product by making the public aware that a patent has been granted on it.

Provisions of Indian Patents Act, 1970

According to Indian Patents Act[i], a person who has been granted a patent may give notice to the public that the same is patented, either by fixing thereon the word “patent” or the abbreviation “pat.”, together with the number of the patent, or when, from the character of the article, this cannot be done, by fixing to it, or to the package wherein one or more of them is contained, a label containing a like notice.

If a patent is yet to be granted, the patentee may use words such as “patent pending” or “patent applied for”.

Patent marking not only creates awareness about the patented product to the general public but also constructively informs the infringer who has a similar product and is involved in the act of infringing on patentee’s product.

According to Section 111[ii] of the Indian Patents Act, in the event of failure to mark, the patentee cannot claim for any damages in any action for infringement, except on proof that the infringer was notified of the infringement and continued to infringe thereafter, in which event damages may be recovered only for infringement occurring after such notice. In other words, marking a product being covered by a patent is essential when it comes to obtaining compensation from potential infringers.

However, there are chances of innocent infringement when the infringer is not aware of the patent. In such cases, patent marking plays a major role. If a patent is marked along with the patent number or with the patent application number quoting “patent applied for”, then there arises very less chance for infringement.

Summarizing the purpose of Patent Marking as below:

  1. Helping to avoid innocent infringement;
  2. Encouraging patentees to give notice to the public that the article is patented; and
  3. Aiding the public to identify whether an article is patented.

Types of Patent Marking

To satisfy the marking requirements, a patented article must be marked either with the word “patent” or the abbreviation “pat.,” together with the applicable patent number. Where an article is already on the market and a patent covering it is issued later, the patentee is required to update the mark to identify the patent number of each newly issued patent. There are basically two types of patent marking as explained below:

Physical Marking

Physical marking relates to physical printing of the patent application number or the patent number along with “patent applied for” or “patent” on the product. Such an example is provided in Fig. 1. There exists wide range of products which contain such marking of the patent number such as medicines, ointments, hair cleansers, mechanical devices etc.

There are situations when a patent is yet to be obtained for a patent application which has already been marked and product is sold in the market. Once, a patent is granted for such product, the patentee is required to amend the marking on its products by replacing the patent application number with the patent number.

However, it will be appreciated that updating physical marks in such situations can result in additional manufacturing costs, due to retooling of manufacturing processes or development of new product moulds to include new patent numbers on the products or to delete inapplicable ones. The magnitude of the additional costs is difficult to ascertain reliably given the lack of empirical data regarding the impacts of physical marking on manufacturing processes, but several public commenters noted that it is costly to make changes to a product.

Virtual Marking

In this era of versatile internet and easy access to information across the globe, if the patent information is put on respective websites, the public would certainly get the knowledge for existence of such patent. This introduced the concept of Virtual Marking. Virtual marking allows patent owners to effectively mark their products with a single “virtual patent marking” comprised of the word “Patent” (or “Pat.”) together with a URL address accessible to the public that associates the patented article with the number of the patent.  This benefits companies by not having to update moulds every time they are granted a patent for a product. An example of such virtual marking is provided in the adjacent Fig. 2.

Although, virtual marking holds high importance when compared to physical marking, Indian provisions are directed to stamping, engraving or impressing of patent application no. or the patent number on the product. The teachings of the Indian Patent Law are reticent on virtual marking. However, it is believed that with growing number of patent applications being filed at the Indian Patent Office and the growing number of patents being granted, the concept of virtual marking should be instigated as an alternative way to patent marking.

False Patent Marking

A patentee can mark his patented product with the patent number; however, there is a word of caution. There could be cases when a person who is not a patentee or does not own a patent, puts up a false patent number information marked on his product with the intention of earning benefits from such marking.

The Indian Patents Act[iii] puts a restriction to a person to false mark a product with a patent number when the product has actually not been patented. According to Section 120, if a person represents on his product that it has been “patented” in India or a “patent has been applied for”, the person is considered to be punishable with a fine of up to INR 100,000/- (~1500USD).


