Om Prakash Gupta, the Controller General of Patents, Designs and Trade Marks, issued a notice which stated, without any reasoning, that the number of applications for expedited examination of patent applications would be restricted to 1000. Meaning only 1000 requests filed prior to December, 2016 will be entertained.
The Controller General has placed such a limit by virtue of the powers invested in him by sub-rule (13) of Rule 24C of the Patent (Amendment) Rules 2016. Ritvik has reviewed the entire said statute, but I would specifically like to draw your attention to his section on “Tatkal Patents”, where he discusses the modalities of expedited examinations.
For the benefit of the reader, I have reproduced the relevant portion below.
For filing a request for expedited examination, the patent applicant either:
1. Must be a startup as defined by the Patent (Amendment) Rules, 2016.
OR
2. Must have included India, in their PCT (Patent Cooperation Treaty) application, as an:
A. International Searching Authority (ISO)
OR
B. International Preliminary Examining Authority (IPEA)
Prior to moving on, here is a brief glimpse at PCT’s workings:
You file a PCT application.
You nominate two patent offices as ISO and IPEA.
ISO and IPEA examine your application and record findings.
These recorded findings serve as a document which the applicant can use to approach various party jurisdictions for patent protection. The PCT only seeks to make the application process easier. Through a PCT application, an applicant can approach every party jurisdiction without having to freshly apply every single time. Each jurisdiction, will take into the account its own laws, along with the recorded findings (by ISO and IPEA) and finally, come up with a decision.
Coming back to the original topic at hand i.e. limit on requests for expedited examination:
The expedited request system was formulated to make India look favourable to patent applicants.
I feel the Controller has taken a rather hasty and arbitrary step by placing a cap. I understand that the patent office is heavily understaffed with 2.37 lakh patents pending, but coming up with an arbitrary ceiling is dangerous.
I believe it might be more prudent to restrict and free the application process in accordance with the resultant work pressure. To place a cap right till December might lead to inefficient usage of the already burdened Patent Office.
The patent office is not able to publish application in time, i.e., in 1 to 2 months after 18 months from the priority date.
How can one expect that the patent office will examine them in time?
is it not presumed to be published after 18 months irrespective of being published in the official gadget?
I do not see any such provision in the Act or Rules.
On top of that, the application will not be referred to the Examiner for examination unless it is published (See Rule 24B(2)(i)).
What if the filed patent application is a non-PCT/non-start up.
I mean to ask………is it possible to file a expedite examination request for a patent application filed only in INDIA and filed nowhere else.
Hello,
The rule only specifies the two conditions that have been discussed above.
So, I infer that if you do not file a PCT application AND you’re not a startup, then you cannot apply for expedited examination.
Thank you.
But is there any rationale, for NOT ALLOWING the Indian patent applications for expedited examination?
I am not too sure about that sir.
Thank you.
Hello Sir,
Ritvik Kulkarni has an explanation. I am posting his explanation verbatim here.
“See, the expedited system is a policy move and I believe it was designed to serve a defined small group of patentees. Furthermore, I think that policymakers wanted some tangible gain out of defining the group as it now exists.
From the looks of it, the Patent Amendment is largely directed towards fulfilling goals under Startup India and Make in India; and the eligibility criteria has been defined to cater to exactly those kind of people, I.e. foreign investors (innovators) and startup entities, so that the government can move a step closer to achieving its innovation goals under the said two national initiatives.
Maybe when the government achieves a certain policy target with this expeditious examination instrument or when the IPO has the requisite number of examiners, we can open this service to regular Indian innovators as well. “
Thank you Mr.Prateek for the explanation.
So, it is now clear that a non-startup Indian patent application filed only in India and nowhere else can’t opt for Expedited examination. Thank you.
I do not see any reason to criticize PTO over this decision… even USPTO has a limit on Expedited application (10000).
On contrary, it is good that they had limited to a particular number. Otherwise examination of normal applications may suffer as more Examiner’s will be busy clearing those expedited applications.
Lets not try to find only negatives in decisions.
Hello,
Thanks for pointing out the practice in the the USPTO.
I only felt a better practice would be to place restrictions after the work flow begins.
But yes, your point about negativity has been noted and well taken. Retrospectively, I too think I have given into the temptation of just making an argument for the sake of it. I shall restrict myself in the future.
That said, I have made my inconvenience known in a rather mellow fashion and wished to put it across more as food for thought, rather than as a hard hitting critique.