Author: Tanaya Kukade and Prayank Khandelwal

Abstract:

The UnionCabinet in November 2019 approved a proposal which allows Indian Patent Office (IPO)to enter into bilateral programmes with the patent offices of other interestedcountries under the name of Patent Prosecution Highway (PPH) programmes. Thepilot project under this programme is betweenthe IPO under Controller General of Patents, Design andTrade Marks (CGPDTM) andthe Japan Patent Office. This maiden initiative will be run on a pilot basisfor a period of three years. The present article seeks to highlight thepotential underlying the agreement between India and Japan in terms of inflowof investment, technology, expedited process of filing of patents in the twocountries and improvement in their economic and financial relations.

Article:

The PPH is projected to open the floodgates for investments,financing and realising the potential of Intellectual Property Right (IPR) inIndia and improving the quality of search and examination of patentapplications that would be received by the registries of the countries. A copy ofthe press release of the Government of India on this decision can be accessed here.

It is tobe noted that on September 17, 2019, the Government of India had alreadynotified the necessary amendments in the Patent Rules, 2003 to add newcategories of applicants who could avail expedited examination of Indian patentapplications. This new category included the applicant “eligible under an arrangement for processing an internationalapplication pursuant to an agreement between Indian Patent Office with anotherparticipating patent office”.

PPH refers to a bilateral arrangement between patent officesthat aims to promote work-sharing and enable accelerated processing of patentapplications. The agreement read with the guidelines issued by IPO, has generalconditions that need to be satisfied while filing an application for expeditedexamination with the Office of Later Examination (OLE) and procedureguidelines. The guidelines provide for certain common requirements that must besatisfied by the applications in addition to certain specific requirements ofeach Patent Office.

Asper the PPH programme, patent offices of participating countries have concurredthat when a candidate gets a final decision from the first patent office thatat least allows one claim, the same candidate may demand expedited examinationof relevant claim(s) in a subsequent patent application pending in the secondpatent office.

It is a step towards strengthening the IP andindustrial relationship between the countries. The benefits inline for Japan inpursuance of this agreement is the accelerated examination of its applicationsin India, greater access to IPO, information and examinations. The CGPDTM willexamine PPH applications for which requests are made and applicants can obtainpatents in a shorter time in India where delays in the patent examination areperennial and smoothly develop their business in the country. It works in amanner that once a patent application has been determined to be patentable bythe Office of First Filing (OFF), the same application will undergo anaccelerated examination in the Office of Second Filing (OSF) with a simpleprocedure based on bilateral office agreements.

Although, under thisprogramme, IPO may receive patent applications in certain specified technicalfields only, like electrical, electronics, computer science, informationtechnology, physics, civil, mechanical, textiles, automobiles and metallurgy,while JPO may receive applications in all fields of technology. PatentProsecution Highway will lead to benefits like reduction in disposal time andpendency of patent applications, consistency in quality of granted patents andan opportunity for Indian inventors including MSMEs and Start-ups of India toget accelerated examination of their patent applications in Japan.

As per the information available at the JPOwebsite, the pilot PPH programme with the IPO is has commenced from December 5,2019 and both the offices may initially receive only 100 applications per year. IPO may provide for a limitation on the maximum number of applicationswhich could be filed by one applicant, at present this number is capped at 10which is proposed to be reviewed after March 31, 2020.

The PPH Programme is awelcome initiative in India given the highly regarded efficiency of the JPO. Fastergrant of patents in India will result in more inbound investments by companiesand also introduction of newer technologies thereby giving companies’ impetusto make in India and thereby increasing employment opportunities. Thetwo countries have perceived a close collaboration in Intellectual PropertyRights in order to realize the true potential of the economic-partnershipbetween the two for a prosperous future.