On account of the huge backlog of patent applications and the resultant delay in acquiring patents, several inventors have traditionally chosen to stay away from Indian markets.There is finally some effort to change this situation. As per the Indian Patent Office (IPO) records,around 6000 patents were granted and about 15,000 patent applications were decided in the year 2014-15, which further increased to more than 15,000 grants and about 51,000 decisions in the year 2018-19. Further, the examination time of a patent application in the year 2014-15 that was around 72 months has already been reduced to less than 36 months at present. In this background and continuing with these efforts, the decision of the Government of India to introduce the Patent Prosecution Highway (PPH) programme with other countries is a welcome move. It is likely that with the introduction of PPH, the grant of patents and disposal of patent applications at the IPO will rise to 25,000 and 60,000 respectively. The examination time of a patent application is also expected reduce to 12-16 months.
What is Patent Prosecution Highway Programme (PPH)?
PPH refers to the bilateral arrangement between patent offices that aims to:
a) promote work-sharing and
b) enable accelerated processing of patent applications
It helps accelerate the process of examination for corresponding applications in the IP offices involved where the examination work has already been conducted at one patent office. In other words, when claims in an application are allowed by the first patent office, the applicant can request for speedy examination of corresponding claims in an application pending in the second patent office. PPH has been successfully adopted by thepatent offices in the USA and the European Union to reduce the burden of pending applications.
PPH adopted by India
With a view to compress the timelines for the grant of patents and improve the quality of search and examination of patent applications filed in India,government of India last month approved the proposal for the adoption of bilateral Patent Prosecution Highway (‘PPH’) programme by IPO , in collaboration with patent offices of other countries and regions.
This approval comes after the Government notified amendments to the Patent Rules, 2003 in September 2019 for faster examination of patents and grants by adding new categories of applicants who could avail expedited examination of Indian patent applications. This new category included those “eligible under an arrangement for processing an international application pursuant to an agreement between the Indian Patent Office and another participating patent office”.
While the enabling legal framework was created as above, no such programs/agreements existed between the IPO and other patent offices outside India. A bilateral agreement, i.e.,PPH was entered into between India & Japan sometime in October, 2018, thereby making Japan Patent Office (JPO) the first patent office to establish a PPH program with the IPO.
PPH between India and Japan
India’s PPH programme with Japan will start on a pilot basis for an initial period of three years.
Under the pilot programme:
IPO can receive patent applications only in some specified technical fields, i.e. Electrical, Electronics, Computer Science, Information Technology, Physics, Civil, Mechanical, Textiles, Automobiles and Metallurgy.
JPO may receive applications in all fields of technology.
This is expected tonot only lead to benefits such as reduction in the disposal time of patent applications but is also expected improve the quality of search and examination of patent applications. It will also give an opportunity for Indian inventors including MSMEs and start-ups to get faster examination of their patent applications in Japan once they’ve been granted in India. In addition, PPH shall promote applicants/inventors of both countries to apply for and obtain patents at a faster rate in both the jurisdictions, which in turn should help promote inbound investments by companies. Success of this programme should encourage the IPO to enter into similar PPH programs with other patent offices. This is all good news as it will be easier for investors to go for an expedited patent examination in their major markets.
There are certain questions that are still left unanswered:
How will the patent examiners in the IPO rely on the examination report of the JPO and grant patents, given that the provisions regarding patentability under Indian laws are stricter as compared to Japan? In this regard, Indian patent laws will have to be similar to those of Japan (which does not have such strict standards) and other countries with which such agreements may be signed in the future. India has so far opposed WIPO’s (World Intellectual Property Organization) attempts to harmonise Indian patent laws.
If Japan grants the examination process of any patent because of its PPH with any other country, the examination of the same patent in India will also be expedited because of its PPH with Japan. This will, in a way, create a multi-country impact even though the formal agreement between IPO and JPO is a bilateral one. How will such situations be handled?
In conclusion, suffice to say that PPH has a lot of potential in improving the quality of patent examinations and in reducing the backlog of patent applications. Having said that, it should not be implemented in haste and should kick in only after India is ready to align its patent laws with the laws of some of the developed countries under WIPO.