This article is written by Dipanithya Banerjee, working as an IP/Technology Analyst in National Research Development Corporation, Department of Scientific & Industrial Research (DSIR).
Table of Contents
Introduction
The major stages in the patenting process include searching for relevant prior art by the inventor, preparing the patent application, attending the patent prosecution and maintaining the patent if it is granted. Patent prosecution particularly means a process which majorly includes drafting and filing of a patent application followed by interaction and a technical negotiation between the applicant/ legal representative and the patent office for obtaining protection for an invention.
During patent prosecution, a patent examiner from the patent office evaluates the patent application as it has been filed by the applicant. While evaluating the said application, the patent examiner reviews the application, searches for the relevant prior art and references, confirms the patentability of the invention and approves the claims which leads to the grant of the patent. In cases, where the patent examiner raises objections and rejections against the patent application, the inventor or the legal representative/applicant is responsible for filing responses against the objections, strategise the amendments and arguments for maximizing impacts and provide and negotiate by giving technical analysis against the cited references and objections to demonstrate that the application has met the formal requirements of patentability. Thus, the entire process of patent prosecution is lengthy and it takes a considerable amount of time to receive an examination report.
Fast-tracking the examination of a patent application
Pursuant to the notification dated (17th September 2019) bearing G.S.R. 663 (E) issued by (Department of Promotion of Industry and Internal Trade), Government of India, the Indian Patent Office (IPO) has introduced new categories of applicants for availing the benefits of expedited examination. The new categories of applicants include small entities/ start-ups, female applicants, departments of Government, institutions owned or controlled by Government, Government companies, institutions wholly or substantially financed by the Government, applicants of those countries whose patent offices are in agreement/ arrangement with the IPO like the recent adoption of Patent Prosecution Highway (PPH) programme with Japan Patent Office (JPO). In addition, the category of applicant who has chosen India as an International Searching Authority (ISA) or as an International Preliminary Examining Authority (IPEA) in a corresponding PCT application qualifies for expedited examination as per the rules formulated under the Patent Amendment Rules, 2016.
In the case of expedited examination, the application is allotted to a queue different from the ordinary application. Hence, the application is allotted to an examiner for examination substantially sooner than the applications that have been queued for ordinary examination.
Patent Prosecution Highway (PPH)
PPH programme is an agreement between patent authorities to accelerate patent prosecution procedures. The agreements signed between the patent authorities allows exchange of information which results in less overlapping of searches and examination and offers a quality patent. Under PPH programme an applicant can opt for an expedited examination in a second office of filing only after the applicant receives an allowable claim from the first office of filing.
Figure 1: Procedure for Patent Prosecution Highway
The main documents that are required for applying for PPH are as follows:
- Copy of all the claims and its translation.
- Copy of the office actions established by the office of first filing along with the translations.
- Copy of all the cited documents.
- Claims correspondence table.
- In some cases, the PPH request form may be required (depends on the PPH guidelines of the participating offices).
Patent Co-operation Treaty-PPH Agreement (PCT-PPH)
PCT-PPH pilot programme commenced on January 29, 2010, to reduce examination backlogs by permitting each of the three offices of UPSTO, EPO and JPO (Trilateral Offices) to accelerate examinations of claims already found to be patentable by any of the trilateral offices in PCT international stage.
Earlier the PCT-PPH was limited to the Trilateral offices to obtain patents within a shorter duration, now PCT-PPH is referred to a number bilateral agreements that have been signed amongst patent offices to promote work sharing and enable patent applicants to request expedite the processing in the national phase of a PCT application, where patent examiners can use the work products like written opinion of the International Search Authority (ISA), written opinion of the International Preliminary Examination Authority (IPEA) or the inter preliminary examination report (IPER) issued within the framework of PCT from the other office(s). As a result, applicants requesting for examination under such agreements helps in acquisition of a patent at a very earlier stage. However, the grant of a patent remains under the control of national or regional offices.
Global Patent Prosecution Highway (GPPH) Pilot
GPPH was launched on 6th January, 2014 to ease the existing PCT-PPH system. Under GPPH, an applicant can request for expediting examination at any of the participating offices involved in the pilot programme if any of the applicant’s work products/claims have been accepted in any of the other participating offices involved in the pilot. The list of 26- participating offices under GPPH is given in Figure 2.