It is evident that the Patent Marking law has not mandated any duty on the patentee. However, if patentees diligently follow the law, patent marking can prove to be a good marketing and a quality source tool. It also satisfies the authenticity and genuineness of the product. India is growing in the field of innovation and technology and it is believed that strict implementation of such laws will certainly reduce infringement, thereby benefitting the common public.


End Notes:

[i] Explanation 2 in Section 120 as provided below

[ii] Section 111, The Patents Act 1970:

Restriction on power of court to grant damages or account of profits for infringement. –

(1) In a suit for infringement of patent, damages or an account of profits shall not be granted against the defendant who proves that at the date of the infringement he was not aware and had no reasonable grounds for believing that the patent existed.

Explanation. -A person shall not be deemed to have been aware or to have had reasonable grounds for believing that a patent exists by reason only of the application to an article of the word “patent”, “patented” or any word or words expressing or implying that a patent has been obtained for the article, unless the number of the patent accompanies the word or words in question.

[iii] Section 120, The Patents Act 1970:


Unauthorised claim of patent rights. -If any person falsely represents that any article sold by him is patented in India or is the subject of an application for a patent in India, he shall be punishable with fine which may extend to [one lakh rupees].

Explanation 1.-For the purposes of this section, a person shall be deemed to represent-

(a) that an article is patented in India if there is stamped, engraved or impressed on, or otherwise applied to, the article the word “patent” or “patented” or some other word expressing or implying that a patent for the article has been obtained in India;

(b) that an article is the subject of an application for a patent in India, if there are stamped, engraved or impressed on, or otherwise applied to, the article the words “patent applied for”, “patent pending”, or some other words implying that an application for a patent for the article has been made in India.

Explanation 2.-The use of words “patent”, “patented”, “patent applied for”, “patent pending” or other words expressing or implying that an article is patented or that a patent has been applied for shall be deemed to refer to a patent in force in India, or to a pending application for a patent in India, as the case may be, unless there is an accompanying indication that the patent has been obtained or applied for in any country outside India.



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Iconic Taj Mahal Palace Hotel to be the first Trademarked Monument of the Country

Iconic Taj Mahal Palace Hotel to be the first trademarked monument of the country

By Kshitij Malhotra, Partner and Moumita Roy, Associate

A first for the Mumbai skyline and a first for India, the iconic hotel building and the signature dome of The Taj Mahal Palace, Mumbai acquire an image trademark for its defining structure

The recent changes introduced in trademark law in India are auguring well for registration of unconventional marks. One of the recent registrations that has made the news is that of Exterior Image of “Taj Mahal Palace and Tower”. With the registration of the opulent palace as a trademark, the trend of Indian trademark has set into a broader direction. 

The Taj Mahal Palace is the first monument of India, which has been recognized as a trademarked building. Just to give the historical context, the hotel started working in 1903. At that time it was marked as first ever harbor landmark of the country. The location of the building is an alluring site facing the Gateway of India. The majestic location gives an opportunity to view the beauty of Arabian Sea. The luxury hotel is recognized as the world leader in hospitality and has a rich history of hosting kings, dignitaries and eminent personalities from across the world. Unfortunately, the hotel was also one of the sites of terrorist attack that shook Mumbai in 2008.

Commercially the exterior of the monument is a source indicator distinguishing the famous Taj Mahal Palace. The monument and its red tiled Florentine Gothic dome which crowns the Indo Saracenic arches and architraves tombs are leading the sky of Mumbai since more than a century and are acting as the “trig point” for the Indian navy. The view is the inseparable identity of the city itself.

Interestingly, the Taj Mahal Hotel is owned by THE INDIAN HOTELS COMPANY LIMITED. Apparently, after completion of its successful 114 years of operation, the hotel owners decided to file a trademark application for the registration of the building as a trademark.

