PATENT PROSECUTION HIGHWAY BETWEEN INDIA & JAPAN

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

By Kshitij Malhotra, Partner

INTRODUCTION

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.

ELIGIBILITY OF AN APPLICATION TO PARTICIPATE IN PPH

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.

  • COMMON CRITERIA FOR JPO & IPO/BOTH OFFICES FOR PPH

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.

  • INDIVIDUAL CRITERIA

 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.

DOCUMENTS TO BE SUBMITTED AT IPO UNDER 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.

LIMITATION OF THE PILOT PPH & CONCERNS REGARDING INDEPENDENT EXAMINATION

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.

CONCLUSION

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

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