This article is written by Triveni Singal, pursuing a Diploma in Intellectual Property, Media and Entertainment Laws from LawSikho.

Introduction

A patent is a statutory right conferred on an inventor by the Indian Patent Office to exploit his invention for 20 years from the priority date. The law regarding patents is guided by the Indian Patent Act, 1970.

Mandatory conditions to be fulfilled for grant of patent:

  • Novelty- The invention must not form a part of the state of the art that is, it must be new as on the date of applying. 
  • Inventive step- The invention either involves a facet that is technically advanced in contrast to the prevalent knowledge in the society or has an economic impact (or both) and that feature makes it non-obvious to a person skilled in the art
  • Industrial Applicability- It must be capable of being utilized industrially.

There are five genres of patent applications:

  1. A primary patent application- Section 7 of the Indian Patent Act, 1970
  2. Patent Cooperation Treaty (PCT) Application 
  3. Paris Convention Application
  4. Divisional Application- Section 16 of the Indian Patent Act, 1970
  5. Patents of Addition application- Section 54 of the Indian Patent Act, 1970

Patent rights are territorial in operation and must be acquired independently for each country in whose market the inventor desires to present his invention and establish a monopoly. But due to the torrential accumulation of patent applications and the consequential deferment in acquiring patents in India, many inventors opt to omit the Indian market.

As per the 2019 Annual IP Report, more than 50,000 patent applications were filed in 2018-2019, which is approximately a 6% increase compared to the previous year. The number of patent applications examined in 2018-19 is almost 25,000 more than what were examined in 2017-18. This can be attributed to the introduction of expedited or fast track examination of patent applications by the Indian Patent Office (IPO) in 2016 under Rule 24C of the Patent Rules, 2003.

Let’s study the concept in detail now.

When, who and how of an expedited examination

How to solicit- 

The applicants have to file the request in Form 18A along with the payment of a fee by electronic mode only, which is as follows:

  • Rs. 8000- For natural persons/start-ups
  • Rs. 25000- For small entities
  • Rs. 60000- For all others 

When to apply

Similar to a normal request for examination, the request for expedited procedure can also be made only after publication of the patent application, depending on whether an application for an early publication has been filed or not. If a request for publication has already been made then also the request for expedited examination can be made. 

But, if no request was made for publication, then it is mandatory to request for publication (Form 9) along with the application for expedited examination. 

However, the request must be made within 48 months from the date of priority or date of filing of the application whichever is earlier. 

Who can apply

As per the 2019 amendment to Rule 24C, the applicants who can request a fast-track review of their patent applications are:

  1. Those who indicated India as the competent International Searching Authority (ISA) or an International Preliminary Authority (IPEA) in their application, or
  2. Those who are a start-up or a small entity, or 
  3. Those who are female natural persons, or
  4. Those who are a department of the Government, or
  5. Those who are statutory institution owned/controlled by the Government, or
  6. Those who are a Government company (Section 2(45) of the Companies Act, 2013), or
  7. Those who are an institution wholly/substantially financed by the Government, or
  8. Those who belong to specially notified sectors by the Government, or
  9. Those who are eligible under a bilateral agreement between IPO and a foreign patent office. 

Patent Prosecution Highway (PPH)

It refers to a series of initiatives between patent offices of different jurisdictions for providing hastened patent prosecution procedures by sharing information amongst themselves. Thus, it gives each participating patent office to take advantage of the work previously done by the other patent office, with the target of minimizing examination workload and improving patent quality.

When claims in an application are approved by the first patent office, the applicant prays for a speedy examination of corresponding claims in an application pending in the second patent office. (Request filed in the second patent office) Currently, India is part of a bilateral PPH program with Japan for an initial period of three years that commenced on 21 November 2019. The acceptance of applications for the second year began on 7 December 2020. 

However, according to the guidelines, India will receive applications only in the technical fields of electrical, electronics, computer science, information technology, physics, civil, mechanical, textiles, automobiles, and metallurgy. There is no such limitation for PPH applications received by Japan. Such an application must be as per Rule 24(1)(j) of the Patent rules, 2003 when filed in India. However, the applicant can file a request for expedited examination on Form 18A only after the request (filed on Form 5.1 given in the PPH Guidelines) for assigning special status gets accepted by the IPO. IPO accepts only 100 applications per year on a first-come-first-serve basis.  If the application is filed in Japan, it must be accompanied by Form 5.2. 

The procedure for the expedited examination under this PPH program with India as the Office of Later Examination (OLE) and Japan as the Office of Early Examination (OEE) is as follows: 

  • The OLE first decides whether the application can be entitled to the status for an expedited examination under the PPH when it receives a petition with the documents as specified.
  • When the OLE decides that the plea is acceptable, the application is assigned a special status for an expedited examination under the PPH. If the request does not meet all the requirements set forth above, the applicant will be notified about the defects(which must be rectified within 30 days)
  • Thereafter, if the errors are corrected, the application is assigned a special status for expedited examination under the PPH or else, the IPO will issue the notification of not designated special rank(the applicant cannot demand for PPH again).

Procedure and timelines of an Expedited Examination

The applications entreating fast-track scrutiny are apportioned a queue distinct from that of a normal one, which already includes thousands of applications awaiting examination. Consequently, these applications will be assigned to an examiner for examination faster than the applications that had pleaded for a normal examination. Thus, in conclusion, an applicant opts to skip the regular queue of requests for inspection when he chooses the expedited procedure. 

A prayer for the standard examination can also be converted into an expedited one by submitting the required documents, Form 18A and the mandatory fee of Rs.4000 (for natural persons/start-ups), or Rs.15000 (for small entities), or Rs.40000 (for all others). The procedure of expedited evaluation along with the timelines can be comprehended from the given flowchart.

Conclusion

In its pilot year (2016), 135 requests were filed for expedited examination. The number rose to almost 615 in 2018-2019. 

Thus, it is evident that this move of the Government has been a welcome one. In 2016, using the expedited examination, a patent was granted in 113 days.

However, the scenario in the US and the European jurisdictions is far more advanced than in India. 

US 

In the US, patent applications can be fast-tracked by two schemes, namely, the Accelerated Examination and the Prioritized Examination. The former enables applicants to acquire a patent grant within 12 months.

Under the prioritized examination, (also referred to as Track One), the perusal process of newly filed utility and plant patent applications is expedited in a very fast and efficient manner. Track One enables patent applicants to obtain a final disposition for their patent applications within 12 months. 

An advantage of the Track One program is that it does not require a pre-search examination report for initiating the examination process as opposed to the Accelerated Examination process that requires submission of the ESD (Examination Support Document) at the time of filing.

EPO 

Applications filed in the EPO can be fast-tracked through their program named PACE (Program for Accelerated Prosecution of European Patent Applications). 

The accelerated prosecution involves two stages namely the ‘Accelerated Search’ and the ‘Accelerated Examination’ stage. Both the stages can be initiated via a written request.

PACE enables applicants to rapidly obtain an Extended Search Report (ESR) and search opinions under the European Patent Convention (EPC), a First Examination Report (FER), and/or any kind of communication under Rule 71(7) of the EPC. 

Nevertheless, though India still has a long way to go, the initial steps have been taken to strengthen our patent regime. 

References 


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