The application for registration was filed by IHC on 13/10/2016, vide its application no 3386351. The application was made in class 43 for services of providing food and drink; temporary accommodation. The mark was applied claiming use since 11/02/1903. The registration certificate no: 1555165 was issued on 17th may, 2017 and the registration is valid till 13/10/2026. Apparently, there is another application with application No: 3387665 dated: 14/10/2016 for Taj Mahal Palace (image) which is still pending.

It will be fair to say that the registration category of Taj Mahal Hotel is more of a Trade Dress. Interestingly, the registration not only will offer protection from unauthorized reproduction of the image of the hotel, but also should bring the applicant the exclusive right to use its extraordinary building design in hotel business. This could mean that architecture of the building cannot be copied by any hotels or restaurants engaged in providing similar services.

Also interestingly, the registration of the mark brings out the apparent shift in mentality of the trademark offices in India towards unconventional marks. Historically, the trademark office has been conservative in registering such unconventional marks. Registration of this mark is a paradigm shift. It should be remembered that the new trademark rules initiated in March of this year has set a procedure for registration of unconventional marks, such as color mark, sound mark, shape of goods marks etc. The registration of this mark would act as a basis for registering many such similar marks and should encourage the trademark applicants to venture into registering valuable IPs in form of such marks lying with them.

Revised CRI Guidelines by Indian Patent Office

Revised CRI Guidelines by Indian Patent Office

By Kshitij Malhotra, Partner and Garima Rai, Senior Associate

On 30th June 2017, the Indian Patent Office introduced a fresh set of CRI Guidelines[i] for examination of Computer Related Inventions (CRI). Notably, this is the third set of guidelines issued by the Indian Patent Office in last three years. The previous two versions were introduced on 21st August 2015 and 19th February 2016 respectively. In the newly introduced guidelines, IPO has introduced changes in comparison to the earlier versions for examination of computer related inventions.

Determination of excluded Subject Matter:

It has been a matter of debate for patentability of Computer Related inventions in India. The issue of patentability arises when an invention involves computer software. In their previous guidelines of Feb, 2016, the Patent Office had mandated the presence of novel hardware to claim protection for the computer software involved therein. This was a complete reversal of guidelines of Aug 2015 in which the Patent Office has suggested that computer programs are patent allowable subject matter, and the allowability of a particular software program would depend on whether there is any technical effect of the software program claimed.

In the new guidelines, the requirement of novel hardware has been eliminated from the patentability requirements. In the new guidelines, although it is clearly mentioned that the Section 3(k)[ii] excludes mathematical methods or business methods or computer programme per se or algorithms from patentability, the patent office has emphasized that invention should be examined and judged to its entirety or as a whole.

Emphasis has been added to the underlying substance of the invention and not in the manner of its presentation. The guidelines also specifically describe the various possible ways of presentation of computer related inventions such as method/process, apparatus/system/device, computer program product/ computer readable medium. The technical advancement over the existing prior arts must be judged keeping the claimed invention as a whole and not into its way of presentation.

Accordingly, these guidelines are little closer to the Aug 2015 guidelines than the Feb 2016 guidelines. Unlike the Aug 2015 guidelines, the new guidelines are bereft of any examples or any concrete criteria on evaluation of patentability of software patents.

The present guidelines should prove to be beneficial and hopeful for applicants with inventions falling in the vicinity of computer related inventions. However, the biggest disappointment from these guidelines is the absence of any case examples or listing on specific criteria to judge whether the invention’s subject matter is patent allowable? The absence of specific criteria would encourage disagreement between the Patent Office and patent applicant. More likely, it will result in higher discretion on part of the Patent Office, which could be unhealthy for the intellectual property rights ecosystem.


[i] http://www.ipindia.nic.in/writereaddata/Portal/Images/pdf/Revised__Guidelines_for_Examination_of_Computer-related_Inventions_CRI__.pdf

[ii] Section 3: What are not inventions. -The following are not inventions within the meaning of this Act,-

            (k) a mathematical or business method or a computer programme per se or algorithms;



 By Kshitij Malhotra, Partner and Moumita Roy, Associate

“You no longer search for something. You Google it.”

