The Indian Patent Office (IPO) and the Japan Patent Office (JPO) has commenced a pilot bilateral Patent Prosecution Highway (PPH) program and will begin accepting PPH requests from December 05, 2019.

Under the PPH program, examination of a patent application can be expedited in the IPO if at least one claim of a corresponding patent application in the JPO is indicated to be allowable, and vice versa.

Notably, the number of applications considered under the PPH program by each office is currently limited to 100 applications per year. Additionally, the IPO has limited the number of applications per applicant to 10 in a year.

Some of the other nuanced aspects of interest to patent applicants who are considering opting for the PPH program in India are discussed below.

Field of patent application

The IPO has limited this program to patent applications in the technical fields of electrical, electronics, computer science, information technology, physics, civil, mechanical, textiles, automobiles and metallurgy. The JPO on the other hand does not have such restrictions.

Priority of patent application

The Indian patent application sought to be considered under the PPH should have its earliest priority claim from an application filed at the IPO or the JPO. Further, in case the earliest priority is from a PCT application, then the PCT application should be filed with the IPO or the JPO as the receiving office.

Status of claim

The Indian patent application can to be considered under the PPH if a patent is granted to the corresponding Japanese patent application or at least a claim in the corresponding Japanese application is indicated to be allowable.

Status of examination

The Indian patent application should not have been allotted for examination for the application to be considered under the PPH program.

Documents required

The below listed documents are required for making a request under PPH.

• All the office actions issued by the JPO (with translation in English)
• Claims patented or identified to be allowable/patentable by the JPO (with translation in English)
• Copies of non-patent literature cited in the office actions issued by the JPO
• Claim correspondence table

The claim correspondence table should show how all the claims of the Indian application (as filed or amended) correspond to, or at least “sufficiently correspond” to the claims granted or indicated to be allowable by the JPO.

It shall be noted that the phase “sufficiently correspond” has been defined in the guidelines to include those claims that are narrower than the claim granted/allowable by the JPO. In view of this definition, it is our view that, as long as the independent claim in the IPO application is practically identical or narrower in scope compared to the claim patented or indicated as allowable by the JPO, the dependent claims of the IPO application need not as such “correspond” to any other claims of the JPO application. The reason for the instant view is that the dependent claims are in any case narrower claims compared to the independent claim, and hence they automatically “sufficiently correspond” to the claim patented or indicated as allowable by the JPO.

Procedure

Step 1

A request must be filed with the IPO for participating in the PPH program. The request is made by presenting documents as discussed above. The IPO examines the request to decide whether the patent application can be assigned special status for expedited examination under PPH program.

In case the IPO determines that the request does not meet the requirements set forth for participating in the PPH program, then the applicant is notified of the same. The applicant has 30 days to rectify the defects. The IPO then considers the rectification and make a final decision as to assignment of special status to the application.

Step 2

The patent applicant can make a request for expedited examination once the IPO assigns a special status to the patent application for participating in the PPH program.  

In conclusion, the pilot program is a welcome step towards making India an attractive destination for innovative companies. The success of this pilot program may open doors for establishing similar programs with other countries.

Useful download: Procedure guidelines for patent prosecution highway

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