Implementation of Patent Prosecution Highway- A further step in accelerating prosecution

The Indian Patent Office (IPO) has recently implemented a Patent Prosecution Highway (PPH) pilot programme between IPO and JPO for 3 years. This is in line with the newly amended Patent Rules that provide for compliance with patent prosecution highway as one of the criteria for requesting Expedited Examination. From December 5, 2019, the Indian Patent Office has started accepting requests for such PPH Pilot programme and at the moment 94 requests for the same have been filed.
In this pilot programme, 100 applications for request under PPH programme can be filed in each of IPO and JPO per year. Further, the number of such requests filed in India per applicant has been presently fixed at 10 applications per year and IPO would review the same after March 31, 2010.
On request for such application under PPH, the Indian Patent office would look into them and if any requirement is unmet they would issue a notice to that effect. Within 30 days of receiving such notice, the requirement has to be fulfilled by the applicant/Agent.
The following applications are eligible for the PPH programme between India and Japan

A.    With respect to the date of the earliest application, in case:
i) Indian application claims priority under Paris Convention from the JP application; or
ii) said JP application claims priority under Paris Convention from the present Indian application; or
iii)  Indian application shares a common priority with the JP application; or
iv)  both the present Indian application and the JP application are national phase applications from the same PCT application without any priority

B. The application should belong to the same family as the Japanese Patent application and for the purpose at least the earliest application was filed with the JPO acting as a national office or, under the PCT, acting as a Receiving Office (RO). Thus the first application needs either be filed with JPO or at least at JPO as RO in cases where PCT is the first filing.

C. As for the claims at least one corresponding application need to exists in the JPO which has one or more claims that are determined to be patentable/allowable.  Accordingly, if JPO determines the claims to be allowable/patentable, corresponding claims would qualify for PPH in India. A claim determined as novel, inventive and industrially applicable by the JPO and identified to be allowable /patentable in the latest office action, even if the application is not yet granted, serves as allowable /patentable for the purposes of this pilot program. The JP application could be the priority application, an application which is derived from the same eg. Divisional application or JP national phase application of a  PCT application.

D. Further, the claims should correspond to the allowed/granted claims in JPO. The claims may be of same or similar in scope or narrower scope as those of JPO. Addition of claims for a category which is not found in the JPO would not be considered for the purpose.

E.Such request for participation in the pilot PPH programme can be made till the examination has begun for the Indian application

F. The Indian Patent Office has restricted the PPH program only to patent applications belonging to the technical fields of Computer Science, electrical, electronics, mechanical, Information  Technology,  Physics,  Civil,  Mechanical,  Textiles,  Automobiles and Metallurgy.

G.    On receiving the request the IPO would look into the same and if there are any defects the IPO would require correction of the same within 30 days. If the defects are corrected,  the application will be assigned a special status for expedited examination under the PPH. However, if the defects are not corrected, the IPO will issue the notification of not assigning a special status for expedited examination under the PPH.
In case the claims on file of the Indian Patent application is not in line with the Japanese allowed/granted claims the applicant may submit voluntary amendment to make the claims in line with the corresponding JPO and then request the special status under the pilot PPH programme so that the claims are in line with the granted claims of JPO and form basis of the PPH programme.

Subsequently, only after receiving confirmation/acceptance of special status, the request for Expedited Examination under Rule 24C based on the PPH pilot programme with JPO is to be submitted. In case Request for examination by ordinary route is already submitted the same may be converted to the Expedited route on payment of the additional fees for difference of the fees.

So the sequence of events for requesting special status under PPH plot programme so that it forms the basis for requesting Expedited Examination would be:
· request amendment in claims in line with granted/accepted claim in JPO, in case the claims are already not in line with the same;
· request participation in the Patent Prosecution Highway (PPH) pilot program, based on said JPO application, with necessary documents and information;
·  receive acceptance of such request for PPH/special status (in case any defect is raised the applicant has to rectify the defects within 30 days)
· request Expedited Examination under Rule 24C in Form 18A based on the pilot PPH programme with JPO

The request to the Indian Patent Office for participation in the pilot PPH programme needs to be made in prescribed Form 5-1 along with documents required therein.

The application number, publication number, or a patent number of the corresponding JPO application(s) must be provided.

The documents required to be filed are as under:
1. Notice of Allowance issued by JPO/ Notification of Reasons for Refusal only when patentable/allowable claims are specified/Decision of Refusal only when patentable/allowable claims are specified/ Appeal Decision  along with its English translation

2 Japanese allowed claims along with its English translation

3.Certification for the translation of Notice Of Allowance(or documents mentioned in point 1 above) and claims

4.List of the references cited by JPO and copies of non-patent literature

6. Claim correspondence table in case the claims are not exactly the same as that of JPO allowed claims

The details of the PPH pilot programme is provided in a guideline published by the Indian Patent Office which is available in the following link – Click Here

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