Google, the internet search portal, is a big name throughout the world. Infringement of the brand value of Google, not only is threatening but also critical in the internet space. Therefore, the recent Delhi High Court Decision relating to registration of conflicting .in registry of search portal googlee.in is such an interesting topic of discussion.

Back ground of the dispute:

In this interesting case, way back in 2007, an ingenious defendant had managed to secure registration of a domain named www.googlee.in and incredibly operated the website for almost 4 years. After use of the website came into notice of the world famous brand Google,  and they immediately launched a complained at the National Internet Exchange of India, the watchdog of internet space in India. As per the available IN Registry dispute resolution mechanism, any complaint has to be referred to the arbitrator, and accordingly an arbitrator was appointed to look into this case.

Figure 1, Figure 2 are the comparative screen shorts of the web pages of Googlee (on left) and Google (on right).

In complaint to the IN registry, Google contended that they are a well-established brand worldwide since 1997. They added the following contentions:

  1. That the disputed domain name is visually conceptually and substantially identical to their domain, and
  2. The use of both the domains is as search engine.

The arbitrator awarded in favour of the Google and found a proprietary right of the complainant over the domain name googlee.in. The arbitrator ordered cancellation of the disputed domain with such direction to the registry. The infringer appealed.

The Proceedings at Delhi High Court:  

In the appeal filed before Delhi High Court, the appellant, without having many choices to defend, tried to challenge the arbitrator award on technical grounds on which the arbitrator reward was granted rather than denying infringement of domain name. The court rejected the grounds taken by the appellant.

Interestingly, the court pointed out that the appellant/ petitioner had failed to defend why have he selected a domain name similar to world’s most popular search engine. Further, the court pointed out the intentional adoption of similar domain names. The court said that:

“It was clear that the adoption of such a name is not a co incidents but intentional.”

The court pursued the decision of the arbitrator and rejected the defence of the petitioner mentioning the conflicting search portal as a slavish imitation.

Conclusion: The advocate representing the brand Google has rightly gauged the well-known ness of the Google in terms of a search engine. He said “You no longer search for something. You Google it”. The search verb has metamorphosed in web English into Google. Moreover, Google is a recognised well known mark in India since 2011.

It is interesting to know that in India, domain names are recognized as trademarks. In a similar case, Rediff Communication Limited vs. Cyberbooth on April, 1999, the High Court of Bombay decided that:

“Internet domain names are of importance and can be a valuable corporate asset. A domain name is more than an Internet address and is entitled to the equal protection as trade mark. With the advancement and progress in the technology, the services rendered in the Internet site have also come to be recognised and accepted and are being given protection so as to protect such provider of service from passing off the services rendered by others as his services.”

In any case, the incorporation of a domain by just adding mere ‘e’ with the name of such a mammoth brand can only is caused by the ignorance of the amount of legal protection behind the brands. It is alarming to the legal system. The true sense of brand value, the meaning of trade mark protection should be taught to the trading class explicitly. The High Court decision is a steady stride in desired direction which is worth acclamation.


The Arbitration Award

The High Court of Delhi Order.

Important points in patent rules, 2016
Possible options for foreign entities to use Expedited Examination in India

Expediting Patent Examination in India, Patent Procedure in India


By Kshitij Malhotra, Partner and Garima Rai, Senior Associate


Important points in patent rules, 2016Patent rights have always played a vital role in encouraging innovations across the globe. Patent Rights not only provide exclusive right to the patentee for manufacturing and selling the patented product or process, they also provide the said exclusive right for a substantial period of 20 years from the date of filing.

One of the problems in the patent ecosystem in India is the delay in grant of patents. Many patent applicants complain that patent grant process in India takes a long time. On the other hand, unlike US, there is no patent term extension system in India, where a patent applicant could be compensated for the procrastination of the patent office. Many believe, this considerably deprives the innovators from enjoying their patent rights to the fullest.




