Tag Archives: expedited patent examination

Proposed amendment to Patent Rules has the potential to dilute improvements made so far

The Indian patent regime is infamous for its slow speed of processing patent applications. The Government has over the years taken several initiatives to address this issue, primarily by increasing the number of patent examiners. The initiatives have started showing positive results.

In terms of the actual statistics, as per the Ministry of Commerce and Industry, the pendency of patent applications awaiting examination has reduced from 204,177 in March 2017 to 172,488 as on February 2018. Further, the number of applications examined in the month of February 2018 was 6235 as against 3925 during the corresponding period of the previous year. Even though the percentage improvement in the number of applications examined monthly is significant, at the rate of 6235 applications per month, the backlogs are not going to be cleared anytime soon.

While the timeline for processing patent applications was improving, an immediate relief, by way of amendments to The Patents Rules, was made available to start-ups and those who select India as ISA or IPEA in a corresponding PCT application. The amendment provided for expedited examination of patent applications on request.

Under the expedited process, examination reports started being issued within a month or two, and lately within days, as against 4 or more years taken ordinarily. However, before we conclude that the patent office is completely equipped for speedy disposal of patent applications, we have to put the speedy disposal of the applications under expedited process in perspective. As per the 2016-17 annual report (“Report”), 38,578 requests for patent examination were filed, and the number of expedited examination requests stood at 135. Hence, at least in the year 2016-17, the patent office had to deal with a very small number of patent applications under expedited examination, and consequently the speed doesn’t necessarily reflect on the preparedness of the patent office to process a large number of requests for examination within comparable timelines.

The proposed amendment to the patent rules is aimed at enabling a much wider set of applicants to avail the benefit of expedited examination. The applicants, irrespective of nationality, who will be eligible to request for expedited examination, if the amendments were to come through, are listed below.

  1. (Eligible even now) An applicant who has selected India as the ISA or IPEA in a PCT application corresponding to the Indian application for which expedited examination is sought
  2. (Eligible even now) An applicant who is considered a “startup(refer Rule 2(fb))
  3. An applicant who is considered a “small entity” (refer Rule 2(fb))
  4. At least one of the applicants is a female, and the remaining applicants, if any, are natural persons
  5. An applicant who is considered a “government undertaking” (refer Section 2(h)), or is a similar entity in case of a foreign applicant
  6. An applicant who is eligible under patent prosecution highway

In our view, enabling the listed new category of applicants to request for expedited examination will result in workload, which will substantially limit the ability of the patent office to examine applications under expedited process at the speed at which the office is examining at present.

Consider small entities, who will be eligible. Although we do not know how many applicants have claimed small entity status while filing applications, we believe it is a significant number. Once the amendments come into force, at least a sizable number of applicants, who have claimed small entity status, and have been awaiting examination, might request for expedited examination. Hence, there is likely to be a spike in the number of expedited examination requests the office may receive soon after the introduction of the amendments. Not to forget the new applications that will be filed by small entities, who are likely to request for expedited examination, consequently adding to the queue of applications awaiting expedited examination.

Further, the number of applications awaiting examination, who have at least one female applicant, is also not know. The patent office had started collecting gender data of applicants some time back, and the patent office may have some extrapolated estimate of pending applications which have at least one female applicant. However, our guess is that it is a much smaller number compared to small entities.

Regarding government undertakings who may become eligible, might again add a much smaller number to the queue of expedited examination requests, as compared to small entities. We assume that foreign government undertakings may have filed fewer applications in India, and their inclination to file in future as well may be limited. Hence, it is mostly Indian government undertakings filing for patents in India. Considering that, as per the Report, Indian applicants filed 13,219 (30%) out of 45,444 applications in 2016-17, applications filed by government undertakings out of the 13,219 applications may relatively be a small number. Further, whether government undertakings will consider spending INR 60,000 for expedited examination instead of INR 20,000 for ordinary examination is yet another question, and in our view, very few may be willing.

Even though the inclusion of female applicants and government undertakings may not add a substantial number to the queue of expedited examination requests, we believe that the applicants who will become eligible under patent prosecution highway may add a substantial number. Even though at present India doesn’t have patent prosecution highway arrangement with any country, an arrangement with Japan is likely to take shape in the near future.

As per the Report, Japanese applicants filed 4,275 applications out of 45,444 applications filed in 2016-17, which is about 9.4%. As per an estimate, allowance rate in Japan is around 75%. Therefore, 75% of the nearly 4000 applications, i.e 3,000 applications, filed by Japanese applicants may become eligible. Further, assuming at least a 4 year waiting time in India to receive an examination report, and around a 1 year turnaround time to receive examination report in India, around 9,000 applications from Japanese may become eligible the moment the amendment is introduced.

In our view, even if 20% of the small entities and applicants eligible under patent prosecution highway were to request for expedited examination, it would cripple the patent office’s ability to examine applications at the rate the office is examining applications under expedited process.

