Fast Tracking Patents in India through PPH Route-Patent (Amendment) Rules 2018

The previous laid down provisions of The Patent Amendment Rules, 2016 allowed an applicant to request for expedited examination only if the applicant falling under the category of a start-up(i.e., an entity, incorporated and registered in India), or, an application where India was indicated as the competent International Searching Authority (ISA) or elected as an International Preliminary Examination Authority (IPEA) in the corresponding International Application. At present, only Indian states can choose India as the ISA or IPEA, or, if an international application is filed in India as the Receiving Office(RO). The newly introduced provisions of The Draft Patent Amendments Rules, 2018 define new criteria for requesting expedited examination. The new criteria shall benefit foreign applicants wishing to seek early disposal of their patent applications.

The draft Rules (2018) introduces the addition of a new category of an applicant for expedited examination purposes:

sub-rule (1) of rule 24 C, clause (b) shall be substituted, as follows: –
b) ” that the applicant is a startup; orc) that the applicant is a small entity as defined in rule 2(fa) of the principal rules;) that in case of natural persons only, the applicant or at least one of the applicants is a female; ore) that the applicant is a government undertaking in accordance with clause (h) of subsection (1) of section 2 of the Act in case of an Indian applicant, or is a similar entity in case of a foreign applicant. Explanation:- The term ‘substantially financed’ in sub-clause (iv) of clause (h) of subsection (1) of section 2 of the Act shall have the same meaning as in the Explanation to sub-section (1) of section 14 of the Comptroller and Auditor-General’s (Duties, Powers and Conditions of Service) Act, 1971, or f) that the applicant is eligible under an arrangement for processing an international application pursuant to an agreement between Indian Patent Office with another participating patent office. Explanation: The patentability of patent applications filed under clause (f) above will be in accordance with the relevant provisions of the Act.”

Explanation: The patentability of patent applications filed under clause (f) above will be in accordance with the relevant provisions of the Act.”

In the above proposed Draft Rules, 2018, according to new provision (f) under sub-rule (1) of 24C, an Applicant shall be able to fast track patent application in India provided India has executed an agreement with the country of origin of the patent application in that regard a provided the patent application meets the patentability criteria under the Indian Patent Laws.

The advantage for Japanese Patent Application filed in India

Indian Patent Office (IPO) has been actively involved in the last 2 years with stakeholders to streamline the patent filing and disposal process which has resulted in a surge in issuance of examination reports as well as drastically reduced disposal times by the Indian Patent Office.

During numerous meeting starting from 2015, Japan has clearly communicated to the Indian counterparts of their interest in expanding business in India and bilateral cooperation towards acceleration of procedures for patent examination.In order to put this into action, the Japanese Patent Office (JPO) and the Department of Industrial Policy and Promotion (DIPP), India signed the Memorandum of Cooperation (MOC) between both offices in Tokyo on June 29, 2015.In response to Japan’s efforts to fortify cooperation so as to shorten the current wait time in the examination queue of the IPO, a Patent Prosecution Highway (PPH) program shall commence on a pilot basis in the first fiscal year of 2019 based on a PPH agreement signed with JPO.

To implement the same, The Patent Draft Amendment (Rules) 2018 introduces new criteria for requesting expedited examination which includes applicants of the countries whose patent office has signed a mutual PPH agreement with the IPO.  In view of similar existing PPH agreements (for example, Global and IPH PPH participants with the USPTO), the granted claims from a first patent office may be disposed of quickly before the second patent office. However, the granted claims in Japan shall be considered in India provided the claims meet the criteria of patentability under the Indian Patent Laws. This is explicitly explained in the Draft Rules, 2018 which states that “The patentability of patent applications filed under clause (f) solve will be in accordance with the relevant provisions of the Act.”

The relevant provisions include at least the requirement of patentable subject-matter defined under section 3 of the Patents Act, 1970 and the formal requirements of filing an application.

If the pilot program is successful, it is expected that similar PPH agreements may be created with other major patent offices recognized by India including USPTO and EPO.

Anindita Goswami

A Senior Associate with S Majumdar & Co., Anindita, a Patent Attorney and an Advocate, specializes in Electronics and Communications and focuses on searching and drafting in the field of electronics, software, networks and information field. She also handles prosecution,patent oppositions and revocations proceedings and regularly advises clients on issues relating to patentability.

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