Any inventor who files a patent application wishes an early examination and faster prosecution of the patent application. A quick grant of patent is encouraging; it is an imperative. This is especially true in today’s day and age when technology moves at a high pace. By the time a technology is developed and commercialized these days, the tech community most often embraces a newer and more efficient alternative.

Such faster prosecution of patents requires a profound working of the Patent Office and active compliance from the patent applicants. It is a team effort of the entire patenting ecosystem, and sadly, it is not the case in India.

Presently, there is a huge backlog of pending patent applications at the Indian Patent Offices. For example, according to some recent reports, there are about 200,000 patent applications which are lying pending with the IPOs[i].

Accordingly, many plans by the government of India to encourage innovation and increase manufacturing in India is being threatened due to such delayed examination of patent applications. Companies who invest a large amount of money in research and development are losing on their opportunities to capitalize, and are unable to enjoy the patent rights to the fullest because of the delay at the Patent Office.

The problem of delay of grant of patents is so grave that even patent applicants have started to take the patent offices to courts. In a recent case[ii] at the Delhi High Court, Japanese company, Nitto Denko Corporation, filed a suit against the patent office for delay in grant of their patent.

In this case, the court had set up a task committee to address the issue of pendency of patent applications at the IPO. The committee reported in their final report that the issue of pendency could be resolved by proactive efforts from the patent office not only limited to increasing manpower i.e. number of patent examiners.

As a consequence of this case, on 16 May 2016, the IPO published new patent amendment rules to address the issue of reducing the backlog of patent applications and expediting the examination process at IPO.

In order to address the backlog problem, the Indian Patent Office has launched many new initiatives directed at faster examination of patent applications. According to some reports, the plan of patent office is to work towards reducing the grant period to 18 months by the year 2018[iii].

This article focuses on explaining some of the ways in which patent grant could be expedited in India. At first, this article includes a discussion on practical ways using which the applicants can expedite the grant of their patent rights in India. Thereafter, the article looks into the newly introduced expedited examination system in India.


Usually, patent applications are taken up for examination in the order of Request for Examination at the Indian Patent Office. In India, a Request for Examination or RFE has to be mandatorily filed within 48 months from the earliest priority date for the patent office to take it for examination.

It has been observed in many cases that clients wait until the due date for filing Request for Examination arrives. This could be understandable from client’s perspective, as they might want to take some more time to understand the patentability of their patent application by looking at the international search reports, international preliminary examination reports or examination in other patent offices. Delaying examination request in India could provide some extra time to the clients without incurring extra costs[iv]. However, one of the direct consequences of such a wait is that it delays the grant of a patent even further.

Nevertheless, once a patent application is taken for examination by an Indian examiner, it is inevitable that the patent application will be granted/ refused in another 6 months[v] discounting any voluntary extensions if filed by the patent applicant. Therefore, it becomes all the more important to focus on how the time period from the filing of the patent to the issuance of office action could be reduced.

Contemplating the above, if there isn’t any reason for the otherwise, it is always advisable for the applicant to file the Request for Examination simultaneously at the time of filing the patent application which will queue the patent application in the list of applications being examined. On similar lines it is also suggested to foreign applicants to choose Paris Convention route over PCT national phase route and file the request for examination simultaneously while strategizing their filings in India. The logic is simple, the earlier the RFE date, the earlier the office action issuance date.

Although the above strategy might lead to some extra costs for your patent portfolio initially, the recent amendments at the patent office might allow an applicant to recover major portion of this cost if they think that their patent is not worth pursuing.

According to recent amendments, a patent applicant is allowed to withdraw their request for examination at any time before office action issuance, and claim a refund of fees if the request for examination is withdrawal. According to Rule 7(4A) of Patent Rules 2016, upon withdrawal of an application for which a Request for Examination was filed and First Examination Report (Office action) has not been issued, the 90% of the fee paid for Request for Examination may be refunded to the applicant. This provision seems to be inserted in order to encourage applicants to withdraw their applications if they do not see a merit in pursuing patent rights in India.

