India: An overview of Procedure Guidelines for Patent Prosecution Highway - SSRANA

India: An overview of Procedure Guidelines for Patent Prosecution Highway

December 7, 2019

By Lucy Rana and Renu Bala
The Patent Prosecution Highway (hereinafter referred to as ‘PPH’) is a framework where an application whose claims have been determined as patentable in the Office of First Filing (hereinafter referred to as ‘OFF’) is eligible to go through an expedited examination in the Office of Second Filing (hereinafter referred to as ‘OSF’) with a simpler procedure upon the request of the applicant.[1]

The Union Cabinet has recently approved the proposal for adoption of Patent Prosecution Highway programme (hereinafter referred to as ‘PPH’) by the Indian Patent Office (hereinafter referred to as ‘IPO’) under the Controller General of Patents, Designs & Trade Marks, India (hereinafter referred to as ‘CGPDTM’) in collaboration with Patent offices of various other countries and regions. India’s PPH programme will at first commence between the Japan patent Office (hereinafter referred to as ‘JPO’) and IPO for an initial period of three years. Further, the procedure guidelines were issued for addressing the procedures that are to be followed by applicants to request expedited examination through the Patent Prosecution Highway program between IPO and JPO. The bi-lateral PPH pilot programme consists of Normal PPH and PPH MOTTINAI[2].

  • Requirements

(a) Common Requirements

  • The procedure guidelines will be applicable on Patent applications initiated in the Office of the IPO or the JPO.
  • The number of the requests for the PPH in each Office will be respectively limited to 100 cases per year. The Office notifies the other Office via email as soon as the number of PPH requests reaches 100 cases and the same may be notified on the official websites of the offices.
  • Any applicant who has filed a patent application, either alone or jointly with another applicant, shall not file more than 10 PPH requests to IPO per year and this number will be reviewed after March 31, 2020.
  • Both the Office of Later Examination (hereinafter referred to as ‘OLE’) application on which PPH is requested and the Office of Earlier Examination (hereinafter referred to ‘OEE’) application(s) forming the basis of the PPH request shall have the same earliest date (whether this is a priority date or a filing date).
  • 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.
  • 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.
  • Substantive examination of the OLE application for which participation in the PPH is requested has not begun.

(b) Requirements for PPH request to the IPO

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

(c) Requirement for the PPH request to the JPO

  • Patent applications in all fields of technology can be filed.
  • Circumstances concerning an expedited examination must be explained by an applicant.
  • There shall not be any additional fee for filing PPH request in JPO.
  • Documents to be submitted

(a) Documents to be submitted in IPO

  • Copies of all office actions (which are relevant to substantial examination for patentability in the OEE) which were issued for the corresponding application by the OEE, translations of them and a self-certification of the translations.
  • Copies of all claims determined to be patentable/allowable by the OEE and translations of them and a self-certification of the translations.
  • Copies of references cited by the OEE examiner
  • The applicant requesting PPH must submit the claim correspondence table in the prescribed Form in 5-1 of Chapter 5 of the guidelines.

(b) Documents to be submitted in JPO

  • 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 and translations of them.
  • Copies of all claims determined to be patentable/allowable by the OEE and translations of them.
  • Copies of references cited by the OEE examiner.
  • Claim correspondence table.
  • Procedure for the expedited examination under the PPH pilot program

(a) Common Procedure

When the OLE decides that the application is entitled to the status for an expedited examination under the PPH upon receiving a request with the required documents.

(b) Procedure in IPO

The applicant will be notified about the defects if the request does not meet al requirements. The applicant has to submit the required documents to correct the defects in 30 days. The IPO will then assign special status to the application for expedited examination under the PPH. However, if the IPO issues a notification of not assigning special status for expedited examination, the applicant cannot request the PPH again.

(c) Procedure in JPO

The applicant will be notified about the defects if the request does not meet al requirements. The applicant will be given an opportunity to submit the required documents to correct the defects. The IPO will then assign special status to the application for expedited examination under the PPH. If the IPO issues a notification of not assigning special status for expedited examination, the applicant can request the PPH once again.