In conclusion, the processing time of expedited examination requests is likely to be significantly impacted by inclusion of small entities and applicants eligible under patent prosecution highway. Start-ups, who have been benefiting from the expedited examination of their applications may no longer be able to get patents granted within a short period. In case the number of expedited examination requests entertained by the patent office is restricted to a certain number, then applications from start-ups may end up being a small percentage of the restricted number of applications. It may be wise to concentrate on reducing the backlog and the time taken to issues first examination reports in the ordinary course, before adding additional burden on the patent office by making a larger category of applicants eligible to apply for expedited examination.

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India working towards disposing pending patent applications in the next two years

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Minister for Commerce and Industry, under which the Department of Industrial Policy and Promotion (DIPP) functions, has been taking several initiatives for substantive improvement of IP environment in India. The recent initiatives include comprehensive National IPR policy, relocation of Copyright Office to DIPP, merger of the Copyright Board with the Intellectual Property Appellate Board (IPAB), establishment of Cell for IPR Promotion and Management (CIPAM) and launch of Start-up Intellectual Property Protection (SIPP) scheme, among others.

Adding to the above initiatives, the office of Controller General of Patents, Designs and Trade Marks (CGPDTM) is making efforts to clear the backlog of about 2.3 lakh pending patent applications. DIPP has hired substantial number of examiners and is likely to dispose these pending applications in next two years. The introduction of expedited examination and the recruitment of around 450 patent examiners to add to the pool of existing 130 examiners at the Intellectual Property Office (IPO) is witness to such efforts of the DIPP. This recruitment has increased the speedy disposal of pending patent applications. In the year 2016-17, about 9,847 patents were granted by the IPO, as against 6,326 in the previous year. IPO has improved its count in issuance of examination reports, which has increased to 6,000 patent applications a month from the earlier 1,500 applications.

Suresh Prabhu, Minister for Commerce and Industry, while addressing the Leadership Summit on Anti-Counterfeiting and Brand Protection at New Delhi last month, highlighted the efforts and initiatives of DIPP and IPO to dispose off the pending applications at the earliest. He announced that the Ministry is working to come up with an effective plan by which patent applications will be disposed in the least possible time. These initiatives are expected to bring down the pendency of patent applications and targeted at final disposal of patent applications from the present 5-7 years to less than 18 months.

We welcome the initiatives and efforts of the ministry in establishing a strong IP regime, and more importantly a time bound one, which is likely to boost innovation in the country.

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Indian Government prepped up to expedite examination of increasing patent and trademark applications

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India is one of the fastest-growing major economy in the world. Further, India is fast emerging as a major market for research and technology driven products. Hence, over the years, the number of patent applications filed in India has soared. In the year 2015, India stood at 9th and 6th positions in the ranking of the number of patent applications filed in India by residents and non-residents, respectively. Similarly, the number of trademark applications filed in India has soared over the years. In the year 2015, India stood at 2nd and 9th positions in the ranking of the number of patent applications filed in India by residents and non-residents, respectively.

To handle and prosecute the increase in number of patent and trademark applications, the commerce and industry ministry has been augmenting manpower and is providing training to them. At the CII India-UK Tech Summit held in New Delhi, between November 7-9, 2016 the Joint Secretary in the Department of Industrial Policy and Promotion, Rajiv Aggarwal said that a year ago, the first examination of trademark applications was taking almost a year and half. In the month of November, 2016 the time for first examination of trademark applications has come down to around 4-5 months. By March 2017, it is expected that the first examination of trademark applications will come down to only one month. Similarly, for the first examination of patent applications it used to take approximately 6-7 years. It is aimed to bring down the first examination of patent applications to just 18 months by March 2018.

Conclusion:

It can be clearly seen that Indian patent office is striving to meet the expectations of stake holders when it comes to faster prosecution of the applications related to patent and trademark. Faster prosecution of the applications will lead to further increase the filing of patent and trademark applications, which is beneficial to the stakeholders and the patent office.

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Limited Requests for Expedited Examination of Patent Application in India

In the month of May 2016, several amendments were made to the Indian Patent Rules. The amendment introduced the option to expedited examination of patent applications, provided certain conditions are met. The amendment had also made it certain that the number of requests for expedited examination that will be allowed will be limited. Newly introduced rule, 24(C)(13), gave the Controller General of Patents, Designs and Trade Marks (CGPDTM) the authority to restrict the number of requests for expedited examination to be received every year.

Rule 24(C)(13):

Notwithstanding anything contained this rule, the Controller may limit the number of requests for expedited examination to be received during the year by way of a notice to be published in the official journal.

The CGPDTM, on June 14, 2016, has published a notification limiting the number of requests for expedited examination that will be accepted till December 31, 2016. As per the notification, the number of requests for expedited examination is restricted to 1000.

