Patent Prosecution Highway (PPH) – An Expedited Examination Program
With ever-increasing globalization, the importance of patents as the exclusive right granted for inventions is increasing at a significant rate all over the world. As the number of patent applications filed in different countries is increasing at a rapid rate, duplication of work is increasing among patent offices. In order to solve this problem, the concept of “Patent Prosecution Highway” (hereinafter referred to as “PPH”) has been introduced. The PPH is a set of initiatives aimed at providing expedited procedures for the prosecution of patents by sharing information between patent offices.
After the introduction of PPH, the legal action process speeds up as the relevant patent offices share information and help identify the patent application first.
India’s relations with Japan have always been calm and free from any dispute. India and Japan support each other when needed. Japan’s image in India has always been positive, as trade between India and Japan dates back to the 6th century AD, when Buddhism was introduced to Japan.
India and Japan are partners for peace, carrying the complementary responsibility of enhancing Asian security, stability and prosperity and fostering equitable development. At the start of the 21st century, India and Japan decided to elevate their bilateral relations to a new level. In May 2017, the Japanese Patent Office and the Office of Controller General of Patents, Designs & Trade Marks (CGPDTM) of India signed an action plan, in which the two bodies decided to implement implementing new intellectual property initiatives, such as attending training courses for new CGPDTM patent examiners or sending officials familiar with the Patent Prosecution Highway to India.
Later, in 2018, the Prime Ministers of India and Japan stepped up their cooperation to develop and extend the reach of intellectual property rights by stepping up the India-Japan Economic Stock Exchange. They mainly focused on the pursuit of patents leading to key transformational initiatives such as “Make in India”, “Skill India” and “Clean India Mission”, by sharing advanced resources and technologies. This program proved to be beneficial for both countries, as Japanese companies could then apply for expedited examinations in India on the basis of their applications whose claims were deemed patentable in Japan. Applicants were able to acquire patents quickly and develop their business smoothly in India.
One of the most worthy developments in the economic relationship between the Indian Patent Office (IPO) and the Japanese Patent Office (JPO) is the implementation of the Japan Patent Prosecution Highway Pilot Program -Indian (PPH) during the first half of fiscal year 2019 as notified by CGPDTM on the official website. Under the PPH, participating patent offices have enabled applicants who received a final decision from a first patent office to obtain at least one claim. The applicant may request expedited examination of the corresponding claim (s) in a corresponding patent application pending with the second patent office.
The following points should be noted when submitting an application to IPO under said PPH program:
- The number of PPH IPO requests will be limited to 100 cases per year on a first come, first served basis.
- An applicant who has filed a patent application, alone or jointly with another applicant, should not file more than 10 PPH applications with the IPO per year.
- The request for special status for the accelerated examination under the PPH must be filed online in the form 5-1 prescribed under Chapter 5 of the PPH guidelines.
- An applicant / authorized representative may file the request for expedited examination on Form 18A only after the request for grant of special status filed on the form prescribed in Chapter 5 is accepted by the IPO.
- The decision of acceptance / rejection / observed defect will be communicated to the applicant / authorized agent by e-mail as well as a message on the electronic filing portal.
- In the event of defects in Form 5-1, the applicant will have the opportunity to rectify the defects within 30 days of notification of the defects by IPO.
- Notwithstanding the above procedure, the time limits for filing a request for expedited examination are those prescribed by the Patent Rules 2003.
This is an excellent initiative of the two countries to launch a bilateral pilot program on the patent prosecution highway, consisting of the normal PPH and the PPH MOTTAINAI (commonly known as âIPO-JPO PPH pilot program) to facilitate the examination of patent applications currently filed in the offices of the two nations.