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 Indian Patent Office (IPO) records, around 6,000 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 refers to the bilateral arrangement between patent offices that aims to:
- a) promote work-sharing, and
- b) enable accelerated processing of patent applications
The arrangement 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 patent offices in the USA and the European Union to reduce the burden of pending applications.
PPH adopted by India
With a view to compressing the timelines for the grant of patents and improving the quality of search and examination of patent applications filed in India, the government of India last month approved the proposal for the adoption of the bilateral PPH 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 themselves of 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, or PPH, was entered into between India and Japan in October 2018, thereby making the Japan Patent Office the first patent office to establish a PPH program with the IPO.
For more information regarding the PPH between India and Japan and a review of remaining challenges and questions, click here to read the full article by Nidhi Tandon of Ally Law member firm Advaya Legal.