The Patents (Amendments) Rules, 2016 have come into force w.e.f. 16, May, 2016. In this regard the stakeholders and general public are hereby informed that in terms of provisions of sub-rule (13) of Rule 24C relating to expedited examination of applications, the number of requests for expedited examination to be received by the Patent Office on or before 31" December, 2016 has been limited to 1000 requests.   

At present, the patent office website does not provide a dynamic utility to display the number of requests that are available in real time. Hence, at the time of filing requests using the online portal of the patent office, one will be able to know whether the number has been exhausted or not. Alternatively, we believe that the CGPDTM will again have a notification published once the number is exhausted.

At the time of writing this piece, request for expedited examination could still be filed. However, considering that 1000 is a small number relative to the number of patent applications filed in India, we anticipate the requests to be exhausted within the next couple of month, if not before that.

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Expedited Patent Examination in India

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Introduction

The Indian Government has taken up various initiatives to reduce the time taken to examine patent applications. Two of the most noteworthy initiatives are appointment of a large number of patent examiners and introduction of an option to expedite examination of patent applications. The article discusses the option of expediting examination of patent applications.

Note that at the time of writing this article the amended rules, under which these benefits are being provided, was released one day before (May 16, 2016). Hence, there could be changes in the way these rules are interpreted going forward.

Qualifying for expedited examination

The following types of applicants will qualify to avail expedited examination.

  • The patent applicant is a start-up
  • The patent applicant was a start-up at the time of filing the patent application
  • The patent applicant has chosen India as an International Searching Authority (ISA) or as an International Preliminary Examining Authority (IPEA) in a corresponding PCT application.

Patent applicant is a start-up

The patent applicant has to be a start-up as defined by the patent rules to opt for expedited examination.

Patent applicant was a start-up at the time of filing the patent application

A patent applicant might have applied for a patent before the option of expedited examination was introduced. Such applicants can also opt for expedited examination if they qualify to be recognised as start-up at the time the patent application was filed, and even if they later ceased to be qualified as a start-up for two reasons.

  • The first reason is that, after having filed the patent application (without claiming start-up status), at the time of requesting for expedited examination and it has been more than five years from the date of the applicant's (entity's) incorporation or registration.
  • The second reason is that, after having filed the patent application (without claiming start-up status), at the time of requesting for expedited examination the turnover of the applicant's (entity's) in one or more financial years has crossed INR twenty five crores (USD 3787878 at conversion rate of USD 1 = INR 66). 

Patent applicant has chosen India as ISA or as IPEA

Patent applicants, other than those who qualify as start-up can also opt for expedited examination. Such applicants can include individuals and legal entities (ex: companies). In order to opt for expedited examination, such applicants should have filed a PCT application corresponding to the Indian application. Additionally, the applicants should have chosen India as ISA or IPEA. However, at present only Indian and Iranian applicants can choose India. Hence, Non-Indian and Non-Iranian patent applicants, who do not qualify as start-ups may not be able to opt for expedited examination. 

Fees for expedited examinationThe fees charged for expedited examination is more than the fees charged for ordinary examination. Further, expedited examination request will be entertained only if the patent application is published. Hence, request for expedited examination may be filed after the patent application is published as a consequence of an early publication request or ordinary publication (publication after 18 months from priority date). Alternatively, the applicant can file an early publication request with the request for expedited examination. The fee structure for early publication, ordinary examination and expedited examination is provided below.

fee structure

Converting ordinary examination request to expedited examination request

A limited number of requests for expedited examination requests may be entertained every year. Once the limit for the year has reached, communication to that effect will be made via the official journal of the Indian Patent Office. Hence, if the limit is reached, and the applicant qualifies to opt for expedited examination, then the applicant can file an ordinary examination request for the time being. Subsequently, when the patent office starts to accept requests for expedited examination in the following year, the applicant can convert the ordinary examination request to expedited examination request. In another scenario, if a qualifying applicant has already requested for ordinary examination even before expedited examination option was made available, such request can also be converted into expedited examination request. The fee structure for converting ordinary examination request to expedited examination request is provided below. 

Conversion to expedited exam fee

Expedited examination procedure

The primary advantage of expedited examination is that, the applications for which expedited examination is requested will be allotted to a queue, which is different from the ordinary examination queue, which already has lakhs of applications awaiting examination. Hence, the applications for which expedited examination is requested will be allotted to an examiner for examination substantially sooner than the applications that have been queued for ordinary examination. Once the application queued for expedited examination is allotted to an examiner, the procedure to be followed is time bound, and the same is illustrated in the flow chart below.

Flowchart for expedited examNote that opportunity of hearing with the patent examiner is available, just like ordinary examination, although not illustrated in the flow chart.

We hope this article helps patent applicants gain better understanding of the various initiatives of the Indian Patent office to expedite examination of patent applications and thereby benefit by availing them.

You may also download the article for your reference. 

Please feel free check our patent services page to find out if we can cater to your patent requirements. You can also contact us to explore the option of working together. 

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