Another important aspect in expediting patent grant is that once an office action is issued, the endeavor of the patent applicant should be to respond to the office actions at the earliest. The amended Indian patent procedures require the applicant to respond within 6 months from the issuance of the first office action. More specifically, Section 21 of the Indian Patents Act requires that on issuance of the office action, the applicant has to be comply with all regularities within 6 months of such issuance. Therefore, a late response, say in the sixth month, might leave very less amount of time for the applicant to meet any further objections issued by the patent examiner. 

Moreover, in light of the aforesaid, it also makes a lot of sense for the applicants to make sure that all the procedural formalities are duly complete and all the required documents are on record before the examination of the application. The logic is that the more the informalities there are in a submitted application, the more time it will take to traverse the objections/ rejections issued by the examiner.

For example, the applicant or their agents should be cautious of requirements under Section 8 of the Indian Patents Act also called as Form 3 requirements. It has been noted that many times timely submission of the foreign filing particulars lessens down the number of objections in the First Examination Report, or might prevent some trivial office action issuance.

Similarly, the applicants should also take note of submitting the Power of Attorney and the Proof of Right of the applicant within the prescribed deadline. This further smoothens the examination process and would reduce the chances of unnecessary objections which could delay the grant process.


Recently, in the newly amended Patent Rules 2016[vi] introduced by the Indian Patent Office, considerable emphasis has been given to establishing an expedited examination regime. Among the several benefits, which include reduction in official fees, there are provisions regarding filing expedited examination in which the application is supposed to be taken out of the normal queue and examined.

Although these provisions have been directly proposed for start up companies, interestingly, non-start up companies also stand to gain from these provisions. Especially, companies and inventors, who have filed a corresponding PCT application with India as the ISA or IPEA, could also use this route to expedite the examination of their patent applications. Initial trends are showing that the patent office is issuing office action within 3-4 months of submitting the request for expedited examination. The procedures suggest a patent grant within a time frame of 12-15 months of submitting such expedited request.

According to the newly amended Patent Rules, 2016, the following category of applicants can use this expedited examination route –

  1. A start-up company[vii] as defined under norms laid by the government; or

  2. A patent applicant which has selected India as the International Searching Authority in the PCT application corresponding to the Indian applicant.

The newly amended patent rules also allow applicants who have already filed the Request for Examination (RFE), for converting the already filed RFE to an expedited one by paying the balance fee. The condition being is the applicant must satisfy the criteria mentioned above.



One of the questions that arises out of the newly introduced provisions is as to how can foreign entities benefit from the expedited examination measures taken by the Indian Patent Office.

Possible options for foreign entities to use Expedited Examination in IndiaIt is known to many that there are many foreign companies who own Indian subsidiaries established in India. Some of these companies are into Research and Development activities, especially localizing foreign products for the Indian markets. It is very straight forward that such companies have the option of filing patents for their locally developed inventions and using the expedited examination route for expediting their patent grants in India. What they will need to do is that they will have to submit a corresponding PCT application and designate IPO as ISA or IPEA in the said PCT application. The process though will be little costly but is practically possible.

Another strategy, although little complicated, that foreign companies could use is to either assign their inventions to their Indian subsidiaries authorizing them to file their Indian patent application or designate them as co-applicant in their Indian patent application. However, simultaneously in such cases, the foreign applicant has to ensure that a corresponding PCT application is also on record with India as designated ISA or IPEA.

It will be appreciated that although this strategy has limited application, it could be useful in certain cases where the Indian patent is so critical for a company that it could undertake the complex activities for such assignment or co-ownership, as the case may be.

Another question, which comes to the mind, is that can a foreign start-up company use the expedited examination route? In other words, can a foreign start-up company qualify the definition of start-up in Rule 2(fb) of the Patent Rules, 2016 as amended?

According to the said rule, a start-up Company is an entity which:-

  1. is not more than 5 years old, and
  2. does not have an annual turnover of twenty five crores of Indian rupees, and
  3. is involved in research and innovation.

