Patent

GoI Approves Patent Prosecution Highway Program


Government of India approved the proposal for Bilateral Patent Prosecution Highway (PPH) Programme between Indian Patent Office under Controller General of Patents, Design and Trade Marktis (CGPDTM), Government of India and Patent Offices of other interested countries/regions. The maiden initiative is with Japanese Patent Office (JPO). It will be run on a pilot basis for a period of three years.

What is a Patent Prosecution Highway Programme?

The word “prosecution” is not to be understood as in Criminal Law. Broadly speaking, patent prosecution is the process of drafting, filing and negotiating with the respective patent office so as to obtain patent protection. [Read this for more information.]

Patent Prosecution Highway refers to bilateral arrangement between patent offices that aims to achieve: a) promote work-sharing and b) enable accelerated processing of patent applications (as patent offices can make use of the inputs of the other patent office as well). [Patent Prosecution Highway is not a novel concept. In fact, there is a PCT-led Patent Prosecution Highway Pilot (India is not a party to it).]

For explanation provided by JPO, please visit here. From what I gather from my sources in JPO, Japanese companies were quite keen and pressing the JPO for early conclusion of negotiations. This development is viewed positively back in Japan. [Please see the comment section of this post.]

Official Notification

I am reproducing the essential part of the official notification:

“Under this pilot programme, Indian Patent Office may receive patent applications in certain specified technical fields only, like electrical, electronics, computer science, information technology, physics, civil, mechanical, textiles, automobiles and metallurgy. Japan Patent Office may receive applications in all fields of technology. Patent Prosecution Highway will lead to benefits like reduction in disposal time and pendency of patent applications, consistency in quality of granted patents and an opportunity for Indian inventors including MSMEs and Start-ups of India to get accelerated examination of their patent applications in Japan.

In the year 2014-15, around 6000 patents were granted and about 15,000 patent applications were disposed, this figure has increased to more than 15,000 grants and about 51,000 disposal of patent applications in the year 2018-19 and is likely to reach about 25,000 grants and 60,000 disposals this year. The examination time of a patent application in the year 2014-15 which was around 72 months has already been reduced to less than 36 months at present and the same is targeted to further reduce to 12-16 months by March 2021. In case of expedited examination, the swiftest grant of a patent has been in 67 days from request for examination.

Japanese inventors seeking patent protection in India will now be able to take the benefits of expedited examination in India under the pilot programme on PPH. Faster grant of patents in India will result in more inbound investments by companies and also introduction of newer technologies thereby giving fillip to make in India and increasing employment opportunities. It will also help Indian Startups in patenting in Japan.”

Comments

This is a welcome initiative, given that the Japanese Patent Office is highly regarded for its quality of functioning. It can be agreed that not all is well with performance of IPO (and Indian Patent regulatory framework). Quite often, in various meetings and conferences in Europe, I have come across various (valid and justifiable) concerns regarding the Indian system.

Just to place things in perspective, I would like to recall an experience I had not so long ago. I had the opportunity to attend a hearing at the Board of Appeal of European Patent Office. The parties had earlier filed the written submissions. The Oral hearing commenced at the stipulated time and it went on for almost 45 minutes. Specific questions were asked. The lawyers were expected to give brief answers. Once the oral arguments concluded, there was a recess for half an hour. When the Board convened again, the final order was dictated. In less than two hours, the proceedings were completed.

Where do we stand? How ‘comparable’ is our system? How can we address the systemic weaknesses? These are critical questions which we should ask ourselves. Prof Amartya Sen, in ‘The Idea of Justice’, talks about two essentials of a virtuous institution: institutional virtuosity and individual virtuosity. In this regard, I sign off on a positive note with regard to this initiative of GoI.

Mathews P. George

Mathews P. George

Mathews is a graduate of National University of Juridical Sciences, Kolkata. His interest in intellectual property was kindled when he bagged the second position in his second year of Law School (in the prestigious Nani Palkhiwala Essay Competition on Intellectual Property). His stint as a student of Prof. Shamnad Basheer further accentuated his interest in intellectual property. Winner of almost a dozen essay competitions in his Law School days, he was involved in various research and policy initiatives relating to intellectual property. Mathews is, currently, based out of Munich, Germany. He had earlier done his LLM in 'IP and Competition Law' from Munich Intellectual Property Law Centre (jointly run by Max Plank Institute for Innovation and Competition, University of Augsburg, Technical University of Munich and George Washington University, Washington).

2 comments.

  1. AvatarARATHI ASHOK

    Under this scheme Indian patent office will applications only in the areas mentioned therein. My understanding is that, in all other fields of technology the application would be received by JPO and prosecution happens there. The clarification I require id that is the prosecution by JPO to grant patent in India too. My concern is due to the fact that pharma related inventions and not specifically mentioned, which implies that jurisdiction would be with JPO. Should we expect JPO to apply S.3(d) standards?

    Reply
    1. Mathews P. GeorgeMathews P. George Post author

      From what I understand from materials and discussions with various sources (including in JPO): PPH is only a tool to accelerate the patent examination. In other words, a patent can be obtained much earlier than the normal route. It does not influence the substantive criteria (like the patent eligibility criteria). In other words, the IPO can very well deny patent for an invention (which JPO has earlier granted). It is not a case where JPO will determine the patentability of inventions and the IPO will have to follow them.

      As of now, the number of applications via PPH is capped at 100. I am sharing some links of the JPO. They are addressed to the applicants at JPO.

      https://www.jpo.go.jp/system/patent/shinsa/soki/pph/japan_india_highway.html

      https://www.jpo.go.jp/e/system/patent/shinsa/soki/pph/highway_pilot_faq.html#a1-10

      Reply

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