  • PPH: International Overview

There has been a significant growth in the patent applications received by Patent Offices across the world. The major catalyst in this growth is globalization in sectors like commerce, technology, education etc. Same patents being filed in multiple countries has forced patent offices to come together and work in cooperation with each other. Large number of pending patents and a bid to increasing productivity has encouraged Patent offices to work together by opting for the avenue of PPH. Here is a look at different bilateral and multi-party agreements on PPH in US, South Korea and Japan:

(a) Japan

Given below are the countries that share a PPH programme with Japan and the date of commencement:

IP 5 ASIA
Country Date of Commencement Country Date of Commencement
USPTO 4 Jan 2008 Saudi Arabia 1 Jan 2020
China 18 Oct 2011 Singapore 1 July 2009
EPO 29 Jan 2010 Philippines 12 March 2012
Korean IPO 1 July 2012 Taiwan 1 May 2020
  Israel 1 March 2012
  DGIP Indonesia 1 June 2013
  Thailand 1 Jan 2014
  Vietnam 1 April 2016
  Malaysia 1 Oct 2014
AMERICA EUROPE
Country Date of Commencement Country Date of Commencement
Canada 1 Oct 2009 United Kingdom IPO 1 July 2007
Mexico 1 July 2011 Germany DPMA 25 March 2008
Brazil 1 April 2017 Denmark DKPTO 1 July 2008
Chile 1 Aug 2017 Russia 1 June 2013
Colombia 1 Sept 2014 Austria 1 July 2009
Argentina 1 April 2017 Spain 1 Oct 2010
Peru 1 Nov 2017 Hungary 3 Aug 2009
Finland 20 April 2009
Sweden 1 June 2011
  Norway 1 Dec 2011
  Nordic Office 1 Oct 2011
  Iceland 1 Dec 2011
  Poland 31 Jan 2013
  Czech Republic 1 April 2015
  Portugal 18 April 2012
  Eurasian Patent 15 Feb 2013
  Romania 1 July 2015
  Estonia 6 July 2015
  Visegard Patent Institute 6 July 2018
  Turkey 1 April 2018
AFRICA OCEANIA
Country Date of Commencement Country Date of Commencement
Egypt PO 1 June 2015 Australia 6 Jan 2014
New zealand 6 July 2017

 

(b) USA

Given below are the countries that share a PPH programme with USA and the date of commencement:

Other Countries Commenced Valid Upto
USPTO – Argentina March 3, 2017 March 2, 2020
USPTO – Chile May 25, 2010 Oct 31, 2021
USPTO – Czech May 25, 2010 Extended indefinitely
USPTO – Brazil May 25, 2010 Nov 30, 2024
USPTO – Mexico May 25, 2010 June 30, 2020
USPTO – Nicaragua May 25, 2010 Extended indefinitely
USPTO – Philippines May 25, 2010 Extended indefinitely
USPTO – Taiwan May 25, 2010 Extended indefinitely

 

(c) South Korea

Given below are the countries that share a PPH programme with Japan and the date of commencement:

IP5 PPH Commenced
Korea Jan 6, 2014
Japan Jan 6, 2014
China Jan 6, 2014
US Jan 6, 2014
EPO Jan 6, 2014

 

Global PPH Commenced
Korea Jan 6, 2014
Japan Jan 6, 2014
US Jan 6, 2014
Canada Jan 6, 2014
Finland Jan 6, 2014
Russia Jan 6, 2014
UK Jan 6, 2014
Norway Jan 6, 2014
NORDIC (NPI) Jan 6, 2014
Denmark Jan 6, 2014
Sweden Jan 6, 2014
Portugal Jan 6, 2014
Iceland Jan 6, 2014
Australia Jan 6, 2014
Hungry Jan 6, 2014
Singapore Jan 6, 2014
Austria Jan 6, 2014
Spain Jan 6, 2014
Israel Jan 6, 2014
German Jan 6, 2014
Estonia Jan 6, 2014
Poland Jan 6, 2014
Colombia Jan 6, 2014
New Zealand Jan 6, 2014
VISEGRAD(VPI) Jan 6, 2014
Peru Jan 6, 2014

 

Other Countries Commenced
Mexico July 1, 2012
Philippines May 1, 2015
Taiwan July 1, 2015
Eurasian Patent Office Jan 1, 2019
Vietnam June 1, 2019
Saudi Arabia July 1, 2019

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