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Patent prosecution highway: A fast-track to patent examination.

Patent prosecution highway: A fast-track to patent examination.

 

A Bilateral Patent Prosecution Highway (PPH) pilot program has commenced between the Indian Patent Office (IPO) and the Japan Patent Office (JPO). The said programme would first be conducted between Indian and Japan on a pilot basis for a period of 3 years and the Offices has started accepting PPH requests from December 5, 2019. As the term ‘highway’ suggests, this programme is fundamentally a fast-track process for inventors to get their inventions examined in a quicker and easier way. As per the PPH programme, patent offices of participating countries have concurred that when a candidate gets a final decree from a first patent office that at least allows one claim, the same candidate may demand expedited examination of relevant claim(s) in a subsequent patent application pending in the second patent office. However, this is not the first time that a programme like this is being implemented. In July 2006, the first PPH programme to expedite the process of granting patents within the countries was commenced between USPTO (the United States Patent and Trademark Office) and JPO (Japan Patent Office).

The main intension of DIPP’s (Department of Industrial Policy and Promotion) behind accepting the proposal is not just too accelerate the examination of patents and reducing the heavy backlog that different patent registries in country face but also to improve the quality of search and examinations of different patent applications received.

The guidelines in this regard have been published on the website of Controller General of Patents, Design & Trade Marks. The said guidelines are issued to understand the procedures that applicants need to take to request accelerated examination. Under the said guidelines the concerned Applicant can request accelerated examination by a prescribed procedures including submission of relevant documents on an application which is filed with the Office of Later Examination (OLE) and satisfies the requirements describes in these guidelines under the PPH pilot program between IPO and JPO based on the application which is determined to be patentable by the Office of Earlier Examination (OEE). When filing a request for the PPH pilot program, an applicant must submit information in the prescribed Form presented in Chapter 5 of these guidelines, to the OLE. Following points are to be noted while submitting a request to IPO under the said PPH program:

  • The number of the requests for the PPH in IPO will be limited to 100 cases per year on first come first serve basis.
  • An applicant who has filed a patent application, either alone or jointly with any other applicant, shall not file more than 10 PPH requests to IPO per year and this number will be reviewed after March 31, 2020.
  • Both the OLE application on which PPH is requested and the OEE application(s) forming the basis of the PPH request shall have the same earliest date (whether this is a priority date or a filling date).
  • Request for assigning special status for expedited examination under the PPH is required to be filed online in prescribed form 5-1 under chapter 5 of the PPH guidelines.
  • An applicant/Authorized agent can file the request for expedited examination on Form 18A only after the request for assigning special status filed on form prescribed in chapter 5 is accepted by IPO. The decision on Acceptance/Rejection/Defect noticed shall be communicated to the Applicant/Authorized agent through email as well as message on e-filing portal.
  • In case of defects in form 5-1 the applicant will be provided opportunity to rectify the defects within 30 days from the issue of notification of defects by IPO.
  • Important documents which needs to be submitted in IPO (IPO as OLE) includes Copies of all office actions 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; Claim correspondence table.
  • Notwithstanding the above procedure, the timelines for filing a request for expedited examination shall be as prescribed under the Patents Rules, 2003.