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.,
- the applicant should be a startup company or
- 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:
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.