IP5 Patent Prosecution Highway (IP5 PPH) Pilot
The five IP offices (IP5) is the name given to the group of the five largest Intellectual Property offices in the world that have been setup to improve the efficiency of examination process worldwide. These five IP offices launched an IP5 Patent Prosecution Highway Pilot programme on 6th January 2014. The list of offices participating in the IP5 PPH Pilot is given in Table 1.
|
1. |
European Patent office (EPO) |
|
2. |
Japan patent Office (JPO) |
|
3. |
Korean Intellectual Property Office(KIPA) |
|
4. |
National Intellectual Property Administration of the People’s Republic of China (CNIPA) |
|
5. |
United States Patent and Trademark Office (USPTO) |
Table 1: IP5 Offices
Under the IP5 PPH Pilot programme a request by the applicant can be based either on the latest PCT work product (written opinion of ISA or IPER) issued by any of the IP5 offices as ISA or IPEA or on the national work product established during the processing of a national application or a PCT application that has entered the national phase before one of the IP5 offices, where this work product determines one or more claims to be patentable/ allowable.
Thus, both GPPH and IP5 PPH ran simultaneously for a period of 3 years from 2014 which has been further extended till 2020. The programmes are substantially identical, differing only with regard to the respective participating offices.
After the commencement of the GPPH and IP5 PPH programme in 2014, there has been an increase in the number of PPH requests which is indicated in Figure 3.
Figure 3: PPH requests (2011-2019)
Bilateral PPH programme between India and Japan
On 20th November 2019, the Union Cabinet of India approved the proposal for adoption of the PPH programme by IPO with patent offices of various other countries of interest or regions. As of now, the pilot PPH agreement has been signed between IPO and JPO for a period of three years which may be further extended. As per the notification, both the offices have been accepting PPH requests from December 5, 2019.
Under this programme, applicants can request for expedited examination by a prescribed procedure and submission of relevant documents on an application which is filed with Office of Later Examination and satisfies the requirement of the guidelines (Form 1 in Chapter-5) that have been framed under the agreement based on the application which is determined to be patentable by Office of Earlier Examination.
|
|
Office of Later Examination |
Office of First Examination |
|
PPH request to IPO |
IPO |
JPO |
|
PPH request to JPO |
JPO |
IPO |
Table 2: PPH request
Under this pilot programme, IPO may receive patent applications on certain specified technical fields only, namely, Electrical, Electronics, Computer Science, Information technology, Physics, Civil, Mechanical, Textiles, Automobiles and Metallurgy whereas JPO may receive patent applications in all field of technology.
The number of PPH requests in IPO is limited to 100 cases per year on first come first serve basis. Moreover, an applicant who has filed either alone or jointly with any other applicant shall not file more than 10 PPH requests to IPO per year. An applicant can file for request of expedited examination on form 18A only after the request for assigning special status filed on form mentioned in Chapter 5 is accepted by the IPO.
Introduction of the pilot PPH programme shall help in reduction of the time to dispose of patent applications, reduction in pendency of patent applications and improvement in quality search and examination of patent applications. The agreement will also give an opportunity to MSME’s/Startups to get accelerated examination of their applications in Japan and also promote applicants/ inventors of India and Japan to apply for and obtain patents in both the jurisdictions. The success of the pilot programme may encourage IPO to enter into more PPH programmes with patent authorities of other countries.
References
- Gazette Notification: G.S.R.663(E) issued by DPIIT, Ministry of Commerce & Industry
- https://www.uspto.gov/patents-getting-started/international-protection/patent-prosecution-highway-pph-fast-track
- https://www.jpo.go.jp/e/system/patent/shinsa/soki/pph/
- https://www.oliff.com/wp-content/uploads/2010/01/New-PCT-PPH-Pilot-Program.pdf
- https://www.wipo.int/pct/en/filing/pct_pph.html
- https://www.fiveipoffices.org/about
- https://www.jpo.go.jp/e/toppage/pph-portal/index.html
- http://www.ipindia.nic.in/writereaddata/Portal/News/591_1_PPH_Procedure_Guideline _combined_20191128_final.pdf
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