Getting to Grant: Pursuing Patents in India

Introduction

Pursuing a patent is the centerpiece of the process of obtaining a patent. The proceedings during the prosecution serve as important legal guidance on the patentability of the invention, and a successful prosecution is essential to ensure the protection of patent rights.

Pursuing patents in India is not just the interaction between an applicant and the Indian Patent Office (IPO), but it is a test of the legal and technical skills of an invention.

The first step is to file an application, which is followed by its publication by the Patent Office. After that, the application goes through an investigation which involves a review by the Patent Office, which is usually followed by a hearing before the Controller. For more on patent prosecutions and timelines, please see: https://www.obhanandassociates.com/blog/timelines-in-prosecuting-an-indian-patent/

Exam

The examination proceeds according to the order of the filing date of the request for examination (RFE). Typically, it takes 12 to 36 months for grant from the date of the RFE. Generally, a first examination report is issued. In most cases, a Notice of Hearing is also issued. Rarely, a subsequent examination report or a second examination report is issued.

Pursuing a patent application is known to be lengthy and can take a long time depending on the underlying invention. However, the examination of a patent application in India can be expedited under certain conditions.

Expedited review

A request for expedited examination may be filed at any time within 48 months from the filing date or the priority date, whichever comes first. But this facility is not available to all applicants. The IPO only accepts a limited number of expedited review requests per year. This number is communicated to the public at the beginning of the calendar year. Once this limit is reached, no further expedited review requests will be accepted. Therefore, an application for expedited review should be filed as soon as possible, preferably at the beginning of the calendar year.

Once the requirements for an expedited review (see below) are met, the applicant is fully entitled to convert a regular review request to an expedited review request. This can be done by applying in the prescribed format and applying the difference in the prescribed fee.

Expedited Review Requirements/Conditions

An expedited review may be requested if the following conditions are met:

  1. The applicant must be one of the following:
  • a start-up;
  • a small entity;
  • candidate;
  • in the case of co-applicants, all applicants are natural persons and at least one of these applicants is a woman;
  • a government department;
  • an institution established by central, provincial or state law, which is owned or controlled by the government;
  • a public company;
  • an institution wholly or substantially funded by the government;
  1. The request relates to a sector which has been notified by the central government.
  2. In the case of a national phase application, India is chosen as the competent “International Searching Authority” or elected as the “International Preliminary Examining Authority” in the corresponding PCT application.
  3. The applicant is eligible under an arrangement for processing a patent application under an agreement between the patent office and a foreign patent office.

Thus, if one of the above conditions is met, a request for an expedited trial may be granted. In addition, an application for advance publication must also be filed, provided that the application has not already been published.

Accelerated grant

The following can expedite the grant of a patent application:

  1. Filing of a request for early publication of the application (because an application is not resumed for examination until after its publication).
  2. Filing a request for examination with the request itself.
  3. In the case of an application in the national phase, filing of an express request for examination before the expiry of a period of 31 months from the priority date. Note that an express request for examination may be filed to initiate examination of a national phase application before the expiration of 31 months.
  4. Filing of a request for expedited examination, if the patent applicant is eligible.
  5. Filing of a response to the first examination report as soon as possible.
  6. Filing of all necessary official documents as soon as possible.

Patent Lawsuit Highway

Patent Prosecution Highways (PPH) are programs that aim to speed up the patent prosecution process. This is done through a mechanism for sharing information between offices or even countries in some cases. India has a PPH pilot program in the form of a bilateral agreement with the Japan Patent Office (JPO). This pilot program is for a trial period of three years and started in November 2019.

Under this program, the IPO will only receive patents in the following areas:

  1. Electrical engineering
  2. Electronic
  3. Computing
  4. Computer science
  5. Physics
  6. Civil and mechanical engineering
  7. textiles
  8. Cars
  9. Metallurgy

The JPO also receives applications for Indian patents, although they do not have a technological restriction like the IPO. A request for accelerated examination must be submitted by the applicant under the program with the necessary information and documents. As it is currently a trial, the number of requests filed under the PPH with the IPO is limited to 100 files per year. Requests for expedited applications are processed on a first-come, first-served basis. An applicant who has filed a patent application, alone or jointly with any other applicant, may file up to 10 PPH applications with the IPO per year. Additionally, one could effectively access the PPH with other jurisdictions through non-bilateral routes, although these involve more complex processes (see here, for a more detailed explanation of the PPH: https://www.obhanandassociates .com/blog/fast-tracking-by-the-patent-prosecution-highway-in-india/).

calls

Appeals are an important part of the patenting process. They are at the heart of the dispute resolution mechanism available to applicants in the event of a refusal of a data controller’s decision on a patent application. In India, the following options are available to applicants:

  1. The applicant may send the controller a request for review of his decision. This request must be submitted within one month from the date of communication of the decision to the applicant.
  2. The claimant can appeal to the High Court. However, this appeal must be lodged within three months of the date of the Controller’s decision.

Conclusion

The patent process in India can be long, bureaucratic and overwhelming. But with care and attention to detail, it can be successfully navigated. The patent application process in India allows for appeals against rejections as well as an effective takedown mechanism. The expedited grant and expedited examination provisions provide for faster methods of processing patent applications. And initiatives such as the PPH are a step towards streamlining patent applications through international cooperation. Above all, the number of requests for accelerated examinations and PPH remains limited. While these may increase in the future and allow more claimants to benefit from faster prosecutions, most claimants should be prepared to follow the standard processes outlined here.

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