According to explanation adduced to Rule 2(fb), an entity is defined as a private limited company as defined under the Indian Companies Act, or a registered partnership firm registered under section 59 of the Partnership Act, 1932 or a limited liability partnership under the Limited Liability Partnership Act, 2002.

An immediate question that comes to the mind is that whether a company registered outside India is excluded under the criteria? Although there is a lack of certainty in the enacted rules, the answer is most likely, not. There are multiple reasons for such an inference.   

Firstly, it should be noted that the enacted rule 2 (fb) only derives equivalence when it comes to defining companies, while it points out to absolute criteria for registration when it comes to Partnerships or LLPs. In other words, the term “entity” in the said rule is equated to a private company in case of companies, while for partnerships and LLPs the term “entity” means ones that are “registered” under the Indian Partnership and LLP Acts. If the rule makers wanted to clearly exclude private companies established outside India they would have clearly required registration in India, just like they have done in case of partnerships and LLPs.

If there is any doubt about to the aforesaid argument, then the attention is also drawn to prescribed Form 28[viii] under the Patent Rules, 2016. The Form 28 clearly requires foreign companies to provide relevant documents in column 2 (ii)(b).

Nevertheless, it has been observed that many applicants filed the Request for Expedited Examination last year 2016. It was noted that Examination Report was issued within 2.5 months[ix] from the date of filing of the Request for Examination in one of the cases. In another case, the Examination Report was issued in about one month[x] from the date of filing of the Request for Examination.

It is anticipated that in coming times the expedited request for examination could become a viable alternative for expediting the grant of patents in India.




[ii] http://delhihighcourt.nic.in/dhcqrydisp_O.asp?pn=202118&yr=2014  

[iii] http://www.thehindu.com/business/Industry/now-a-tatkal-system-to-expedite-patent-examination/article8612218.ece  

[iv] The average fees for completing request for examination formality would be around USD 500/-

[v]  The recent amendments have reduced the acceptance period under Section 21 of Indian Patents Act to 6 months from 12 months. This time period could be extended another 3 months.

[vi] http://www.ipindia.nic.in/writereaddata/Portal/IPORule/1_42_1_Patent__Amendment_Rules_2016_16May2016.pdf   

[vii] See rule 2 (fb) of Patent Rules, 2016 as annexed



[viii] http://www.ipindia.nic.in/writereaddata/Portal/IPOFormUpload/1_40_1/form-28.pdf  

[ix] See prosecution history of Indian Patent Application No. – 201631028557

[x] See prosecution history of Indian Patent Application No. – 201611031492




Annexure 1


In these rules, unless the context otherwise requires,-

(fb) ―Startup means an entity, where-

(i) more than five years have not lapsed from the date of its incorporation or registration;

(ii) the turnover for any of the financial years, out of the aforementioned five years, did not exceed rupees twenty-five crores; and

(iii) it is working towards innovation, development, deployment or commercialization of new products, processes or services driven by technology or intellectual property:

Provided that any such entity formed by splitting up or reconstruction of a business already in existence shall not be considered as a start-up. Provided further that the mere act of developing

a. products or services or processes which do not have potential for commercialization, or

b. undifferentiated products or services or processes, or

c. products or services or processes with no or limited incremental value for customers or workflow, would not be covered under this definition.

Explanation 1- An entity shall cease to be a start-up on completion of five years from the date of its incorporation/ or registration or if its turnover for any previous year exceeds rupees twenty-five crores.

Explanation 2- Entity means a private limited company (as defined in the Companies Act, 2013), or a registered partnership firm registered under section 59 of the Partnership Act, 1932 or a limited liability partnership under the Limited Liability Partnership Act, 2002.

Explanation 3- The term ―Turnover shall have the same meaning as defined in the Companies Act, 2013 (18 of 2013).

Explanation 4- An entity is considered to be working towards innovation, development, deployment or commercialization of new products, processes or services driven by technology or intellectual property if it aims to develop and commercialize a new product or service or process, or a significantly improved existing product or service or process that will create or add value for customers or workflow.

Explanation 5- The reference rates of foreign currency of the Reserve Bank of India shall prevail.